Wednesday, January 21, 2015

ICANN Holds Program Auction to Resolve String Contention for .BABY and .MLS

Last December 2014, ICANN held another new gTLD Program Auction via their authorized auction service provider, Power Auctions LLC. The auction came about because several applicants failed to resolve a string contention for the new gTLDs .BABY and .MLS through other preferred means (either direct negotiation, community priority evaluation, or through a private auction without ICANN’s participation.)

The bidding or the .BABY gTLD was won by Johnson & Johnson Services, Inc for $3,088,888. Given that the company is well-known for a wide range of products that include infant and toddler-care, it is understandable why they would pay such a hefty amount for the gTLD. Johnson & Johnson Services, Inc beat 5 other applicants.

Wednesday, January 7, 2015

The double-edged sword of notoriety: Court Dismisses Coca-Cola Claim Against Pepsico Over Bottle Shape Infringement

Coca-Cola have been using a “Contour” shape bottle for many years, for which they have already registered several trade mark registrations, including shape trade mark registrations.

In October 2009, Frucor Soft Drinks Limited, the bottler and distributor of PepsiCo products in New Zealand, launched a new 300ml bottle on the market. Frucor dubbed this the “Carolina” bottle. The new Carolina bottle design was intended for PepsiCo’s main line of soft drinks, such as Pepsi, Pepsi Max and 7UP.

The new bottle design wasn’t promoted or advertised and were only released to the market on a small scale, but Coca-Cola took notice and saw similarities between the Carolina bottle and their own Contour bottle:

Tuesday, January 6, 2015

Hugo Boss v Sasalili Oxford Fia: The Strategy of Policing Luxury Brands

The Federal Court of Australia has recently awarded both compensatory and additional damages in the Hugo Boss Trade Mark Management GmbH & Co Kg v Sasalili Oxford Fia case. Exemplary damages were introduced into the Australian Trade Marks Act in April 2013.

The applicant in this case was Hugo Boss Trade Mark Management GmbH & Co Kg, the trade mark vehicle of the famous German luxury fashion and style house. The respondent was Sasalili Oxford Fia, which has been manufacturing and offering a range of men’s, children’s, and women’s apparel bearing the mark BOSSIT, with the logo bearing a resemblance to Hugo Boss’ logo.

The BOSSIT-branded items were being sold primarily online (through a Facebook page serving as an online store) and were also sold in several local markets such as the Fairfield and Blacktown markets.

When the case first went to trial in early 2014, the Court had ordered the respondents to pay the applicant for infringing the Hugo Boss trade mark. Applicants successful on the issue of liability can elect to seek damages or an account of profits. The applicant chose damages. This is hardly unusual: respondents often claim that their expenses are such that they made no profit. An account of profits also excludes a claim for exemplary damages, which is largely a discretionary award.

Middleton J awarded additional damages after being presented evidence that the respondents continued selling the infringing products even after receiving the applicant’s cease and desist letter. Additionally, His Honour also took into account that the respondent’s products were of inferior quality, manufactured and sold through means that Hugo Boss would never have done themselves, much less approved of. The final compensatory damages awarded by the courts is $20,000 for infringement of Hugo Boss’ trade marks, plus $10,000 and $15,223.53 additional damages and costs of proceedings incurred by the applicant, respectively.

The Court considered the award of damages fair and a good deterrent to entities that would seek to engage in infringing activities in the Australian marketplace. These sort of skirmishes with small infringers inevitably cost more than is recovered, but are generally considered necessary by luxury brands to deter others.

This matter reminds me of a case I was involved in when I worked in Hong Kong: Montres Rolex S.A. v. Tsoi Chi Li [2001] HKCFI 996; HCMP 361/2001 (21 September 2001). In that case, the Defendant breached orders of the court relating to the cessation of his sale of fake Roles watches. The defendant was sentenced to three months’ imprisonment. On the issue of costs, the Court said: