7 min read

Caterpillar have successfully appealed a decision by the Registrar to dismiss their opposition to registration of Puma’s procat mark (as shown below) for goods in Classes 18 and 25.

O’Bryan J held that, having regard to fair and normal use of the procat mark outside Australia, Puma’s mark was deceptively similar to Caterpillar’s earlier registrations for both CAT (word) and associated CAT logo mark (as shown below) for goods in Classes 18 and 25.  Further, his Honour was also satisfied that due to the extent of Caterpillar’s reputation in Australia for the CAT and CAT Logo marks for goods in Classes 18 and 25, Puma’s use of the procat mark for such goods in Australia would be likely to cause confusion.

Background

In October 2016, Puma sought to register the mark procat in Australia for goods in Classes 18 and 25 including clothing, footwear, bags and other accessories.  Caterpillar subsequently opposed registration of this mark under ss42(b), 44 and 60 before the Registrar, but failed to establish any of the opposition grounds.

With respect to the s44 ground, Caterpillar argued the procat mark was too similar to a number of earlier registrations for both CAT and CAT Logo that are registered for goods in Classes 18 and 25.  However, the Registrar’s delegate concluded that due to the visual, phonetic and conceptual differences between these marks, Puma’s procat mark was not deceptively similar to either the CAT or CAT Logo mark.

With respect to the s60 ground, Caterpillar argued that due to the extent of their use and reputation in both the CAT and CAT Logo marks, Puma’s use of the procat mark for the claimed goods was likely to deceive or cause confusion.  While Puma conceded that Caterpillar’s CAT Logo mark had acquired a reputation in Australia at the priority date, the Registrar agreed with Puma’s submission that Caterpillar’s use of the CAT word mark was minimal and insufficient to establish that it had acquired the requisite reputation at the priority date. 

Further, the Registrar agreed with Puma’s submission that the reputation acquired by the CAT Logo mark would serve to reduce the likelihood of deception or confusion.  On this basis, the Registrar was not satisfied that because of the reputation acquired by the CAT logo, Puma’s use of the procat mark would be likely to deceive or cause confusion.

With respect to the s42(b) ground, Caterpillar argued that due to the extent of its reputation, Puma’s use of the procat mark would be contrary to the Australian Consumer Law.  However, given the Registrar’s conclusions under the s60 ground above, Caterpillar also failed to establish this ground of opposition.

Federal Court Appeal

Caterpillar appealed the Registrar’s decision to the Federal Court of Australia, seeking to rely on the same three grounds of opposition.  As such an appeal involves a de novo hearing, Caterpillar were able to provide additional evidence in support of these opposition grounds.

Section 44

Caterpillar again sought to rely on the use and registration of its earlier registrations for both CAT and CAT Logo for goods in Classes 18 and 25.  In response, Puma again submitted there are sufficient visual, phonetic and conceptual differences between procat and Caterpillar’s CAT and CAT Logo marks, such that these marks should not be regarded as deceptively similar.

While Puma are yet to commence using the procat mark in Australia, Caterpillar submitted evidence as to how Puma have used the procat mark in the United States and Canada.  Caterpillar submitted that such evidence was relevant to illustrate what would be fair and normal use of the mark by Puma, which is relevant to the assessment of deceptive similarity.   Caterpillar’s evidence showed that Puma used the procat mark in lower case with the letters “pro” and “cat” being rendered in different shades or colours as illustrated below.  Further, Puma’s online marketing of the relevant footwear referred to the brand as “ProCat” (using the upper case “P” and “C”).

O’Bryan J accepted Caterpillar’s submission that such use falls within the parameters of fair and normal use of the mark. His Honour also took the view that Puma’s use of the procat mark in Australia (in the same manner as used in the USA and Canada), would constitute a use with alterations which do not substantially affect the identity of the trade mark.

O’Bryan J concluded that the fact Puma applied to register the procat mark as a fancy mark (in lower case with sans-serif font) does not limit the trade mark rights granted upon registration to use with a single colour or shade of lettering or indeed to use without any letters being capitalised. 

His Honour did not place any material weight on the fact that Puma’s evidence suggested that it was common for at least some traders to use multiple trade marks or branding elements on and in connection with footwear. The evidence on this issue was not conclusive and, in any event, in assuming normal and fair use of the mark applied for, the use or possible use of other marks is ignored.  

On this basis, his Honour concluded that Puma’s procat mark was deceptively similar to Caterpillar’s CAT and CAT Logo marks on the combined effect of the following:

  • the word “cat” comprises the whole of the CAT word mark and one of the two elements of the CAT device mark. The word “cat” constitutes half the letters of the PROCAT mark and one of its two syllables;
  • an ordinary consumer is likely to read, comprehend and pronounce the PROCAT mark as a combination of two words, “pro” and “cat”;
  • the relevant trade context concerns a wide range of apparel, footwear, bags and accessories sold in retail stores and online in the workwear and lifestyle market segments. The evidence showed, and it is a matter of common experience, that goods of the type under consideration are common everyday purchases that are modestly priced and sold through overlapping trade channels.

As such, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with but had an imperfect recollection of the CAT mark, would be confused as to whether goods labelled with the PROCAT mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods. There is a real and not remote risk that the use of the word “pro” in conjunction with the word “cat” in the PROCAT mark, when used on apparel, footwear, bags and accessories, would convey to many consumers that goods branded with the PROCAT mark are professional or high performance goods which are made or endorsed by, or otherwise associated with, Caterpillar. As such, consumers would be caused to wonder whether there is commercial connection between PROCAT branded goods and Caterpillar”.

Section 60

Caterpillar also sought to establish that, due to the extent of its reputation in the CAT and CAT Logo marks in Australia for goods such as clothing, footwear, bags and other accessories, Puma’s use of the procat mark for such goods was likely to cause confusion.  In this regard, Caterpillar filed a number of affidavits by various brand managers, licencees and distributors who were responsible for the manufacture and distribution of goods bearing the CAT and CAT Logo marks.

Based on their lengthy use of the CAT and CAT Logo marks in Australia, O’Bryan J was satisfied that Caterpillar had a substantial and valuable reputation in Australia in each of the CAT marks in relation to apparel, footwear, bags and accessories.  While his Honour accepted that Caterpillar’s evidence shows far more frequent use of the CAT Logo mark (compared to the CAT word mark), he did not consider there to be any material difference in the extent of reputation associated with the CAT word and CAT Logo marks.

In contrast to the Registrar, his Honour did not accept Puma’s submission that the CAT marks had such a strong reputation in Australia (and Australian consumers had such familiarity with the CAT marks), that confusion with the PROCAT mark would be unlikely. While the evidence showed the CAT marks had a strong reputation in Australia at the priority date in respect of apparel, footwear, bags and accessories, his Honour took the view that the CAT marks could not be described as famous or very famous (in contrast to the findings made in respect of the brand “Maltesers”, the subject of the decisions in Mars1 and Delfi2).

On this basis, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with the reputation of the CAT marks but had an imperfect recollection of those marks, would be confused as to whether goods labelled with the procat mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods”.

Section 42(b)

Caterpillar also sought to oppose registration under s42(b), namely that Puma’s use of the procat mark would contravene ss18 and 29(1)(g) and (h) of the Australian Consumer Law.  As Caterpillar sought to rely on the same evidence and contentions advanced under the s60 (reputation) ground, O’Bryan held that Caterpillar’s reliance on s42(b) was superfluous.  In this regard, his Honour remarked that reliance on s42(b) (by reference to the Australian Consumer law) only has utility where the Appellant seeks to rely on additional evidence and contentions that are not relevant to the s60 analysis.  In the absence of such additional evidence or contentions, O’Bryan decided that it was unnecessary to consider this ground of opposition further.

Puma have now filed an appeal in relation to this matter.

1 – Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354

2 – Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; 115 IPR 82

Authored by Nathan Sinclair and Sean McManis

1 min read

Following on from our article of 4 September 2020, Australian Designs – Draft Bill now released, we advise that the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was recently passed by both houses of Parliament and will soon be presented to the Governor General for Royal Assent.

On the day after Royal Assent, the amendments set out in Schedule 7, Parts 1 and 2 of the Bill will commence. These items relate to changes to clarify the legal standard used for the assessment of design infringement and registration, and the circumstances in which a design can be revoked. Their immediate commencement will realise the benefits of these changes as soon as possible.

The rest of the Bill, including the introduction of a long-awaited grace period (Schedule 1, Part 1 of the Bill), will commence 6 months after the date of Royal Assent.

Further information about the changes, including the commencement details, is available on the IP Australia website.

Authored by Allira Hudson-Gofers

7 min read

In the recent decision of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (29 July 2021), the Full Federal Court confirmed that a trade mark owner who merely authorises use of its trade mark cannot be subject to liability for direct for trade mark infringement pursuant to s120(1) of the Trade Marks Act.

In the first instance decision, found here, PDP failed in its claims against Grasshopper for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law and for passing off. Both parties failed in their attempt to cancel the other parties’ trade marks but succeeded in having them restricted.

Background

PDP has manufactured and sold a range of chilled dairy desserts and snacks in Australia under the Wicked Sister brand since 2008.

PDP owns registrations for WICKED SISTER in plain word and stylised forms which cover various goods in classes 29 and 30 (collectively “the Wicked Sister Marks”). The earlier stylised mark

dates from 2008 and is owned by PDP Fine Foods Pty Ltd. The later stylised mark

and plain word mark WICKED SISTER both date from 2016 and are owned by PDP Capital Pty Ltd, a related IP holding company. PDP Capital’s marks achieved registration by consent from PDP Fine Foods.

Grasshopper is an IP holding company which has authorised the use by various entities selling dipping sauces since 2002 under the WICKED brand.

Grasshopper owns a registration dating from 2005 for the trade mark:

(“Wicked Tail Mark”) in class 30 for dipping sauces and related products. The WICKED Tail Mark was modified in 2014 to:

(“New Wicked Mark”) for which Grasshopper applied for registration in 2015 with the original branding phased out by early 2016. Grasshopper extended its product range to include waffle dippers in 2018.

Both the Wicked Sister and Wicked products are sold through Coles supermarkets.

PDP sells flavoured rice puddings, custard, tiramisu and panna cotta under the Wicked Sister Marks, made from fresh ingredients and found in the refrigerated section of the dairy aisle of supermarkets.

On the other hand, Grasshopper’s “Wicked” dipping sauces and waffle dippers are shelf stable products which do not require refrigeration, although the dipping sauces are sometimes placed with frozen berries in the refrigerated section of the fresh food section of the supermarket.

Appeal

The Full Court considered grounds of appeal relating to infringement, the parties’ respective removal claims and the ACL and passing off.

Infringement

Whether the Party Authorising use of the Trade Mark is liable for Infringement

Grasshopper authorised use of the Wicked Trade Marks to other companies but was not found to be liable for direct infringement under s120(1). The Full Court confirmed the primary judge’s finding.

The Court noted that under the wording of s120(1) it is the act of “the person” that attracts a finding of infringement. The language does not suggest use by one person will constitute an infringement by another person. Not every reference to the use of a trade mark in the Trade Marks Act is intended to import the definition of “authorised use” by an “authorised user” under s7(3).

An alleged infringer, who has not engaged in a primary act of infringement within s120, may nonetheless be found to infringe as a joint tortfeasor (referring to Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235). However, PDP did not allege joint tortfeasorship in this case.

Deceptive Similarity

PDP contended that the primary judge made a number of errors in her reasoning in finding that the New Wicked Mark and Wicked Sister Marks were not deceptively similar.

Most were dismissed; however, their Honours acknowledged that the essential comparison in an infringement suit remains one between the marks involved and that it was not appropriate for the primary judge to descend into fine detail about the actual uses of the Wicked Sister Marks. Despite this, the Court noted that trade circumstances is a relevant consideration and were not prepared to overturn the primary judge’s findings in relation to deceptive similarity or infringement.

PDP’s removal claim

At trial, in response to PDP’s challenge to the registration of Grasshopper’s “Wicked Tail Mark” for non-use, the primary judge found use only in respect of “dips, including chocolate dips”, but exercised discretion to maintain the registration for all listed goods with the exception of “savoury dips”.

PDP contended that the primary judge erred in finding that there had been use of the Wicked Tail Mark in relation to “dips, including chocolate dips” and in the exercise of discretion.

Grasshopper transitioned from use of the Wicked Tail Mark to the New Wicked Mark between 2014 and 2016. Apart from finding use of the Wicked Tail Mark in respect of “dips, including chocolate dips”, her Honour also found that Grasshopper had established an intention to use the Wicked Tail Mark in the future in relation to chocolate rocky road, fruit flavoured toppings and sauces as well as the balance of categories of goods.

On appeal, Grasshopper acknowledged that the primary judge erred in referring to a future intention to use the “Wicked Tail Mark”, and that this should have been a reference to the “New Wicked Mark”. However, the Court found that the primary judge did intend to refer to the Wicked Tail Mark in her assessment of the facts and stated, “within the welter of overlapping issues advanced by the parties, her Honour made an error”. The Court re-exercised the discretion and ordered that all goods except for “dips, including chocolate dips but excluding savoury dips” be removed from the registration for the Wicked Tail Mark.

Grasshopper’s removal claims

Grasshopper applied for removal of the Wicked Sister Marks under the s92(4)(a) ground of lack of intention to use and no use as at the filing date. The primary judge found that Grasshopper had established grounds for removal of the marks for bakery products, confectionery, ice cream confections, dipping sauces and various yoghurt products, but exercised discretion not to remove the marks for the remaining goods. However, the registration for “dessert sauces” should be replaced with “custard”.

PDP contended that the primary judge erred in finding that PDP Capital had no intention as at the filing date to use the Wicked Sister marks on the remaining goods, placing insufficient weight on PDP’s 2018 Strategic Plan.

The Court agreed with the primary judge’s finding that the 2018 Strategic Plan spoke only in general terms about future plans that amounted to no more than raising a speculative possibility of an intention to expand into different product areas.

PDP argued that use on “tiramisu”, which was sufficient to maintain a claim for “cakes”, should also have been sufficient to establish use in relation to “bakery products”. The Court noted that this proposition was not put to the trial judge and reminded that an appeal is not a forum for a party to retry a case. This aside, the Court said that it does not follow from a finding that “tiramisu” falls within the category of a “cake” that it also falls within the category of a “bakery product”. Similarly, PDP failed to establish that use in relation to “profiteroles” was use for “bakery products” given, in particular, that PDP itself referred to these products as “chilled desserts”.

PDP also contended that “dessert sauces” were not relevantly different to “dipping sauces”. Again, while this contention was not asserted at trial, their Honours said that use of a trade mark on “custard”, which was found to be sufficient to establish use for a claim of “dessert sauces” is not sufficient to establish a claim for use on “dipping sauces”.

Accordingly, PDP’s appeal in relation to Grasshopper’s removal claims were dismissed.

ACL and passing off

The primary judge rejected PDP’s claims that Grasshopper’s conduct in selling its dipping sauces and waffle dippers under the New Wicked Mark was misleading and deceptive in contravention of ss18 and 29 of the Australian Consumer Law, or amounted to passing off. This was due to her findings that the Wicked Marks and Wicked Sister Marks were not sufficiently similar and that PDP did not have an established reputation in the Wicked Sister Marks as at 2014 when use of the New Wicked Mark commenced.

PDP were critical of the primary judge’s treatment of their evidence going to reputation and for taking into account the reputation of Grasshopper to find that there was no real likelihood of confusion or deception. The Full Court was not satisfied that PDP had established any errors made by the primary judge in her assessment of the issues and the appeals were dismissed.

Takeaway

The case reaffirms that there is no statutory liability for infringement by authorisation, with the result that an IP holding company that merely authorises use of a mark cannot be subject to liability for direct infringement. However, it may be liable as a joint tortfeasor.

Authored by Kathy Mytton and Sean McManis

7 min read

Australia’s Federal Court Decision, Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2021] FCA 947, concerns a patent claiming two pharmaceutical substances having different first regulatory approval dates; one less than 5 years after the patent filing date and one more than 5 years after the patent filing date.  The decision considers whether the first regulatory approval more than 5 years after the filing date can be considered the first approval for PTE-eligibility purposes. 

Patent Term Extensions (PTEs) in Australia

Australia’s Patents Act provides patent term extensions (PTEs) to account for the delays that can occur when obtaining regulatory approval for pharmaceuticals (see s70-79A of Patents Act 1990).  A PTE can last for up to five years and is available when the following requirements are met:

  • the patent, in substance, discloses and claims a pharmaceutical substance per se, or a pharmaceutical substance when produced by recombinant DNA technology;
  • goods containing or consisting of the pharmaceutical substance are included in the Australian Register of Therapeutic Goods (ARTG);
  • the PTE application is made within six months after the later of (a) the date the patent was granted and (b) date of the first inclusion in the ARTG; and
  • the first regulatory approval for the pharmaceutical substance occurred more than five years after the filing date of the patent.

The length of a PTE is equal to the period between the filing date of the patent and the date of the first regulatory approval, reduced by five years.  A patent cannot be extended more than once.

Background

Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2021] FCA 947 concerns the patent term extension granted in connection with Australian patent 2002320303, which covers two pharmaceutical substances for the treatment of diabetes: sitagliptin and a composition containing sitagliptin and metformin.  The patent was filed on 5 July 2002 and its ordinary term was therefore set to expire on 5 July 2022

Sitagliptin was first included in the ARTG on 16 November 2006, i.e. less than five years after the filing date. 

The composition containing sitagliptin and metformin, however, was first included in the ARTG on 27 November 2008, six years, four months and 22 days after the filing date of the patent.  The patentee, Merck Sharp Dohme (MSD), applied for a PTE based on the regulatory approval of the sitagliptin/metformin composition and the term of the patent was extended until 27 November 2023

Sandoz contended that the extension of term was invalid and sought rectification of the register to reflect a patent expiry date of 5 July 2022

Reliance on the Ono decision

This decision relies heavily on the recent decision, Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643.

As recently reported here. Ono addressed the issue of “earliest first regulatory approval” in the context of a patent covering two blockbuster cancer drugs; the patentee’s drug and a competitor’s drug.  The competitor’s drug received regulatory approval before the patentee’s drug and the issue was therefore which regulatory approval date was relevant for deciding the patentee’s PTE request.

In Ono, Justice Beach noted that PTEs are intended to provide an effective patent life for pharmaceutical products.  His Honour reasoned that the drug which is the subject of the PTE application is intended to be the drug of the patentee, not that of a third party.  His Honour also commented that it is for the patentee to nominate the pharmaceutical substance for the purposes of requesting a PTE (which can be any pharmaceutical substance that is in substance disclosed and claimed in the patent). 

Justice Beach concluded that the patentee’s own first regulatory approval (rather than the competitor’s earlier first regulatory approval) could form the basis of the request. 

The “earliest first regulatory approval date”

In the present case, MSD argued that “the earliest first regulatory approval date” means either:

(a) the earliest first regulatory approval date of any substance claimed by the patent which is included on the ARTG and which received regulatory approval at least 5 years after the patent’s filing date (MSD’s primary construction), as nominated by the patentee (based on Ono), or

(b) the earliest first regulatory approval date of all substances claimed by the patent which are included on the ARTG and which received regulatory approval at least 5 years after the patent’s filing date (MSD’s alternative construction).

That is, MSD’s construction required any regulatory approvals for pharmaceutical substances less than 5 years after the patent filing date to be disregarded for the purpose of assessing PTE eligibility. 

If MSD’s construction were to be followed, the ARTG approval of sitagliptin could be ignored (being less than 5 years after the patent’s filing date) and PTE eligibility could be determined based on the date of inclusion in the ARTG of the combination of sitagliptin and metformin (i.e. the first regulatory approval which is at least 5 years after the patent’s filing date). 

Sandoz contended that “the earliest first regulatory approval date” means the earliest regulatory approval date of any pharmaceutical substance in the patent – this corresponds to the date of inclusion in the ARTG of sitagliptin.  Following this line of argument, if regulatory approval is secured for any pharmaceutical product claimed by the patent less than 5 years after the patent filing date, no patent term extension can be obtained. 

Reasoning and discussion

MSD submitted that all of the factors which Beach J considered relevant in Ono are equally relevant to the present case. Justice Jagot disagreed. 

Her Honour took the view that the absurdity identified in Ono was the fact that a patentee could be granted an extension of term of zero merely because the earliest first regulatory approval date would be that of an unrelated company relating to the same substance.  In the present case, however, it was the patentee who had obtained regulatory approval for both substances covered by the patent.

Her Honour noted:

It is one thing to conclude that it is absurd for a patentee to be denied any term of an extension due to an earlier regulatory approval by another unrelated party of which the patentee may not have known and over which the patentee would have had no control. … It is another to conclude that it would be absurd for a patentee to be denied any term of an extension due to an earlier regulatory approval by the patentee or its agent of which the patentee must have known and over which the patentee had control. In such a case, the patentee, by definition, will not have been delayed in obtaining regulatory approval for a substance or the substance in its patent for at least five years.” 

Justice Jagot also commented on the crucial presence of the word “earliest” in s77(1) of Patents Act 1990, which sets out how to calculate of an extension of term. 

Her Honour was of the opinion that it is clear that the legislature considered a delay of less than five years after a patent filing date for obtaining regulatory approval for a pharmaceutical substance covered by the patent was acceptable and did not require a capacity for an extension of term of the patent, commenting:

There is no reason to infer that the legislature intended that a patentee with a patent disclosing and claiming more than one pharmaceutical substance intended that there could be an extension of term if the patentee obtained inclusion of one or more pharmaceutical substances in the ARTG within five years of the date of the patent but then also obtained inclusion of one or more pharmaceutical substances in the ARTG five years or more after the date of the patent. Provided one pharmaceutical substance has been included in the ARTG within five years of the date of the patent, the patentee has had the benefit of the monopoly afforded by s 13 of the Patents Act within the period of delay the legislature considered acceptable.”

Conclusion

Justice Jagot agreed with Sandoz, taking the view that the regulatory approval date of sitagliptin (less than 5 years after the patent filing date) was to be used in calculating the length of the PTE.  Her Honour thus concluded that the extension of term of MSD’s patent is zero and ordered that the Register be rectified as sought by Sandoz.

Implications

This decision confirms that, if a patent covers more than one pharmaceutical substance for which the patentee has obtained regulatory approval, the calculation of the extension of term must be based on the substance that was approved first.  If the approval date of that substance is within five years of the filing date of the patent, no extension of term will be granted.

Patent Applicants should therefore consider separating substances that have received (or are expected to receive) regulatory approval into multiple patents, for example by pursuing each substance in its own divisional patent application.  This will ensure that each patent is able to enjoy the maximum extension of term that is available to it based on the substance that it covers.

Authored by Serena White, DPhil and Michael Christie, PhD

2 min read

Bega Cheese Limited v Vincenzo Fasanella [2021] ATMO 49 (10 June 2021)

Successful opposition by Bega Cheese Limited to the registration of BUTTERMITE filed in the name of Vincenzo Fasanella.

Background

Vincenzo Fasanella (Fasanella) filed an application for BUTTERMITE on 27 February 2018 for the following goods:

Class 29: Dairy spreads; Food spreads consisting principally of dairy products; Butter; Butter portions; Butter preparations; Savoury butters

Bega Cheese Limited (Bega) is an Australian food company, which has been established for almost 120 years. Bega acquired most of Mondelez International Inc’s grocery business in Australia and New Zealand in January 2017, including the VEGEMITE brand.

Bega owns various trade mark registrations for VEGEMITE and VEGEMITE composite marks in Australia, covering a broad range of goods and services.

Grounds of Opposition

Section 60 – Reputation

The VEGEMITE trade mark is an iconic and well-known brand. It has been used in Australia since 1923 in relation to a yeast spread product. Over 22 million jars of VEGEMITE brand yeast spread are sold every year

Bega submitted a substantial amount of evidence of the VEGEMITE trade mark being extensively advertised and promoted through a wide variety of channels, some of which is listed below:

  • Substantial revenue and marketing figures.
  • 1954 radio advertising jingle ‘Happy Little Vegemites’. In 1956 the jingle was developed into a television campaign, which was broadcast until the late 1960s.
  • In the 1980s and 2010 The ‘Happy Little Vegemites’ commercials were remastered, colourised and rebroadcast.
  • Advertisements from supermarket retailers including Coles, Woolworths, Metcash and Foodworks.
  • Screenshots from the vegemite.com.au website, including historical extracts.
  • Social Media Accounts – Facebook, Instagram and Twitter.
  • Agreements with Peter Alexander Sleepwear Pty Ltd, Bambis Imports Co Pty Ltd, The Lane & Co, and various food manufacturers including Arnott’s Biscuits, ABE’s Bagels and Four ‘N Twenty.
  • Men at Work song ‘Land Down Under’ – ‘he just smiled and gave me a Vegemite sandwich’.
  • Sponsorship of events.
  • Use and licensing of the suffixes MITE and MITEY to promote/and or indicate products that include the VEGEMITE food spread as an ingredient. Since 1994, Bakers Delight has offered a CHEESYMITE SCROLL with the VEGEMITE spread as an ingredient.
  • Addition of VEGEMITE BLEND 17 and VEGEMITE CHEESYBITE to its range.
  • Reference to BUTTERMITE in the context of the VEGEMITE yeast spread on its Facebook page. The post promoted a fictitious VEGEMITE & BUTTER combination spread, because its VEGEMITE yeast spread product has a strong association with butter.

Fasanella’s evidence included argument that the suffix MITE is used by other food producers of yeast spread (e.g. Marmite; Aussiemite; MightyMite; and Ozemite). However, the Delegate has indicated that Bega’s tendency to play around with the brand using the suffix MITE, as in its use in CHEESYMITE SCROLL and MITEY recipes that sets the VEGEMITE mark apart.

Fasanella included evidence that the MITE suffix is also used by bakery chains and food distributors (i.e. Baker’s Delight’s CHEESYMITE SCROLL; Brumby’s CHEDDARMITE; and Melbourne Food Distributors TASTYMITE product). However, these products include Bega’s VEGEMITE yeast spread as an ingredient.

Decision

The Delegate was satisfied that Bega’s VEGEMITE trade mark had a very substantial reputation in relation to food spreads. Further, she was satisfied that members of the public are also likely to conclude that the BUTTERMITE trade mark is used by, or under the auspices of Bega.

In coming to this conclusion, it was significant that -MITE branding has been used to identify a range of products that contain VEGEMITE as an ingredient, and that VEGEMITE and butter are both spreads that are commonly combined and used in a similar manner.

Consequently, the s60 ground of opposition was successful and costs were awarded against Fasanella.

The additional grounds of opposition, namely sections 42(b), 44 and 62A were not considered.

Final Comment

Fasanella also filed an additional trade mark for the composite mark BUTTERMITE & Device (representation below) for the same goods in class 29 as its BUTTERMITE word mark.

This trade mark was also opposed by Bega, however, a Notice of Intention to Defend was not filed by Fasanella  and the application subsequently lapsed.

Authored by Danielle Spath and Sean McManis

2 min read

An Australian court has provided a clear signal that inventions derived from machine learning activities can be subject to valid patent applications, provided they satisfy the regular indicia of inventiveness and novelty, whilst lacking a human inventor.

In Thaler v. Commissioner of Patents [2021] FCA 879, Justice Beach adopted an expansive view of the Patents Act, to hold that the concept of inventor can include, within its ambit, the notion of a suitably programmed computational device.

It is evident from the design of advanced AI systems such as Alphafold and AlphaGo, that the frontier of machine learning systems is in a continued state of rapid evolution. Whilst his honour spent significant portions of the judgement attempting to define the evolving concept of Artificial Intelligence, he was clear in holding that the innovative product of such systems can be subject to protection, whilst simultaneously lacking a human “inventor”.

In a distinct recognition of the importance of such advances to a society, his honour noted at [56]:

Now I have just dealt with one field of scientific inquiry of interest to patent lawyers.  But the examples can be multiplied.  But what this all indicates is that no narrow view should be taken as to the concept of “inventor”.  And to do so would inhibit innovation not just in the field of computer science but all other scientific fields which may benefit from the output of an artificial intelligence system.

The contrast between this liberal interpretation of our Patents Act’s application to machine learning inventions, as compared with the courts lack of clarity in the general field of software type of inventions is quite stark. However, the decision provides clear directions to the Australian Patent Office that AI advances should be readily patentable.

Authored by Peter Treloar

5 min read

Double patenting has been seen as a significant issue in New Zealand patent law ever since the introduction of the Patents Act 2013 – and with it, the removal of any discretion on the part of an examiner.  A recent decision of the Intellectual Property Office of New Zealand (IPONZ) confirms what we had expected all along: double patenting is to be interpreted strictly, but as a matter considered during examination/pendency, it should generally be curable.

The divisional, the parent, the decision

New Zealand patent application 739526, in the name of Oracle International Corporation, was the subject of recent IPONZ decision [2021] NZIPOPAT 5 (9 June 2021). The ‘521 application is a divisional of granted New Zealand patent 705138.  The pending claims of NZ’526 stood rejected under Reg.82(b) of the Patents Regulations 2014 for claiming “substantially the same matter as accepted in the parent application”.  The rejection was made for the first time in the 4th examination report, and following receipt of the 5th examination report in which the examiner’s position was maintained, the Applicant requested to be heard.  Outside of regular examination, this decision is IPONZ’ first look at the application of Reg.82.

The legislation says “must not”

Reg.82(b) provides that “in the case of a divisional application, if the Commissioner has accepted the complete specification relating to a parent application, that the divisional application must not include a claim or claims for substantially the same matter as accepted in the parent application”.  In contrast to the equivalent provision (Reg.23(2)) of the abolished Patents Regulations 1954, Reg.82(b) does not allow for the exercise of any discretion on the part of an examiner, meaning that “substantially the same subject matter” must be considered objectively and “must not” need be applied.

The claims suggest “probably not”

Granted parent NZ’138 comprises two independent claims 1 (to “an optical tape drive system”) and 11 (to “a method for writing data to an optical tape with an optical tape drive system having n total optical pickup units each having a same fixed unit data rate”).  Pending divisional NZ’526 comprises independent claims 1 and 16, having the same respective preambles.  Beyond that, as drawn out in the decision and discussed below, the parent and divisional claims were similar enough on their face to warrant close scrutiny.    

The Delegate says “definitely not”

In his analysis, the Delegate considered whether a system infringing claim 1 of NZ’138 would also infringe claim 1 of NZ’526 (if granted) – and concluded “yes”.  He then did the same in reverse and reached the same conclusion.  He performed the same analysis on the respective method claims 11 and 16 – again concluding “yes” and “yes”. 

The decision helpfully breaks down each claim into its respective integers and transposes them side-by-side in order to highlight the differences (or rather, similarities), presumably inviting the reader to reach their own conclusions.  That said, as a couple of chemists, we’re more than happy to abide with the Delegate’s analysis: Claims 1 and 16 of NZ’526 fall foul of Reg.82(b) insofar as they claim “substantially the same subject matter” as the respective claims 1 and 11 of NZ’138.

At paragraphs 39-41 of the decision, the Delegate provided some general comments.  Firstly, as suggested in the “must not” wording of Reg.82(b), there is no discretion on the part of the Commissioner.  Secondly – and logically – a claim substantially identical in phrasing and terminology to an accepted claim falls foul of the regulation.  And thirdly, where the phrasing, terminology or order of claims is different, they must still be rejected under Reg.82(b) if a skilled person would construe them to be of substantially the same scope.

Unsurprisingly, the decision upheld the examiner’s finding.  The Applicant was afforded a short extension of time within which to address the rejection.  Following rather extensive amendments to claims 1 and 16, the case was subsequently allowed and was published on 25 June 2021 – less than three weeks after the rejection decision.  All’s well that ends well.

We say “there’s nothing to see here”

Double patenting and New Zealand actually have a quite awkward recent history.  When the Patents Regulations 2014 were first published, Reg.52(3) was drafted in a way that suggested (in an extreme and somewhat paranoid interpretation) that a divisional filed with “a claim or claims for substantially the same subject matter as claimed in the parent application” would be dead on arrival as it was not received by IPONZ in the “proper form” (Reg.19).  This was corrected fairly swiftly, to IPONZ’ significant credit – and double patenting was confirmed as an acceptance issue.

Fast forward to the current decision and despite a little bit of a buzz around the traps, we don’t see the problem with it.  There was an obvious policy decision made in enacting Reg.82, which removed an examiner’s discretion – and so what’s an examiner supposed to do when confronted with not one, but two claims that were essentially doppelgangers (at least to these untrained eyes)?  The bottom line is that the Applicant was afforded an opportunity to amend around the rejection, did so, and obtained an allowance.  Surely that’s a win-win.

As one final point – and this is a question I’m asked fairly regularly by foreign (particularly US) clients, double patenting is not a ground for opposition or revocation under New Zealand patent law.  If the examiner misses it, makes a mistake and allows a divisional claiming substantially the same subject matter, then the Applicant chalks up a small “win” – both patents stand (subject to third party challenges on actual grounds of opposition or revocation).  However, because a missed (and clear) double patenting situation ultimately amounts to a black eye on the part of IPONZ, one suspects they’ll remain fairly liberal in their Reg.82(b) rejections.

Double patenting in AU and NZ – mind the gap

Another question often posed is whether there’s any difference to double patenting across the two jurisdictions we service – Australia and New Zealand.  The answer is they’re very similar – but with one significant distinction. 

In Australia, in addition to amendment, a double patenting rejection can be overcome by withdrawing the parent application or surrendering (allowing to lapse) the granted patent.  Strategically, this allows an Applicant to pursue broader (but still overlapping) subject matter in a divisional.  Once the parent is no longer alive, the rejection disappears.

However, in New Zealand, withdrawal or surrender of a parent application or granted patent – at least, as a means of addressing a double patenting rejection, is not possible.  The wording of Reg.82 does not reference the status of the parent, thereby blocking this strategic pathway and making double patenting in New Zealand a slightly more difficult proposition than it is in Australia. 

Authored by Jon Wright, PhD and Gareth Dixon, PhD

6 min read

Ariosa Diagnostics, Inc v Sequenom, Inc [2021] FCAFC 101

The Full Court of the Federal Court of Australia has confirmed that Sequenom’s diagnostic method of detecting fetal DNA in maternal blood is eligible for patent protection in Australia.  The decision highlights the different approaches taken by Australian, European and US authorities when it comes to assessing the patentability of diagnostic methods.

However, the Full Court also found that Sequenom’s patent was not infringed by the importation of results from tests conducted overseas on the basis that the results were information and not a product that could be exploited.

The technology

Sequenom’s patent stemmed from the discovery of cell-free fetal DNA (cffDNA) in maternal blood serum and blood plasma by two researchers from Oxford University. The discovery enabled the development of a non-invasive prenatal test using maternal blood samples. 

The test could be used to determine the gender of an unborn baby, and its susceptibility to certain genetic conditions. Prior to the inventors’ discovery, obtaining a prenatal sample for testing typically involved inserting a needle through the mother’s abdomen or cervix. 

The patent

Claim 1 of Sequenom’s patent defines:

A detection method performed on a maternal serum or plasma sample from a pregnant female, which method comprises detecting the presence of a nucleic acid of foetal origin in the sample.

In the first instance decision, the Federal Court of Australia found that the use of the “Harmony” prenatal diagnostic test by Ariosa Diagnostics Inc, and by its licensees, Sonic Healthcare Limited and Clinical Laboratories Pty Ltd, infringed certain claims of Sequenom’s patent. On appeal, Ariosa challenged the validity of the claims and the finding of infringement.

Validity

Ariosa argued that the primary judge erred in finding that the claimed method is a “manner of manufacture” as required under the Patents Act because what is claimed is a mere discovery of a naturally occurring phenomenon. In a related submission, Ariosa contended that, properly understood, the end result of each claim is mere information.  The human-mediated “detection”, Ariosa argued, is no different from the discovery that cffDNA is detectable. Ariosa submitted that in substance there is no application of the discovery by simply claiming the detection of what has been discovered to exist. 

In support of their arguments, Ariosa cited D’Arcy v Myriad Genetics Inc [2015] HCA 35, in which the High Court found that claims defining isolated nucleic acids encoding mutant or polymorphic BRCA1 polypeptides were in substance directed to naturally occurring genetic information, which is not patentable subject matter.

The Full Court rejected Ariosa’s approach, finding that it disaggregated the discovery of cffDNA in maternal plasma or serum from the method used to harness that discovery. Although fetal nucleic acid occurs in nature, the Full Court found that the substance of the invention is not cffDNA itself, but the identification of that particular nucleic acid as a part of a method:

Unlike the position in Myriad, claim 1 is not, as a matter of substance, directed to genetic information, but to a method involving the practical application of a means for identifying and discriminating between maternal and foetal nucleic acid. Although foetal nucleic acid occurs in nature, the substance of the invention is not cffDNA itself, but the identification of that particular nucleic acid as a part of a method. It is impermissible to disaggregate the integers of the method to point only to the cffDNA as the “invention”. Identification of the substance of the invention does not involve disregarding material aspects of the claim language. The invention as claimed is not merely output, but the detection process which yields an output. This is the very type of subject matter considered to fall on the correct side of the line between discovery of a scientific fact or law of nature and invention (at [155]).

Their Honours observed that an invention may reside in an abstract idea that is put to a useful end, even though the way of putting it to that end can be carried out in many useful ways, all of which are otherwise known. While the mere discovery of a natural phenomenon is not eligible for a patent, the practical application of that discovery may very well be patentable subject matter.

The Full Court concluded that the invention defined by claim 1 of Sequenom’s patent ”falls firmly within the concept of a manner of manufacture as that term is to be understood having regard to the authorities, being an artificially created state of affairs of economic utility” (at [166]).

Ariosa’s other grounds of attack, namely, that the claims were invalid for lack of sufficiency and lack of fair basis, were also unsuccessful.

Infringement

Before conducting the Harmony Test in Australia, Ariosa’s Australian licensees, Sonic Healthcare and Clinical Laboratories, collected blood samples from pregnant women in Australia and sent those samples to Ariosa in the US. Ariosa then conducted the Harmony Test in the US and provided the results, in the form of a report made available by a file sharing platform, to Sonic Healthcare and Clinical Laboratories in Australia. 

The exclusive rights of a patentee to exploit an invention will ordinarily be infringed by importing the product of a patented process, even when that process is carried out overseas. This is because Australia’s Patents Act defines the term “exploit” as including:

where the invention is a method or process – use the method or process or do [acts including importing] in respect of a product resulting from such use.

The primary judge found that the method was infringed when it was performed in Australia, which was not in dispute in the present case. However, the primary judge also found that Sonic Healthcare’s and Clinical Laboratories’ “send out” model amounted to an infringement of Sequenom’s claims because it used a method that would have infringed the claims if conducted in Australia.

The Full Court disagreed, noting that the Patents Act does not provide a definition of the term “product”. Their Honours preferred a construction of the word “product” in the context of the definition of “exploit” which recognises that not all patented methods or processes will lead to a product. The Full Court observed that the broad definition applied by the primary judge could have consequences that are not sensible – a person who has heard the outcome of the Harmony Test, which may be as simple as “it’s a girl!”, and who then flies to Australia with that information may infringe the patent by importing that outcome.

The Full Court also noted the incongruity that would result from extending the patentee’s monopoly to encompass test results that are not them themselves patentable:

A claim to mere information is not patentable …. The fact that such information is derived from a patentable process or method cannot render the information itself patentable. In those circumstances, we do not consider that the word “product” in para (b) of the definition of “exploit” should be interpreted as extending the patentee’s monopoly to information which could not itself constitute patentable subject matter since it would have the unintended and odd consequence of permitting the patentee to obtain patent protection in respect of subject matter that has long been held to be unpatentable (at [269]).

Accordingly, because the imported test results are themselves information, and not a “product” as such, Sonic Healthcare’s and Clinical Laboratories’ send out model did not infringe Sequenom’s patent.  

Final comments

The Full Court’s decision highlights the different approaches taken by Australian, European and US authorities when it comes to assessing the patentability of diagnostic methods.  The corresponding patent application was found to be valid in the UK (Illumina, Inc v Premaitha Health Plc [2017] EWHC 2930), albeit under a different eligibility test, but was deemed invalid by the US Court of Appeals for the Federal Circuit (Ariosa Diagnostics, Inc. v Sequenom, Inc. 788 F.3d 1371 (Fed. Cir. 2015)).

In Australia, courts will construe a claim in its entirety, rather than considering each feature individually. While the mere discovery of a natural phenomenon may not be eligible for a patent in Australia, the practical application of that discovery may very well be, even where the application uses known methods.

The decision also confirms that not all patented methods will give rise to a “product” that can be exploited in an infringing act.

Ariosa and Sequenom have the option of applying for special leave to appeal the decision to the High Court. 

Authored by Karen Heilbronn Lee, PhD and Michael Christie, PhD

5 min read

Australia’s Federal Court Decision, Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643, overturns the Patent Office Decision, Ono Pharmaceutical Co., Ltd. et al [2020] APO 43, in which the Patent Office had found that the substance with the first regulatory approval date for the purpose of the patent term extension request was a competitor product.  In a Judicial Review of the Patent Office decision, the Federal Court found instead that the substance with the first approval date was the patentee’s own, later-approved product.

Patent Term Extensions (PTEs) in Australia

Australia’s Patents Act provides patent term extensions (PTEs) to account for the delays that can occur when obtaining regulatory approval for pharmaceuticals.  A PTE can last for up to five years and is available when the following requirements are met:

  • the patent, in substance, discloses and claims a pharmaceutical substance per se, or a pharmaceutical substance when produced by recombinant DNA technology;
  • goods containing or consisting of the pharmaceutical substance are included in the Australian Register of Therapeutic Goods (ARTG);
  • the PTE application is made within six months after the later of (a) the date the patent was granted and (b) date of the first inclusion in the ARTG; and
  • the first regulatory approval for the pharmaceutical substance occurred more than five years after the filing date of the patent.

The length of a PTE is equal to the period between the filing date of the patent and the date of the first regulatory approval, reduced by five years.  A patent cannot be extended more than once.

Background

Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 concerned a request to extend the term of Australian patent 2011203119.  The patent claims encompassed two blockbuster cancer drugs: Merck Sharp & Dohme’s KEYTRUDA and the patentee’s OPDIVO, both of which received regulatory approval in Australia, but on different dates.  Thus, the question at issue was which regulatory approval date was relevant for deciding the patentee’s PTE request.

To cover all of its bases, the patentee simultaneously filed two PTE requests: one based on the competitor product, KEYTRUDA, which had received regulatory approval on 16 April 2015, and another based on its own product, OPDIVO, which had a regulatory approval date of 11 January 2016.  The PTE request based on KEYTRUDA was accompanied by a request for an extension of time. 

From the patentee’s perspective, the request based on OPDIVO was preferred as it would result in a longer extended term (an additional 8 months, 26 days). 

The Overturned Patent Office Decision

Initially, the Patent Office refused the PTE request based on OPDIVO, finding that KEYTRUDA was included on the ARTG first and therefore should form the basis of the request.  The patentee disagreed and requested to be heard.

At the Patent Office hearing, and as previously reported, the patentee’s request for a PTE based on OPDIVO was again refused (Ono Pharmaceutical Co., Ltd. et al [2020] APO 43).

The Federal Court Decision: Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643 (11 June 2021)

Justice Beach of the Federal Court observed that PTEs are “designed to remedy the mischief of a shortened period for an effective monopoly that has been caused by delays in obtaining regulatory approval”. 

Justice Beach framed the question at issue as follows:

“… it is whether an application for an extension must be filed within 6 months of the first inclusion in the ARTG of goods containing or consisting of any pharmaceutical substance falling with the claims of the patent:

(a)          where the goods were those of the patentee (the applicants’ position); or

(b)          irrespective of whether the goods were those of the patentee, that is, they could be the goods of a third party that had nothing to do with the patentee and, moreover, might be a competitor [the position taken by the Patent Office]”

Answering this question involved consideration of the intended meaning of the relevant provisions and the history of the legislation, including the 1997 Explanatory Memorandum (EM), the second reading speech to the Bill that became the 1998 Amendment Act (the speech) and the now-repealed s 76A of the Patents Act 1990. 

Justice Beach noted that PTEs are intended to provide an effective patent life for pharmaceutical products and the reference to “product” was “clearly not that of a stranger let alone a competitor”.  His Honour rhetorically asked how the legislation would provide an effective patent life if the product on the ARTG triggering the start of the extension was not that of the patentee, but rather that of a stranger or indeed a competitor, concluding, “[t]hat would not provide an “effective life” for the patentee at all”.

Justice Beach also determined that it is for the patentee to specify the pharmaceutical substance for the purposes of requesting a PTE (which can be any pharmaceutical substance that is in substance disclosed and claimed in the patent). 

His Honour reasoned that the drug which is the subject of the PTE application is intended to be the drug of the patentee, not that of a third party.  His Honour considered that the Patent Office’s interpretation of the law would place an unreasonably onerous burden on the patentee who would need to review each and every ARTG listing to identify those that contain a pharmaceutical substance falling within the scope of the claims (to the extent possible, noting also the dearth of information provided in ARTG public summaries), and to determine whether another relevant substance was previously listed on the ARTG but later removed, as can occur in certain circumstances. 

Justice Beach acknowledged, however, that the Patent Office’s approach was understandable in light of the text being construed and that a Delegate of the Patent Office is not as free as a Judge to reject any perceived ordinary meaning of the legislation by reason of manifest absurdity or unreasonableness. 

Conclusion

Justice Beach agreed with the patentee and favoured a liberal rather than a literal construction of the legislation, commenting in summary that a liberal construction can fit within the ordinary meaning of the statutory language and is consonant with the legislative purpose.

It was therefore concluded that the term of the patent should be extended based on the regulatory approval date of the patentee’s own pharmaceutical substance, OPDIVO, even though KEYTRUDA was approved earlier. 

Implications

This decision lifts the burden for patentees of the need to monitor the ARTG for approval of third party drugs.  In circumstances where a patent covers more than one approved pharmaceutical substance, the decision implies that a PTE request does not have to be based on the substance that was approved earliest. 

Authored by Serena White, DPhil and Michael Christie, PhD

3 min read

It is quite common for country leaders to be given catchy nicknames by the press. Some stick better than others.

In the US, there are examples such as JFK, LBJ, and Tricky Dicky. In the UK, examples include Winnie, The Iron Lady, and most recently BoJo. In Australia, the current prime minister is known as ScoMo, and some of the nicknames given to previous prime ministers include Pig Iron Bob, Honest John and the Mad Monk.

In a recent decision by the New Zealand Trade Marks Office, an issue arose as to the protectability of a former prime minister’s nickname, namely ‘Aunty Helen’.

James Craig Benson applied for registration of the trade mark AUNTY HELEN, after seeing a television interview where he claimed that the former Prime Minister Helen Clark said that she had no intention to use or register ‘Aunty Helen’ as a trade mark. He says that as he liked the sound and feel of the name, he then decided that it presented a valuable business opportunity for him.

The opposition concerned registration of AUNTY HELEN in respect of: (i) clothing; (ii) clothing retail services; and (iii) publishing services

The opposition grounds were:

  • Use likely to deceive or cause confusion: s17(1)(a)
  • Application made in bad faith: s17(2)

Likely to deceive or cause confusion

Much of the argument on whether there was a likelihood of deception or confusion concerned the issue of what is protectable under the Act.

Mr Benson claimed that as Ms Clark had not used, and did not intend to use, AUNTY HELEN as a trade mark, then she should have no basis for preventing registration. However, the Assistant Commissioner of Trade Marks explained that the policy behind section 17(1)(a) is to prevent public confusion, and its scope is not limited to confusion between trade marks.

Before it became more generally used, Helen Clark had been referred to as ‘Aunty Helen’ by Pacific Island and Maori communities. This is because “Aunty” is commonly used as an affectionate reference to an adult female member of those communities. The evidence established, and Mr Benson acknowledged, that Ms Clark was widely known by the nickname ‘Aunty Helen’ in New Zealand.

While Ms Clark was no longer prime minister, and recognition of the name was not as strong as it had been, the Assistant Commissioner of Trade Marks found requisite reputation in the name AUNTY HELEN, such that there was a likelihood of an assumption of approval or endorsement. In this regard, he stated:

The average consumer has a degree of commercial realism regarding the role well-known people play in marketing and advertising. When an internationally famous actor such as George Clooney is seen sipping coffee in a television commercial, the well-known Cook Nigella Lawson is seen praising a New Zealand brand of chocolate, or an All-Black or other New Zealand personality is seen in an advertisement, a viewer is likely to understand that their presence is an endorsement and commercial in nature

The onus rests with the trade mark owner to establish that there is not a likelihood of confusion, and Mr Benson was unable to do this. Consequently, this ground of opposition was successful.

Bad Faith

The ground of opposition on the basis of bad faith was also successful. In this regard, it was noted that Mr Benson had previously applied for registration of JACINDARELLA (a nickname for the current prime minister, Jacinda Ardern) but withdrew that when he encountered an objection to registration. He claimed that he was not aware of the potential association before encountering the objection.

It was also noted that the original application for AUNTY HELEN (restricted before the opposition was heard) included services related to politics.

On the basis that:

  • Mr Benson’s previous filing and withdrawal of the JACINDARELLA application indicated he had an awareness of the potential for confusion to arise from the use of a prime minister’s nickname; and
  • The fact that the application originally sought registration in relation to services relating to politics

it was found that the making of the application fell short of the standards to be expected of a reasonable and experienced business person.

Conclusion

The case highlights the breadth of matters that can be considered in determining whether there is a likelihood of deception or confusion. It also raises interesting questions as to the extent to which media-generated nicknames might be protectable.

In this case as in others, those seeking to walk a fine line involving ‘sharp’ business practices, can easily find themselves on the wrong side of that line.

Authored by Sean McManis