3 min read

.au Domain Administration Limited (the administrator of .au domain names) is introducing a new set of rules for those who wish to hold, or continue to hold, a .au domain name. 

The new rules will come into effect on 12 April 2021.

The new rules introduce several changes to the previous eligibility rules applying to .au domain names. One of these changes may have implications in particular for foreign persons or entities wishing to hold a .com.au or .net.au domain name.

Under the previous rules, a person or entity must be “Australian” (as defined by certain criteria set out in the rules) to be eligible to hold a .au domain name. This requirement would be satisfied for .com.au and .net.au domain names if the domain name was an “exact match, abbreviation or acronym” of a registered or pending Australian trade mark held by that person or entity.

Reliance on an Australian trade mark to satisfy the eligibility requirements under the previous rules has been a useful option for foreign persons or entities that cannot meet other available criteria satisfying the “Australian” requirement.    

Under the new rules, a person or entity who wishes to rely on an Australian trade mark to support its eligibility to hold a .com.au or .net.au domain name can now only do so if the domain name is an exact match of its Australian trade mark. Essentially, the domain name must be “identical to the words which are the subject” of the Australian trade mark. This means that all the words that appear in the Australian trade mark must also appear in the domain name in the exact same order, with the exception of:

  • DNS identifiers such as com.au”;
  • punctuation marks such as an exclamation point or an apostrophe”;
  • articles such as ‘a’, ‘the’, ‘and ’or ‘of’”; and
  • ampersands”. 

It will no longer be possible to rely on an Australian trade mark to support eligibility for a .com.au or .net.au domain name if the domain name is an abbreviation or acronym of the trade mark.

The rule changes may be significant for any person relying on their Australian trade mark to support eligibility to hold their .com.au or .net .au domain name. This is especially the case for foreign persons or entities that may have no other option available to support their .com.au or .net.au domain name registrations. Importantly, domain name rights could be lost if the domain name is not an exact match of their Australian trade mark.

Although the new rules come into effect on 12 April 2021, current domain name registrants will have until renewal of their existing domain name to ensure compliance with the new rules.

If you intend to rely solely on an Australian trade mark to support eligibility for a .com.au or .net.au domain registration, you should ensure that your Australian trade mark meets the new requirements. Similarly, if you already hold a .com.au or .net.au domain name and may be affected by the changes, you should consider seeking advice on whether your existing Australian trade marks satisfy the new rules or whether any steps need to be taken to ensure you are not at risk of losing your domain name registration before it is renewed.

Feel free to contact us if you need any advice about your domain name eligibility or Australian trade marks.   

Authored by Felipe Pereira and Michael Deacon

7 min read

LION

In the recent Trade Marks Office decision of Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd [2020] ATMO 109, the issue of whether a film title functions as a trade mark has again been discussed.

The decision concerned a film called Lion, which is based on the story of young Indian man, Saroo Brierly, who grew up in Australia. At the age of five, he lost contact with his family in India when he was at a train station waiting for his brother, who never returned. After surviving three weeks in Calcutta by himself, he was placed in an orphanage and subsequently adopted by an Australian family. He then spent the next 25 years living in Tasmania, Australia. He then went searching for his natural parents in India, eventually being re-united with them and discovering that his original name was Sheru, meaning Lion.

The book, which was called A Long Way Home, received wide acclaim and a film adaptation called Lion, was subsequently produced. The film starred Dev Patel and Nicole Kidman and was nominated for six Academy Awards.

The story was written by Mr Brierly, with some editorial assistance, and he licensed the film rights, but kept musical and theatrical rights separate.

The holder of the licensed film rights, See Saw Films Pty Ltd (“See-Saw”) wished to produce a stage show, but was not granted rights by Mr Brierly, who applied for registration of the trade mark LION in respect of a range of theatre and musical services in Class 41. Long Way Home Holdings Pty Ltd (“LWHH”), a subsidiary of See-Saw then opposed that application.

According to the evidence, See-Saw decided to change the name of the title of the film from A Long Way Home, to Lion. According to them, Mr Brierly was not approving of this name.

In brief, the Hearing Officer found that LWHH did not have any good basis for opposing the acceptance of Mr Brierly’s application because its use of Lion as a film title was not use as a trade mark.

On the further issue of whether Mr Brierley’s application was filed in bad faith, because it was filed at a time when he was negotiating with LWHH concerning theatrical rights, the Hearings Officer decided:

Mr Brierley has rights in the story contained in that book which he may choose to licence to others, or not, as he sees fit. Mr Brierley chose to grant rights to See-Saw to produce a film based on the story in his story. A film was made and was entitled LION—this is not some random title but the meaning of a phonetic equivalent of his first name. Whether Mr Brierley decided on that title for the film or was happy with that title or not is of little import here. Mr Brierley was approached by See-Saw to produce a stage show based on his memoir. That Mr Brierley might have seen monetary value in a trade mark and/or sought, through the Applicant, to improve his bargaining position in negotiations in respect of rights he owns by applying to register LION as a trade mark seems a natural approach, rather than behaviour which is likely to be seen as unscrupulous, underhand or unconscientious in character by persons adopting proper standards. This is especially so in the light of my finding that the Opponent has, at no time, used LION as a trade mark.

Cases concerning Film Titles

Superficially, film titles seem just like trade marks. They are names used to identify a particular product. However, the nature and types of titles vary considerably, as does their function.

In some cases, the film title is derived directly from a prior publication, in others, it directly describes what the film is about. In other cases, it is at best suggestive. The function of names in the title also vary to an extent depending upon whether it is indicative of a series of releases, or a one-off film.

There are few judicial decisions in Australia on this issue. The two that most readily spring to mind concern Disney’s Hunchback of Notre Dame[1] and a television program called Discover Downunder.[2]

In the case concerning Disney’s Hunchback of Notre Dame, it was alleged that Disney’s proposed use of Hunchback of Notre Dame in respect of a musical production was an infringement of a trade mark registration for Hunchback of Notre Dame. As might be expected, the Court found that the word “Disney’s” functioned as a trade mark but that “Hunchback of Notre Dame” was simply being used to describe a musical based on a book commonly referred to as The Hunchback of Notre Dame. Hence there was no infringement.

In the case of Discover Downunder, it concerned an application to register that trade mark in respect of the “production of television programs”. In that case, the Court did not need to decide whether Discover Downunder functioned as a trade mark. This is because it decided that use and intended use as the name of a television program was not intended use for the “production of television programs”. The business of producing television programs was to be carried out by the production company, whose name was Evergreen, not Discovered Downunder.

With this paucity of judicial consideration, it is useful to look at decisions at the level of the Trade Marks Office. Here we find that film and television program titles have not typically been considered use as a trade mark. Decisions in respect of Braveheart,[3] Veronica’s Closet,[4] Thirtysomething[5] and Matrix,[6] found no use as a trade mark. However, Die Hard[7] was distinguished on the basis that it was a name used to identify a series of productions.

In the case of Braveheart, an opposition to registration of BRAVEHEART THE MUSICAL, in respect of theatre musical production services, was nevertheless successful on the basis that, while Braveheart was not considered to have been used as a trade mark, use of the name by a third party would connote an association with the film by virtue of its reputation.

Also, in the Twentysomething case, the Hearings Officer commented that:

By analogy, the television series name is just that. It is not an indicator of the trade source of the goods. Had the opponent applied the name, or licensed others to apply the name, ‘thirtysomething’, to merchandised goods sold in Australia then I would have no hesitation in finding that there was use of the name as a trade mark in relation to those goods.

In the Die Hard case the rationale was explained:

I think that motion pictures, if there is a series of them, fall into the same genus of publication as the newspapers, sound recordings, magazines and newspapers referred to above. By analogy, therefore, the titles of motion picture films should also be capable of functioning as trade marks. Whether particular movie titles do function as trade marks, will, naturally, depend on the evidence how such indicia have been used and whether such indicia have, in fact, developed trade mark significance. 

As regards the decision in the Matrix case, as at the relevant date, only one Matrix movie had been released.

Conclusion

Whether a film title, or words in a film title function as a trade mark, depends upon the circumstances. Currently, it seems that a one-off film title will not usually be considered use as a trade mark. However, where there is a series, for example Harry Potter and Star Wars, the identifying name used consistently across the series will usually function as a trade mark.

There is also likely a distinction to be drawn between use in respect of films and use in respect of merchandise, and the merchandising of a film title may also enhance its prospects of being considered a trade mark, even in respect of the film.

Similar considerations are relevant in respect of book titles and song titles, and it is worth noting that even if the title is not being used “as a trade mark”, there may still be protectable property, as indicated by the decision in the Braveheart case.


[1] Christodoulou v Disney Enterprises Inc [2005] FCA 1401 (4 October 2005).

[2] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71 (3 May 2019)

[3] Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000).

[4] Time Warner Entertainment Company LP v Cosmopolitan Enterprises Pty Limited [2001] ATMO 83 (6 September 2001).

[5] Metro-Goldwyn-Mayer Studios Inc v Andrea Margaret Higgs [2007] ATMO 44 (6 August 2007).

[6] Time Warner Entertainment Company LP v Just Spectacles Pty Ltd [2003] ATMO 43 (29 July 2003)

[7] Twentieth Century Fox Film Corporation v Die Hard [2001] ATMO 43 (25 May 2001).

Authored by Sean McManis

8 min read

There was no sweet victory for the owners of the WICKED SISTER trade mark, used mostly for dairy desserts, in their attempt to prevent use of the WICKED trade mark for dipping sauces and related products.

The recent Federal Court case of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078 (30 July 2020), heard by Markovic J, involved numerous issues relating to competing registrations, infringement and validity, but ultimately PDP was unsuccessful in its claims against Grasshopper for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law and passing off under the common law.

PDP also failed in its claim to cancel Grasshopper’s trade mark registration, although it partially succeeded in its challenge to the registration on the basis of non-use.

Grasshopper’s cross claim to cancel the Wicked Sister registrations also failed, but it partially succeeded to restrict the registrations on the basis of non-use.

Background

PDP has manufactured and sold a range of chilled dairy desserts and snacks 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 (“PDP Fine Foods”). The later stylised mark

and plain word mark WICKED SISTER both date from 2016 and are owned by PDP Capital Pty Ltd (“PDP Capital”), 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

(“Wicked tail mark”) in class 30. The WICKED brand was modified in 2014 to

(“new Wicked mark”) with the original branding phased out by early 2016. Grasshopper also owns a pending application for the new Wicked mark, and an accepted application for the plain word WICKED (which has, since these proceedings, been successfully opposed by PDP in proceedings before the Trade Marks Office, on the basis of a lack of distinctiveness. In that case, the Hearing Officer expressed the view that “the ordinary signification of the trade mark is a colloquial word for ‘excellent’ and when applied to the goods there is an implication of decadence”).

Grasshopper extended its product range to include waffle dippers in 2018.

The Wicked Sister and Wicked products are sold through Coles supermarkets.

The products sold under the Wicked Sister marks are flavoured rice puddings, custard, tiramisu and panna cotta, made from fresh ingredients and found in the refrigerated section of the dairy aisle.

The Wicked dipping sauces are not made from fresh ingredients and therefore do not require refrigeration, although they are still sometimes placed with frozen berries in the fresh food section of the supermarket.

Common Issues

Markovic J initially considered two main issues common to the parties’ various claims in the proceedings:

»  whether the new Wicked mark is substantially identical or deceptively similar to the Wicked Sister marks; and

»  whether the goods covered by the respective marks are the same or of the same description.

The marks were not found to be substantially identical. In making her determination that the marks were also not deceptively similar, her Honour considered a number of factors including:

  • the new Wicked mark and the Wicked Sister marks are not visually or aurally similar;
  • the adjective “wicked”, when used on its own, is an abstract concept which could describe anything. In contrast, the word “wicked”, used in conjunction with the noun “sister”, is not a strongly distinguishing feature of the Wicked Sister marks;
  • despite her Honour agreeing that the goods are fast moving consumer goods sold at a low price point, based on the evidence, the goods are found in different parts of the supermarket, consumers are able to view the products and their associated trade marks, and confusion is unlikely; and
  • the evidence of confusion advanced by PDP was ultimately given little weight as it was not evidence of an “ordinary person”, but of people who have a personal or trade affiliation with PDP.

This conclusion had significant implications for a number of the claims brought by the parties, but perhaps most significantly meaning that there could be no finding of trade mark infringement.

Her Honour then determined that dipping sauces and waffle dippers are not similar to desserts, rice pudding or any of the other goods covered by the earlier stylised Wicked Sister mark owned by PDP Fine Foods. However, dipping sauces were specifically covered by the later Wicked Sister registrations owned by PDP Capital, and waffle dippers being bakery products, were also encompassed by those registrations.

Grasshopper’s cross-claim for rectification

Grasshopper sought rectification under section 88 of the Trade Marks Act for cancellation of the registration of the Wicked Sister marks.

There was a difference in ownership between the later WICKED SISTER registrations and the first registration, which was principally for tax minimisation reasons. This conflict was resolved at the examination stage by the owner of the earlier registration providing a letter of consent to the subsequent applicant. However, interestingly, her Honour upheld Grasshopper’s claim under the section 58 ownership ground finding that PDP Capital was not the owner of the later registered Wicked Sister marks because PDP Fine Foods, which owned the earlier registered Wicked Sister mark, was also the true owner of the later marks. Despite this finding, her Honour decided not to exercise discretion to cancel the registrations because there was no risk of consumer confusion due to the “unity of purpose” between PDP Fine Foods and PDP Capital being related companies [applying the principle enunciated in the Full Federal Court case of Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] HCAFC 100]. This nevertheless leaves open the possibility of a similar claim in succeeding opposition proceedings, since the discretion exercised by the Court in this case does not exist in those proceedings.

Grasshopper’s non-use applications

PDP was able to establish use of the earlier stylised Wicked Sister mark for dairy desserts, yoghurt desserts, creamed rice, rice puddings, rice tapioca and cheesecakes. PDP also sought to rely on use of flavoured rice puddings to retain “sauces for rice”, but this was not accepted and these goods were removed together with all other goods for which use could not be shown.

Regarding the challenge to the later registered Wicked Sister marks under section 92(4)(a) for lack of intention to use, her Honour found evidence of actual use for various goods including, dairy products, dairy-based desserts panna cottas; crème caramels, custard, cheesecakes, cakes, frozen yoghurts, creamed rice. She also held that use of the marks for panna cotta was sufficient to retain the broad claim for “all other desserts in this class including prepared desserts”. However, as there was no intention to use or actual use of the trade marks for bakery products, confectionery, ice cream confections, dipping sauces and yoghurt products, these goods were removed.

PDP’s claim for trade mark infringement

For trade mark infringement, PDP needed to establish the threshold issue that the new Wicked mark is substantially identical or deceptively similar to the Wicked Sister marks and that dipping sauces and waffle dippers are the same as or of the same description as the goods for which the Wicked Sister marks are registered.

As the marks were not found to be substantially identical or deceptively similar, PDP’s infringement claim failed at the first hurdle and it was therefore not necessary to consider whether Grasshopper had any defences to infringement. However, in case her Honour was wrong in relation to her conclusions to PDP’s infringement claim, she went on to consider the threshold issue – whether Grasshopper’s authorised use of the new Wicked mark is capable of constituting trade mark infringement.

While Grasshopper did not deny that it authorised use of the new Wicked trade mark to other entities within the meaning of the Trade Marks Act, it argued that it could not be subject to direct liability for infringement under section 120 because there is no statutory tort of authorisation in the Act. Her Honour agreed and indicated that the threshold issue would have been decided in Grasshopper’s favour. She did add, however, that this does not mean that no cause of action could have succeeded against Grasshopper as a joint tortfeasor, had that been pleaded.

PDP’s claim under the Australian Consumer Law (ACL)

PDP alleged that Grasshopper’s conduct breached sections 18 and 29 of the Australian Consumer Law. Grasshopper argued that (1) as a mere IP holding company it could not have made any of the alleged misrepresentations and (2) there was no real likelihood of confusion. Her honour rejected Grasshopper’s first contention which indicates that Grasshopper could have been liable under the ACL if the marks were otherwise found to be sufficiently similar and PDP had an established reputation in the Wicked Sister marks as at 2014 when use of the new WICKED trade mark commenced. However, ultimately her Honour found that there was no real likelihood of confusion and, consequently, PDP’s claim under the ACL failed.

PDP’s claim for passing off

PDP’s passing off claim followed her Honour’s findings in relation to the ACL. While Grasshopper’s conduct may amount to conduct for the purposes of establishing passing off, PDP had not established a sufficient reputation in the Wicked Sister marks as at 2014, nor that a sufficient number of consumers were likely to be deceived by Grasshopper’s use of the new Wicked mark.

PDP’s non-use application

PDP sought removal of the Wicked tail mark on the grounds of non-use under sections 92(4)(a) and 92(4)(b). As her Honour had found that Mr Valentine had an intention to use the mark, the section 92(4)(a) ground was dismissed. In relation to the section 92(4)(b) ground, Mr Valentine could establish use during the non-use period for dips including chocolate dips, but conceded that the mark had not been used for dessert toppings and sauces and confectionery products. Despite this, her Honour exercised discretion to retain the registration for all goods except savoury dips.

Takeaways

When comparing marks for the purpose of determining deceptive similarity, whether the combination has a meaning that differs from that of the word alone can impact on whether that word is determined to be an essential feature of the mark.

The case also provides a timely reminder to business owners, who wish to protect and enforce their marks, to ensure that they are filed in the name of the legal entity who will use or authorise use of the mark. Further, it confirms that there is no statutory tort of authorisation in the Trade Marks Act with the result that an IP holding company which merely authorises use of a mark cannot be subject to liability for direct infringement, although it may be liable as a joint tortfeasor.

Authored by Kathy Mytton and Sean McManis

5 min read

Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor [2020] FCAA 1718 (30 June 2020)

On 30 June 2020, Chris and Dora Di Lorenzo Partnership (Di Lorenzo) unsuccessfully appealed against a decision by the Registrar of Trade Marks regarding registration of the trade mark BLACK SHEEP by Denversian Pty Ltd (Denversian).

Background

Di Lorenzo is the registered owner of Australian Registration 1681212 for the BLACK SHEEP & Device trade mark represented below. This registration covers goods in classes 30 (coffee and coffee products) and 43 (coffee bar and coffee house services, coffee shop services) and has a priority date of 16 March 2015.

Since September 2011, Di Lorenzo operated a café business in Sydney, New South Wales under the name Black Sheep.

Denversian filed Application 1720917 for BLACK SHEEP covering “restaurants, restaurant services; café and bistro services” in Class 43 on 10 September 2015. Since August 2013, Denversian operated a bistro restaurant on the Gold Coast, Queensland.

Application 1720917 was initially accepted for registration pursuant to the provisions of s44(4), which refer to registration on the basis of prior and continuous use, and the trade mark included the endorsement “Registration of this trade mark is limited to the State of Queensland”.

Di Lorenzo subsequently opposed Denversian’s application, the parties lodged evidence and written submissions, and the Delegate made his decision.

The Delegate was of the opinion that the BLACK SHEEP & Device trade mark and the BLACK SHEEP trade mark are deceptively similar, and cover similar services. However, the Delegate was satisfied that Denversian adopted the BLACK SHEEP trade mark without knowledge of the BLACK SHEEP & Device trade mark of Di Lorenzo, because:

  • the businesses were substantially different (i.e. a café restaurant and a mobile coffee van, respectively;
  • the businesses operated in geographically distinct locations (i.e. Queensland and New South Wales);
  • Di Lorenzo had no plans to expand its business into the Queensland market; and
  • Denversian had established a reputation by use of the BLACK SHEEP trade mark in its local region.

The Delegate found that there was sufficient honest concurrent use provided by Denversian, and that Di Lorenzo had failed to establish any ground of opposition. Costs were awarded to Denversian.

Di Lorenzo appealed this decision.

Appeal

The appeal filed by Di Lorenzo (which relied on Sections 58 and 58A, i.e. ownership of the trade mark) was filed out of time, however, following procedural orders to allow for an extension of time, the appeal proceeded.

The grounds were:

  • Denversian is not the owner of the trade mark ‘BLACK SHEEP’
  • Di Lorenzo have earlier use of the same/similar trade mark ‘BLACK SHEEP’;
  • Di Lorenzo first used the trade mark ‘BLACK SHEEP’ in September 2011 i.e. before Denversian in around December 2013; and
  • Di Lorenzo registered Trade Mark 1681212 ‘BLACK SHEEP’ on 16 March 2015 in Classes 30 and 43.

Evidence of Use

Di Lorenzo’s Evidence

An overview of Di Lorenzo’s evidence before the priority date of 16 March 2015 is as follows:

  • Bank statement – for “Mrs Dora Di Lorenzo & Mr Chris Di Lorenzo T/A Black Sheep Mobile Café” with a single opening deposit of $2000 dated 18 August 2011;
  • Supplier invoices – 9 third party supplier invoices during the period November 2011-March 2015 for food and beverage supplied addressed to “Black Sheep Mobile Café” or “blacksheep mobile café”. The payment withdrawal details are for “Mrs Dora Di Lorenzo” and Her Honour notes that they do not evidence any sales or supplies in the course of trade by any person under the BLACK SHEEP & Device trade mark, or “black sheep mobile café”;
  • Van signage and business cards – Di Lorenzo stated that a professional sign writing business placed the BLACK SHEEP & Device trade mark on the sides of their van and on business cards in July 2011. In evidence they provided colour artwork proofs dated 28 June 2011 of vinyl graphics, and an artwork proof for a proposed business card (example below). The proofs do not show the BLACK SHEEP & Device trade mark by itself. The artwork proofs also show the domain name blacksheep,cafe.com, however, there is no evidence that this domain was registered or used. Invoices related to the vehicle transfers and business card addressed to “Black Sheep Mobile Café” were also provide, but it is was not clear who made the payments;
  • Domain name – Di Lorenzo claimed that they hosted the bsmcafe.com.au domain name from 28 June 2011, however, there was no evidence of when the domain name was registered, in whose name or whether it was operated as a website promoting any trading activities under or by reference to the BLACK SHEEP & Device trade mark;
  • April 2013 webpage – there is single historical webpage capture from www.bsmcafe.com.au from 23 April 2013, which bears the “Black Sheep Mobile Café” logo. However, it did not evidence an existing trade channel.
  • Other evidence after the priority date of 16 March 2015 – this evidence included the purchase of the domain names black-sheep.com.au and black-sheep.net.au, and mobile numbers in June 2015, a trade mark application filed in August 2015 for the word BLACK1. This evidence was not sufficient to establish or support a claim to use of the BLACK SHEEP & Device trade mark, or the phrases black sheep” or “black sheep mobile café”. There was also a “to whom it may concern letter” from Di Lorenzo’s accountant. However, the claims made by the accountant do not constitute proof of trading activity.

In conclusion, the material relied on by Di Lorenzo had substantial evidentiary gaps and deficiencies. Her Honour was not satisfied that Di Lorenzo established that they had a commitment to offering to supply any of the services or goods claimed by the BLACK SHEEP & Device registration, the BLACK SHEEP mobile café logo, the phrase “black sheep” or “black sheep mobile café”, prior to 16 March 2015.

Denversian’s Evidence

An overview of Denversian’s evidence (by way of a witness statement and evidence from the owner and sole director, Ms Bressolles) is as follows:

  • Since August 2013, Denversian had operated a bistro under the name “Black Sheep Bistro” on the Gold Coast, in Queensland;
  • A business name registration was filed for “Black Sheep Bistro”, and Denversian’s accountant confirmed that “Denversian ATF Denversian Family Trust trading as Black Sheep Bistro” had filed the required Business Activity Statements and Trust Tax returns since 16 December 2013;
  • Facebook posts for the “Black Sheep Bistro” from 16 December 2013;
  • Marketing through online listings and reviews on well-known websites (e.g. Google, Good Food Gold Coast, TripAdvisor), large signage outside the restaurant, other signage, kerbside chalkboards, menus and flyers used in the restaurant and locally distributed through mail drops.

Ms Bressolles noted that she came up with the name honestly as she is the “black sheep” in her family, and there is a growing New Zealand population on the Gold Coast. She also indicated that she was not aware of the Di Lorenzo BLACK SHEEP & Device trade mark until mid 2015 after a search of the Australian Trade Marks Register.

Her Honour was satisfied that the evidence established honest, continuous and consistent use of the trade mark in the course of trade from 2013.

Grounds of Opposition

Sections 58 (not the owner)

Di Lorenzo failed that the first hurdle as they did not establish first use of the phrase “black sheep” or the BLACK SHEEP & Device trade mark in the course of trade.

They also needed to establish first use of a mark substantially identical to the opposed mark. In this regard, Her Honour noted that the device element within the BLACK SHEEP & Device trade mark substantially informs and affects the trade mark’s identity. It is an essential element and a dominant cognitive cue. It is also not an immediately recognisable image (i.e. not identifiable as a black sheep). The commonality of the word elements “BLACK SHEEP” is insufficient to convey and overall substantial identity. Accordingly, Her Honour found that the respective trade marks are not substantially identical.

Therefore, the s58 ground of opposition was unsuccessful

Di Lorenzo would also have had to establish that they had made first use in relation to services that are “the same kind of thing”. Her Honour commented that, in her view, “café services” and “coffee shop services” are the same of kind of thing; however, she considered restaurants, restaurant services, and bistro services not to be true equivalents.

Section 58A (first and continuous use)

Di Lorenzo did not establish first use of the BLACK SHEEP & Device trade mark (or any other trade mark) prior to Denversian (i.e. from 2013). Di Lorenzo also failed to show use of the BLACK SHEEP & Device trade mark (or any other trade mark) in the course of trade. Therefore, the s58A ground of opposition was unsuccessful

Her Honour also made the point that the prior use ground of opposition under s58A will only be established when there has been competing prior use in the same geographical area covered by the accepted application. In the present case, Denversian’s acceptance was limited to the State of Queensland, while Di Lorenzo’s claimed use was in Sydney, New South Wales. For this reason also, it could not succeed under this ground.

Decision

Di Lorenzo failed to establish either of the grounds of opposition, namely, s58 and s58A, and therefore, the appeal was dismissed.

Denversian’s Trade Mark 1720917 for BLACK SHEEP has since proceeded to registration.

Takeaway

This decision provides guidance on what types of evidence may, or may not, be sufficient to prove use of a trade mark in the course of trade. Use in the course of trade does not require an actual sale, however, there must be commercial dealing/offering to trade in the goods or services under or by reference to the sign.

The decision is also informative in demonstrating that a stylised trade mark incorporating a word and a design element may not be substantially identical to the word alone.

Authored by Danielle Spath and Sean McManis

4 min read

Victoria Beckham has failed to prevent the registration of two ‘VB’ trade marks, despite the fact that the oppositions were effectively undefended.

The case, which is presently the subject of an appeal, concerned the trade marks depicted below:

The first mark sought registration for a wide range of cosmetics, including skin care products, while the second mark sought registration for beauty and hairdressing services.

Victoria Beckham has used the trade mark VB in relation to businesses trading fashion apparel, accessories and cosmetics. She launched a range of luxury womenswear in 2008 and an e-commerce site in 2013. There has been use of her VB trade mark in relation to cosmetics in Australia, and internationally, since September 2016, following the launch of a range with Estée Lauder.

The evidence presented in respect of cosmetics sales in Australia related only to the period 1 July 2017 to 31 December 2017 and indicated sales totalling AU$557, 491. No sales figures were provided for any period before or after the period mentioned.

As she had no prior registration, Victoria Beckham’s main grounds of opposition were:

  • A right to ownership based on prior use of VB
  • A likelihood of confusion based on prior reputation
  • Filing of the application in bad faith

Ownership

One of the requirements for a successful claim to ownership is that the trade marks concerned need to be at least substantially identical. Ms Beckham’s ownership claim failed due to differences between VB and the ‘Skinlab’ trade mark depicted above. In respect of the “Salon’ trade mark depicted above, she did not have prior use in Australia for the relevant services.

Prior Reputation

As regards Ms Beckham’s reputation in VB, the Hearing Officer characterised the evidence of prior reputation, which is assessed as at the filing date of the application (in this case 26 March 2018), as “at best a very limited reputation in Australia for cosmetic products”. However, this was considered sufficient to establish a basis for a prior reputation opposition.

In assessing the likelihood of confusion, the Hearing Officer concluded:

while the Trade Marks and VB Mark are similar due to the presence of the common VB element, I am not satisfied that any confusion between the Trade Marks and the VB would arise due to the reputation of the VB Mark. I reach this conclusion in respect of the Skinlab Mark bearing in mind the limited reputation of the VB Mark in Australia for cosmetics (and only slightly more extensive reputation for fashion goods) and the differences between the respective marks being the stylisation of the Skinlab mark (including the addition of the horizontal line) and the addition of the word Skinlab, which is not a direct reference to the Applicant’s Goods. I reach the same conclusion in respect of the Salon Mark on the same basis and additionally note the difference between the Applicant’s Services and the goods in which the VB Mark has a reputation.

One factor considered in assessing the opponent’s reputation, and may also have influenced the Hearing Officer’s view on the likelihood of confusion, was the fact that Ms Beckham’s trade mark was commonly used in association with other marks, namely VICTORIA BECKHAM and ESTEE LAUDER.

Bad faith

As regards the bad faith ground, the main basis for this claim was the applicant’s use of a pop-up subscription box on its website featuring a slim brunette with long hair, debatably somewhat similar in appearance to Ms Beckham.

The Hearing Officer noted that an allegation of bad faith is a serious claim and found that it had not been established stating:

I am particularly unpersuaded that the Applicant’s use, on its website (which otherwise makes no express or implied reference to the Opponent) of an attractive female model with long dark hair is in any way a reference to the Opponent; given the fame of the Opponent, it would be obvious to most visitors that the model is a completely different woman. Furthermore, the mere fact that a cosmetics company has used an attractive female model with long dark hair in connection with their products is hardly a basis to assert bad faith.

Concluding Comment

It remains to be seen what the outcome of Victoria Beckham’s appeal will be, although if the applicant continues to play a passive role and does not take part in the appeal proceedings, there is a likelihood of the appeal being successful.

In any event, the difficulties faced by Victoria Beckham would have been much reduced had she registered the trade mark VB at the time she commenced using that trade mark in Australia.

Update – 29 June 2020

The appeal from the Trade Marks Office decision has now been settled by agreement and the trade mark applications opposed by Victoria Beckham have now proceeded to registration. While the terms of the settlement reached and known only to the parties, we would not be surprised if the owner of the applications, VB Skinlab Pty Ltd, has agreed to provide Ms Beckham with a letter of consent if its applications block hers. In Australia, a letter of consent will overcome a citation objection.

Authored by Sean McManis

5 min read

In the case of In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd, in considering whether use of Down-N-Out infringed a registration for In-N-Out, and amounted to misleading conduct and passing off, the Federal Court considered questions of:

– whether the alleged infringer’s intentions are relevant to assessing whether two trade marks are deceptively similar

– whether, despite the fact that a business has no permanent business operations in Australia, it may nevertheless have sufficient reputation to establish misleading and deceptive conduct in breach of Australian Consumer Law and passing off

Short answers are below, while information about the case and reasons for the decision can be found in the subsequent report:

– Intention will not always be relevant but in circumstances where, as in the present case, the party adopts a name with the intention of benefiting from an association, it will be relevant

– Use outside Australia, in combination with some local use, can be sufficient, particularly where there is evidence of a strong overseas reputation and the name is distinctive

In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193 (26 February 2020)

In-N-Out Burgers, Inc (“INOB”) is an American company that has, for many years, operated a chain of burger restaurants in the United States. The business was founded in 1948 and the company was incorporated on 1 March 1963. It is a family owned private company, which operates a chain of restaurants in California, Arizona, Oregon, Nevada, Texas and Utah. As at May 2016, there were over 300 In-N-Out restaurants in the United States. They include restaurants in locations such as Fisherman’s Wharf in San Francisco, Sunset Boulevard in Hollywood and South Sepulveda Boulevard in Westchester, Los Angeles, which is within a mile of LAX airport.

As well as owning registrations for a IN-N-OUT BURGER logo, depicted below as registered in black and white and as used in colour, INOB also owns a registration for the word mark IN-N-OUT BURGER, along with ANIMAL STYLE and PROTEIN STYLE.

INOB established its website around June 1999 and an online store was established in May 2004, allowing promotional merchandise to be purchased around the world, including from Australia. In 2013 there were 37,631 visitors to the website from Australia. In 2014 there were 50,108, in 2015 61,988 and in 2016 there were 78,098 visitors.

Over the years 2012 to 2017, INOB hosted one pop-up event each year in Australia and in 2018 it hosted two. At the 2017 event, 400 burgers and 420 T-shirts were sold, prior to that sales were below 300 burgers.

Prior to incorporation of Hashtag Burgers Pty Ltd (“HB”) on 23 June 2017, the directors conducted their own pop-up event in June 2015 using the logo depicted below:

In May 2016, they had the following logos designed:

They then advertised an event to be held on 7 June 2016 with a media release titled “Sydney’s Answer to In-N-Out Burgers has finally arrived” in which they referred to “the cheekily named Down-N-Out” and advertised “secret menu hacks such as Animal Style and Protein Style”

When it opened, the pop-up used the first Down-N-Out logo shown above, and outside the premises the following sign was displayed:

Following this, the business received a letter of demand from INOB, in response to which there were denials concerning use of Animal Style and Protein Style. It also denied that use of Down-N-Out infringed any registrations claiming that the business had received legal advice and asserting that:

This expression has its own separate and distinct meaning in the English language which is unlikely to conflict with the meaning of “In-N-Out”. Further, the word Down also relates to “Down Under” which relates to the fact that we are an Australian business.

It was, however, indicated that use of the Arrow designs would cease.

Subsequently, there was use of the following designs:

The inclusion of the word BURGERS in the registered word mark was acknowledged by the parties as not significant. Further, in determining the infringement issue Justice Katzmann did not attribute any significance to the use of the hashtag in D#WN-N-OUT, noting that any verbal references would still be to Down N’ Out.

HB argued sufficient differences based on:

  • Differing ideas and impressions between DOWN N’ OUT and IN-N-OUT with “down and out” referring typically to a person who has fallen on hard times
  • That use of the word DOWN was also a deliberate allusion to Australia, which is colloquially referred to “the land down under”
  • Visual and phonetic differences
  • Differences in essential features, claiming that the essential feature of the registered mark is IN-N-OUT not just N-OUT.
  • The absence of any evidence of actual confusion.

Justice Katzmann recognised authority indicating that the first part of a trade mark is often the most important for the purposes of distinction. However, she also referenced cases where similarities in suffixes have been sufficient.

She found that:

  • N-OUT is a distinctive and significant feature and an essential ingredient of all the [INOB] trade marks
  • notwithstanding differences in meanings, imperfect recollection is sufficient to give rise to a likelihood of confusion, noting also that the word “down” can be used in a directional sense, like “in”, and that this was the more likely context of recollection

As regards the evidence presented, she noted:

  • Social media posts raising questions concerning whether these is some association with INOB. While not decisive, and noting that their meaning and intent was debatable, they were of some probative value
  • The intentions of HB and the failure of the directors to give evidence in the proceedings

On the issue of intention, Justice Katzmann quoted authoritative precedent, which states:

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

In relation to this, she made the points:

  • Cases where intention is relevant ae not restricted to cases of “deliberate” dishonesty;
  • An imitation of another person’s product does not necessarily signify an intention to deceive;
  • The selection of the name was not coincidental, with HB’s own media release referring to the adoption of the name as “cheeky”;
  • There was no evidence of use in association with get up or imagery consistent with the claimed meaning of “down and out”;
  • There were initial advertising references to Animal Style and Protein Style products;
  • Initial logo designs incorporating arrows indicated an intention to reflect similarity;
  • No steps were taken to dispel any potential for confusion;
  • No evidence was presented to indicate that N-Out or N Out had been used in the brand names of anyone other than INOB, before HB decided to use it in DOWN-N-OUT;
  • HB failed to comply properly and fully with their discovery obligations

Consequently, there was a finding of infringement and a likelihood of confusion.

Australian Consumer Law and Passing Off

While reputation is not a factor in determining infringement of a trade mark registration, it is relevant in misleading conduct (Australian Consumer Law) and passing off cases.

Notwithstanding no established business in Australia, Justice Katzmann found sufficient reputation in Australia arising from:

  • International trade and notoriety in the United States, resulting in spill over reputation in Australia
  • Media references, and the success of pop-up events conducted in Australia

Having found relevant reputation in Australia, Justice Katzmann found a likelihood of HB’s conduct misleading or deceiving consumers, for reasons similar to those mentioned in respect of the infringement action.

In relation to changes made to get up used, it was noted this that there was a failure on the part of HB to address the “potential hangover effect” arising from the previous activities using designs similar to those of INOB.

Personal liability

Australian Consumer Law legislation includes fairly broad provisions for recovering damages against persons “involved in” contraventions. Consequently, the directors were liable for breaches of the Act even subsequent incorporation of HB.

However, in respect of trademark infringement and passing off, it was necessary to establish that the directors were joint tortfeasors. Notwithstanding the close involvement of the directors of the business with the activities of HB, there was insufficient evidence that the company was merely an instrument for the perpetration of infringement so that the directors could hide behind the corporate veil. Consequently, there was no finding of personal liability for actions amounting to infringement or passing off that occurred after the incorporation of the company.

Conclusion

There can be a fine line between inspiration and association. In trying to be clever and ‘cheeky’, HB crossed the line in this case.

Authored by Sean McManis