4 min read

Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel [2021] FCAFC 8

Following on from our previous article, in a successful appeal by Combe International Ltd, the Full Federal Court disagreed with the primary judge’s approach to assessing deceptive similarity. As a result, it refused registration of the VAGISAN trade mark by Dr August Wolff GmbH & Co. KG Arzneimittel.

Background

Dr August Wolff GmbH & Co. KG Arzneimittel(Dr Wolff) is a German pharmaceutical company. It filed an application for VAGISAN on 27 May 2015 for the following goods:

Class 3: Soaps and cosmetics, all aforementioned goods not for the indication and application of tired legs and/or arms

Class 5: Pharmaceutical products, sanitary products for medical purposes; dietetic substances for medical purposes, all aforementioned goods not for the indication and application of tired legs and/or arms

Combe International Ltd (Combe) is a US company that markets and sells a range of personal cleansing, health and grooming products and is the owner of prior registrations for or incorporating VAGISIL. These registrations include the following goods:

Class 3: Medicated lotions and medicated creams; non-medicated products for feminine use

Class 5: Medicated products for feminine use; vaginal lubricants; medicated creams, gels, lotions

A delegate of the Registrar of Trade Marks refused registration of the VAGISAN trade mark on 29 September 2017 under s60 of the Trade Marks Act 1995 based on Combe’s prior reputation in its VAGISIL trade mark.

Federal Court Decision

The primary judge disagreed with the delegate’s decision and decided that Combe had failed to establish any ground of opposition.

On the issue of deceptive similarity (section 44), the primary judge found that the VAGISAN and VAGISIL trade marks are likely to be understood as indicating products to be used in relation to the female genital area. The primary judge took the view that the prefixes VAG and VAGI are descriptive, and that, as a consequence, the words VAGISAN and VAGISIL do not have a close phonetic resemblance. In his view neither of the words lends itself to mispronunciation, and the suffixes SIL and SAN are quite distinct.

Combe was also not able to establish that a significant or substantial number of potential customers might be confused or deceived by the VAGISAN mark such as to wonder whether there is any connection between it and VAGISIL, given Combe’s reputation (section 60) in the VAGISIL trade mark

Regarding the final opposition ground (section 59), the primary judge considered the fact that soap and cosmetic products were proposed to be introduced into Australia was sufficient intention to use the VAGISAN trade mark in respect of the designated goods.

The Federal Court decision is reported here.

Appeal to the Full Federal Court

In its Notice of Appeal, Combe claimed that the primary judge erred in his assessment of deceptive similarity between VAGISIL and VAGISAN by:

  • comparing the two words side by side;
  • engaging in a meticulous comparison of the two words, letter by letter and syllable by syllable with a clear pronunciation;
  • failing to give proper consideration to the notional consumer’s imperfect recollection of VAGISIL;
  • failing to give proper regard to the importance of the first syllable of each word and the tendency of English speakers to slur the endings of words;
  • breaking each word into component parts, assessing the descriptive and distinctive qualities of those parts and thus failing to pay proper regard to the whole of each mark;
  • failing to assess the whole of each mark as a coined term with no actual meaning; and/or
  • assessing the SAN element of VAGISAN as a distinctive and not descriptive feature, despite finding that SAN is readily understood as a reference to sanitary.
  • not giving sufficient weight to the high-volume and low-value nature of the VAGISAN Goods when making his assessment.

Section 44 – Deceptive Similarity

After consideration of the primary judge’s reasoning regarding deceptive similarity, the Full Court disagreed with the primary judge’s approach for a number of reasons.

Firstly, the VAGISAN and VAGISIL trade mark both have the same first five letters, they both have three syllables, and the VAGIS component is pronounced the same way. The only differences between the marks is the final two letters “AN” and “IL, and the only aural difference, being that between SIL and SAN, may be mispronounced or slurred.

Secondly, the idea of the mark is important in the consideration of deceptive similarity. In this case, consumers are likely to consider VAG or VAGI to be a reference to the vagina. Further, the first two syllables of both marks are likely to be remembered. While a similarity in idea may be insufficient for a finding of deceptive similarity if there is an absence of visual or aural similarity, in this case, the VAGISAN and VAGISIL marks also have visual and aural similarity.

Thirdly, the primary judge appeared to wrongly assume that the classes 3 and 5 goods of both the VAGISAN and VAGISIL trade marks were confined to goods for vaginal use, due to the descriptive nature of the prefixes VAG and VAGI. However, when assessing deceptive similarity, the notional use of the respective marks should have been considered, and the range of goods went beyond those for vaginal use.

In light of the above, the Full Court concluded that VAGISAN was deceptively similar to VAGISIL. The VAGISAN trade mark was refused.

Section 60 – Reputation

This ground of opposition was not considered, as the matter had already been decided by the Full Court’s findings on the conflict with Combe’s earlier registrations.

Takeaway and final comments

The Full Court decision provides guidance on the various factors that should be considered when assessing the deceptive similarity of trade marks. In particular, it is a reminder that marks should be considered and compared in their entirety.

In a further development, Dr Wolff has filed an application for the composite mark DR WOLFF’S VAGISAN, covering similar goods in classes 3 and 5 to its VAGISAN word mark. This application has been opposed by Combe.

Authored by Danielle Spath and Sean McManis

4 min read

In addition to Australia and New Zealand, Shelston IP has extensive experience in managing trade mark portfolios in other countries in the South Pacific region.

IP registration systems vary significantly around the South Pacific region with some countries operating under independent trade mark legislation, others allowing for re-registration of United Kingdom marks, while some of the smaller Pacific Island nations are yet to adopt a formal registration system and must rely on common law use and publication of a cautionary notice.

While outwardly, the procedures for securing trade mark protection in the South Pacific appear relatively straightforward, extended delays are often experienced when dealing with the smaller Pacific Island nations which have limited resources and which, from time to time, are affected by political instability and natural disasters.

Following is a brief overview of the IP protection systems available in key Pacific Island nations.

Fiji

Shelston IP use a local agent in Fiji to file trade mark applications.

Trade mark protection in Fiji can be sought by way of an independent national application under the Fiji Trade Marks Act or by an application based on an existing registration in the United Kingdom.

Fiji adopts the old British classification of goods (50 classes). Upon filing an application for registration of a trade mark designating goods under the International Nice Classification, they need to be reclassified according to the relevant Fiji class.

Service marks are not registrable and multi-class applications are not permitted.

Filing for re-registration of a United Kingdom registration is often a simpler and quicker process than filing a national application in Fiji.

Papua New Guinea

Shelston IP acts directly before the Intellectual Property Office of Papua New Guinea to file trade mark applications under the Papua New Guinea Trade Marks Act.

Service mark registration is possible but multi-class applications are not available.

Samoa

Shelston IP use the service of a local agent for trade mark filings in Samoa.

Trade mark protection can be obtained in Samoa by way of an independent national application under the Samoa Trade Marks Act. Since 4 March 2019, it is also possible to designate Samoa as part of an International Application under the Madrid Protocol registration system.

Service mark registration is possible and multi-class applications are accepted.

Tonga

Shelston IP use the service of a local agent for trade mark filings in Tonga.

Tonga has its own independent registration system for trade marks. Service mark registration is possible and multi-class applications are accepted.

Vanuatu

Shelston IP act directly before the Vanuatu Registry although we maintain a local address for service for transmission of correspondence from the Registrar.

Trade mark protection can be sought in Vanuatu by way of an independent national application under the Vanuatu Trade Marks Act. It is no longer possible to apply for trade mark registration based on a United Kingdom registration.

Service mark registration is possible and multi-class applications are accepted.

Kiribati, Solomon Islands and Tuvalu

Shelston IP act directly before the Registries in Kiribati, Solomon Islands and Tuvalu in trade mark matters.

These countries have no independent trade mark legislation and registration may only be obtained by re-registration of a United Kingdom trade mark registration. The resulting registration is entirely dependent on the corresponding UK registration and should that be cancelled for any reason, the corresponding right in the South Pacific country will also lapse.

There is no provision for service mark registration in these countries and multi-class registrations are not permitted.

Cook Islands, Marshall Islands, Micronesia, Niue, Palau and Tokelau

A registration obtained under the New Zealand Trade Marks Act 2002 automatically extends protection to Niue. While the 2002 Act does not apply to the Cook Islands or Tokelau at this time, a registration obtained under the former Trade Marks Act 1953 will cover these island countries.

There is no trade mark legislation in the Marshall Islands, Palau or Micronesia. Trade mark rights in these countries are based on the common law and may be asserted through use of the mark in the relevant jurisdiction and the periodic publication of cautionary notices in a local newspaper or government journal.

New trade mark legislation in Nauru

Until recently, trade mark registration was not possible in Nauru and the only means of protecting trade mark rights was under the common law. After many years in development, on 10 November 2020, the Republic of Nauru Trademarks Act 2019 and implementing regulations were brought into force and the Registry is now accepting applications for registration of trade marks.

Service mark registration is possible but it appears that multi-class applications may not be available.

Shelston IP can act directly before the Nauru Trade Marks Registry to obtain registration of trade marks for our clients.


While trade mark registration in the Pacific Island countries can often present challenges, Shelston IP is well placed to navigate around any difficulties to secure protection for your trade marks throughout this region.

If you require further information or assistance, please let us know.

Authored by Kathy Mytton and Sean McManis

10 min read

Office of the Retirement Commissioner v Cash Converters Pty Ltd [2020] NZIPOTM 27 (23 December 2020)

This recent decision provides helpful guidance on the principles for partial revocation of trade mark registrations in New Zealand and the determination of a “fair description” for goods and services.

The decision also highlights important differences between the law and practice on non-use removal proceedings in Australia and New Zealand.

Background

Cash Converters Pty Ltd (“Cash Converters”) sought partial revocation of the Office of the Retirement Commissioner’s (ORC) Registration No. 637400 SORTED. It covered Class 36 services in providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement, and providing financial information relating to retirement.

They also sought partial revocation of Registration No. 976028 SORTED, which covered broadly worded Class 36 services “financial affairs; monetary affairs; real estate affairs” and various services in providing advice, consultancy and information the areas of finance, monetary affairs, retirement, real estate, property and insurance and Class 41 educational services and services in providing educational material and information relating to insurance, financial affairs, monetary affairs, real estate affairs.  The full specifications for the registrations are at [1].  

Revocation was sought on the basis of non-use of the SORTED mark for a continuous period of three years.

Facts/evidence

ORC started using its SORTED mark in 2001, when it established its website www.sorted.com for providing information and tools, such as online calculators, to help New Zealanders prepare for, and manage, their finances during retirement. 

From at least 2013 ORC’s use of SORTED expanded to a broader range of services in providing information, advice and resources to promote “the life-long financial literacy of New Zealanders”.  With this expansion in 2013, ORC obtained the later Registration No. 976028 SORTED for the broader range of services. 

ORC’s evidence of use included use of the SORTED mark on guides, booklets, seminar and course details, on online tools and calculators and on an online forum.  [2]

Discussion

As the SORTED mark had not been used on all of the services covered by the registrations, partial revocation was in order.   

The Assistant Commissioner noted the High Court decision in Sky Network Television Ltd v Sky Fiber Inc (Sky Network) confirming how partial revocation applications should be considered:

The case law establishes that the first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to; and then to ‘arrive at a fair specification of goods having regard to the use made’.”  [3]

ORC was found to have used the SORTED mark to provide generalised information, advice and education on retirement planning and financial literacy generally.  ORC was also found to have used the mark to provide online calculator tools and an online community forum which provided users with more specific information and recommendations. 

In considering what was a “fair description” of those services provided under the mark, the Assistant Commissioner identified the principles set out by Mallon J in Sky Network:

“(a) The assessment has “nothing to do with the defendant.” Defining the goods negatively by reference to the defendants’ activities is therefore not the approach. 

(b) The proprietor has protection outside his or her specification of goods in areas where he or she can demonstrate a likelihood of deception under other provisions. “There is no pressing need, therefore, to confer on the proprietor a wider protection than his [or her] use warrants by unduly broadening the specification of goods.

(c) The width of the surviving specification “must depend largely upon questions of fact and degree.”  “Wide words can cover what are commercially quite different sorts of articles”.  If there is shown to be use of just one of those things “it would be commercially nonsense to maintain the registration for all goods caused by the wide words”. [4]

In summary, and further quoting Mallon J in Sky Network, the Assistant Commissioner noted that:

The “fair description” is one “which would be given in the context of trade mark protection” and depends on the nature of the goods, the circumstances of the trade and the breadth of use proved” and should be approached as ““objective and impartial, balancing the competing interests” and “a view from the trade”.[5]

The Assistant Commissioner recognised the important “balancing exercise” of competing interests of the owner, competitors and the public:

  1. to have the Register uncluttered with unused marks or with registrations with overly broad specifications;
  2. to prevent parties being unjustifiably exposed to infringement of registrations with overly broad specifications; and
  3. “the owner’s interest in protecting its brand” which “aligns with the public interest in consumers not being deceived or confused by use of another trade mark” and the owner’s entitlement “to commercially realistic protection, remembering the test for infringement, extends to similar goods and services”.  [6]

Findings 

The scope of the original specifications was considered to “extend well beyond the actual use that had been made of the SORTED mark”.  [7]

The Assistant Commissioner considered that a “fair description” of the services offered under the SORTED mark could be reached by considering the “functions (the way the mark has been used) and the generalised, rather than personalised, nature of the education, information and advice ORC provides”.  [8] 

ORC was not using the SORTED mark in relation to all types of information, education and advisory services in the areas of insurance, finance, money, real estate and investment.  Those services were all provided in giving advice and information focusing on retirement and personal financial literacy, and not on all aspects of insurance, finance, money and other matters.

The Assistant Commissioner found that it was appropriate to limit the specifications to reflect the focus of the use and reworded the services more narrowly and as all “relating [or related] to retirement and personal finance”.

Further, ORC’s advice was not personalised advice given to individuals.  Rather, it was generalised advice and information.  The general description “advisory services relating to…” in the original Class 36 specifications for both registrations was considered too broad.  The Assistant Commissioner considered that it would be fair to describe those services as “general advice relating to…”.

The original term “consultancy services relating to…” used in the Class 36 specifications for both registrations was removed because ORC would not be reasonably understood to be a consultancy business.  The Assistant Commissioner noted that “there is no aspect of the ORC business that technically requires the description to be used. ORC is able to have commercially realistic protection without the reference to consultancy”.  [9]

The full specifications as amended are at footnote  [10].

Earlier cases considering partial revocation

The Assistant Commissioner provided a helpful summary of earlier partial revocation cases and what was found to be a “fair description” for the goods and services.  This can be found at paragraph 71. 

These decisions show that precise descriptions are applied in partial revocation actions and that broad and unqualified descriptions are unlikely to be allowed under New Zealand practice. 

Comparison with Australian law

The decision highlights some important differences between the law on revocation/non-use removal actions in Australia and New Zealand. 

1. Discretion to remove or restrict a registration

The Assistant Commissioner noted in the decision that there is no “overriding discretion to refuse to revoke or partially revoke a registration”, which follows from the decision Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 at [97].  [11]  Under New Zealand law, a trade mark owner must show use during the three year non-use period, or special circumstances that justify non-use of their mark, to successfully oppose a revocation application.

Unlike New Zealand, under Australian law the Registrar has the discretion under s 101(3) of the Trade Marks Act 1995 not to remove a registration even where there has not been use of the mark if “satisfied that it is reasonable” not to remove the registration.  Further, s 101(4) provides that in deciding under subsection (3) not to remove a registration the Registrar may take into account use of the mark on similar goods or closely related services or similar services or closely related goods. 

2. Standing to apply for removal for non use

New Zealand law requires that only an “aggrieved person” can apply for revocation of a registration.   As noted in the decision “the term “aggrieved person” is given a wide and liberal interpretation.  This will generally include trade rivals.  As well as someone who is disadvantaged in a legal or practical way.”  [12]

However, under Australian law any person can apply for removal of a registration for non-use and there is no requirement for the removal applicant to show aggrievement to have standing to apply for removal. 

3. Date of revocation

In the New Zealand decision, the Assistant Commissioner noted that “the result of revocation is that the owner’s rights cease to exist on the date the application revocation was filed, or at an earlier date if the Commissioner is satisfied the non-use ground has been made out at an earlier date.”  [13]

Under Australian law, the date of removal of a registration for non-use is the date of the Registrar’s decision and the Registrar does not have the discretion to determine an earlier date for removal.

Takeaway

There are important differences in relation to standing and discretion in revocation/non-use removal proceedings in New Zealand and Australia which trade mark owners should note.

When defending a non-use removal action in Australia, and there has been no use of the mark during the 3 year non-use period, trade mark owners should still consider whether there are grounds for convincing the Registrar to refuse removal of the registration, such as some residual reputation in the mark from earlier use or possibly overseas reputation.

In New Zealand, it is much more likely than it is in Australia that broad descriptions will be restricted to more specific and limited descriptions.


[1] Services covered by Registration No. 637400 SORTED:

Class 36:Providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement; providing financial information relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet

Services covered by Registration No. 976028 SORTED:

Class 36: Financial affairs; monetary affairs; real estate affairs; providing advisory, consultancy and information services relating to finance, investment and financial planning for and during retirement; advisory services relating to real estate ownership; providing financial information relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet; consultancy services relating to insurance; information services relating to insurance; insurance advisory services; insurance information; provision of insurance information; consultation services relating to real estate; providing information, including online, about insurance, financial and monetary affairs and real estate affairs; provision of information in relation to real estate; provision of information relating to property (real estate); provision of information relating to real estate; real estate advisory; services; real estate investment advice

Class 41: Dissemination of educational material; education services; educational services; life coaching (training or education services); provision of educational information; provision of education services via an online forum; publication of educational materials; publication of educational texts; the aforementioned relating to insurance, financial affairs, monetary affairs, real estate affairs

[2] Arguing that ORC did not provide financial advisory services, Cash Converters’ evidence in support of the revocation application referred to ORC’s disclaimers on its website that its information and tools “should be treated as a guide only” and should be used before seeking professional advice.  It was also noted that ORC’s “Investor Kickstarter” guide is referred to on the website as a guide only which  “does not constitute investment advice to any person”.  The evidence also noted that ORC is not a registered financial services provider under the Financial Services Provider (Regulation and Dispute Resolution) Act 2008 (RDR Act). 

In reply, ORC filed evidence that it is not required to be registered under the RDR Act as it is not a business which provides financial services as defined under the Act.  ORC also noted that their “Investor Kickstarter” tool asks high level questions to categorise participants into one of five types of investors and that their disclaimer clarifies that the advice given through this tool is not the type of financial advice to which the Financial Advisors Act 2008 would apply. 

[3] Office of the Retirement Commissioner v Cash Converters Pty Ltd [2020] NZIPOTM 27 (23 December 2020), paragraph 39.

[4] ibid, paragraph 44.

[5] ibid, paragraph 45.

[6] ibid, paragraph 52.

[7] ibid, paragraph 110.

[8] ibid, paragraph 113.

[9] ibid, paragraph 96.

[10] Registration No. 637400

Class 36: Providing information services and general advice relating to finance, investment and financial planning for and during retirement; providing financial information and general advice relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the worldwide web, an intranet or the Internet

Registration 976028

Class 36: Providing information and general advice, including online, about insurance, financial and monetary affairs and real estate affairs related to retirement and personal finance; provision of financial calculation services relating to retirement and personal financial planning including budgeting, personal debt, home buying, mortgages, superannuation, investment and savings, including by way of online; calculators; providing information services and general advice relating to finance, investment and financial planning for and during retirement; providing financial information and general advice relating to retirement by means of telecommunication and electronic networks including online, via a global or other communications network, the world-wide web, an intranet or the Internet.

Class 41: Education services related to retirement and personal financial matters including financial planning and budgeting, debt, home buying, mortgages, superannuation, investment and savings; provision and dissemination of educational material and information related to retirement and personal financial matters, including by way online communication, websites, web blogs, social media, forums, publications (including texts, guides and brochures), news articles, training, courses, seminars and meetings.

[11] ibid, paragraph 12 quoting  Crocodile International Pte Ltd v Lacoste [2017] NZSC 14 at [97]

[12] ibid, paragraph 28.

[13] ibid, paragraph 11.

Authored by Michelle Howe and Sean McManis

Welcome to Shelston IP’s round up of Australian and New Zealand trade mark cases for 2020.

While there were plenty of cases in 2020, we have selected a few which we think are interesting and provide an indication of the types of issues dealt with by the Courts and Trade Marks Office throughout the year.

Please click here for a quick snapshot of each case followed by a more detailed discussion of the main issues that arose in each case.

Read our full report

Authored by Sean McManis and Michael Deacon

1 min read

We are pleased to announce that Shelston IP has again ranked in World Trade Mark Review 1000 (WTR 1000) for Prosecution and Strategy as well as Enforcement and Litigation in Australia.

Also being ranked in both areas, our Trade Mark head Sean McManis. Proving once again to be a top Trade Mark Attorney within Australia.

Trademarks and brands group leader Sean McManis is “not only proactive, responsive, thorough and knowledgeable, he provides comprehensive, diverse trademark services”.

4 min read

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530 (14 October 2020)

Allergan alleged that various references to the BOTOX trade mark, which were made by Self Care in marketing its skin treatment products, amounted to infringement of BOTOX trade mark registrations.

There has been little case law in Australia concerning trade mark infringement by referencing third-party trade marks when advertising or referring to competing or similar products. Consequently, the present case is significant.

While s122(1)(d) Trade Marks Act 1995 provides that there is no infringement when a person uses a trade mark “for the purposes of comparative advertising”, this provision does not seem to have been argued in the case. Rather, the principal defence to infringement was based upon claims that there was no use of BOTOX “as a trade mark”, which is a prerequisite for a finding of infringement. It was also argued that there was no use of a deceptively similar trade mark.

Background

Self-Care sold products under the names PROTOX and FREEZEFRAME, being skin care preparations marketed as improving the appearance of a person’s skin to remove or diminish wrinkles.

They produced various products under these names and their marketing and product packaging contained references to BOTOX. Among the most significant of those were references such as:

  • The most powerful Botox® alternative ever discovered;
  • The Accidental Botox Alternative
  • The world’s first Instant and Long-Term Botox Alternative
  • Instant Botox alternative;
  • a topical alternative to Botox® injections
  • The original instant Botox® alternative;
  • Overnight Botox® alternative
  • long-term Botox® alternative

Allergan claimed that Self-Care’s use of PROTOX was an infringement of its BOTOX registrations, and that its various references to BOTOX also infringed its registrations.

For infringement to occur there needs to be:

  • Use as a trade mark
  • Of a substantially identical or deceptively similar sign
  • In relation to goods or services covered by the registration, or goods or services of the same description, or closely related goods or services
  • Without any relevant defence

PROTOX

As regards PROTOX, Justice Stewart found that this mark is not substantially identical or deceptively similar to BOTOX. He also found that Class 5 pharmaceutical preparations for the treatment of wrinkles are not goods that are of the same description as (i.e. similar to) cosmetic antiwrinkle preparations.

The decision on similar goods was on the basis that:

  • BOTOX is a therapeutic product supplied only to health care professionals and administered by healthcare professionals
  • the fact that some clinics that sell skin care products and also offer injectable products such as BOTOX is not significant having regard to the differences between the products and their uses
  • pharmaceutical manufacture and supply is different from topical cosmetic manufacture and supply
  • references to “alternative” in advertising do not establish similarity. It was only a reference to an effect. More significant are the differences including price, application, associated pain or bodily invasion and length of action of the respective products

Aside from its Class 5 registrations, Allergan also owns Class 3 registrations; however, as the marks PROTOX and BOTOX were not considered deceptively similar, there was also no infringement of those registrations.

BOTOX

As regards use of BOTOX, the issue of infringement turned on the question of whether the various references to BOTOX were use of Botox “as a trade mark” for the purposes of infringement.

Self-Care used BOTOX in various ways. In some cases, it appeared in what were general narrative or descriptive phrases, with an example being: “clinically proven to prolong the effect of Botox®” . Such uses were considered clearly not use as a trade mark, given that they say nothing about the origin of the product being sold or about trade connection. Justice Stewart considered such expressions to be more in the nature of ‘ad-speak’.

Justice Stewart expressed some hesitation about phrases without verbs such as: “the accidental Botox Alternative”, “Instant BOTOX® alternative”, “Overnight Botox® alternative” and “Long term BOTOX® Alternative”.

Claims that capitalisation of the first letter of the word Botox is indicative of use as a trade mark were not considered compelling. That was considered to be a weak indicator.

Ultimately, significant reliance was placed upon the 1934 decision of the House of Lords in Irving’s Yeast-Vite Ltd v Horsenail  (1934) 51 RPC 110, where the phrase “Yeast tablets, a substitute for Yeast-Vite” was not considered infringement.

The various uses of BOTOX were found not to be uses as a trade mark on the basis that:

  • BOTOX was used in a manner that distinguishes Allergan’s products from those of Self Care through use of the word “alternative”
  • The use of ® when it appeared adjacent to BOTOX acknowledged the trade mark as a badge of origin of products made by Allergan
  • There was use of FREEZEFRAME and PROTOX as brand names to identify Self-Care’s products
  • Self-care used BOTOX not to indicate a connection with itself but to compare and contrast its products

Justice Stewart  referred to the use of “Instant Botox® Alternative” in a one-week in-store promotion as a single possible exception, but nevertheless also considered that not to be use as a trade mark.

Justice Stewart went further and expressed the view that none of the phrases or expressions used by Self Care amounted to use of a trade mark deceptively similar to BOTOX. He indicated that even “Instant Botox® Alternative” it is not deceptively similar because use of the word “alternative” indicates that the product being advertised is quite different from BOTOX.

Concluding Comments

If the defence under s122(d), regarding use of a trade mark for the purposes of comparative advertising, had been argued, it may have been successful. However, that section remains unconsidered by the Courts.

Clearly, the owners of well-known trade marks have an interest in limiting or restraining other businesses from using their trade marks. Whether or not consumers are confused by the use of such references is a separate question from whether, by using a well-known trade mark, there is some level of association that benefits the user, potentially to the detriment of the brand owner.

The current decision, while favouring those who wish to reference third party brands, will no doubt raise questions as to where the line is to be drawn between permissible and impermissible uses.

While not essential to the ultimate decision, the view expressed that “Instant Botox® Alternative” is not deceptively similar to BOTOX, is a somewhat controversial one.

An appeal has been filed and its outcome will be awaited with interest.

Authored by Sean McManis

7 min read

Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (4 November 2020)

The Full Federal Court has upheld the primary judge’s decision to cancel Urban Alley Brewery Pty Ltd’s (Urban Alley) registration for “Urban Ale”.   The decision considers the issue of distinctiveness and highlights important lessons regarding the enforcement of trade marks which have descriptive significance, within the trade and relevant market.

Primary Decision

Urban Alley owned Registration No. 1775261 for the trade mark Urban Ale covering “beer” in Class 32 and dated 14 June 2016. Urban Alley sued La Sirène Pty Ltd (La Sirène) for use of the trade mark:

(URBAN PALE label) on its beer product, launched in October 2016.  Urban Alley also sought cancellation of La Sirène’s registration for the URBAN PALE label.

La Sirène filed  a cross claim for cancellation of Urban Alley’s Urban Ale registration under s88(1)(a) of the Trade Marks Act 1995 on the basis that:

  • Urban Ale is not capable of distinguishing beer products (s 41(1)); and
  • Urban Ale was deceptively similar to an earlier third party mark Urban Brewing Company, registered under Registration No. 1760362 and covering beer (s 44(1)).  [1]

In the primary decision Justice O’Bryan cancelled the Urban Ale mark on both grounds, finding that:

  • Urban Ale was not capable of distinguishing beers because the ordinary signification of the combination “urban” and “ale” was of a craft beer brewed in an inner-city location; and
  • Urban Ale was deceptively similar to the earlier Urban Brewing Company mark. 

While there was no infringement because the Urban Ale registration was cancelled, the primary judge went on to consider whether La Sirène’s use of its URBAN PALE logo would have infringed the Urban Ale registration, and if so, whether it had defences to infringement that:

  • La Sirène used URBAN PALE in good faith to indicate the kind, quality or other characteristics of the products (s 122(1)(b)(i); and
  • La Sirène was exercising its rights to use the mark as registered  (s 122(1)(e)) as it had obtained a registration for the URBAN PALE label in use during the litigation.

The primary judge found that URBAN PALE was used as a product name and not as a trade mark, and therefore did not infringe the Urban Ale registration. 

On upholding the first defence, La Sirène was found to have used URBAN PALE as a description to  indicate the nature and style of the product as a craft beer brewed in an urban location. 

In relation to the second defence, La Sirène had used its URBAN PALE label as registered under its Registration No. 1961656 and so had a defence under s 122(1)(e).  [2]

The primary judge also found that Urban Alley had not made out grounds for cancellation of La Sirène’s registration for the URBAN PALE label. 

Appeal Decision

Urban Alley appealed, challenging the primary judge’s findings.

  1. Capable of distinguishing

On the first ground of appeal, that the primary judge erred in finding Urban Ale not capable of distinguishing, the judges noted that the primary judge’s finding might ordinarily seem surprising.  However, their honours noted that the decision was based on contextual facts and usage of the word “urban” in the brewery trade.  They referred to the primary judge’s findings that:

  •  it was well understood that many brewers are located in urban areas and, when used in relation to beer, “urban” “conveyed the meaning that the beer was brewed in a city location as opposed to a country location”[3];
  • “‘urban’ had come to signify craft beer made in an inner city location” and could also be laudatory indicating that the beer is “fashinonable”, “trendy” or “cool” [4] ;
  • there was evidence that journalists had used “urban” to refer to beer producers and breweries had used “urban” as part of their product names;
  • ordinary consumers would understand “urban” as referring to a craft beer produced in an innner city location; and
  • “urban ale”, in its ordinary signification, would therefore indicate craft beer produced in an urban location.

The judges found no appealable error in the primary judge’s finding and agreed that Urban Ale was not capable of distinguishing. [5]

  1. Deceptive similarity

The appeal judges found no error in the primary judge’s finding that “Urban Ale” was deceptively similar to the “Urban Brewing Company” mark. 

On appeal, Urban Alley argued that the primary judge’s comments that the marks meant different things – with Urban Ale referring to beer and Urban Brewing Company referring to a maker of beer – meant that the judge ought to have found the marks not deceptively similar.  However, the appeal judges noted that these comments were made in the side by side comparison of marks for assessing whether the marks were substantially identical.  The judges noted that “ the test of deceptive similarity is fundamentally different. It is not a studied comparison. Rather, it is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect”.  [6]  The appeal judges agreed with the primary judge’s finding that, while Urban Ale and Urban Brewing Company had different meanings in a side by side comparison, there is a close association between the two marks making them deceptively similar.

Urban Alley also argued that substantial weight should be given to the other elements “ale” and “brewing company” in the marks and that those elements had “no relevant trade mark resemblance”.  [7]  However, their honours noted that the marks must be considered as a whole:

It is impermissible to dissect each mark to emphasise its disparate elements and then compare the disparate elements of each in order to reach a conclusion on deceptive resemblance. To start with, this would leave out entirely the impact of the common element “urban”. It would also ignore the synergy between the word “urban” and the other word(s) in each mark. This synergy contributes to the impression gained of each mark, which is carried forward into the relevant comparison between the two.”.  [8]

Given that “ale” and “brewing company” would be clearly associated in meaning, and were both combined with the element “urban”, the appeal judges agreed that the marks were deceptively similar. 

While the appeal judges upheld the primary judge’s decision to cancel the Urban Ale mark, and the case on infringement could not therefore succeed, the judges went on to consider the other grounds of appeal.    

  1. Use of URBAN PALE as a trade mark

On the question of whether La Sirène used URBAN PALE as a trade mark, the appeal judges agreed with the primary judge’s finding that URBAN PALE was used as “a product name that is descriptive of the nature and style of the beer product”.   [9]  They agreed that consumers would understand URBAN PALE as referring to a craft beer brewed in an inner city location (“urban”) in a pale ale style (“pale”) and would not see URBAN PALE as a trade mark for distinguishing the beer products from those of other traders.  

They noted that URBAN PALE was the most prominent element on La Sirene’s label and that  ordinarily this would be persuasive in finding trade mark use.  However, because URBAN PALE would be seen as a product description, trade mark use could not be found.  The judges referred to the primary judge’s words “I do not consider that prominence converts the essentially descriptive name into a mark indicating the source of origin”.  [10]

Urban Alley’s appeal was dismissed on all grounds.  [11]

Takeaways

This decision is a reminder of the limitations of adopting and registering marks with descriptive significance.  Competitors may easily avoid infringement where they can argue that they are using their trade mark descriptively.  Further, a registration for a descriptive mark will be vulnerable to cancellation on the basis that it lacks distinctiveness.  Trade mark owners are advised that the strongest rights to be obtained are in registrations for marks which have no descriptive significance in relation to the goods or services.

The case also indicates that giving prominence to a mark in labelling will not convert descriptive words into trade marks.  Further, registering a label with prominent, but descriptive, elements will not give exclusive rights to the descriptive elements.


[1] In the primary decision La Sirène had also sought cancellation of the Urban Ale registration on the basis that Urban Alley was not the owner of the Urban Ale mark due to the earlier registration for Urban Brewing Company (s 58).  This was dismissed on the basis that the marks were not substantially identical and the primary judge’s decision on this point was not appealed.

[2] La Sirène had also raised a defence under s 222(1)(e) on the basis of its registration for “Farmhouse Style Urban Pale by La Serene” covering beers. However, the primary judge did not consider it necessary to consider that defence, given that La Sirène could already rely on its registration for the URBAN PALE logo for the defence under s 222(1)(e).

[3] Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (4 November 2020), paragraph 59.

[4] Ibid, paragraph 60.

[5] Urban Alley had argued that the primary judge had suggested that “Urban Ale” was allusive and metaphorical when finding that it indicates beer made in an urban location which is “cool” or “trendy” and therefore could not be directly descriptive.  This was dismissed, with the judges saying “urban” has a clear and direct meaning.  They also tried to argue that the mark did not indicate a characteristic of the beers and therefore did not fall within the Note after s 41 [5]because it did not indicate a “characteristic” of the beers in terms of flavour or style.  This argument was unsuccessful, with the judges finding that Urban Ale could indicate  other “characteristics” such as beers produced in an inner city location.

[6] Ibid, paragraph 99.

[7] Ibid, paragraphs 105 and 106.

[8] Ibid, paragraph 106.

[9] Ibid, paragraph 119.

[10] Ibid, paragraph 119.

[11] The judges did not need to consider Urban Alley’s challenge of the primary judge’s decision that La Sirène could rely on the defence that it used URBAN PALE to indicate the kind, quality or other characteristics of the beer products (s 122(1)(b)(i).  This was because they had already upheld the primary judge’s decision that Urban Ale functions descriptively and is not inherently adapted to distinguish and the issues were essentially the same in relation to URBAN PALE.

Urban Alley had also challenged the primary judge’s finding that La Sirène would have a defence under s 122(1)(e), as it used the URBAN PALE label as registered, and the primary judge’s refusal to cancel La Sirène’s registration for the URBAN PALE label.  These grounds of appeal were dismissed.  Firstly, it was unnecessary and too remote to consider any defence under s 122(1)(e), given there was no infringement.  Secondly, Urban Alley’s registration for Urban Ale, which would have blocked the application for the URBAN PALE logo, had been removed from the Register.

Authored by Michelle Howe and Sean McManis

4 min read

In Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc, [2020] FCA 235 the Full Federal Court of Australia considered appeals against the In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193 decision, which involved proceedings by In-N-Out Burgers, Inc (“INO”) against the use of DOWN-N-OUT by Hashtag Burgers Pty Ltd (“Hashtag”), in relation to (inter alia) hamburgers and restaurant services.  A summary of the primary judge’s decision was previously reported by our firm – CLICK HERE.

Background

In the primary decision, Katzman J held that use of Down-NOut infringed a registration for In-N-Out and that the Hashtag directors, Benjamin Kagan and Andrew Saliba, were jointly and severally liable for trade mark infringement, passing off and misleading and deceptive conduct in breach of s18 of the Australian Consumer Law (“ACL”) for conduct prior to 23 June 2017, being the date on which Hashtag was incorporated. 

Hashtag appealed this decision by challenging the finding of deceptive similarity.  Further, Hashtag challenged Katzman’s conclusion that Kagan and Saliba adopted the marks for the deliberate purpose of appropriating INO’s marks, branding or reputation.  Hashtag also challenged the primary judge’s findings concerning misleading or deceptive conduct and passing off.

INO filed a cross-appeal regarding the liability of Kagan and Saliba after the date on which Hashtag was incorporated.

TM Infringement by Hashtag

In support of this appeal, Hashtag alleged the following errors were made by the primary judge when assessing deceptive similarity:

  1. failing to give weight to the presence of the word BURGER in the INO trade marks;
  2. failing to assess the effect of the arrows in the composite INO trade marks;
  3. placing undue emphasis on the “N-OUT” aspect of the INO trade marks and attributing insufficient significance to the difference between “DOWN” / “D#WN” and “IN”;
  4. failing to give sufficient weight to the difference in meaning between the respective marks, and the ideas conveyed by those marks;
  5. placing significant or dispositive weight on aural similarity and setting aside material visual differences between the marks;
  6. framing the central question as one focussed on imperfect recollection; and
  7. placing apparent weight on evidence of confusion from social media posts and no weight on the absence of evidence of actual confusion.

The Full Federal Court unanimously dismissed Hashtag’s appeal in relation to trade mark infringement.  Nicolas, Yates and Burley JJ did not accept any of Hashtag’s criticisms concluding they paid insufficient regard to the rigour with which the primary judge approached her judgment. While their Honours confirmed that the “idea” or “meaning” of a mark has a role to play in determining deceptive similarity, this only forms a part of the overall analysis.

Separately, Hashtag challenged the primary judge’s conclusion that Kagan and Saliba acted dishonestly in adopting their trade marks.  

In relation to this, the Court found that her Honour erred in her findings of dishonesty but that did not vitiate the primary judge’s conclusions as to intention or deceptive similarity because:

  • a finding of dishonesty is not a necessary part of the assessment; and
  • her Honour separately found the requisite intention to cause confusion on the part of Messrs Kagan and Saliba.

Consequently, the appeal failed.

ACL and Passing Off

Hashtag also appealed the primary judge’s decision in relation to allegations of misleading or deceptive conduct arising under s18 of the ACL and the tort of passing off on the bases that:

  1. the impugned marks are not deceptively similar to the names or logos used in INO Burgers’ registered marks;
  2. the different trade dress, get-up, uniforms, décor, menus and other trade indicia adopted by the respective businesses, when combined with the parties’ different trading names, dispelled any real danger of deception occurring;
  3. the primary judge wrongly applied the measure of “imperfect recollection” when considering the response of the notional consumer.

The Full Federal Court rejected Hashtag’s first claim for the same reasons as the trade mark infringement ground outlined above.  While the Court acknowledged that the primary judge used the phrase “imperfect recollection”, their Honours were satisfied that Katzman J applied the applicable test correctly.  In this regard, Hashtag did not challenge Katzman’s finding that a not insignificant number of members of the relevant class of consumer would have been led to consider that there was an association of some kind between INO and the people behind DOWN-N-OUT.

Hashtag also submitted that in order to uphold a claim of passing off, there must be goodwill in the relevant mark (in the sense of a business with customers in the jurisdiction).  However, their Honours confirmed the longstanding principle in Australia that it is not necessary to have a place of business in Australia in order to maintain a passing off action. It is sufficient that the goods have a reputation in Australia to a sufficient degree to establish that there is a likelihood of deception among consumers, and potential consumers, and of damage to its reputation – see ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176.

On this basis, Hashtag’s appeal was dismissed.

Cross-Appeal by INO

INO cross-appealed Katzman’s decision on the basis that Kagan and Saliba were liable as joint tortfeasors for infringing conduct which took place after Hashtag was incorporated, namely 23 June 2017.  Contrary to the primary judge’s finding, their Honours concluded that Kagan and Saliba’s conduct as individuals went beyond the threshold of performing their proper roles as directors to that of joint tortfeasers on the basis that:

  • Kagan and Saliba were the sole directors of Hashtag;
  • Kagan and Saliba made decisions as to Hashtag’s management;
  • Kagan and Saliba alone received the profits derived from Hashtag;
  • There was no significant difference between the way that Kagan and Saliba operated the business before incorporation and the way in which they operated it through the corporate vehicle after it was formed;
  • Kagan and Saliba were knowingly involved in Hashtag’s wrongdoing;

On this basis, the Full Federal Court allowed INO’s cross-appeal and ordered (i) costs for the appeal against Hashtag, and (ii) cost for the cross-appeal against Kagan and Saliba.

Related Article: Hashtag Burgers Down-N-Out – Trade Mark Infringement, Misleading Conduct and Passing Off  – April 2020

Authored by Nathan Sinclair and Sean McManis

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

2 min read

On 1 March 2020, the Vanuatu Trade Marks Office (“VTMO”) announced the introduction of a new annual maintenance fee (“the AM Fee”) for all Vanuatu trade mark registrations.

The AM Fee has currently been set at US$35 and is due on or before the “anniversary date” of the trade mark. The anniversary date is taken from the date of the receipt of the file in the Vanuatu Office (i.e. the filing date). For older Vanuatu marks, which were based on re-registrations of United Kingdom registrations, the anniversary date is calculated from the filing date of the UK mark.

The AM Fee is payable for nine (9) consecutive years before the renewal fee applies. It is not payable on renewal.

The VTMO will issue a reminder notice and invoice for the AM Fee to the agent of record, however, according to present advice, there are delays in the implementation process. As a result, issuance of reminders for the AM Fee may not commence until 2021.

There is currently no official grace period for payment of the AM Fee and no penalty fee for late payment.

The new requirement is an unexpected development that presently seems to be administratively burdensome for international owners of registrations, and we wait to see if there will be some revision once actually operational.

Shelston IP deals directly with the Vanuatu Trade Marks Office and various other South Pacific intellectual property offices with respect to trade mark rights.

If you require further information regarding the Vanuatu AM Fee or assistance with other IP rights in South Pacific jurisdictions, please let us know.

Authored by Kathy Mytton and Sean McManis