4 min read

A design application by Aristocrat Technologies Australia Pty Limited (Aristocrat) for a bank of gaming machines has been refused because the representations were inconsistent with the product name for the design.  The decision shows that products made of assembled components must be carefully illustrated or run the risk of refusal.

Key takeaways

  • Components of products must be shown connected together in assembled form to be registered as a single product
  • Expert evidence may be of little use during prosecution of design applications
  • Arguments in favour of registration of a design based on previous registrations of similar designs are unlikely to succeed

Background

Aristocrat filed design application AU 201816709 for a “bank of gaming machines” (the Design) in relation to four gaming machines arranged in pairs back to back, as shown below.

During formalities examination, the Design was objected to for not showing the named product – a bank of gaming machines – in a “fully assembled” state because the gaming machines were spaced apart from each other in the representations.  For this reason, the Design was not in relation to a single product, but four separate gaming machines.

Aristocrat unsuccessfully argued that there was a single product – the “bank” of gaming machines.  As the objection was maintained, Aristocrat sought a hearing before a Delegate of the Registrar of Designs (the Delegate) to overcome the formalities objection.

Arguments

Aristocrat submitted evidence from a long time employee, Mr Attwood, asserting that it was common to install and replace gaming machines in groups or “banks”.  The representations illustrated this type of bank.

Aristocrat further submitted that the bank was a “complex product” under the Designs Act 2013 (the Act), which enabled designs for separately made components of a complex product to be registered. In this case, the individual gaming machines were separately made components of the bank, being a “complex product” and so were registrable.

Aristocrat also submitted that the bank could be a “kit”, which may be assembled by an end user.  The Act permitted the registration of designs for kits.

Aristocrat further submitted that the Designs Office had previously registered designs for banks of gaming machines.  Accordingly, the Design should also be registered for consistency in decision making by the Designs Office.

Decision

The Delegate cast doubt on the usefulness of the Attwood’s evidence.  Formalities examination did not require any consideration of an informed user, as represented by Mr Attwood.  Also, Mr Attwood was not independent, being an employee of Aristocrat. 

The Delegate then considered the definitions in the Act for the terms “product”, “complex product” and “kit”. 

The Delegate noted that the definition of “complex product” states that it must be capable of disassembly and re-assembly.  This implied that a complex product must be an assembly of its component parts.  Based on the ordinary meaning of “assembly”, the Delegate held that there must be some physical connection between the component parts. 

However, in the Design, none of the gaming machines were physically connected.  Accordingly, the bank of gaming machines was not in an assembled form and so did not show a complex product.

Aristocrat conceded that the gaming machines were not physically connected in the bank.  Aristocrat argued that they were in fact connected by electronic connections hidden from view and thus were not shown in the representations. 

The Delegate rejected that this argument as it assumed that a complex product was shown in the representations when this was not the case. 

The Delegate also rejected that the hidden connections should be read into the representations.  Such an approach was speculative as there was not any detail of those connections and it would render the scope of the design registration unclear.

The Delegate further rejected that the Design could be a registrable kit.  The definition of “kit” was qualified by the requirement that it is only taken to be a product “when assembled”.  Since the Design did not show the bank of gaming machines as assembled, the Design failed to meet this definition.

Finally, the Delegate agreed that there should be consistency in decisions made by the Designs Office, but said that each design application must be considered on its own merits.  The existence of similar registrations does not override the correct application of the Act and there was a small sample of prior registrations cited by Aristocrat.

Accordingly, the Delegate found that the representations did not illustrate a single product, being a bank of gaming machines.  Instead the Design showed four separate gaming machines and thus multiple designs.  Consequently, the Delegate refused to register the Design because Aristocrat had the opportunity to pay the extra official fees for the additional designs but chose not to do so.

Significance

The decision illustrates that care must be taken when preparing representations for a design that it shows a “product” within the definitions of the Act.  In this instance, the apparent lack of connections between the gaming machines was fatal to the registration of the Design.

The decision also illustrates that expert evidence may be of little assistance during formalities examination.  Also, arguments in favour of registration based on previously registered designs have little persuasive merit and are unlikely to succeed.

Authored by Andrew Lowe and Allira Hudson-Gofers

4 min read

Lamont v Malishus & Ors (No.4) [2019] FCCA 3206

On 14 November 2019, Manousaridis J of the Federal Circuit Court handed down his decision in the trade mark dispute over use of the name “MALISHUS”.

The Court found infringement of MALISHUS trade mark registrations through use of that word in domain names and on Facebook pages offering for sale clothing in Australia.

Background

The applicant, Darren Lamont (“Lamont”) is a musical artist who has been performing under the name “MALISHUS” since 2005.

Lamont owns four registrations for trade marks containing or consisting of the word MALISHUS, namely:

  • no. 1127629 in class 25 for clothing, accessories, headwear and footwear;
MALISHUS KONCEPT
  • no. 1523037 in class 25 for clothing, accessories, headwear and footwear;
MALISHUS
  • 1639005 MALISHUS in class 41 for musical services; and
  • 1640398 MALISHUS in class 25 for apparel (clothing, footwear, headgear).

The respondent company, Malishus Limited, was incorporated in New Zealand in May 2013 with Robert Jurcic and Clinton Selwyn as directors. Prior to incorporation, Jurcic and Selwyn, who both lived in Victoria, operated in partnership.

Jurcic became aware of Lamont’s earliest MALISHUS trade mark in 2007 but he and Selwyn proceeded to register the domain names malishus.com and malishusbrands.com. Business name registrations for MALISHUS were obtained in August 2010 and a Facebook social media page was created in March 2011. From around July 2011, Jurcic and Selwyn operated an e-commerce website under the malishus.com domain name.

They also owned various Australian trade mark registrations and applications for marks containing MALICIOUS or MALISHUS, including a MALISHUS & Device registration in respect of sunglasses (but not clothing), as well as owning MALISHUS registrations in New Zealand, the United Kingdom and the United States.

After a failed attempt to have Lamont’s earliest MALISHUS KONCEPT mark removed from the Register for non-use in 2012, the respondents closed down the malishus.com website and, in August 2013, they transferred operations of the e-commerce site to the newly registered malishus.co.nz domain name. They also registered the domain name malishus.com.au.

Lamont claimed that one or more of the respondents infringed his MALISHUS trade marks by:

  • registering and using domain names incorporating the word MALISHUS in connection with the sale of MALISHUS branded clothing;
  • selling or offering for sale in Australia clothing to which the word MALISHUS was applied; and
  • posting advertising material on Facebook that included the word MALISHUS in connection with clothing.

Lamont also claimed that by using the word MALISHUS the respondents had engaged in misleading and deceptive conduct.

Key Issue

The respondents admitted that they had used the name MALISHUS in their domain names and business in respect to the sale of clothing, but denied that there was any use of the trade mark in Australia. They said that only sunglasses (use on which would not infringe Lamont’s registrations) were directed to the Australian market and that their clothing business was directed outside of Australia to countries where they held relevant trade mark rights.

Trade Mark Infringement

The Court found that use of the malishus.com domain name by the respondents was use of MALISHUS as a trade mark in relation to clothing in Australia. This was because the respondents intended or directed or targeted the domain name malishus.com to consumers in Australia through representations that the clothing displayed on the e-commerce site was available to Australian consumers. Online advertising included statements such as “Free Shipping Any Where” and the respondents did not make it clear that the clothing products were not available in Australia. The malishus.com domain name was substantially identical to Lamont’s MALISHUS word mark registrations in class 25, and deceptively similar to his earliest composite MALISHUS KONCEPT trade mark in that class, and so infringement was established.

His Honour also found that offers for sale of clothing to Australian consumers, made via the respondents Facebook page, also constituted infringement.

However, the mere registration of a domain name does not amount to infringement, and as there was no use of the malishus.com.au domain name, the registration of that domain name did not infringe Lamont’s registrations.

Further, the domain name malishus.co.nz was found to be directed solely to persons in New Zealand, and not Australia. Consequently, use of that domain name and use on that site did not infringe any registrations.

His Honour found that Lamont was not able to establish a sufficient reputation in MALISHUS in Australia to found a claim for misleading or deceptive conduct under the Australian Consumer Law.

Remedies

A permanent injunction was granted restraining Jurcic and Selwyn from using MALISHUS in Australia as a trade mark in relation to T-shirts or any other clothing apparel, footwear or headgear.

The domain names malishus.com and malishus.com.au and the MALISHUS business name were cancelled.

As Lamont was not able to establish that he had suffered any damage, only $10 in nominal damages were awarded for the infringement. However, in light of the respondent’s flagrant infringement and, as a deterrent, the judge ordered additional damages of $25,000 plus interest. The respondents were also required to file an affidavit in respect of any articles of infringing clothing held by them stating whether they had been destroyed or whether the offending trade mark had been removed.

Presumably due to the quantum of the award made, Lamont has applied for an extension of time for leave to appeal the decision.

Lesson

This case confirms that while the mere registration of a domain name does not amount to infringement, its use in relation to the sale of products targeting the Australian market may infringe an Australian trade mark registration, as may other uses on the website.

The internet facilitates a global marketplace, but it also exposes online businesses to trade mark infringement overseas. In order to avoid or minimise this risk, online businesses should take care to ensure that they are not targeting a wider market than intended. Appropriate steps include clearly defining the market at which the products are directed, indications of where products can and cannot be sent, and appropriate disclaimers in online advertising.

Authored by Kathy Mytton and Sean McManis