7 min read

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

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

Background

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

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

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

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

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

Federal Court Appeal

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

Section 44

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

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

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

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

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

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

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

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

Section 60

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

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

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

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

Section 42(b)

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

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

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

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

Authored by Nathan Sinclair and Sean McManis

7 min read

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

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

Background

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

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

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

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

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

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

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

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

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

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

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

Appeal

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

Infringement

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

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

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

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

Deceptive Similarity

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

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

PDP’s removal claim

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

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

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

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

Grasshopper’s removal claims

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

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

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

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

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

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

ACL and passing off

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

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

Takeaway

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

Authored by Kathy Mytton and Sean McManis

2 min read

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

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

Background

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

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

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

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

Grounds of Opposition

Section 60 – Reputation

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

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

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

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

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

Decision

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

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

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

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

Final Comment

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

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

Authored by Danielle Spath and Sean McManis

2 min read

After a COVID-induced “false start” last year, the International Olympic Committee (IOC) and Japanese Government decided to proceed with the “2020” Tokyo Olympic Games last month. Following reports that Tokyo was experiencing its highest number of new COVID-19 cases in six months, the relevant governing authorities decided that all sporting events in the host city would take place without spectators.

Given the various levels of COVID-19 “lockdown” restrictions currently in place around the world, the number of viewers watching the Tokyo Olympic Games is expected to rise into the billions.  Given the power of their Olympic brand (and associated value in corresponding commercial sponsorships), the IOC is well known for vigorously defending their rights in relation to any unauthorised use, particularly those involving so called “ambush marketing”.

Olympic levels of protection

The Tokyo Olympic Organising Committee have helpfully issued Brand Protection Guidelines about who may use the relevant properties and the context of acceptable use – see gtimg.tokyo2020.org/image/upload/production/eryzza4bg3fzqtd7g9ox.pdf. This document confirms the intellectual property and images associated with the Olympic (and Paralympic) Games are protected by the Japanese Trademark Act, the Unfair Competition Prevention Act, the Copyright Act, and other laws in Japan.

Beyond the protection afforded to the Olympic properties by this Japanese legislation, there are numerous other laws and treaties in place to prevent unauthorised use of these properties.  For example, the Nairobi Treaty (of which Australia is not currently a signatory) requires party states to protect the “Olympic rings” symbol against commercial use unless it has been authorised by the IOC. 

Further, it has now become commonplace (since the 1976 Montreal Olympics) for individual countries to pass permanent national legislation to protect the Olympic properties, particularly in countries which are hosting the games.  In Australia, the relevant legislation protecting these Olympic properties is the Olympic Insignia Protection Act 1987 which defines terms such as OLYMPICS and OLYMPIC GAMES as “Protected Olympic Expressions”.  Apart from these protections, the IOC also seeks to register trade marks properties to protect the various editions, such as LONDON 2012, RIO 2016, TOKYO 2020 (even TOKYO 2021!) and associated logos, design elements and mascots.

Let the Games begin!

The Olympic Games are undoubtedly one of the world’s most famous brands. To ensure the Olympic brand maintains its premium status, the IOC carefully selects its partners and exerts full control over who broadcasts the events and how its brands are marketed. 

The IOC is primed to enforce its legal rights (where necessary) to prevent unauthorised use, often employing technology to track and take down unauthorised content particularly in relation to social media and ambush marketing.  The IOC’s proactive approach toward brand protection of the Olympic image has provided it with unmatched control and helped to prevent brand dilution.

Authored by Nathan Sinclair and Sean McManis

4 min read

Crowdsourcing can currently be defined as “the practice of obtaining needed services, ideas, or content by soliciting contributions from a large group of people and especially from the online community rather than from traditional employees or suppliers” (Merriam Webster Dictionary).  However, the idea of crowdsourcing itself is not new and existed well before the age of the internet.  Here, we consider crowdsourcing and its merits and risks in the context of intellectual property. 

Why use crowdsourcing?

Crowdsourcing has the potential to open up new ideas and possibilities by harnessing ideas which would not otherwise have been realised.  In principle, crowdsourcing can facilitate results via outside-of-the box thinking and by increasing the number of minds applying themselves to a particular problem or challenge. 

What are some examples of crowdsourcing?

Crowdsourcing strategies are used in a variety of technical and non-technical fields. 

One example of crowdsourcing that pre-dates the internet era is the design of the Sydney Opera House.  The winning design for this iconic landmark, by Danish architect Jørn Utzon, was chosen from an international competition in the mid-1950s.  

An example of an internet-based crowdsourcing site is the Lego Ideas Platform, which is used as a community for fans to share their own Lego creations.  The most popular ideas are assessed for potential production into new Lego sets to be sold to the public. 

Various online crowdsourcing platforms exist for logos, brand names, images, product redesign, software solutions, as well as problem-solving challenges.  Global companies are using crowdsourcing platforms seeking new innovations in technical fields including pharmaceuticals, clean tech and engineering to mention but a few.

How is intellectual property relevant?

Intellectual property rights present an opportunity to protect valuable innovations and creations and in turn realise value through exclusive rights with a defined scope and period of time.  In the hands of third parties, intellectual property rights pose a barrier and risk to new market entrants.  Therefore, it is important to consider:

  • Patent law – when solutions to technical problems are sought via crowdsourcing
  • Trade mark law – when crowdsourcing is used to come up with new product names, logos or brands
  • Design law – with respect to the visual appearance of new and distinctive products
  • Copyright law – with respect to artistic works such as drawings and literary works (any original text)

Managing intellectual property when crowdsourcing ideas

Crowdsourcing might raise issues regarding ownership of the resultant intellectual property.  Ownership of rights to crowdsourced intellectual property will generally not be governed by the usual laws which relate to contracts of employment – except, perhaps, if a company runs an internal crowdsourcing exercise in which only its own employees participate.  

Express and clear contractual terms (such as in terms and conditions which contributors are required to actively acknowledge) dealing with intellectual property ownership and licensing/use are therefore critical, just as they would be when engaging any third party contractor/consultant.  Payment for a winning response can be arranged as consideration for an assignment by agreement of all of the associated intellectual property rights.  An alternative mechanism for the formal legal transfer of the relevant intellectual property rights is by way of a deed, which does not require any consideration but does have other requirements. 

Novelty and inventive step are requirements for securing patent protection in Australia and virtually all other jurisdictions.  So, until a patent application is filed, it is prudent to avoid publishing too many (or, ideally, any) details of an invention (e.g. on a website).  If too much information is disclosed, this could later cause an invention to be ineligible for patent protection.  This is incredibly important, especially because some key jurisdictions have no grace period (Australia does have provisions protecting against self-disclosure within a specified period before a patent application’s filing date).  In this regard, we would recommend getting professional advice before making any disclosure.  

Also, it is important to be mindful of possible secret use issues associated with making commercial gain from an invention before the patent application is filed.  If the invention has been exploited commercially before the first patent application is filed, this could render the subsequently-filed patent invalid.  

In addition, it is worthwhile remembering that any information disclosed in a crowdsourcing context is available to competitors. 

A crowdsourced solution still needs the usual due diligence checks.  For instance, a granted patent confers an exclusive right to exploit the claimed invention (including but not limited to importing, using, making, selling or offering to sell a patented product or using a patented method), and to prevent others from doing so (via court proceedings).  However, the patent does not give the owner the right to exploit the invention without infringing other parties’ intellectual property rights or without obtaining any necessary regulatory approvals, so it is recommended to carry out relevant investigations to find out if exploiting the invention would infringe a patent belonging to somebody else (“Freedom to Operate”).  

Similarly, trade marks, registered designs and copyright also confer exclusive rights, so due diligence checks are needed to establish whether the proposed name or brand, design or appearance, or associated literature or artistic work might infringe the existing intellectual property rights of others.

Conclusion

Crowdsourcing has the ability to unlock ideas not previously considered, but it is not guaranteed to provide solutions. 

We recommend evaluating the potential benefits of crowdsourcing against the associated risks before proceeding.  Intellectual property can be the cornerstone of a business so it is critically important to take into account when developing a business strategy.  For advice, please contact Shelston IP. 

Authored by Serena White, DPhil and Duncan Longstaff

1 min read

Shelston IP is very pleased to announce their promotions from 1 July 2021.

Ean Blackwell is our newly appointed Principal.

Ean works within our Biotechnology and Chemistry team. Ean is an AU/NZ Patent Attorney, a Chartered UK and a European Qualified Patent Attorney with industry experience as a research scientist. Ean’s IP career has spanned three continents, having practiced in Asia, Europe and Australia. He has particular experience in the plant molecular biology, biotechnology and Big Pharma industry sectors.

Kathy Mytton has also been elevated to Senior Associate.

Kathy is a solicitor and registered trade mark attorney with over 20 years’ experience across a broad range of industries for protection of trade mark rights in Australia, New Zealand and other foreign jurisdictions. She has extensive proven experience in providing strategic and commercially focused advice to clients.

Congratulations on this important milestone in your career.

Authored by Ean Blackwell and Kathy Mytton

In a previous article, we noted the enactment of the Republic of Nauru Trademarks Act 2019 (the Act) and Trademarks (Forms and Fees) Regulations 2020 (Regulations).

In this article, we delve a little deeper and provide a brief outline of the registration process.

The Act allows for registration of a “mark” which includes a sign, slogan, device, brand, heading, label, ticket name, word, letter, numeral, aspect of packaging, shape, colour, sound, scent, hologram, motions, textures, or any combination of these. Collective marks are available but certification marks are not.

It is possible to register both goods and services, but multi-class applications are not available.

An application for registration must be signed by the applicant and include a declaration for use or intention to use the trade mark.

Provided the application meets formality requirements, details are published in the Gazette for opposition purposes. Interested parties then have 21 days to file opposition against the application.

If an opposition is filed, the Registrar will provide a copy of the Notice of Opposition to the applicant, who then has 21 days to file a response. Failure to do so may result in the application being abandoned. If the applicant files a response within the prescribed time, the Registrar will provide this to the opponent and require the parties to provide such other information necessary to make a decision.

If no opposition is filed, or is deemed unsuccessful, the application undergoes examination on both absolute and relative grounds. If there are any objections to acceptance, the Registrar will issue a non-compliance notice and the applicant has a short period of 30 days from the date of receipt of the notice to resolve them.

If the application passes examination without objection(s), or once any identified issues are overcome, the Registrar will issue a Notice of Decision (Acceptance) and subsequently a Certificate of Registration.

The application process is anticipated to take no longer than 90 days from the date of filing. The Registrar has the power to reject an application and deem it abandoned where the applicant fails to complete the registration process within this timeframe.

Registration is deemed to have come into effect from the date of filing and, subject the payment of a prescribed annual maintenance fee, the trade mark is registered for a period of 10 years.

It is possible to claim convention priority based on a foreign application filed within the preceding six months of the application in Nauru. It remains to be seen how this will work in practice in the context of competing rights given the prescribed three month trade mark registration process.

A unique feature of the Act is the possibility of adding goods or services to the registration, thus extending the scope of protection. The application for addition of goods or services is published in the Gazette and third parties have 14 days to oppose the request, failing which the Registrar may alter the registration.


Shelston IP can act directly before the Nauru Trade Marks Registry to obtain trade mark registrations for our clients.

If you require further information or would like assistance with the filing of a trademark application in Nauru, please let us know.

Authored by Kathy Mytton and Sean McManis

3 min read

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

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

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

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

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

The opposition grounds were:

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

Likely to deceive or cause confusion

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

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

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

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

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

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

Bad Faith

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

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

On the basis that:

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

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

Conclusion

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

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

Authored by Sean McManis

2 min read

Managing Intellectual Property (MIP) IP Stars publication has listed Shelston IP once again as a Tier 1 firm for both patent and trade mark prosecution. Four of our Principals have been recognised individually as IP Stars.

MIP’s IP Stars is the leading resource and most respected guide in the IP profession. Their worldwide survey of IP practitioners is used as a key benchmark for the industry.

Congratulations to all our IP Stars for being recognised as leaders in the IP industry:

Paul Harrison

Paul is a Principal and head of the chemical biotechnology team. He has over 35 years’ experience in the protection and enforcement of IP rights in Chemical Engineering and Chemistry technologies and is valued by his clients for his strategic and pragmatic approach to intellectual property.

Sean McManis

Sean heads Shelston IP’s Trade Marks team. He has extensive experience in assisting clients with trade mark protection and selection. He has been recognised by Managing Intellectual Property as an IP Star for the last 6 years and was a finalist in the 2020 Client Choice Awards for Best IP Specialist.

Charles Tansey, PhD

Charles is a Principal and experienced patent attorney with 25 years’ experience in the drafting, prosecution, enforcement and defence of patents in Australia and overseas. His technical experience across a wide range of chemistry related technologies is sought out by domestic and multinational clients.

Peter Treloar

With over 25 years of experience, Peter is an authority in Patents in Australia and New Zealand for complex electronics, computer science, and optics, with a particular bent for complex mathematical material.

5 min read

Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31

The Full Federal Court has upheld the primary judge’s decision that Bendigo and Adelaide Bank Limited could no longer hold its monopoly of more than 20 years over the words “community bank”. 

The decision emphasises the difficulties in enforcing and monopolising descriptive marks, even after they are registered.  It also provides useful discussion on “ordinary signification” in the assessment of whether marks are inherently adapted to distinguish and use as a trade mark for the purpose of showing factual distinctiveness.

Background

Bendigo and Adelaide Bank Limited (“Bendigo”) owned Registration No. 784796 for the mark:

dated 8 February 1999 and Registration No. 887023 for the plain script mark “COMMUNITY BANK” dated 24 August 2001 (collectively “the Bendigo Community marks”).

Bendigo also owned Registration No. 746687

dated 21 October 1997 (“Bendigo Composite mark”).

All of Bendigo’s registrations covered various banking and financial services in Class 36.

On 1 March 2013 Community First Credit Union Limited (“Community First”) applied to register two marks which included “community” and “bank” under Application No.1541620 COMMUNITY FIRST BANK and 1541594 COMMUNITY FIRST MUTUAL BANK (the “CFCU Marks”) covering Class 36 services, including financial services and personal banking services.

Bendigo successfully opposed both of Community First’s applications under s 44 of the Trade Marks Act 1995 (Cth) on the basis of Bendigo’s earlier registration for COMMUNITY BANK. 

Community First then appealed the opposition decision and sought rectification of Bendigo’s registrations for the Bendigo Community marks under s 88(2)(a) on the basis that they could have been opposed under s 41 because they were not sufficiently distinctive at the priority dates.

Primary decision

In summary, the primary judge held that:

  1. the Bendigo Community marks were not to any extent inherently adapted to distinguish the services for the purpose of s 41(3) and that the extent of use was not sufficient to show that the marks were distinctive in fact as at the priority dates for the purpose of s 41(6) and the registrations should therefore be rectified on the basis of s 41; and
  2. Bendigo’s opposition to Community First’s applications should be set aside as none of the opposition grounds under ss 42(b), 44, 58A, 59 and 60 were met and the CFCU marks should proceed to registration.

Appeal decision

Bendigo appealed the primary judge’s decision to rectify the Bendigo Community marks under the s 41 ground and sought leave to appeal the opposition decision, but was unsuccessful.   The main points from the Full Court’s decision are discussed below.

  1. Section 41(3) – Inherently adapted to distinguish

Bendigo argued that the primary judge erred in finding the Bendigo Community marks not to any extent inherently adapted to distinguish. 

On the issue of inherent distinctiveness, the primary judge had found the ordinary signification of the term “community bank” to be “a provider of banking services or financial institution that serves a particular community, whether defined by geography, workplace, trade or other feature” and directly descriptive of the services. [1] 

Bendigo argued that “community bank” had a number of possible meanings in the context of the services and, as such, would have no one ordinary meaning or signification.  The appeal judges said that there is no basis for limiting section 41 to prevent only appropriation of words and phrases with one singular meaning.  Justices Middleton and Burley noted “the existence of more than one possible meaning does not mean that a term is not capable of ordinary signification”. [2]

Bendigo also argued that the ordinary meaning of “community bank” was not the one found by the primary judge, but a reference to its unique franchise model, where local businesses operated local branches of the “Bendigo bank” under franchise.  However, the appeal judges agreed with the primary judge that “Community Bank” was used for its ordinary signification “that is, to convey the meaning of providing banking services to a particular community”. [3]  Justices Middleton and Burley held that “notwithstanding the originality of the model, or any originality in use of the term to refer to the model, the term was used in a way that was consistent with its natural English meaning (or at least the natural English meaning of the individual words “community” and “bank”)”. [4]

  1. Section 41(6) – factual distinctiveness

Bendigo also argued that the primary judge erred in finding that use of the Bendigo Community marks was not sufficient to establish distinctiveness under s 41(6). 

The question to be addressed was summarised by Justices Burley and Middleton as “whether, objectively, the term “community bank” was used to distinguish the services”.  Their Honours also noted that the uses must be as a trade mark.  [5]

In most cases, the words “community bank” were used in the signage and promotional materials in close association with the B logo and the words “Bendigo Bank” in the format:

or with the B logo or other Bendigo bank indicia.  The primary judge had considered that these uses emphasised “Bendigo Bank” and the B logo as the brand and diluted any brand significance in the words “Community Bank”. 

While the primary judge had recognised that there can be double trade mark use, she had found it “unlikely, if not impossible” that an ordinary consumer viewing the “Community Bank” mark in isolation of the B logo, the “Bendigo Bank” mark or other Bendigo indicia would associate the services with Bendigo. [6] 

The appeal judges agreed and found that the primary judge had made no error.  Justices Middleton and Burley found that the words “community bank” were not used as a brand.  Rather, it was the Bendigo branding that was used to distinguish the services and indicate the connection with Bendigo. [7]

There had been some use of “Community Bank” alone, or at a distance from Bendigo’s other marks and indicia.  However, the appeal judges agreed with the primary judge that this use was very limited and did not show use of “Community Bank” in a trade mark sense sufficient to establish distinctiveness or use in relation to the relevant services.

  1. Opposition

In relation to the opposition proceedings, Bendigo sought leave to appeal the primary judge’s decision in relation to ss 60, 42(b) and 44. 

The appeal judges upheld the primary judge’s decision on the basis that Bendigo did not have sufficient reputation in “Community Bank” to succeed in opposition under ss 60 and 42(b) and that opposition under s 44 could not succeed because Bendigo’s registrations for the Bendigo Community marks were to be cancelled.

Takeaways

Even when descriptive marks are registered, there may be difficulties maintaining and enforcing exclusive rights.  

Owners of descriptive, or somewhat descriptive, trade marks should ensure that they are used in a manner which clearly indicates that they are a trade mark rather than a description, and separate from other more distinctive marks.

Trade mark owners are advised that registrations for marks which have no descriptive significance are more readily protectable, and generally grant the strongest enforceable rights.


[1] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, pgh 21.

[2] ibid, pgh 107.

[3] ibid, pgh 87.

[4] ibid, pgh 98.

[5] ibid, pgh 151.

[6] ibid, pgh 155.

[7] ibid, pgh 159.

Authored by Michelle Howe and Sean McManis