Madderns

“Headstart” trade mark applications are assessed within 5-10 days. Instead of filing a standard trade mark application and then waiting 6 or 7 months to find out if there are any problems, it is possible to “test the water” by first filing an application through IP Australia’s fast-track headstart system.

Five to 10 days after filing the application (and sometimes even sooner) a Trade Mark Examiner issues a headstart report listing any objections that are likely to be raised during formal examination. The Trade Mark Applicant then has a further five days to decide their next step. The options are either to (1) formally file the application or (2) abandon the application.

Once a headstart application has been formally filed, the details of the application are made publicly available on the Australian Trade Marks Register and the application proceeds through formal examination (nb. the details of abandoned headstart applications are never made public). The objections mentioned in the headstart report are likely to be raised during formal examination, and it’s at that time that the Trade Mark Applicant has the opportunity to respond.

For more on Australian trade mark applications, you can find our information sheet here.

When choosing a trade mark, keep in mind that marks with geographical connotations can be difficult to protect and enforce.

This case illustrates that even trade marks with references to former geographical locations can be problematic, particularly if that area was and still is well-known as a source of particular products.

The relevant geographical location in this case is the area in the Czech Republic which was formerly known as “Bohemia”. The parties involved in the dispute both distributed crystal-ware and glassware in Australia under different “Bohemia” brands: Bohemia Crystal Pty Ltd under the name “Bohemia”, and Host Corporation Pty Ltd under the name “Banquet Crystal by Bohemia”.

Bohemia Crystal Pty Ltd claimed that, by selling products under the “Banquet Crystal by Bohemia” brand, Host had engaged in misleading or deceptive conduct and infringement of the following Australian Trade Mark Registrations:

• 891129 for the words “BOHEMIA CRYSTAL” covering “glassware being tableware, stemware and decorative items including crystal glass figurines, glass jewellery holders and trophies” in class 21, and
• 952530 for the word “BOHEMIA” covering “glass and glassware, crystal and crystal ware of all kinds not included in other classes including vases, figurines, bowls, wine glasses, goblets, drinking glasses, ornaments, giftware, decorated glass, painted glass; china, porcelain and earthenware” in class 21.

In response, Host Corporation Pty Ltd claimed that Registration Nos. 891129 and 952530 should be cancelled pursuant to sections 41 and 88 of the Trade Marks Act 1995 (Cth). Host Corporation Pty Ltd argued that both “BOHEMIA CRYSTAL” and “BOHEMIA” were too descriptive to be registered as trade marks, given that these marks incorporated the name of a former geographical location that was, and still is, particularly well-known for the type of goods covered.

Bohemia Crystal Pty Ltd did not dispute that the former area of “Bohemia” was previously known as a source of high quality glassware and crystal products. However, Bohemia Crystal Pty Ltd argued that when seeing products labelled with their “BOHEMIA” and “BOHEMIA CRYSTAL” trade marks, ordinary consumers were more likely to think of the “artistic or conventional” Bohemian lifestyle than the former geographical location.

The Court accepted that “Bohemia” could be defined as either (1) the name of a former geographical location in the modern Czech Republic, or (2) a mythical place from which people who “adopt an unconventional lifestyle”, ie “Bohemians”, live or originate. However, in the context of crystal-ware and glassware, the Court held that only the first definition was relevant. The Court noted that, when seeing glassware and crystal products labelled with the “BOHEMIA” and/or “BOHEMIA CRYSTAL” trade marks, both ordinary consumers and other traders were only likely to think of “Bohemia” as “a region from where glassware is manufactured” given the history and reputation of that location as a place of manufacture of quality crystal-ware and glassware. The Court also noted that “BOHEMIA CRYSTAL” may suggest a “style of glassware” originating from Bohemia to some traders and consumers. In light of this, the Court held that both “BOHEMIA” and “BOHEMIA CRYSTAL” were not distinctive enough to be registered as trade marks and, consequently, Bohemia Crystal Pty Ltd’s Trade Mark Registration Nos. 891129 and 952530 were cancelled and they could not prevent Host Corporation Pty Ltd from continuing to use the “Bohemia” name.

Take-home message: trade marks with geographical connotations can be difficult to protect and enforce and we would recommend selecting alternative marks. However, if you still wish to use a trade mark which has geographical connotations, consider incorporating a more distinctive element.

The case of Qantas Airways Ltd v Edwards

Qantas uses a variety of “kangaroo” trade marks as part of its business, including the “kangaroo tail fin” logo below which it registered in Australia in 1996 for advertising, marketing and merchandising services and financial, investment and banking services associated with the use and promotion of credit cards and charge cards (Registration No. 711454):

In a recent Federal Court case, Qantas has unsuccessfully opposed an application by Mr Luke Edwards to register the following “kangaroo t-shirt” logo as a trade mark:

Mr Edwards operates an online retail store selling a range of goods including clothing and apparel. In 2010, Mr Edwards applied to register his “kangaroo t-shirt” logo above as a trade mark, for use in relation to clothing; footwear; headwear; shirts; T-shirts. At the time, Mr Edwards’s online store offered t-shirts branded with his “kangaroo t-shirt” logo.

Qantas formally opposed the registration of the “kangaroo t-shirt” logo on a number of grounds but the Delegate of the Registrar of Trade Marks found in favour of Mr Edwards.

Qantas appealed the decision to the Federal Court, claiming that the “kangaroo t-shirt” trade mark was deceptively similar in appearance to Qantas’s existing Trade Mark Registration No. 711454 for the “kangaroo tail fin” logo. In addition, Qantas claimed that the goods/services covered by the two marks were closely related, ie that Mr Edwards’s clothing; footwear; headwear; shirts; T-shirts were closely related to Qantas’s advertising, marketing and merchandising services.

Qantas also claimed that it had a strong reputation in Australia in relation to various registered and unregistered “kangaroo” trade marks it had used for many years and, because of this reputation, Mr Edwards’s use of his “kangaroo t-shirt” trade mark would be likely to deceive or confuse consumers. Qantas argued that consumers would simply see Mr Edwards’s “kangaroo t-shirt” logo on clothing as an extension of the Qantas brand.

The Federal Court dismissed both grounds of opposition and found in favour of Mr Edwards.

The Court held that Qantas and Mr Edwards’s trade marks were not deceptively similar in appearance, as each of the marks has a separate, distinctive element apart from a kangaroo. The Court also held that the goods/services covered by the two marks were not closely related. The Court noted that Qantas’s advertising, marketing and merchandising services were no more or less related to Mr Edward’s clothing; footwear; headwear; shirts; T-shirts than ‘any other goods or services that can be advertised, marketed or merchandised’ and that there was, therefore, no close relationship between the two.

In assessing Qantas’s reputation in its various “kangaroo” trade marks, the Court found that two of these “kangaroo” marks ‘would have been recognised by a substantial number of ordinary members of the public as marks denoting [Qantas’s] airline services’. However, the Court determined that there was no likelihood that consumers would be deceived or confused on seeing Mr Edwards’s “kangaroo t-shirt” trade mark used for clothing; footwear; headwear; shirts; T-shirts given the differences between the marks.

Qantas has now filed a new application for the “kangaroo” logo below covering a wide range of goods/services in 15 classes including various items of clothing (No. 1703712). Mr Edwards has opposed this application and it will be interesting to see the outcome of these proceedings.

This case highlights the importance of considering the different types of marks which are important to your business. In addition to registering brand names as trade marks, logos and other types of trade marks are also registrable and may be just as valuable.

The case of Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd

When online retail sales company Catchoftheday.com.au Pty Ltd applied to register two logos incorporating TAR JAY as trade marks in 2013 (depicted below), Target opposed registration. Target claimed that use of the logos would be likely to deceive or confuse customers, arguing that it had a reputation in the name ‘Tarjay’ (or ‘Targét’) because Australian consumers have long recognised this as an endearing alternative name for Target stores. Several examples of third parties using this name in printed media and online were cited in evidence.

The Delegate of the Registrar of Trade Marks assessing the opposition found that ‘Tarjay’ (or ‘Targét’) is ‘strongly associated in the mind of the public with [Target]’ and that ‘the evidence strongly supports such a conclusion and, indeed, suggests that the expression has entered language’. Significantly, the Delegate considered that prior use of a trade mark was not determinative in assessing reputation in a trade mark. In this case, Target had not used ‘Tarjay’ as a trade mark, however, this nickname was associated with Target through use by third parties.

The Delegate concluded that use of the TAR JAY logos by Catchoftheday would be misleading or deceptive and the applications were refused. In reaching this conclusion, the Delegate rejected Catchoftheday’s proposition that customers would view the logos simply as parody or satire. Instead, according to the Delegate, a customer who sees the logos while shopping on Catchoftheday’s website ‘will be misled into believing that it is either shopping on [Target’s] website, or on a website operating under the auspices of [Target], or with its sanction or license, or that there is a link between [Catchoftheday] and [Target].’ Target has also now filed an application to register TAR-JEY as a trade mark.

Nicknames associated with a business/product can be valuable marketing assets. Consequently, if a nickname becomes associated with a particular business or product, it may be worth considering filing applications to register the nickname as a trade mark, in addition to registering your traditional brand names.