TENFOLDS GRUNGE v PENFOLDS GRANGE: How close is “too close” for parody trade marks?

/ Louise Emmett / Articles

Brand owners may have grounds to oppose the registration of a parody trade mark in Australia on the basis that the use of the parody mark would lead to deception or confusion in the marketplace. There is, however, no general prohibition against parodies per se.  If consumers would not be confused, but instead conclude that a name has been cleverly used as a clear parody, the brand owner is unlikely to have grounds for successfully opposing the registration of the mark.

For example, the owners of the iconic “Penfolds Grange” brand were unsuccessful in opposing a trade mark application for “Tenfolds Grunge” (Southcorp Limited v Morris McKeeman [2006] ATMO 48).  The Hearing Officer in this case concluded that the “Tenfolds Grunge” mark would be seen as an obvious parody and, as such, deception or confusion was unlikely.  The Hearing Officer considered that there was no doubt that “Tenfolds Grunge” made a play on, or reference to, the “Penfolds Grange” mark; however, the fact that a mark might “ape, mimic or parody” another mark does not in itself disbar it from registration.

Similarly, the Australian Post Corporation (the “POST OFFICE”) was unsuccessful in opposing a trade mark application for “POST WITHOUT THE OFFICE” (Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42), with the Hearing Officer concluding that consumers would be sufficiently careful and astute so as not to be confused or deceived by the use of this mark.

On the other hand, Hasbro successfully opposed a trade mark application for “LIVE-OPOLY” covering toys/games and entertainment services on the basis of Hasbro’s rights in the “MONOPOLY” brand, the “world’s most popular board game” (Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43).  The Hearing Officer in this case held that the inclusion of the “OPOLY” element in the “LIVE-OPOLY” mark would lead to potential purchasers concluding that there was some connection with the “MONOPOLY” game, when this was not the case.

Also, Target Australia successfully opposed a trade mark application for marks incorporating “TARJAY” on the basis that “TARGET” stores have been colloquially referred to over the years by way of a French sounding pronunciation i.e. “TARJAY” or “TARGÉT” (Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54).  The Applicant argued that it chose to apply to register the “TARJAY” marks as part of its marketing strategy to be “cheeky” and as a means of cleverly and satirically referencing Target; however, the Hearing Officer concluded that a parody only works if it is immediately apparent and, in this case, shoppers would be likely to be misled.

Take home message:  A brand owner may have grounds to oppose the registration of a parody trade mark in Australia if the mark is not clearly a parody mark.  A parody mark must be of a nature that is immediately recognisable as a parody and not imply some endorsement by, or commercial connection with, the brand owner that would lead to deception or confusion in the marketplace.

In addition to opposing the registration of a parody mark, a brand owner may have grounds for objecting to the use of a parody mark in Australia on the basis that such use constitutes misleading and deceptive conduct in contravention of the Competition and Consumer Act 2010 (Cth) and/or the common law tort of “passing off”.

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Promotions for Stephen O’Brien and Christopher Wilkinson

/ Madderns / News

We are delighted to announce the promotion to Partner of Stephen O’Brien and Christopher Wilkinson.

Stephen is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Electronics and ICT teams.  He is highly recommended to assist clients with all aspects of IP protection – including branding activities, and identifying and protecting inventions. He has a particular interest in working with South Australian based start-up companies to assist in the identification of inventions and the development and management of patent strategies to maximise the value of their IP.

Chris is an Australian and New Zealand Patent and Trade Mark Attorney within our specialist Electronics, ICT and Life Sciences teams.  With his diverse technological background and experience, Chris is able to rapidly engage with new clients to understand their technical language and needs, in order to assist them protecting their innovative solutions.

Commenting on the promotions, Managing Partner Tom Melville said: “I am thrilled to see the promotion of such talented and client-focused attorneys. Stephen and Chris both have exceptional intellectual property skills and experience. Their addition to the partnership team provides Madderns with a fantastic opportunity to expand our reach in assisting clients in taking their great ideas to the world as we begin our 50th year.”

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Elevating South Australia’s Innovative Women

/ Madderns / News

We are proud to once again sponsor The Winnovation Awards.

These Awards showcase and celebrate the successes of female innovators changing the game in South Australia. If you are an innovative woman in South Australia or know an innovative woman or a South Australian business supporting innovative women that deserves recognition then nominate now at www.winnovation.com.au/nominations.

Applications close July 30 2018.

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Steel Product Not a Manner of Manufacture

/ Phillip Boehm / Articles

Bluescope Steel engaged in long running battle with IP Australia to protect branding pre-painted steel strip.

Bluescope Steel Limited [2017] APO 59

Patent application AU2016208431 (the ‘431 application) entitled “Branded Products” was filed by Bluescope Steel on 29 July 2016 and was the third successive divisional patent application stemming from a complete patent application filed in 2005.   Each application was directed to forming an improved brand on a pre-painted steel strip by partially removing a section of a layer on the strip so that branding did not form a “dominant” part of the steel strip product.

The history of the family of applications included a total of nine unfavourable examination reports, with “manner of manufacture” and “inventive step” objections remaining an unresolvable stumbling block throughout the examination process.

During examination of the ‘431 application, a single examination report issued which maintained the “manner of manufacture” and “inventive step” objections raised in the previous reports for the earlier applications. The report also indicated that, as a result of several adverse examination reports having previously issued in relation to the subject matter, the application would be referred to a hearing officer to consider whether to either refuse the application or direct an amendment.

The ‘431 application fared no better at the hearing, with the Delegate finding “that the claims are not for a manner of manufacture. I find no patentable subject matter in the application. I need not consider inventive step. The application is refused.”

 The refusal based solely on manner of manufacture is of particular interest.  It is well established law in Australia that for an invention to be a ‘manner of manufacture’  it must belong to the ‘useful arts’ rather than the ‘fine arts’; it must provide a material advantage; and its value to the country must be in the field of economic endeavour.

While claim 1 of the ‘431 application was directed to “[a] pre-painted steel strip includes a steel strip and a layer of paint covering at least one surface of the strip…”, the Delegate considered that the substance of the invention was merely the presentation of information characterised solely by a visual arrangement, because claim 1 recited “a plurality of brands at spaced intervals along the length of the steel strip…wherein the size of each brand is relatively small compared to the surrounding area of the un-branded paint layer.”

Claim 1 further claimed that each brand was “defined by a section or sections of the paint layer from which the paint has been partially removed and therefore has a thinner paint layer than the remainder of the paint layer which is un-branded and is visually identifiable”.  In relation to this feature, the Delegate  stated that “there is no contribution to the art in partially or wholly removing paint layer from a substrate such as a steel to form a thinner paint layer. Informatively, I note that a range of patent documents support this understanding.”

Undeterred, Bluescope has recently filed a further divisional application (AU2017251846) for the same subject matter covered by the ‘431 application. The Delegate made ominous reference to this new application, saying it will likely be “the cause of considerable wastage of Patent Office resources and presumably significant inconvenience for any interested third parties”.

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How Effective is the Confidentiality Clause in your Email Footer?

/ David Bey / Articles

A recently published decision by the Australian Design Office provides a cautionary tale about the effectiveness of generic confidentiality clauses in email footers.

Sun-Wizard Holding Pty Ltd v Key Logic Pty Ltd [2017] ADO 8

Key Logic (the owner of a registered design for a Sollar Bolard) had sent email correspondence (prior to filing a registered design application) containing representations of the design to a number of parties. Despite the emails including a generic confidentiality footer below the signature block, a Delegate found that the representations were not communicated in a way which imposed an obligation of confidence on the recipient, and were therefore considered published for the purpose of the Designs Act.

Section D07.3.2 of the Design Examiner’s Manual provides guidance regarding the publication of a design in this context:

The criterion of ‘published’ relates to public availability. It is not limited to the process of producing multiple or a requisite amount of copies (such as the printing of a magazine).

A design is published in a document if:

  • the document is one that a member of the public can inspect “as of right”; or
  • a person not bound by express or implied confidentiality has knowledge of the content of the document.

For a design to have been considered ‘published’, it should have been made available to the public without obligations of secrecy or confidentiality. In considering the circumstances which would impart an equitable obligation of confidence, the principal authority is the decision of Coco v AN Clark (Engineers) Ltd (1968) 1A IPR 586 (‘Coco’).

Coco sets out two requirements to be satisfied in order to impart, on a recipient of information, an equitable obligation of confidence, as follows:

  • First Requirement – the information must have the necessary quality of confidence; and
  • Second Requirement – the information must have been communicated in circumstances which impart an obligation of confidence

Despite Key Logic arguing to the contrary, the Delegate held that including a generic confidentiality clause in an email footer was insufficient to satisfy the second requirement:

It is not sufficient that Mr Arieni had an expectation that the material he provided in the email was kept confidential. That expectation was not clearly communicated nor was it apparent from the circumstances in which the email was sent. If the Owner sought to protect the Design by keeping it confidential, he ought to have kept it to himself.”

With regard to the confidentiality clause:

“I am not persuaded that the confidentiality notice at the bottom of the email has the effect submitted by the Owner… it is apparent that notices of that type are added almost universally by businesses as a matter of course beneath the signature blocks of their emails regardless of the content of the email to which they are appended. It is unlikely that any recipient of an email in a business setting reads beyond the signature block every time they receive an email…the ubiquitous presence of such notices means that they are unlikely to have the effect asserted by the Owner… a confidentiality notice at the beginning of an email is far more likely to be effective in importing an obligation of confidence to the recipient.”

As the email attaching representations of the design was communicated prior to the priority date associated with the design application, the Delegate’s finding meant that the design was not new and distinctive when compared with the prior art base – which included the email itself.

As a result of this decision, when communicating information by email which is intended to be confidential, it is important not to rely on a generic confidentiality clause in an email footer, but to instead include an additional or more prominent notification, such as a confidentiality notice at the beginning of an email.

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