Madderns

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.

Congratulations to VitaChar on winning first prize at the University of Adelaide’s Australian eChallenge awards, for most outstanding entrepreneurial venture of the year.

Madderns has been a sponsor of the Australian eChallenge since its inception 18 years ago and Partner Bill McFarlane has been a contributor each of those years to the IP education aspect of the competition. On Thursday evening 15 November 2018 at the formal awards ceremony VitaChar won the first prize in a high quality group of finalists in the competition. Bill was not only a Judge of the finalists he also gave a speech and presented the People’s Choice Award during the event. Madderns has and continues to be an active supporter of the Entrepreneurial ecosystem in South Australia.

http://theleadsouthaustralia.com.au/innovators/green-waste-invention-makes-fertiliser-in-hours/

Congratulations to Dr Mary-Louise Rogers from Flinders University on winning the Technology category award at the 2018 Winnovation Awards. Mary-Louise has developed a novel urine test to determine if drugs are working in clinical trials of motor neurone disease treatments. Madderns is a proud sponsor of the Technology category which recognises women who are making outstanding technological contributions in South Australia. The award was presented to Dr Rogers by Madderns partner Megan Ryder. We extend our congratulations also to the other category nominees, Dr Marnie Winter and Felicity Hamilton.

Photograph by Heidi Wolff Photography

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”.

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.”