22 April 2020
In this roundup of the latest developments in the intellectual property space, we outline some practical steps brand owners should take and be weary of to ensure their brand protection keeps up when riding out the COVID-19 storm. Plus a discussion of recent trade mark disputes concerning Australian brand owners. Click below to navigate to the corresponding articles:
The COVID-19 pandemic and associated social distancing restrictions have pushed many Australian businesses into unchartered territory. Many businesses have had to think outside the box and adapt quickly to be able to survive, and in some cases thrive, in the current climate.
For some businesses, the transition to this new ‘normal’ has been relatively seamless, and in some cases, generated increased demand for their goods or services – think online businesses, e-commerce platforms, conferencing software, and entertainment streaming services. Other business areas are clearly and directly suffering – hospitality, travel, bricks and mortar retail, to name a few.
We have quickly seen another unique category of businesses emerge – those who have brainstormed, regrouped, and changed tack to enable their business to ride out this COVID-19 storm. The key here is fluidity. Adopting new processes, thinking outside the box, and being open to trying new ways of doing things (e.g. figuring out ways to provide your goods and services to customers despite traditional channels being temporarily inaccessible). We have seen personal trainers move to providing live fitness sessions online, restaurants providing raw ingredients together with live cooking classes online, and have even seen puppy school classes provided via video conference.
Some businesses have pivoted by changing the goods and services they are providing altogether – fashion designers producing face masks, distilleries manufacturing hand sanitizer, stage construction businesses producing home office furniture.
As a business owner adapting to this changing climate, from a branding perspective, there are a few things which you should consider:
1. Look before you leap
If you branch out into new areas, you want to be sure this will not land you in hot water by infringing someone else’s existing trade mark which may already be registered for your new goods or services. This applies whether adopting a new trade mark, or extending your range of goods or services under your existing trade mark beyond the scope of your existing protection. It is best to carry out some availability searching to ensure you will be free to operate in that space under your chosen brand.
2. Protect your new activities
If you are adopting a new trade mark, or extending your range of goods or services under your existing trade mark, you should ensure you have formal trade mark protection in place. In some cases, this may mean extending your existing protection to cover additional classes of goods and services.
3. Protect your existing activities from newcomers
Even if your goods and services aren’t changing, now is an opportune time to ensure your trade mark protection is up to date. With so many businesses currently adapting and changing, you want to ensure that your position is secure, and prevent someone else from moving into your space and providing similar goods or services under a similar brand.
We are already seeing a lot of ‘crowding’ of trade channels, particularly in the online space. Many businesses that operated in a traditional market and were far removed from one another and happily coexisting, may now be running directly alongside one another in an ‘app’ store, or competing for the same online consumers and audiences. Now is the ideal time to be proactive and ensure your protection is up to date, and that your change of tack isn’t going to land you in hot water.
If you are unsure whether your protection is up to date, get in touch with us. We’re here to help.
COVID-19 has brought on a lot of change throughout the world. For some, it has resulted in frantic bulk buying, whereas others have taken a different approach and attempted to capitalise on the outbreak by filing trade mark applications containing relevant terms such as ‘COVID’ or ‘CORONAVIRUS’, which allows one to question, “can you trade mark a virus?”.
As at the end of March, a large number of trade mark applications were filed worldwide that incorporate these terms. The applications cover a variety of goods and services including entertainment, cleaning products and clothing items. In Australia, all applications are pending and awaiting examination by IP Australia. If registered, the applicant will obtain complete ownership and a monopoly in the terms as trade marks (for the specific goods and services applied for). That’s the main benefit of seeking trade mark registration.
Why would you want to register?
Exactly what these opportunists think they stand to gain by registering these terms as trade marks is questionable. They will not be able to prevent people from using the terms to describe the virus, or to report news and developments in the fight against the virus.
Do they really want to use the terms as trade marks? Why would you want a badge of origin for your goods or services that has such unpleasant connotations?
History repeating itself?
In April 2013, we witnessed the tragic Boston Marathon bombings. After this, 11 new trade mark applications were filed in the United States. A majority of these applications contained the phrase ‘Boston Strong’, which circulated as a popular slogan in attempt to display the unity formed within the city. All of these applications were either rejected by the US Patents and Trade Marks Office or withdrawn by the applicants.
A similar series of events took place after the Malaysia Airlines MH370 incident in 2015. Five days later, an application was filed to register MH370 as a trade mark in Australia in respect of class 41 services (education, cultural and sporting events). This application was rejected by IP Australia on the basis that MH370 conveyed a specific meaning and could not be adapted to distinguish the subject matter of the application.
Can these types of trade marks be registered?
This highly depends on the examination rules and regulations imposed by each jurisdiction. In Australia, the applicant will need to prove that the mark itself is distinctive and is capable of distinguishing the goods and services of the applicant from those of another trader. Secondly, any mark that is scandalous, offensive, contains an improper connotation, or is contrary to law, cannot be registered as a trade mark within Australia. If the applicant fails to meet these requirements, IP Australia will reject the application.
It should be noted that it can take between 6 and 18 months for a trade mark to be registered. But people should not get too excited by the raft of new applications containing these terms. They just reflect the current situation and the evolution of businesses pivoting to new goods and services (or in some cases, making a misguided attempt to somehow benefit from a worldwide pandemic). Our advice is to design and use a highly distinctive (and inoffensive) trade mark or logo – and of course register to protect your rights in any new distinctive trade mark created.
We’ve recently seen a flurry of trade mark disputes between home-grown Australian companies and high-profile celebrities reaching the Australian Federal Courts. We summarise these disputes below.
KATIE PERRY vs KATY PERRY
In what’s being dubbed as a true “David and Goliath fight”, Australian fashion designer Katie Taylor (born Katie Perry) is suing the American celebrity singer Katy Perry (legally known as Katheryn Elizabeth Hudson), for the alleged breach of her trade mark rights in her Australian registered trade mark ‘KATIE PERRY’.
Ms Taylor has built a reputation in the Australian fashion industry, selling high quality and comfortable clothing. Over the past decade, Ms Hudson has also expanded her worldwide branding from the entertainment industry into the clothing and beauty industry.
In 2008, Ms Taylor registered her mark with IP Australia. In 2009, Ms Hudson tried to oppose Ms Taylor’s trade mark application but was unsuccessful. The singer subsequently entered into commercial licensing arrangements with large Australian retail stores to sell her clothing, bearing differently styled versions of the word mark ‘KATY PERRY’.
In response to such licensing arrangements, Ms Taylor initiated proceedings against Ms Hudson for the continued sale and distribution of her brand, which she argues is substantially identical with, or deceptively similar to her registered mark. Ms Taylor seeks either an account of profits or damages.
Although Ms Hudson and her company Killer Queen admit that their mark is deceptively similar, they deny that they have infringed Ms Taylor’s mark because they have used the mark in good faith. They further claim that they have continuously used their brand in the course of trade in relation to clothes or goods similar to clothes, from a time before the date of registration of Ms Taylor’s trade mark in Australia. Due to such reputation, Ms Hudson counter-claims that any use of Ms Taylor’s mark going forward, would amount to misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth) and constitute passing off.
The proceeding will be listed for case management hearing before Justice Markovic this week, to enable orders to be made for the further preparation of the matter for hearing.
Use of the brand ‘VB’ “likely to deceive or cause confusion”?
In another case, former Spice Girl and fashion designer Victoria Beckham has taken action against Sydney-based skincare company VB Skincare Pty Ltd, objecting to the registration of their trade marks ‘VB SALON’ and ‘VB SKINLAB’ with IP Australia.
Ms Beckham opposed the registrations claiming that the proposed marks would be “likely to deceive or cause confusion”, as she has continuously used the ‘VB’ mark in relation to cosmetic goods in Australia and internationally since September 2016. Ms Beckham further argued that VB Skincare’s use of “a slim brunette with long hair” on their website www.vbskinlab.com.au, was also similar to her own image.
The Delegate found that Ms Beckham had failed to establish any of the grounds of opposition and proceeded to allow the registration of the trade marks. Ms Beckham responded to the decision by lodging an appeal in the Federal Circuit Court, which will be heard this week.
Holding Redlich's intellectual property partners Blair Beven and Trent Taylor will be sharing key tips on how organisations can prevent damage to their brand and practical response strategies to repair their reputation online when things go wrong in a webinar on 7 May 2020. Click here to read more and to RSVP.
Authors: Rebecca Thom, Rosalind Moffatt and Rebekah Mifsud
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.