New Balance Chinese trade mark win – kicking a goal for damages in China

A Chinese court recently ruled three local shoemakers have infringed the New Balance ‘NB’ logo and must pay US $1.5 million in damages and legal costs.  The case is significant as it is reportedly the largest amount awarded to a foreign business in a Chinese trade mark dispute.  The infringing shoemakers manufactured shoes under a brand called ‘New Boom’ and were found by the court to have damaged the reputation of New Balance and confused consumers due to the high similarity of their logos to the New Balance ‘NB’ logo and brand.

Critics have often maintained China’s intellectual property system does not sufficiently protect foreign brands; however this recent decision is certainly a step in the right direction.

Under the Chinese system, the first party to file for a trade mark is awarded protection.  In Australia, on the other hand, the first party to use the trade mark is awarded protection (unless there is no prior use, in which case registration is awarded on a first come first served basis).  The way the Chinese system operates means it is vital brands register the trade mark in China as soon as possible, before expanding into the Chinese market.  Otherwise, the brand may find the trade mark has already been registered to a trade mark squatter, or to a party producing imitation goods.

In recent months, the Chinese Government has vowed to tackle the issue of intellectual property infringement caused by the legions of fake goods produced and offered for sale in the country. There have also been changes to Chinese trade mark law over the past few years to take on trade mark abuse.  This decision indicates steps are being made to support foreign rights holders.  It also provides reassurance for foreign brands looking to expand into the Chinese market and pursue an active brand protection strategy.

Belinda Breakspear

Alex Hutchens

Paul McLachlan

Danielle Jepson

Life’s not a beach in Bondi Beach trade mark dispute

The news broke this month that multinational retail giant Abercrombie and Fitch has trade marked the name ‘Bondi Beach’ in the US.  It was discovered by the Sydney-based toiletries company Bondi Wash who filed a trade mark to protect its name in the US, but was initially blocked because it was too similar to Abercrombie and Fitch’s trade mark.  The US retailer has no presence in, or connection with, the iconic beach or Australia generally, but allegedly had a beauty range which it named “Bondi Beach”.

Bondi Wash challenged the trade mark on the basis that it was no longer in-use, but the cancellation action has since been withdrawn after Abercrombie and Fitch refused to back down.

Why is this an issue?

This has sparked concern in Australia, as many people were previously unaware that foreign companies could obtain exclusive rights to use Australian words and the names of iconic Australian places in overseas jurisdictions. This is not the only iconic Australian place name that has been trade marked by foreign companies in the US. Uluru is registered to a carpet company and Kakadu is registered to a cosmetics company.

In Australia common place names, such as iconic beaches or cities, will be rejected as trade marks because they should be available for all traders to use to describe their goods and services. Companies may however, in some circumstances, successfully register trade marks including common place names if the names are combined with something more distinctive such as another word or a logo, or the trade marks have been extensively used.  As a result, there are a broad range of Australian companies that incorporate ‘Bondi’ into their brand names and trade marks.

While under US law geographical names can be refused registration if the location is known and understood by the relevant segment of US consumers, the United States Patent and Trademark Office examiner presumably took the view that ‘Bondi Beach’ was not of sufficient significance to US consumers, or that the mark had acquired a secondary meaning.  Australian businesses such as Bondi Wash or Bondi Sands may therefore find difficultly operating under their brand names without infringement claims, and incur significant legal costs when they look to expand overseas.         

   

Waverly Mayer Sally Betts has said that “it’s an Australian beach so I don’t believe anyone in another country should be able to trade mark it.” The Waverly Council has since brought this to the attention of the Federal Trade Minister’s office, and while they have no legal standing, a letter is reportedly being drafted to Abercrombie and Fitch asking them to voluntarily relinquish its trade mark on Bondi Beach. At this stage however, their only chance is to appeal to the retailer’s good will. 

Belinda Breakspear

Alex Hutchens

John Kettle

Paul McLachlan

Goodbye ATMOSS, hello ‘Australian Trade Mark Search’

On Saturday 11 February 2017, trade mark professionals will bid farewell to ATMOSS (the current trade mark searching system), as IP Australia launches the new ‘Australian Trade Mark Search’.  After the launch, users will be automatically redirected from ATMOSS to the Australian Trade Mark Search.  Key features include new text searches, wildcards and image searching. The new system is more user friendly, will improve efficiencies in searching, and will assist practitioners more broadly with trade mark filing strategy and advice.  

If you have any queries relating to the new system or need advice regarding trade marks, please contact:

Belinda Breakspear

It’s a case of better the Kylie you know as trade mark battle ends

Australian pop-star Kylie Minogue’s long running battle with reality tv-star Kylie Jenner, and Jenner’s attempt to trade mark the name ‘Kylie’ appears to have ended. 

Kylie Jenner, the youngest of the Kardashian clan, submitted a U.S. trade mark application in 2015 to protect her first name in relation to advertising and endorsement services. 

Minogue’s representative business, KBD, retaliated by filing a notice of opposition to the application on the basis that Minogue is an “internationally renowned performing artist, humanitarian, and breast cancer activist known worldwide simply as ‘Kylie’” while Jenner is “a secondary reality television personality”.  The notice went on to argue that the Kylie trade mark would likely cause confusion with, and tarnish, Minogue’s long list of existing trade mark registrations including Kylie Minogue Darling, Kylie Minogue and her website kylie.com.

Cotton On in the wrong with trade mark infringement?

Cotton On is facing litigation in the Federal Court of Australia from a sole trader in the United States who claims that the 1,400 store clothing chain copied her trade mark protected brand, ‘LETTUCE TURNIP THE BEET.’  

New York designer Elektra Prinz Gorski filed an application with the Federal Court of Australia in April this year for loss and damage, claiming that Cotton On knew or ought to have known that Cotton On’s t-shirt products bearing the phrase ‘LETTUCE TURNIP THE BEET’ infringed Ms Gorski’s trade mark and copyright.

A bite out of Apple

US technology giant Apple has lost its latest court battle over the rights to use the ‘iPhone’ trade mark in China.

The circumstances are not foreign to Apple - in 2012, the company paid $60 million to settle a similar dispute regarding the right to use the ‘iPad’ name in China.

In this matter, Apple applied for the ‘iPhone’ trade mark in China in 2002 for computer hardware and software in China.  However, Chinese company Xintong Tiandi applied for a trade mark for leather goods bearing the word ‘iPhone’, which was approved before Apple’s 2002 application.

The globalisation of Australian brands and why you need to register your Chinese trade mark application now

Malcolm McBratney, Alex Hutchens, Kellie Jukkola, Alexia Marinos

With more and more Australian companies entering the lucrative Chinese marketplace, it’s important to register your trade mark in this jurisdiction as soon as possible or you may miss out and in the process dilute your future ability to promote your brand globally.

Unlike Australia, China has a ‘first-to-file’ approach to trade mark registration.  This means the first applicant for a trade mark will generally acquire rights in the mark, even though they may not be the first user of the brand in that country. 

Expanding overseas? Make sure your brand is protected

From mid 2016, amendments to Canadian trade mark laws will make it more difficult for foreign trade mark owners to register to protect their brand. 

Malcolm McBratney, Alexia Marinos

Registered trade marks are the most important tool that a business can have to protect its brand in Australia and worldwide. They give you the exclusive monopoly to use the brand in connection with your business’ goods and services and give you the right to prevent others from using similar or identical brands for similar or closely related goods and services. Trade marks can be registered in perpetuity provided they remain in use in the countries in which they are registered and if renewal fees are paid every ten years.

Taylor Swift to shake off trade mark controversy

Alex Hutchens, Malcolm McBratney, Alexia Marinos

Pop singer Taylor Swift may have very well accepted that haters gonna hate, however she probably did not expect several of her US trade mark applications to spark an online revolt.

It's time to review your brands and trade marks!

Malcolm McBratney, Alexia Marinos

When was the last time you reviewed your brand and trade mark portfolio in Australia and overseas? Are all of the brands used by your business protected by registered marks? Has your business expanded the goods and services it provides since your trade marks were registered? Have you tweaked your logo?

Now is the time to review your brand and trade mark portfolios. We have prepared a checklist to assist you to make sure your business is where it should be in respect of its brand and trade mark protection.

Sour Apple after Federal Court of Australia denies 'App Store' trade mark

Alex Hutchens, Malcolm McBratney, Alexia Marinos

The Federal Court of Australia has upheld the Australian Trade Marks Office’s decision (TMO) to refuse to register Apple’s trade mark application for ‘APP STORE’.

A cat fight is brewing: unauthorised imitation of Jaguar Land Rover vehicles in China

Alex Hutchens, John Kettle, Malcolm McBratney, Paul McLachlan, Alexia Marinos

Jaguar, the well known British multinational car manufacturer may commence an action against Chinese car manufacturers, Chang’an Automobile Group and Jiangling Motors Corporation (Chang’an and Jiangling) for producing a land rover vehicle known as LandWind that is an imitation of the Jaguar Range Rover Evoque.

Star Wars strikes Bock

Alex Hutchens, John Kettle, Malcolm McBratney, Paul McLachlan

Lucasfilm, the production company behind Star Wars, has filed a trade mark dispute with a small brewery in New York.  Lucasfilm, a subsidiary of Disney, is opposing Empire Brewing Company’s application for its ‘Strikes Bock’ brand of beer.

New EU practice for black and white trade marks

Malcolm McBratney, Kellie Jukkola, Alexia Marinos

The European Union (EU) has recently introduced a new practice for how black and white trade marks are dealt with.  The new practice affects all trade mark applications and registrations for Community Trade Marks and national trade marks in EU Member States, except for Denmark, Finland, France, Italy, Norway and Sweden.