25/09/2013

Don't you hate it when another business trades off the reputation you've built up using your trade mark?  The Federal Court does too.

In recent decisions in the Federal Court the Court has had to determine issues relating to marks similar to trade marks held by DC Comics ("Superman") and Winnebago Industries Inc ("Winnebago").

DC Comics case

In the DC Comics case the Court had to determine if a subsequent trade mark registered by a fitness company of the words "superman workout" should have been rejected by the Registrar of Trade Marks.

The term "superman workout" was lodged by a company seeking to trade mark the words in relation to exercise classes and fitness clinics.  In conjunction with the term the company was using a stylised badge in red and blue colouring which in some aspects resembled the Superman logo that had been registered in Australia.

The question for the Court was whether the application for "superman workout" should be rejected by the Registrar of Trade Marks.

In the decision the Court referred to a number of principles that need to be considered in determining if the "mark" is likely to deceive or cause confusion and should therefore be rejected.

The principles include:

•    Is there a real or tangible danger of confusion as opposed to a mere possibility?
•    It is sufficient if the result of the use of the mark will be that a number of persons will be caused to wonder if the two products come from the same source.
•    It is enough if an ordinary person has reasonable doubt.
•    All the surrounding circumstances are to be taken into consideration.
•    A probability of confusion, if it is real, is sufficient even though confusion may be unlikely to induce actual sales.

But in the end the Court didn't need to refer to those principles because it held that the application for "superman workout" was made in bad faith – the applicant knew its mark was very similar to the superman trade mark and went ahead with that intention.

Winnebago case

This case was a claim by the US company to seek to prevent an unrelated Australian company from using the mark "Winnebago" and a "W" logo.  

Of interest to the Court was that the Winnebago company commenced in about 1959 in the US and branched out across the world.  The unrelated Australian company commenced its production in about the late 1970's or early 1980's using the name and logo almost identical to Winnebago's use without its knowledge or consent.

It was suggested that Winnebago found out about the unauthorised use of the name in Australia in about 1985 but nothing was done by it to enforce any rights until about 1991.  Discussions then took place and the parties signed an agreement in 1992.  The Australian company alleged the 1992 agreement allowed it to continue to use the name but Winnebago alleged it was a "standstill agreement" reserving its rights.

Nevertheless, a demand was not made by Winnebago until 2010 (some 25 years later) for the Australian company to cease using the name.

The Court commented that it would be "unjust" to ignore the delay by Winnebago and require the Australian company to cease using the name and logos if it made "a clear distinction between Winnebago and [the Australian product]".  The distinction "would need to be made on the vehicle itself, clearly and visibly, as well as in documents dealing with the vehicle and anything said about the vehicles".

The message from the Winnebago case is that where there is an unauthorised use or infringement of trade marks the owner of the mark should act promptly to protect its intellectual property to the full extent possible.

If you have any questions in relation to this article or need advice or assistance on intellectual property matters, please call Townsends Business & Corporate Lawyers on (02) 8296 6222.