Question: What does a round-the-world sailor have in common with a fruit grower?
Answer: Not a lot, despite what the fruit grower thinks.
A week out from completing her solo round-the-world trip, teenager Jessica Watson has received a warning from Apple and Pear Australia Ltd, owner of the ‘Pink Lady’ trade mark.
The reason for the warning? Watson’s boat is named ‘Ella’s Pink Lady’ and carries a heart logo that is similar to one of APAL’s registered trade marks.
APAL’s spokesman had this to say:
We just requested … that no person associated with Jessica Watson’s solo around the world sailing attempt to take any action or make any statements which could cause damage or bring into disrepute APAL’s (Apple & Pear Australia Ltd) Pink Lady flowing heart trademark
…
We never imagined that she would (damage the trademark), the letter was just to make her management aware.
…
There is a little heart on the Ella design and it’s very similar to our apple with our trademark and it is a reserved image, really
…
We have a duty of care to make sure we protect our rights. That’s why we wrote to their team, to let them know and ask they respect those
And just to be sure that there were no hard feelings:
We don’t want to fight them – we wish them the best – unless of course they cause damage [to the brand], but they have indicated they weren’t aware of the copyright and would do nothing to damage [the brand]
If there’s anything that is likely to damage the Pink Lady brand, it’s the mixed messages in quasi-legal voodoo language being sent by APAL (and being widely reported in the news).
If you’ve read this trade marks 101 post, you’ll know that APAL’s assertion of its rights somewhat misses the mark.
APAL does not have a blanket exclusive right over the words ‘Pink Lady’.
What it has is the exclusive right to use those words as a trade mark in relation to its registered goods and services.
Use as a trade mark
Watson’s (or anyone else’s) use of the words ‘Pink Lady’ doesn’t automatically infringe APAL’s rights. Infringement only arises if the words are used as a trade mark.
A word, image, sound, etc, is only used as a trade mark if it is used to distinguish one trader’s goods and services from another’s. In other words, unless it’s used as a badge of origin, it doesn’t count.
So, if I name my pet hamster ‘Granny Smith’ that won’t’ be use of those words as a trade mark. Similarly, if I name my boat ‘Pink Lady’ … you get the idea.
Registered goods and services
Further, a trade mark gives the owner exclusive rights of use but generally only in relation to the goods and services covered by the registration (there is an exception where ‘well-known’ marks are concerned).
APAL’s ‘Pink Lady’ registrations cover paper products, toys, games, apple cakes, apple pies, apple strudel (and other apple-based bread and pastries), fruit juice, mineral water, soft drinks and cordial.
They don’t cover, for example, funeral services – that’s why the registered mark ‘Pink Lady Funerals’ (839297) can co-exist on the register with APAL’s marks.
They also don’t cover gardening services – that’s why a logo with the words ‘Pink Lady’ (1119583) can also co-exist on the register.
And they certainly don’t cover boats or solo round-the-world yachtswomen. Even if Watson were to bring out a line of say outdoor clothing under the brand ‘Ella’s Pink Lady’, it’s unlikely that she would be treading on any of APAL’s rights.
Tags: infringement, jessica watson, pink lady, trade mark use
APAL leave Ella alone! Cool post. I’m gonna start an email marketing product called Pink Lady Chimp…making sure it’s not trademarked already ofcourse.
But aren’t a lot of boats known by their sponsors name? Eg in the Sydney to Hobart you have Skandia, Tag Heuer, Ella Bache etc. So a name may be a trademark too?
Hi Julius,
There’s a strong argument that the use of marks to signify sponsorship or affiliation is not ‘use as a trade mark’. The key questions would be: (1) are these marks being used on yachts to distinguish goods or services? and (2) is the use of these marks ‘in the course of trade’? These are foundational questions in order to determine whether a mark is being used as a trade mark.
It’s interesting to note that under US trade mark law, a trade mark can be infringed if it is used to indicate a sponsorship, approval, affiliation or association that does not exist. That’s not the case under Australian trade mark law though (although our Trade Practices Act does deal with it).