Love him or loathe him, tennis star and former world number 1, Lleyton Hewitt, has chalked up an impressive number of wins in his career.

He’s beaten the likes of Agassi, Sampras, even Federer (2003 Davis Cup match).

But when he came up again John Shiels in a recent encounter, it was game set and match to Shiels. Never heard of Shiels? Read on -

Shiels is the owner of trade mark registration  986440 (see pic below).

In January 2004, Shiels registered the COME-ON trade mark in relation to tennis shirts, sportswear, tennis rackets and sporting equipment.

Even if you’re not a tennis fan, you’ve probably seen and heard Lleyton Hewitt’s trade mark ‘Come On!’ cry and accompanying fingers-to-eyes hand gesture. It’s mimicked and parodied by wannabe sports stars across the country.

Now check out the shape of the device that forms the letter ‘C’ in the COME-ON mark. It’s not a long stretch to say that the device looks a lot like Hewitt’s famous ‘Come On!’ open hand gesture. Shiels himself admits that the form of the ‘C’ represents an arm – although he says it’s in a fist pumping gesture.

In 2007, Hewitt (through his marketing company) started registering trade marks to protect his brand.  These included the following marks:

Shiels threatened to oppose registration of Hewitt’s marks on the basis that they were similar to his earlier-registered COME-ON trade mark. While Shiels never followed through on the threat, Hewitt’s response was to apply to have Shiels’ COME-ON mark removed from the trade marks register for non-use.

Applications to remove trade marks for non-use are based on what I call the ‘use or lose it‘ provisions of the Trade Marks Act. Under the Act, a registered mark can be struck off the register on two non-use grounds:

• if its owner never intended to use the mark and, in fact, never did, or
• if it isn’t used for a continuous period of 3 years.

Hewitt attacked the COME-ON mark on the first ground.

Shiels gave evidence that he sold about 10 shirts carrying the COME-ON mark at a market stall in 2005 and gave away more free of charge. Hewitt responded by saying that selling 10 shirts over 6 years is such a tiny number that it shouldn’t be taken into account.

Unfortunately for Hewitt, it wouldn’t have made a difference if Shiels had sold one shirt or 1 million shirts carrying the COME-ON mark. The law says that one is enough.

A single bona fide use of the mark in the relevant period is sufficient
Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 51 IPR 149

Game, set and match, Mr Shiels.

I’ll be running a free seminar on brand protection in Melbourne on 25 August 2010.

The seminar is designed for brand managers, marketing managers and business owners. Lawyers are welcome but it certainly won’t be a presentation on the law. I’ll be looking at some of the practical steps you can take to protect your brands.

You can find more details in the seminar flyer which can be downloaded here.  RSVPs are essential as places are limited.

What’s the worse that can happen if you infringe someone else’s trade mark?

Court action, paying damages, expensive lawyer bills, rebranding costs?

Well, one Melbourne couple were willing to test the limits of the available sanctions. Unfortunately for them, that landed them in jail.

That’s right, prison. The slammer. The clink. The big house.

If locking someone up for trade mark infringement seems a bit extreme, it should be noted that the nature of the infringement was definitely at the extreme end.

The story goes like this -

Deckers Outdoor Corporation is the owner of the UGG Australia trade mark in relation to ‘footwear’ (yes, we’re talking about ugg boots). Mr and Mrs Vaysman (along with some associates and their related entities) decided that it would be a good idea to manufacture ugg boots and use Deckers’ UGG Australia logo.

Deckers sued the Vaysmans and their associates. Caught red-handed, the Vaysman’s negotiated a settlement and agreed not to use the Ugg or Ugg Australia trade marks.  Having reached a settlement, Deckers discontinued it’s court action.

But the Vaysman’s continued to manufacture and sell the counterfeits. Deckers sued them again, this time for breaching the settlement agreement. The Vaysman’s settled, again promising not to use the Ugg or Ugg Australia trade marks.

But, yet again, the Vaysman’s continued with their manufacture and sale of the counterfeits. Deckers sued again. This time round, there was no settlement. In fact, Mr and Mrs Vaysman didn’t even bother putting in a defence. Summary judgment was entered against them with a court order restraining them from selling counterfeit ugg botts.

It must have been deja vu for Deckers when they found out that the Vaysman’s were, once again, making and selling counterfeits.

This time, however, there was a court order.

Now if you want to grab a judge’s attention, flagrantly ignoring a court order is the way to go.

And so to end this story, on 24 June 2010, Mr Vaysman was found guilty of contempt of court and sentenced to 3 years’ imprisonment. Mrs Vaysman was also found guilty of contempt and was ordered to serve 2 months of a 12 month sentence (the judge took into account her care of a 4 year old child).

It’s been a while since I’ve posted on the blog. The picture above might give you a clue why…

Baby Quentin was born around a month ago, weighing a healthy 8 lbs (3.6 kg). Life with two kids under 3 is proving busy and Quentin isn’t even doing very much yet (aside from feeding, sleeping, pooing and crying occasionally).

I’m back in the swing now so watch out for some new posts coming soon.

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.

Just a few weeks away from launching, web startup and alcohol search engine Groggle has been hit with a cease and desist letter from Google.

The Groggle trade mark has been accepted for registration so the first step looks to be opposition proceedings before the Trade Marks Office.

Read on to find out some of the problems Google will face.

Google’s opposition will be based on a number of grounds but they’ll primarily have to convince the Registrar that:

• GROGGLE is substantially identical or deceptively similar to GOOGLE, or
• GROGGLE will confuse people because of the reputation of the Google brand.

Substantial identity is a straightforward side-by-side comparison of the key elements of the competing.

The test of deceptive similarity is not a side by side comparison but a test of whether ordinary people with ‘imperfect recollection’ would look at (or hear) the Groggle mark and think it is the same as Google.

Here are Google’s problems.

GROGGLE doesn’t look like GOOGLE. And when spoken it doesn’t sound like GOOGLE.

Are people really going to be caused to wonder whether Groggle and Google are one and the same? Probably not.

There’s also the problem that all successful brands face – being a victim of their own success.

This is partly what happened to Mars when it unsuccessfully argued that Delfi’s MALT BALLS was similar to its MALTESERS mark. Because the Maltesers brand is so well known, the court considered it unlikely that people would associate Malt Balls with Mars / Maltesers and be confused (note that there were other compelling reasons why Mars was unsuccessful).

The Maltesers case could also mark a slow shift in how courts approach deceptive similarity. The traditional legal approach to the test of deceptive similarity is to compare the marks without regard to actual reputation.

According to some, Google has built itself into the most valuable and recognisable brand in the world. But reputation is a two-edged sword. The strength of the Google brand is such that an ordinary internet user who sees the word Moogle, Doogle, Joogle or, well, Groggle, will probably know that it has no relation to Google.

So, are things looking good for Groggle? Possibly. Google faces some significant problems in opposing the Groggle mark and the spat has brought Groggle a heap of PR, both in IT publications and the general press.

But if Google decides to play hardball, bring on Federal Court proceedings and apply for the injunction they’ve been threatening, they could stymie the Groggle launch and force the startup to come to the table to avoid the costs of going to court.

In 2007, Toyota said it was seriously considering suing Jetstar over the use of what it called a “Toyota-style jump” in Jetstar’s ads.

Back then, it wasn’t clear if it was possible to register a “movement” as a trade mark.

Well, the Trade Marks Office has now confirmed that it will accept movement trade marks for registration.

In February 2010, the Trade Marks Office examiner’s manual was changed to provide guidance on the registrability of moving images, holograms and gestures as trade marks.

One of the technical requirements for any trade mark to be registrable is that it must be “graphically represented”. This also applies to movement trade marks. The application for registration must describe the movement in words, using a series of still images or in a video clip.

The examiner’s manual makes clear that the Trade Marks Office requires applications to be precise. It’s not enough to refer to a movement “such as …” or a movement “an example of which …”. The following example is given as an acceptable description:

The trade mark is a movement mark. It consists of a yellow balloon with a face drawn on it which floats from the bottom left corner of the screen to the top right corner, while the facial expression changes over the course of the traverse from frowning to smiling. The trade mark appears in the video clip attached to the application.

So, whether your signature move is the robot, the chicken dance or the mashed potato, it may well be possible for you to get trade mark protection for it.

This is the story of how a dumb branding choice for anti-diarrhoea medication caused the proverbial to hit the fan.

Drug company Novartis are the makers of Maalox Total Relief, a potent liquid formula that provides relief from heartburn, indigestion, bloating and diarrhoea. It’s packaged in the purple bottle above.

By all accounts, MTR works well as an anti-diarrhoeal. Its active ingredient is bismuth subsalicylate – an aspirin-like, anti-inflammatory drug.

Bismuth subsalicylate can cause some severe side effects. People with gastrointestinal ulcers or blood clotting problems can suffer stomach bleeding, the drug negatively interacts with certain medications including blood thinning agents and aspirin and it can result in Reye’s Syndrome, a potentially fatal disease, if taken by children who are recovering from a virus such as chicken pox or the flu.

So, MTR is a powerful over-the-counter drug. But it’s not the only stomach fixer that contains bismuth subsalicylate. For example, Pepto-Bismol does too.

However …

Problem 1: Maalox Total Relief is the only Maalox product that contains subsalicylate. All the other Maalox products are straight antacids, pea shooters compared to MTR’s potential nuclear arsenal.

Problem 2: Not only does MTR carry the Maalox name, which consumers associate with gentle antacids, it is packaged in exactly the same manner as its milder cousins (take another look at the image above).

Problem 3: The Maalox antacid products say they relieve indigestion and heartburn. The MTR packaging also says that it relieves indigestion and heartburn.

Combine the 3 problems above and you have consumers assuming that Maalox Total Relief is simply another antacid in the Maalox range rather than a completely different drug.

The US Federal Drug Administration has stepped in after complaints of confusion and at least 5 cases of consumers suffering adverse effects from MTR. As a result, Novartis has agreed to change the name and packaging of Maalox Total Relief.

Consistency in branding is usually a good thing. Burning holes in people’s intestines is always a bad thing.