You’ve developed your trade mark, thought about the design, considered how your trade mark can promote your business and finally received confirmation that your trade mark is registered. It’s a great feeling!

Your trade mark is valuable to your business. Customers recognise and connect your business with your trade mark. For this reason, protecting your trademark after it is registered is vital in preventing its value from diminishing.

Similar Trade Marks
The value of your trade mark may diminish if a competitor’s trade mark is substantially identical or deceptively similar to your trade mark. The use of similar trade marks by competitors may result in your trade mark not being as easily distinguishable in the industry, or in customers becoming confused about which company is associated with which trade mark. If this occurs you may lose your market edge and the promotion of your brand and business may not be as effective.

What can be done?

If a competitor applies to register a trade mark that is substantially identical or deceptively similar to your trade mark there is a limited window in which you can oppose the registration of the trade mark. The window commences on the advertisement of the trade mark in the Australian Official Journal of Trade Marks and ends two months later. To oppose the registration of the trade mark you will need to file a notice of opposition during this window. As this window is small it is important to check the Australian Official Journal of Trade Marks regularly.

If your trade mark right is being infringed by the use of an unregistered trade mark that is substantially identical or deceptively similar to your registered trade mark you may be able to commence an action for infringement. Note though that there are exceptions to commencing an action, including, if the user of the similar trade mark used the trade mark prior to the registration of your trade mark. You may also have an action ...

Continue Reading

In 2014, American rapper Eminem filed proceedings against the National Party of New Zealand for using a variation of his song, ‘Lose Yourself’, without consent. The song was used in the National Party’s successful election campaign of the same year.

To establish a copyright infringement, it is necessary for the court to firstly consider whether the work is original. Justice Cull found Eminem’s song to reflect sufficient skill and labour and be ‘highly original work’ with its melodic line and combination of other instruments such as the guitar riff, hypnotic rhythm and piano figure. This conclusion is not surprising given that ‘Lose Yourself’ received the 2003 Academy Award for Best Original Song.

Secondly, the court must establish that the three elements of copying have been satisfied, which are:

1. Has the original work been substantially copied?
2. Does the copied work sound objectively similar to the original work?
3. Is there a causal connection between the copied work and the original work?

It is important to note that the first element does not require the work to be copied entirely, even copying a small amount can amount to infringement. In this particular instance, Justice Cull determined that the National Party’s song had substantially copied ‘Lose Yourself’ as there were close similarities between the two songs and indistinct differences in the drum beat, the melodic line and the piano parts.

The second element of object similarity requires that the whole or a substantial part of the original work looks objectively similar to the copy. Using a hearing and ear recognition test, the court found that there was a sufficient degree of resemblance between the National Party’s song and ‘Lose Yourself’.

Lastly, the element of causation requires proof that there is an unlawful use of original work either directly or indirectly. Usually, the closer the similarity between the two works, the stronger the inference is ...

Continue Reading

If you’ve ever been on YouTube, you may have noticed something funny crammed between the comments section and the video. It usually looks something like this:

"Copyright Disclaimer Under Section 107 of the Copyright Act 1976, allowance is made for "fair use" for purposes such as criticism, comment, news reporting, teaching, scholarship, and research. Fair use is a use permitted by copyright statute that might otherwise be infringing. Non-profit, educational or personal use tips the balance in favor of fair use.”

This disclaimer pops up on video games, music videos, and even adult websites, like the world’s nerdiest virus. All over the globe, people are taking copyrighted stuff and reissuing it under the doctrine of “fair use”.

What is fair use?

Like deep fried butter and deep fried Coca-Cola, fair use is an American concept. It was codified in the U.S. in 1978 and provides protection to people seeking to use the copyrighted material of others. When deciding what is “fair”, the courts consider:

a)    the purpose and character of the use;

b)    the nature of the copyrighted work;

c)     the amount of the work used as a whole; and

d)    the effect that the use would have on the value of the copyright.

If the courts consider the use of the copyrighted work ‘fair’, then the person using it does not have to seek permission from the copyright holder. Usually, this means that the person using the copyrighted material isn’t seeking to devalue the copyright, or make an easy profit by republishing it as their own.

How does fair use work?

Here’s an example of how these rules work: imagine a person wants to use this photograph with the caption ‘Brisbane’s best ...

Continue Reading

A lot of time, effort and money goes into branding a business - coming up with the name, designing a logo, generating marketing material, etc.

Most people will do the usual business, company and domain name searches, and if the name is available, they register.  This is certainly a start, but this isn’t where these enquiries should end.

Why isn’t a business/company/domain search sufficient?

These simple search functions tell you whether the exact name you’ve punched in is already taken. They don’t tell you whether you’re potentially infringing on an existing trademark.

So, why is this a problem?

A practical example is REA Group Ltd v Real Estate 1 Ltd.

REA Group Ltd is the registered owner of ‘realestate.com.au’ and ‘realcommercial.com.au’ trade marks. Real Estate 1 attempted to register the trade marks ‘realestate1.com.au’ and ‘realcommercial1.com.au’.

The Court found that there would be a real danger of confusion between REA’s trade marks, and the trade marks Real Estate 1 sought to register, as they were deceptively similar and had the capacity to confuse a potential consumer. This constituted trade mark infringement and the registration application was refused.

And if you need more convincing, here are some other reasons to trademark:

1. Protecting your brand – because in the example above, you want to be REA Group Ltd who has a valuable monopoly.

2. Money! Any prudent buyer or investor wants to know that their potential investment owns its own name and its trademark is protected. Trademarking adds value to your business.

What next?

From beginning to end, an unopposed trademark application takes at least 6 months.

We find for many start-ups, trademarking simply isn’t in the budget. This shouldn’t stop you from getting some initial legal advice around your brand, and working out a plan with your legal advisor to start ...

Continue Reading

Image via today.com
Consumer Affairs Victoria v Gibson
The Federal Court has handed down its decision on penalties against Belle Gibson.

Ms Gibson rose to fame (and infamy) surrounding promotions of her book and mobile app titled The Whole Pantry, wherein she claimed to have beaten cancer through diet and alternative therapies after rejecting conventional cancer treatment.

The App and Book, published in August 2013 and November 2014 respectively, netted Gibson and her related company estimated sales of over $1 million, along with breakfast TV slots, current affairs coverage, magazine articles, social media stardom and charity fundraisers.

However, the claims turned out to be too good to be true.

After cracks began to appear in Gibson’s cancer story, and allegations surfaced that little, if anything, from the charity promotions, had actually been donated, Consumer Affairs Victoria (CAV) commenced proceedings against Ms Gibson and her company for misleading and deceptive conduct.

In March 2017, Gibson and her related company (now in liquidation) were found to have engaged in misleading and deceptive conduct in breach the Australian Consumer Law and its counterpart Victorian legislation.

It was held that Gibson and her company had made false or misleading representations in relation to claims about Gibson having cancer and the treatments she underwent, along with multiple false or misleading representations that certain sales proceeds would be donated to various charities.

The Court found that, despite the company operating the social media accounts and holding the book publishing contracts with Penguin, Ms Gibson was also liable as the ‘controlling mind’ behind the operation.

In the follow-up judgment, Mortimer J ordered Gibson to pay penalties totalling $410,000 associated with the Australian Consumer Law breaches for ...

Continue Reading

Show Pony Group Pty Ltd (“ShowPo”) has settled a dispute with competitor Black Swallow Boutique Pty Ltd (“Black Swallow”) and two individuals, Mr Alexander Baro (chief executive of Black Swallow) and Ms Melissa Aroutunian (a former graphic designer for ShowPo), over the alleged theft of ShowPo’s contact database.

The case highlights the risks of unauthorised use and disclosure of confidential information. It also reveals that sometimes the greatest threat comes from within.
Details of the ShowPo case
ShowPo, a hugely popular online women’s fast fashion retailer, commenced proceedings in the Federal Court of Australia in mid-November 2016. It was alleged that the former employee, Ms Aroutunian, downloaded a copy of  ShowPo’s Client Contact List before leaving ShowPo and provided a copy of that list to Black Swallow. According to court filings, the database contained contact information for all of ShowPo’s customers, competition entrants, suppliers and other contacts. It was estimated that the database contained around 306,000 entries.

ShowPo was successful in obtaining an interim injunction (a temporary court order made subject to the subsequent trial of the proceedings) to prevent the three respondents from using or disclosing the Client Contact List.

The proceedings then headed to Mediation, following which the case was finalised by agreement between the parties.

According to the final orders, dated 24 March and 10 April, each of the respondents is permanently restrained from using or disclosing the Client Contact List, and Black Swallow has been ordered to pay $60,000 in compensation to ShowPo over instalments.

The customers of a business are its lifeblood, and their information is increasingly being obtained and stored online. So, what measures can be taken to protect this essential and sensitive information from unauthorised breach? And what can you do if a breach occurs?
Basic Data Security
It goes without saying that ...

Continue Reading

The Full Federal Court confirms that metadata is not all linked in its decision in the case of the Privacy Commissioner v Telstra Corporation Limited [2017] FCAFC4.
The History
In June 2013, a Telstra customer, Mr Grubb, made a request to Telstra for ‘all the metadata information Telstra has stored about my mobile phone service’.

In accordance with the Privacy Act 1988 (Cth), a person has the right to request access to personal information held by an organisation that is bound by the Act.

Over the course of the following year, Telstra provided Mr Grubb with various information about his service including dates and times of communications, his locations and duration of calls.

Telstra, did not, however, provide the metadata concerning the journey of his calls or IP addresses related to his internet usage as Telstra did not view this type of information as personal information within the meaning of the Act.

Mr Grubb disagreed and filed a complaint to the Privacy Commissioner.

Telstra argued that the information relating to the path a call takes or the IP addresses a network uses to access the internet is not personal information as that metadata does not identify a person.  Once a call leaves the original tower, the metadata associated with that journey is not attributable to the individual person.

The Full Court agreed with Telstra deciding that the metadata Mr Grubb requested did not meet the required threshold to be defined as personal information within the scope of the Privacy Act but is rather information about how Telstra provides the service.
What is the impact of this decision?
It is unclear how wide of an impact this decision will have within the general area of privacy law because the statutory definition of personal information has changed since Mr Grubb’s complaint.

However, the case does serve as a reminder of the importance of businesses reviewing ...

Continue Reading

Australian Consumer Law: Valve Gets Steamed By ACCC In 'No Refunds' Case
The Federal Court of Australia has handed an A$3million fine to Valve Corporation for breaches of the Australian Consumer Law (ACL).

Valve operates Steam, which is a popular platform for online distribution of computer games. The case involved the issue of consumer rights when it comes to obtaining refunds for 'faulty' software purchased on the platform.
Breaches of the Australian Consumer Law
Customers are required to accept a Steam Subscriber Agreement to use Steam. Valve's agreement contained provisions attempting to exclude:any warranty as to the merchantability of the software games it supplied; and
the right to any refunds or compensation even if the software was faulty.
The ACCC commenced proceedings against Valve, alleging those provisions and other representations by Valve regarding consumer rights breached the ACL.

However, Valve argued that the ACL did not apply because:it was a foreign entity and did not conduct business in Australia;the law of Washington State applied to the Steam Subscriber Agreement; and
the mere issue of software licences did not constitute a ‘supply of goods’.

The Court dismissed Valve's arguments, finding that:supplying a software download was a ‘supply of goods’ under the ACL;the ACL continued to apply despite the 'choice of law' provision in the Steam Subscriber Agreement;
the relevant customer relationships and transactions occurred in Australia;
Valve did in fact conduct business in Australia, as it had cached copies of the software on Australian servers and engaged Australian agents in its supply chain;
the statutory consumer guarantees under the ACL (including the guarantees that goods must be 'fit for purpose' and 'of acceptable quality' and the entitlement to refunds and replacements where goods fail those guarantees) cannot be excluded or avoided by contract; and
Valve breached the ACL by purporting to refuse refunds and exclude ...

Continue Reading

Is The Pen Mightier Than The Pixel? Electronic Signatures vs Traditional Paper
Ever wondered why checkboxes are so popular online? From ordering pizza to signing up to Spotify, we’re constantly asked to “agree to the terms and conditions”. Heck, one day, you’ll probably check a box to get married! We may not always think of these little boxes as electronic signatures, but they in fact operate in the same way as traditional paper contracts. Do you ever consider the risks and benefits when you sign documents online?
What is an electronic signature?
An electronic signature is very similar to a pen-and-ink signature. Essentially, it’s a mark or indication that identifies you, the person signing the document. Like a pen-and-ink signature, it’s used to show that you agree to a set of terms.

Electronic signatures come in all shapes and sizes, from an image of your real world signature, to email signatures, to clicking “I accept” to sign documents online. Courts in Australia consider all of these to be valid electronic signatures.

You can use an electronic signature in most situations where a pen-and-ink signature could be used. But there are some circumstances where you can’t use an electronic signature – for example: on your will, on a statutory declaration or affidavit and on other documents that have formal signature and witnessing requirements. Also, both parties to the contract must agree to accept the use of electronic signatures.
What are the benefits of using electronic signatures?
Electronic signatures are extremely useful for cutting down on waste. They remove the need for pens, paper and ink. They also protect against wrist injury for anyone required to sign reams of paperwork in one sitting.

Many businesses and government agencies are adopting and accepting online or electronic signatures as part of their contracting process. Rouse Lawyers is proud to use electronically-signed cost agreements, for example.

Electronic signatures are also ...

Continue Reading