Brand Value & Strategy 2. Tips from Recent Cases 3. Domain Names Update - Trade Mark Developments & Insights
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3/3/2022
Trade Mark
Developments & Insights
DCC In-house Counsel CPD Day 2022
Liz Godfrey 03/03/2022
egodfrey@dcc.com
1. Brand Value & Strategy
2. Tips from Recent Cases
3. Domain Names Update
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3/3/2022
Trade Mark
Developments & Insights
1. Brand Value 2021
Most Valuable AU Brands 2022
Trade Mark
Developments & Insights
Brand Value & Growth - World
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3/3/2022
Trade Mark
Developments & Insights
Brand Strategy:
Business considering a new brand?
CHECKLIST
1. Do you have a process for new brands in place and communicated to the team?
2. What should we be protecting – words, logos, shapes etc.?
3. Is the brand sufficiently distinctive (not descriptive)?
4. Is the brand confidential – confidential launch strategy?
5. Have we cleared the brand for use and registration? Clearance search prior to
filing – options full search, identical screening search / no search.
6. Have the goods and services been classified correctly?
7. Who is the correct Applicant for the trade mark?
8. Are we looking beyond Australia? Devise overseas filing strategy (including
searching) 6 months to file overseas and claim benefit of priority date.
Trade Mark
Developments & Insights
Encourage Selection of Distinctive Trade Marks
Descriptive Distinctive
Directly related Suggestive Arbitrary Invented word
meaning *
Creamy Coppertone Apple Nike
Geographical Netflix Amazon Kodak
Numerals/Letters
Common
Surnames
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Trade Mark
Developments & Insights
2. Tips from Recent Federal Court Cases
What can happen if a non-distinctive mark is selected?
• Objections (serious) during examination – resulting in costs and delays:
- devoid of distinctiveness (s41(3) Trade Marks Act 1995 (Cth) (“TMA”) – pre-
filing date evidence
- some distinctiveness but not enough in its own right (s41(4) TMA) – pre/post
filing date and future evidence
• Potentially vulnerable to attack at opposition / after registration.
• If successfully challenged, can’t be relied on to allege trade mark infringement.
Example: A trade mark registration for URBAN ALE not sufficiently distinctive and could not be
relied upon to prevent use of
(see: Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186)
Trade Mark
Developments & Insights
The concept of “use as a trade mark”
• Trade mark is used to … the use of the modified AGL logo is to identify that
distinguish one traders goods brand, and the company that it represents, as the
/ services in the course of subject of criticism. [Consumers] would not perceive
trade those of other traders. Greenpeace to be promoting or associating any goods
or services by reference to that mark. Rather, it is
• “distinguishing” them in the the use of the modified AGL logo to refer in terms to AGL
sense of indicating source / and the goods and services that AGL provides.
origin of goods/services. AGL Energy Limited v Greenpeace Australia Pacific
Limited [2021] FCA 625 (8 June 2021)
• relevant at filing,
prosecution, maintenance • AGL logo not used to distinguish Greenpeace’s
and for trade mark goods/services from those of other traders but
infringement. instead to criticise AGL (not “use as a trade
• Example: Registered trade mark”).
mark for the agl logo was
not infringed by the online
banner below:
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Trade Mark
Developments & Insights
Use of a trade mark cont’d
Can you use two trade marks at the same time?
Example:
FREEZEFRAME & PROTOX being used as independent
trade marks, not as a composite trade mark or with
FREEZEFRAME as the only / primary TM. Even though
PROTOX not bolded/followed by TM/® symbol.
PROTOX deceptively similar to BOTOX. Correct test for
TM infringement is not whether consumers would be
confused, but whether, based on the TMs, consumers
might be caused to wonder whether the products came
from the same source.
The similarities in the words implied an association and
consumers would wonder if PROTOX was an alternative
being offered by those behind BOTOX.
(see Allergan Australia Pty Ltd vs Self Care IP Holdings Pty Ltd
[2021] FCAFC 163; 393 ALR 595; 162 IPR 595)
Trade Mark
Developments & Insights
Use trade mark cont’d
• Was use of “instant would be caused to wonder if the same source.
BOTOX ® alternative” goods came from same source • BOTOX in phrase being
trade mark use? - Consumers may wonder if used to leverage reputation.
• Yes – word “alternative” did PROTOX is a cream that gives
not dispel conclusion of the same results as BOTOX
association. Implied products injection.
different as in there is a Did this use qualify for the
choice between them (rather comparative advertising
than indicating different defence?
trade source).
• No – this was not an
• “instant BOTOX® example of an advertiser
alternative” deceptively comparing their product to
similar to BOTOX: another’s to convey its
- Memorable feature and product is better/preferable.
dominant cue in phrase = • Comparative advertising
BOTOX; defence not available if
- Use of descriptive words consumers would be
around it make the phrase less misled to think the
similar but real risk consumers compared goods came from
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Trade Mark
Developments & Insights
3. Domain Name Update: au. domain names
Intended benefits: Key Dates: first come first served basis
dcc.au 24 March 2022: .au Direct after 24 September 2022.
complements, not replaces Registration Launch.
existing domain names, Register a new .au that 4 February 2018: Cut Off
.com.au, .net.au doesn’t exist anywhere in Registration Date for
wider choice, shorter, more the .au Registry already. Category 1 Priority Claims
memorable, easier to type Apply for an exact match of • In the event of competing
on mobile devices any existing .au that you claims to a .au domain
in line with other countries, already own. name, the owner of a
.uk, .ca, .us, .nz domain name registered
before 4 February 2018
24 March 2022 - 24 trumps.
September 2022: Priority
Claim Period
• If own existing .au domain
name must submit a priority
application during this
period or will be available on
Trade Mark
Developments & Insights
Eligibility & Allocation
Who is eligible?
Eligibility: Any person or organization can register a direct domain name provided
they have an Australian Presence. e.g. Australian citizen, company, charity etc..
Eligibility: Foreign entity eligible only if it owns an Australian trade mark
application or registration that is an exact match of the words in the domain
name.
i.e. exacttrademark.au
How are the DN allocated?
Allocation: None, so long as DN available, meets syntax requirements, not on
Reserved Name list. Unlike, .com.au for commercial entities with allocation rules
that specify how the name needs to relate to the registrant or their organization.
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Trade Mark
Developments & Insights
Priority Claim Period
24 March 2022 - 24 September 2022: Priority Allocation Period
• All existing .au domain names will be reserved for a 6 month period.
• Existing .au names owners must submit a priority application during this
period if they want the corresponding .au direct name.
• Make sure eligible as eligibility for existing .au will also be checked.
• Each Registry will charge a fee and you will need know the domain name
password.
• No obligation.
• If no priority claim made it will become available to the public on a first-come,
first-served basis at the end of the six-month Priority Allocation Period.
Trade Mark
Developments & Insights
Example: Competing Priority Claims
• Oscar owns dcc.com.au Each eligible to apply
• Lola owns dcc.net.au
for priority status
• Frazer owns dcc.org.au
Priority category 1 Names created on or before the cut‐off date of 4 February 2018
Priority category 2 Names created after the cut‐off date of 4 February 2018
• Category 1 Applicants have priority over Category 2 Applicants.
• Where there are multiple Category 1 Applicants, the name is allocated on
agreement/negotiation between the Category 1 Applicants.
• Where there are only Category 2 Applicants, the name is allocated to the applicant with
the earliest creation date.
Agreement Reached No Agreement Reached
Unsuccessful applicants withdraw their applications The .au direct domain name remains reserved.
The name is allocated. Applicants will need to renew their application on a yearly
basis. The name remains reserved until there is one active
application.
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Trade Mark
Developments & Insights
What should you be doing now?
1. Which existing domain names would the business like to register in the .au
domain name space?
2. Are there any new domain names the business would like to register in the .au
domain name space?
3. Do you intend to make a priority claim? If so, does your existing domain name
satisfy the eligibility criteria for that domain name?
4. Do you need assistance with the process? Making a priority claim application
attracts a fee and that will vary between registrars.
Liz Godfey
Principal
egodfrey@dcc.coml
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3/3/2022
Next Session: Recent Developments –
Copyright Defences
Timothy Creek
tcreek@dcc.com
9
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