Social media giant Facebook will appear in court to defend its Timeline feature against claims of trade mark infringement.
Timelines Inc, the creators of the timelines.com website, claim that Facebook has infringed its trade mark. The Timelines website was designed as a collaborative space to share and record historical and emerging events.
The timelines.com website was launched in 2009 and although it only has a small number of users, it did register a number of US trade marks, including TIMELINES and timelines.com. It sued Facebook in 2011, following the launch of Facebook’s ‘timeline’ feature in October 2010.
Facebook tried to have the case thrown out, arguing that the term ‘timeline’ is a descriptive and generic term, but was unsuccessful. The case is due to go before a jury on 22 April 2013.
Lessons for Australian brand owners
Ensure that your trade marks are registered and registered early. Getting the earliest filing date is important to cement your rights. With just over 1,000 users, Timelines Inc probably wouldn’t have any cause of action against Facebook baed on reputation only – having registered trade marks is what has enabled them to pursue their claim (whether they’ll be successful is another question).
It’s not just business or company names and logos that serve as trade marks. The name of a product or service can also be considered a trade mark. So, it’s a good idea to conduct trade mark searches for the names of new products or service features before you launch them.
India has become the latest country to accede to the Madrid Protocol, becoming the 90th member of the international trade mark registration system.
From 8 July 2013, overseas brand owners will be able to designate India in their Madrid Protocol applications. Indian brand owners will also have access to the international trade mark system, making it easier for them to register and protect brands in member countries.
In joining the Madrid Protocol, India becomes one of a handful of Asian countries that are members of the treaty. Vietnam, Singapore, the Philippines, China, Korea, Japan and Mongolia are also members.
Did you know
The Madrid Protocol provides businesses with a cost-effective, streamlined and efficient system for the registration and management of overseas trade marks. Members of the Madrid Protocol include the United States, China, the United Kingdom, Japan, Singapore and New Zealand. There were 44,108 international applications filed through the Madrid system in 2012.
For more information on how we can help you to protect your brand overseas, please visit our international trade marks section.
So you’ve got your trade mark registered – your brand is now protected, right?
Wrong. When it comes to protecting your brand, applying for trade mark protection is just the start of the process. There are also some important things you need to do to maintain your trade mark protection.
Whether you choose to enlist the services of a trade mark lawyer or go it alone, it is important to bear some essential considerations in mind – from keeping an eye on companies who may be keen to register a similar mark to yours to ensuring all your products and services are protected under your trade mark.
Here are some of the important things you will want to keep an eye out for when managing your trade marks.
Important dates and contact details
Your trade mark renewal date only rolls around once every ten years, but we can guarantee that this is one anniversary you won’t want to miss! Similarly, you will want to make sure that the contact details IP Australia has for your business are up to date so you don’t miss out on any essential communication. Of course, we can handle all of this for you so you never have to worry about dates being missed or letters going astray.
Keeping an eye on competitors
Your registered trade mark is only as good as the steps you take to protect and enforce it. So, you’ll want to keep an eye on what your competitors are doing to ensure they’re not stepping on your rights. We can also keep watch on what new trade mark applications are being filed and alert you to any that are similar to your mark. Taking early action to deal with potential conflicting marks or infringement can usually stop matters escalating down the line, saving both time and money.
Cover all your bases
It’s important to remember that trade mark protection extends only to the exact trade mark you have filed and the goods and services set out in your registration. So, if you rebrand or make changes to the mark you actually use or start providing different or additional products, you’ll need to review your registration to ensure you’re adequately protected.
Prevention is always better than cure – keeping on top of trade mark maintenance issues ensures you get the maximum from your registered trade marks.
A recent Federal Court decision has highlighted the importance of trade mark owners taking prompt action when faced with infringement or potential infringement.
In Snack Foods Ltd v Premier 1st Pty Ltd  FCA 135, the Court refused to grant an interlocutory injunction, criticising the applicants’ decision to engage “in a lengthy dialogue” with the respondent rather than taking immediate and urgent action.
Consistent with their name, the Snack Foods companies manufacture and distribute a range of snack food. In 2011, they registered the trade mark POPPED CORNERS in relation to a popped corn snack food product. The product was due to launch in March 2013.
In September 2012, Snack Foods learnt that Premier 1st was intending to import from the USA for sale in Australia a snack food product called POPCORNERS. Premier 1st had secured orders for the product from Woolworths.
Snack Foods’ lawyers sent a letter of demand to Premier 1st asserting that the importation and sale of POPCORNERS would amount to trade mark infringement and seeking an urgent undertaking from Premier 1st not to do so. Premier 1st’s lawyers countered that the POPPED CORNERS trade mark was susceptible to cancellation.
Over the next month, the parties’ lawyers exchanged a series of letters advancing their clients’ respective positions and seeking a resolution to the matter. Finally, in early November 2012, Snack Foods issued proceedings in the Federal Court seeking interlocutory and final injunctions, an order for delivery up and damages or an account of profit.
The interlocutory injunction
An interlocutory injunction is an injunction that is granted before the actual hearing of a case.
In order to succeed in an application for an interlocutory injunction, an applicant must satisfy the court of three things: (a) that there is a serious question to be tried, (b) that it would suffer irreparable damage if an injunction is not granted such that damages would not be an appropriate remedy, and (c) the balance of convenience favours the grant of an injunction.
The Court held that Snack Foods failed to satisfy those requirements.
In assessing the balance of convenience, the Court held that:
- the risk that Snack Foods would suffer irreparable damage was a “theoretical” one given it had not yet started marketing or selling POPPED CORNERS branded product in Australia and had no reputation in the market.
- the grant of an injunction would cause significant harm to Premier 1st as it would most likely result in Woolworths cancelling its orders for the product.
- the urgency for interlocutory relief was primarily caused by Snack Foods’ own failure to move quickly and apply for an injunction or request a final hearing in September 2012.
As a result, Snack Foods’ application for an interlocutory injunction was refused.
- When faced with infringement or potential infringement, it’s imperative that trade mark holders take immediate, decisive action.
- Spending too much time corresponding with the infringer (or its lawyers) can prejudice an application for urgent relief. In other words, if it’s urgent, act like its urgent and take urgent action.
The World Intellectual Property Organization has significantly expanded its public database of global brands and trade marks, which it claims makes it the largest free, public trade mark search facility on Earth.
In a recent media release, WIPO revealed that it has now added a total of six additional national collections to its Global Brand Database, which has resulted in it more than quadrupling in size.
With the addition of data from the United States Patent and Trademark Office, as well as five others, WIPO’s database has grown from 2.2 million entries to 10.9 million records on file.
The database now includes national intellectual property collections from the USA, Canada, Switzerland, Morocco, Estonia, Egypt, the United Arab Emirates, Algeria and Australia – as well as WIPO’s collection of international trade marks registered under the Madrid Protocol.
The WIPO Global Brand Database can be searched for free and has some useful search functions although it doesn’t have quite the same degree of flexibility or detail in terms of search parameters when compared with many national databases, including Australia’s ATMOSS. It will nonetheless be another useful resource for international trade mark applicants looking to file trade marks overseas.
Markwell provides comprehensive trade mark search services to search Australian and overseas trade marks. We interpret and report on search results and provide clear filing recommendations based on each search. Contact us to find out more about our professional search services.
Australian fashion house Viktoria+Woods has opted to rename it’s popular “Hendrix” leather jacket due to a “trade mark technicality”.
The change was announced on the brand’s Facebook page on 19 December. The new name for “The Hendrix” is, somewhat aptly, “The Phoenix”.
“Due to a trademark technicality, we have re-named our jacket the PHOENIX!” a Viktoria + Woods representative posted. We personally LOVE the new name and [are] proud of its international recognition.”
We can’t be sure precisely what the trade mark technicality was that caused the company to rebrand its jacket. The most likely reason is that someone else with a registered trade mark for Hendrix (or something similar) has asserted its exclusive rights against Viktoria+Wood or that the fashion house itself discovered the potential conflict and sought to head it off.
And the potential was certainly there, given there are two Australian trade mark registrations for JIMI HENDRIX covering clothing in class 25.
While Viktoria+Woods appears to have remained relatively upbeat about the rebranding of its jacket, potential trade mark infringements can be challenging – and costly – for some businesses. Aside from the risk of damages, there is also the cost of rebranding and the “thrown away” costs of branded material (e.g. brochures, stationery, etc) that can no longer be used.
It’s a timely reminder of the importance of new brands taking an exhaustive approach to trade mark searches at the earliest possible stage of brand development. Whether you are launching a brand new venture or a new product, it is important to ensure that you are not infringing on another person’s intellectual property rights.