A recent
In this case, Amazon applied for removal of
The entire case became an argument about peas. Specifically, Amazon wanted the registration restricted to "dried peas".
The Guiding Principles in Partial Revocation
The Assistant Commissioner summed up the issues as follow:
"The issue is what is a fair description of the goods on which the trade mark has been used? The interests of the owner, the applicant for revocation and the public must be taken into account . Revocation is commonly referred to as the 'use it or lose it' provision of the Act . Finding a fair description of the goods on which the mark has been used is a balancing exercise. In
He then identified the key principles in revocation actions as follows:
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the need to keep the register clear of unused registrations or registrations with excessively broad specifications;
- the interest of the (revocation) applicant not being left with an unjustified exposure to infringement;
- the owner's interest in protecting its brand, (so that) consumers are not being deceived or confused by use of another trade mark;
- the owner being entitled to commercially realistic protection, remembering protection is for the specific goods described and, by way of the test for infringement, extends to similar goods; and
- an overly narrow specification may open the way for third party traders to use a confusing or deceptive trade mark without fear of infringement and deceive and confuse the public.3
"There is no bright line distinction between dried, frozen and canned peas"4
Few people apart from Trade Mark Attorneys are likely to lose sleep over assessing whether "dried peas" and "peas" are the same thing. However, the Assistant Commissioner needed to consider exactly that concept and did so at some length, as did
The Assistant Commissioner concluded that there are different points of sale within a food retailer for dried, frozen or canned goods and that the processing of the aforementioned goods is different, concluding that the difference between fresh, preserved, dried, frozen and canned food "is a commercial one"6 and is neither "arbitrary or overly pernickety".7 As such, the Assistant Commissioner concluded that the revocation action was successful and that the coverage should be restricted to "dried peas".
Are there any problems here?
The Assistant Commissioner's conclusion included an assessment on potentially infringing use of the SURPRISE mark in relation to other vegetables or other types of peas (i.e., such as dried or frozen). He concluded that any such use may potentially be brought "within the penumbra of trade mark infringement". However, whilst correct, such use would only constitute indirect trade mark infringement, allowing the hypothetical infringer to escape infringement if its use of SURPRISE were not likely to deceive or confuse.
In such a hypothetical case, if SURPRISE were used for frozen or canned peas and accompanied by prominent use of another mark (i.e. the third party's house mark) it may be difficult to establish trade mark infringement, if there is little perceived risk of deception or confusion. This difficulty would not occur if the infringing SURPRISE-badged goods were covered by the trade mark registration.
A warning for brand owners in
This case demonstrates that even when a registered mark has been used in
This case demonstrates the difference between Australian and
Furthermore, in
The case is also an important warning sign for holders of
Footnotes
1. (preserved, dried, frozen, canned, pre-cooked foods in this class but not including preserved vegetables)
2. Paragraphs 5, 26 and 27
3. Paragraph 36
4. Paragraph 70
5. Paragraph 63
6. Paragraph 79
7. Paragraph 82
8. And one which admittedly, may not exist in
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
3000
Tel: 39254 2777
Fax: 39254 2770
E-mail: RBattaglia@davies.com.au
URL: www.dcc.com
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