Tuesday, July 28, 2015

Does my domain name infringe a registered trade mark?

By Tim Golder, Partner, Sarah Matheson, Partner, and Grace Walton, Vacation Clerk

A recent 650-paragraph judgment presents a smorgasbord of trade mark law issues with some consumer law for dessert. Perhaps suffering from indigestion, his Honour commented on the disproportionate amount of resources expended on this dispute. To save our Scintilla readers from the same fate, we have focused on selected issues below.

The facts

Cairns Harbour Lights Pty Ltd (CHL) was the developer of an apartment building in Cairns known as 'Cairns Harbour Lights' or 'Harbour Lights'. Some apartments were let on a short-term basis.

In 2009 CHL applied to register two word marks: HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS in relation to 'commercial real estate agency services', 'hotel services' and 'leasing, letting and rental services'. Registration was granted.

Apartment owners were free to use any letting agent, but CHL granted Accor exclusive rights to operate a letting service on-site, and an exclusive licence to use the trade marks.

In 2007, an apartment owner started her own letting agency using 'Harbour Lights' and 'Cairns Harbour Lights', and later sold her business to one of the respondents, Liv Pty Ltd (Liv).

The CHL and Accor sued the apartment owner and  Liv (and its director) for trade mark infringement and misleading and deceptive conduct. The respondents cross-claimed that CHL was not the owner of the trade marks and sought rectification of the Trade Marks Register.

In brief

The respondents succeeded in the rectification claim with respect to CAIRNS HARBOUR LIGHTS mark for all services, and with respect to HARBOUR LIGHTS other than for 'commercial real estate services' and 'hotel services'.

CHL and Accor succeeded on infringement in relation what was left of the trade marks, and (on a limited basis) in the misleading and deceptive conduct claim.

Read on for the detail …


If a mark has not been used prior to filing, the registrant is deemed to be the owner. If a mark has been used prior to filing, the owner is the party who first uses the mark for relevant goods/services.

Both sides had challenges in that they had variously used the relevant words in a merely descriptive sense, but not 'as a trade mark', and had not necessarily used exactly the same words as the registered trade marks.

However, both sides had used the marks in their respective domain names, resolving to their respective websites where various services were offered. Adopting an analogy between a domain name directing people to a site and a sign on a shop front, Justice Rangiah followed previous cases (here and here) finding that if a registered domain name resolves to a website that promotes goods or services, that will be use as a trade mark in relation to those goods or services. Other uses had been made in other marketing materials. Some uses were held to be merely descriptive of the property – ie merely using its name as an identifier – but other uses were held to be trade mark use in respect of relevant services.

The respondents were able to show first use in respect of the majority of services the subject of the registrations. Accordingly, the CAIRNS HARBOUR LIGHTS registration was limited to certain services – 'commercial real estate services' and 'hotel services'. The registration for CAIRNS HARBOUR LIGHTS was held to be totally invalid, on the basis that that particular mark was insufficiently distinctive.


For the services that remained validly registered, the respondents were held to have infringed. Most interestingly, infringement was held to extend to the appearance of the trade mark in Google search results (not just sponsored links). His Honour held that the respondents had caused an infringing statement to appear in the search results, and that constituted infringing trade mark use by those respondents.

Misleading and deceptive conduct

Accor gave evidence that people who had booked through the respondents' business would often show up at Accor's reception desk, trying to check-in, or requesting use of services Accor provided to its guests such as room service, pool towels, onsite luggage storage and newspapers. His Honour found, however, that that was not a consequence of misleading and deceptive conduct by the respondents, save to the extent that the respondents had included listings on various websites such as HotelClub.com and Expedia.com.au, which contained references to 'Hotel Policies', 'Hotel Features' or 'In the Hotel'. Those listings were found to be misleading and deceptive because they represented to customers that they were booking a hotel room (which in turn led to the expectation of a reception desk, room service and so on) when really they were booking an apartment.


The case is a reminder that use of a domain name which resolves to a website promoting the user's goods or services will probably amount to trade mark use.

The case is also a timely reminder of the benefits of filing a trade mark application before one commences relevant use – in this case use by a third party before the filing date, and before the first use by the applicant, caused the marks to be removed from the register for some services.

Friday, July 24, 2015

Website-blocking injunctions law now in force

By Jonathan Adamopoulos, Senior Associate

Copyright owners are now able to apply to the Federal Court for an injunction to block overseas piracy websites, after the Copyright Amendment (Online Infringement) Bill 2015 commenced recently.

The final version of the Bill, which received assent last month, adopted the recommendation of the Senate Legislative and Constitutional Affairs Committee to give courts greater flexibility in the factors taken into account in determining whether or not to grant an injunction.

Tuesday, July 21, 2015

Federal Court sheds (white) light on Section 43(3) of the Patents Act

By Joel Barrett, Senior Associate

A priority date, as the date at which novelty and inventive step are assessed, is valuable for a patentee. Section 43 of the Patents Act 1990 (Cth) provides that each claim within the same patent may have a different priority date, and that there can even be different priority dates within the same claim:
'Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.'

Until recently, the only Australian judicial guidance on s43(3) was from the Full Court of the Federal Court in AstraZeneca AB v Apotex Pty Ltd, in which the majority of four judges considered whether the following claim 'define[d] more than one form of an invention':
A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that: (i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and (ii) the counter anion to the inorganic salt is not a phosphate. [Emphasis added]
The patentee in that case argued that multiple different 'counter anions' could be used, such as titanium oxide or ferric oxide, and so the claim defined more than one form of the pharmaceutical composition. However, the court disagreed, finding that the claim 'defines only one form of the invention even though there will be any number of potential variants that are within its scope' depending on the counter anion used.

Tuesday, June 23, 2015

Scintilla TV: Update on the Dallas Buyers Club case

The latest chapter in the significant Dallas Buyers Club Inv v iiNet case is currently playing out in the Federal Court.

The matter is now focused on the wording of the letter from Dallas Buyers Club Inc to those who illegally downloaded the movie in Australia.

Allens Senior Associate Jesse Gleeson gives us a video update on the latest manoeuvrings in the case.

Monday, June 22, 2015

Wild Turkey victorious in its quest to dominate the (alcoholic) wild bird world

By Nadia Guadagno, Senior Associate

The owners of Wild Turkey Bourbon* and Wild Geese Rare Irish Whisky (Lodestar) have been engaged in a 15-year worldwide battle regarding their respective rights to use the WILD GEESE mark. The owners of Wild Turkey have vigorously opposed use by the makers of Wild Geese Rare Irish Whiskey of the words ‘Wild Geese’. The underlying motivation? Apparently not everyone might distinguish a wild goose from a wild turkey.

Wednesday, June 17, 2015

Senate Committee recommends anti-piracy injunctions

By Jonathan Adamopoulos, Senior Associate

In a report released last week, the Senate's Legal and Constitutional Affairs Legislation Committee has recommended that the Copyright Amendment (Online Infringement) Bill 2015 (Cth) be enacted into law. The report was released following a period of public consultation with key industry groups and other stakeholders.

Friday, June 12, 2015

Queensland's biodiscovery legislation under review

By Julieane Bull, Senior Associate

The Queensland Government is reviewing the Biodiscovery Act 2004 (Qld). Those who use genetic resources for commercial biodiscovery – such as biotechnology and pharmaceutical companies, research institutions and venture capital/investment funds – should consider making a submission to the review before its closing date of midnight, 29 June 2015.

The terms of reference for the Act's review are broad, including the purposes, structure and effectiveness of the Act. Our previous Focus summarised the current regulatory framework for biodiscovery activities in Queensland. The review invites recommendations for amendments to the Act, or alternatives to legislation, which would improve the effectiveness, fairness, timeliness and accessibility of the regulatory system.