iPod Karlsson - yes, Durex Karlsson - no

Swedish parents can now name their children after well-known brands.

The Swedish National Tax Board (Skatteverket) has recently changed its guidelines on what names are suitable for both adult Swedes and children born in Sweden. The Board maintains the official name registry and previously forbade name changes which did not comply with its guidelines. 

For example, an applicant could not simply change surnames. The new surname had to be unique (there was even a name creator tool on the official web site) and could definitely not be the surname of one of Sweden’s aristocratic families.

Now even brand names are no longer off-limits, provided they are not potentially embarrassing or offensive for the child in future.

“It is OK to call your child Melitta, but not after Durex, the condom producers”, said Lars Tegenfeldt from the Board. “There is nothing negative about a name like Coca-Cola or McDonald’s today. In the 1970s, maybe it was”.

Even before the recent changes, a Swedish court held that Metallica was a perfectly acceptable name for baby girls.

For brand owners, it may be flattering (although a little creepy) to know of a baby with the same name. 

Which brings me to today’s lesson: A brand owner can only stop someone from using its brand if that person is engaging in trade mark use (ie use in commerce to indicate the origin of products), not in other contexts (whether as a personal name or name-checking in a rap video).

Aston Martin’s £1 million car - owning the design

This will be one of the fastest and most expensive cars in the world. The Aston Martin One-77, priced at £1 million (= AUD2.1 million).

As an Aston fan, I naturally want one - it’ll be faster and even more fun to drive than my Vantage V8! The interesting thing is that Aston Martin are allowing owners to customise it as much as they want. Presumably, this means if an owner wants to change even the shape from the design above, he can (this is something that has been happening with luxury car brands like Ferrari, who have been offering bespoke, 100% unique cars). So who owns the new customised design and why is ownership important?

It’s important because the person who owns the design has complete control over whether more cars are produced according to that design. If you’re going to pay millions for a unique car, you’d want to make sure that nobody else can buy an identical specimen.

This principle applies any time a special design - whether for a car, house or piece of furniture - is designed specifically for you. Get ownership of the design.

So my advice to the billionaire playboys who are ordering One-77s - make sure Aston assigns the design to you! You can thank me by letting me drive your car. Just once.

Googlebay - legal or not?

Google has successfully stopped the registration of Googlebay as a trade mark in Australia.

Dmitri Rytsk applied for Googlebay as a trade mark in 2006 to cover “Consumer market information services”. Although the Trade Mark Examiner approved the application, the standard process is for every approved application to be advertised, opening the door for anyone to oppose. At this point, Google Inc filed an opposition.

At the hearing, the Hearing Officer rejected the application, siding with Google. He said that while it was not “substantially identical” to Google, it was “deceptively similar”.

He also said that “the general public could readily see ‘googlebay’ as some form of new internet business” owned by Google Inc.

Victoria’s Thomas puffs his last

The Victorian Goldfields Railway has fallen foul of copyright law, showing once again that copying can get you into trouble regardless of whether you do so for commercial gain.

For five years the VGR had operated a Friends of Thomas the Tank Engine attraction, based on the popular children’s characters and run between Maldon and Castlemaine during the school holidays. Their trains had Thomas-style faces and they even had their own “Fat Controller” in top hat and tails.

VGR is a non-profit operation staffed by around 80 volunteers, whose only motivation is to provide holiday fun for children. However, that was never going to pass muster with entertainment conglomerate HIT International, which owns the Thomas and Friends brand along with those of other popular children’s characters such as Bob the Builder and Barney and Friends.

Though the VGR operation had been tolerated until now, HIT has begun developing Thomas theme parks in the UK and US and is clearly not prepared to allow an unauthorized version.

How can you/Ebay tell if it’s a real Tiffany necklace?

Hot on the heels of the French court decison that Ebay was not doing enough to prevent the sale of counterfeit goods comes a different decision in the USA.

Tiffany sued Ebay for roughly the same reasons.

But US District Judge Richard J Sullivan in New York said Ebay was not liable for trade mark infringement “based solely on their generalised knowledge that trade mark infringement might be occurring on their websites.”

Ebay’s VeRO (verified rights owners) program, allowing trade mark owners to request the removal of counterfeit listings, was enough. There was no obligation on Ebay to preemptively take down suspicious listings for Tiffany jewellery or to force sellers to post more product information to guarantee authenticity, like series numbers.

Tiffany will need to continue employing people to monitor Ebay listings. I wonder how much the cost of doing this adds to the Tiffany retail price?

Are Bratz and Barbie sisters?

Did Bratz originate from ideas to update Barbie?

Mattel, manufacturers of Barbie dolls, certainly thought so. They sued MGA Entertainment, manufacturers of Bratz, for stealing the idea for the popular Bratz doll by hiring former Mattel employee Carter Bryant to access confidential information.

Mattel claimed that it had sketches of the Bratz dolls produced by Bryant in 1999 before he left Mattel for MGA. Mattel also claimed that Bryant had been giving ideas for Bratz to MGA while he was still working for Mattel, breaching intellectual property rights.

The court agreed with Mattel. As a general rule, product ideas created by employees are generally owned by their employer (I’ll write more about how this works and what employees need to know in future blog posts - subscribe if you want to find out).

But there’s a complication - MGA is now asking the court to declare a mistrial because a juror made racist slurs about its Iranian immigrant CEO Isaac Larian. The juror, who was dismissed for the slurs, said Iranians were “stubborn, rude” and “thieves” who have “stolen other person’s ideas.”

China - not a lawless frontier for kiwifruit trade mark

The Shanghai First People’s Intermediate Court has ordered the Nantong Xishu Fruit Trading Co Ltd to pay damages to Zespri Group Ltd, the world’s largest kiwi fruit marketer, for infringement of its trade mark (pictured left).

Zespri had registered its ZESPRI sun logo as a trade mark in China.

Zespri discovered Nantong Xishu Fruit Trading Co Ltd selling kiwi fruit using very similar logos, with the same font and colours, just substituting ZNISHIO and NISHIO for ZESPRI.

Despite Zespri getting Shanghai authorities to seize packing boxes and labels (something which would be almost impossible for a brand owner to do under Australian law), Nantong Xishu defiantly continued to use the logos.

Zespri sued Nantong Xishu in the Shanghai First People’s Intermediate Court.

The court sided with Zespri, saying that the marks used by Nantong Xishu on its kiwi fruit were so similar to Zespri’s marks that consumers were likely to believe that Nantong Xishu’s products originated from, or were connected with, Zespri.

It ordered Nantong Xishu to pay Zespri compensation and a significant part of its legal costs.

This case is yet another in a line of recent examples (see Louis Vuitton case) where Chinese courts show that they are very willing to protect trade mark owners.

AFL tackles Dimmeys over footy merchandise

Discount retailer Dimmeys has a job on its hands fending off a lawsuit from the AFL over what the league claims is a massive rip-off of its merchandise trade marks.

The league alleges that Geelong-based Dimmeys is guilty of “passing off” because its Supportergear Footy range and various ranges of children’s accessories – which carry club colours as well as references to specific teams – rip off its trade mark and product designs.

The AFL appears to have a strong case. While there is nothing to stop Dimmeys retailing football gear (or engaging well known former player Robert “Dipper” DiPierdomenico as its longstanding public face), trade mark and fair-trading laws will prevent it falsely implying a link or association with AFL clubs or the league itself.

A common test with such violations is whether members of the public would be confused into thinking the products come from another source. In this case, official AFL products are being sold alongside Dimmeys own brands and there is bound to be confusion as to the source of the merchandise.

Did Seven steal Apple’s idea for the iPod ad? Judge for yourself

Seven’s television advertisement for its TiVo digital TV recorder (click to see ad) looks very similar to Apple’s iPod advertisement (click to see ad).

The Apple ad features album cover art building up into a city before being sucked into an iPod. The TiVo ad features a similar animation, replacing cover art with TV screenshots.

The Sydney Morning Herald reported that Seven spokesman Simon Francis said: “Anyone knows there’s no copyright in an idea, and the TiVo television commercial is one of many out there at the moment expressing the same idea - worlds which are opened up to consumers by new technology and the information and entertainment which unfolds for them when they use that new technology.” He also said it was an independent creation by Seven’s inhouse team.

Is Francis correct? Does copyright law really allow the kind of similarity?

True, there is no copyright in an idea (worlds opening up and unfolding), but copyright protects the material expression of that idea (arguably, the use of imagery, whether cover art or screenshots, building into a city and then being sucked into a product). Not looking good for Seven.

What about the “independent creation” claim? If true, there is no infringement, because copyright only applies if there is copying, not coincidences. But the circumstances look very suspicious, especially where the original ad is a high profile one from such a well known company.

If Apple were to sue, I’d put my money on them.

Fiji government says no to Windows Fiji

Fiji’s military government may have been a bit trigger happy in lodging an objection to Microsoft’s use of the name Fiji for its new software system. The government objected after media reported that the American software giant, whose US$11 billion profit last year was almost three times Fiji’s GDP, was naming its new software product Windows Fiji.

The government said Fiji had absolute ownership of its name and had not been pacified by claims from the company that Windows Fiji was an internal working title, not a product name.

Unfortunately for the Fiji government, no-one can stop a private business from using any word as an internal working title.

Side note: under trade marks law, geographic names (countries, towns, suburbs etc) are not usually considered capable of distinguishing a company’s goods or services, so it would not be a great choice for Microsoft to launch Windows Fiji as an actual product anyway.