Mens Gallery Melbourne vs Mens Gallery Sydney

‘Gentlemen’s Club’ Mens Gallery Melbourne has successfully stopped its Sydney namesake from registering its corporate logo as a trade mark in Australia. This happened at a Trade Marks Hearing.

The Mens Gallery Sydney applied for a trade mark for its logo, covering “Theatre restaurants (entertainment services)” and “Theatre restaurants (provision of food and drink)”!

The Sydney application was rejected.

This doesn’t mean the Mens Gallery Sydney will have to change its name, but without a registered trade mark, it can’t stop others from using a similar logo.

Some lessons to learn from this case:

The Hearing Officer was critical of the evidence supplied by the Sydney applicant – photocopied, not original statutory declarations; documents sometimes referring to the Mens Gallery words instead of the Mens Gallery logo; spelling mistakes; lack of dates; meaningless financial information.

Also, the attorneys for the Sydney application did not show up at the hearing, although the Melbourne group was represented by a leading barrister. Attendance is strictly not essential, but you can hardly complain about losing a hearing if you don’t take it seriously enough to show up. If you are serious about winning, do it properly.

“Redskins” not racist, what about “wogs”?

A US Federal Court has held that the Washington Redskins name is not racist.

The name has been a source of considerable criticism over the years, inspiring hate websites.

What about “wog”? Would IP Australia, the Australian Trade Marks office, refuse to register “wog” here?

Nope. There are several “wog” marks. Wogarama, for example, is owned by Third Costa Pty Ltd (presumably a company associated with Nick Giannopoulos) for entertainment services.

But not all have been registered. In 2006, a Tim Pirzas tried to register WOG FOOD for books but failed. Probably not because of racist reasons – because it’s descriptive of meditarranean food. Descriptive terms cannot generally be registered as trade marks.

Who exactly is a True Christian®?

Fundamentalist Christian church Landover Baptists believe that they’ve worked it out.

Without going into detail about their beliefs, they’re, ahem, a little different from your neighbourhood church. Female church members can get fined up to $200 for using tampons or wearing long earrings. Dancing and failing to get a demon-possessed infant sterilized also attracts fines. Oh, and apparently the Devil is using Olympics Basketball to get teenage boys to masturbate.

They don’t like Mexicans, Arabs, Asians, homosexuals, Catholics, Presbyterians, Mormons, Methodists – basically anyone except themselves, the real True Christians®.

True Christian is marked with either a ™ or ® symbol at various places on their website.

Given that they have their own set of rules for everything they probably won’t care that they can’t legally use the ® symbol without having a registered trade mark (which they don’t have). Although the US Trademarks and Patents Office – sorry, the Devil – could prosecute them. However, they, and anyone else, can use the ™ symbol without restriction, as ™ simply means that the user is claiming exclusive rights and may or may not have anything registered.

Thanks to the reader who alerted me to this.

Hari Puttar – not a spelling mistake, but Warner Bros are suing!

Warner Bros, producers of blockbuster Harry Potter movies, are suing the makers of a Bollywood children’s film called Hari Puttar – A Comedy of Terrors.

“The movie has nothing to do with Harry Potter,” protested the 11 year old star of the film, Zain Khan.

In the film, a 10 year old boy nicknamed Hari Puttar moves to Britain and recovers a stolen top secret computer chip originally developed by his father for the Indian Army.

A key difference is that unlike Harry Potter, Hari has no magic powers and is certainly no wizard.

Not that Warner Bros care. To them, the title itself is too close.

Titles are not protected by copyright law. We’re not sure whether they’re suing under trade marks law (Warner Bros have several Harry Potter trade marks in Australia, presumably they have registered the title in India too), or passing off. Either way, the Harry Potter series has a formidable reputation so it should be an interesting case.

Naughty, naughty Dell! You can’t own ‘Cloud Computing’

Computer company Dell has attempted to register the term ‘Cloud Computing‘ as a trade mark.

At first, the US Patents and Trademarks Office let the application through. Then it changed its mind at the last moment and decided to re-examine the application.

Dell’s attempt to register ‘Cloud Computing’ is naughty because it is commonly used to describe the concept of using Internet based services by consumers with no knowledge of or control over the technology.

Commonly used, generic concept terms should not be registrable as trade marks because everyone should have the right to use them. This is, in fact, why terms lose trade mark protection once they become generic. Very much like the Ugg boots case.

Why H&R Block thinks it owns ‘My people’

Tax preparation firm H&R Block is suing American Express over a recent television commercial featuring talk show host Ellen DeGeneres and singer Beyonce Knowles.

H&R Block argues that its “My People” campaign has infringed its trade marks and fallen foul of US unfair competition laws.

The H&R Block ads feature the firm’s clients saying they don’t have to worry about their taxes because they have “people” to handle them, as well as a number of other everyday tasks. In the disputed American Express ad, DeGeneres searches for her “people” after Knowles encourages her to “have your people call my people”.

H&R Block claims that audiences “identify the phrase ‘I got people’ with H&R Block”.

Huh? I don’t think H&R Block has a monopoly over the use of “my people” to describe employees. Doesn’t look like an infringement to me.

Little Miss Trade Mark Infringement

The Walt Disney Co has been sued for trade mark infringement by THOIP, the owner of the “Little Miss” and “Mr. Men” marks.

The “Little Miss” merchandise range has gained attention recently after Britney Spears and Paris Hilton were photographed wearing the shirts, which are sold at Disneyland.

Disney has also been selling shirts with similar captions, including “Little Miss Bossy”, but has substituted illustrations of Disney Characters, according to court papers.

No doubt the Disney designers thought the idea would be cute and funny. Unfortunately for them, parody is not a defence in trade mark infringement (as it is in copyright cases), so Disney may be in trouble.

Don’t use logos in your music video… especially Louis Vuitton

Sony BMG has settled a lawsuit with Louis Vuitton over the unauthorized use of the LV logo in some of their music videos.

Sony agreed to pay LVMH Euro100,000 for using the trade mark:
• printed dashboard in a pink Hummer in Britney Spears’ music video
• on a beach ball in Da Brat’s music video
• on a jacket for former American Idol Ruben Studdard’s CD

LVMH intellectual property director, Nathalie Moulle-Berteaux, said “We believe the terms of this agreement will provide strong enough protection to our brand worldwide and we are gratified that Sony BMG has agreed to educate its record labels about our trademarks and copyrights in order to prevent the misuses of our intellectual property in the future.”

This reinforces the rule – any unauthorised appearance of a registered trade mark in a music video, advertisement or film and you could soon get a letter from the lawyers.

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).

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.