In considering the issue of standing the Hearing Officer, referring to the decision of the Full Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2009] FCAFC 14, confirmed that a person in the same trade who shows that he or she could use the mark establishes a rebuttable presumption of standing, although it was still necessary for the applicant to demonstrate a reasonable possibility of being appreciably disadvantaged in a legal or practical sense.

The Hearing Officer found that the first removal application must fail for lack of standing on the basis that Austin’s trade mark WILD TURKEY, upon which its person aggrieved submission was based, was not sufficiently similar to WILD GEESE. However, despite deficiencies in its evidence, the Hearing Officer was prepared to accept that WGW was a person aggrieved at the time of filing the second removal application on the basis of its use of the trade marks WILD GEESE or WILD GEESE WINES in relation to wine.

Ultimately the second removal application, directed to class 33 only, was partially successful resulting in an amendment to the specification of goods to “Alcoholic beverages (except beers) but excluding wine, fortified wine and wine-base spirits, namely brandy, grappa and cognac”

WGW/Austin relied on the decision of the Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 to the effect that beer was goods of the same description as wine in support of its claim for removal of all goods in class 33. However, the Hearing Officer considered that the partial removal, together with various concession by Lodestar was a sufficiently strong shield against any inconvenience to WGW/Austin.

This change has been made to standardise the application process across patents, designs and trade marks; to increase the security associated with online filings; and to reduce party duplication issues.

The opponent sought to highlight the visual and aural similarity of the two marks noting that they largely involved rearrangement of the letters and sounds of the V, O and L, and that “the rearrangement of VOLVO into LOVOL might be interpreted (consciously or subconsciously) as a play on the word VOLVO”.

The applicant pointed to the striking visual symmetry of the word LOVOL, which it noted was palindromic, by comparison with VOLVO which it said to be dominated by its two V’s. The applicant also referred to the fact that the two marks would be pronounced very differently, particularly in Australian accents.

The Hearing Officer concluded that “In the circumstances that the goods will be bought or sold, I do not consider that there is a real and substantial risk that the use of the LOVOL marks will be that a reasonable person, or a number of persons in the relevant class of likely purchasers, will be caused to wonder whether it might not be the case that the two products come from the same source”.

The Assistant Commissioner found that the McDonald’s name and brand and its   mark were “very well known” in the relevant market in relation to McDonald’s restaurants and fast-food.

However, she held that even if presented in the same colours, the overall marks were visually, aurally and conceptually different.  The Golden Arches Logo would be seen as the letter “M” (and associated with the McDonald’s name and brand), while the applicant’s single arch was clearly part of the letter “A”.  The additional word ANISHA’S in the applicant’s mark reinforced the letter “A’, as well as distancing the applicant’s mark from McDonald’s.

In rejecting McDonald’s claims, the Assistant Commissioner also stated “I consider the Golden Arches mark is so central to the McDonald’s brand that it would only ever be associated with McDonalds”.  In contrast, the applicant’s mark was considered unlikely to be perceived as part of the McDonald’s family of trade marks.  Thus, it was unlikely that any consumer would assume a connection in trade between the marks.

The Coca-Cola Company also argued that in the mark NAUGHTY MOTHER, NAUGHTY was the antithesis to the stereotypical kind, loving mother, and that a NAUGHTY MOTHER drink would be seen as a new, more exciting form of the MOTHER drink.

The hearing officer accepted these arguments, noting that the goods of the applicant were identical to those of the opponent and directed at the same market. He concluded that there was a real, tangible risk of actual confusion in the marketplace.

In assessing whether the conduct of the applicant constituted bad faith, the hearing office referred to two UK decisions in relation to bad faith noting that:

The applicant clearly has “applied to register a mark which he has previously recognized as the property of another with whom [he] has a course of dealing or some other relationship”, exemplifying bad faith as defined in William Leith New Century Marquees (supra).

Reference was also made to the decision of Aldous J in Harrison v Teton Valley Trading Co [2005] FSR 10 at [20] where it was held that:

No doubt an application made dishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, bad faith cannot have existed…

Having regard to the findings noted above and the history between the applicant and the opponent which included settlement of Court proceedings, the hearing office concluded that:

I am satisfied that the evidence shows that the circumstances were such that a ‘reasonable person’ standing in the shoes of the applicant, would have been aware that he /she ought not to apply for trade mark registration.

A test along the lines of whether a reasonable person would have been aware that they ought not to have made the trade mark application, suggests that something much less than dishonesty on the part of the applicant might be sufficient to constitute bad faith for the purposes of s 62A.

The PIRs form part of Australia’s Copyright Act 1968 and protect publishers and authors who hold the Australian rights to a title from competition by suppliers of foreign editions of that title by restricting booksellers from importing or selling foreign published books.

There are some exemptions, which include individuals being able to order books from foreign sources.

The big retailing chains claim that if the recommendation is adopted by the government, the cost of books in Australia will fall. On the other hand, Australian publishers and independent booksellers claim that their businesses will become uneconomic, and fewer Australian writers willl be published. Time will tell if the Government adopts the recommendation, and if so, what its effect is.