Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Thursday, January 31, 2013

Delegate for a Day

By Daniel Wilson, Trade Marks Attorney
Just as beauty is in the eye of the beholder, deceptive similarity is, in theory, in the eye of the consumer. This makes determining the deceptive similarity of trade marks a challenging task, even for the experienced decision-makers at IP Australia.

In what will become a regular feature, Delegate for a Day will provide you the opportunity to put your deceptive similarity radar to the test. We will bring you examples of pairs of trade marks that have been considered by a Delegate of the Registrar of Trade Marks. All you need to do is compare the marks and then make your selection.

Click on the link below and, in the new page, select 'Yes' if you think the trade marks are deceptively similar or 'No' if you don't. Once you have made your selections click 'Done' to see the real life decisions.

Naturally, you won't have access to the evidence that was before the Delegate, so you should bear in mind the following points when making your decision:

  • Would you be potentially confused if confronted with both trade marks on similar goods or services?
  • Do you think both trade marks look alike?
  • Do you think that both trade marks may belong to the same owner?
  • Do you think that only someone being exceptionally careless or stupid would confuse the two trade marks?

Survey link:

Monday, January 21, 2013

Facebook comment is free, unless it's misleading and deceptive

Recently, the Federal Court found that a Facebook user's posts constituted misleading or deceptive conduct and ordered that the user pay $25,000 damages plus costs to the company that was the subject of the posts.

Allens Partner Miriam Stiel and Lawyer Tracy Lu report on the decision.

Thursday, January 17, 2013

Careless Whispers: Tivo v Vivo

By Ali Ridley, Lawyer

A recent decision of the Full Federal Court has emphasised the importance of considering the aural and phonetic similarities between trade marks, rather than solely the visual similarities, when determining if marks are deceptively similar.

The Full Court considered deceptive similarity, among other issues, in relation to two marks owned by the audiovisual companies, Tivo Inc and Vivo International Corporation Pty Ltd for the words Tivo and Vivo respectively. 

Primary decision

In the first instance decision, Dodds-Streeton J held that it was significant that the two marks had a striking aural similarity. In particular, the prominence of the IVO part of the mark was significant. This factor, combined with the possibility of careless pronunciation, cursory reading, imprecise articulation and imperfect recollection meant it was likely confusion would occur. This was further compounded by the similarity of the products and the similar environments in which they were to be purchased. While there was no evidence of customers being confused, the judge found that the evidence of trained staff being confused indicated that it was likely that ordinary consumers would also be confused by the two marks.

Accordingly, the two marks were found to be deceptively similar.

Appeal decision

In two separate judgements, the Full Federal Court upheld the decision of the primary judge. In response to submissions by Vivo, the court found that the primary judge did consider the lack of visual similarity between the two marks as a factor in making her decision. The Full Federal Court also noted that while Vivo's expert had established that Tivo and Vivo were phonetically different, it was significant that similar sounds characterised their pronunciation.

Both judgements emphasised that the relevant test is not whether the marks are substantially identical, but instead whether they are apt to cause confusion. In this instance, the Full Federal Court found that the marks were apt to cause confusion and the visual differences between the marks were insufficient to dispel this confusion.

While evidence was adduced at trial that the owner of Vivo may have had dishonest intentions in the selection of Vivo as a mark, the Full Federal Court unanimously found that it was not open to the primary judge to attach relevance to any alleged dishonesty in the determination of deceptive similarity. This was because dishonesty in relation to deceptive similarity was outside the scope of Tivo's pleadings, which expressly confined Tivo's case to the proposition that Vivo's evidence could not be used to establish honest concurrent use of the Vivo trade mark. However, this ruling did not upset the trial judge's finding of deceptive similarity.

The judgements diverged on whether the inference that, if sales staff are confused with regards to the two marks, customers will also be confused, was reasonable. The Chief Justice of the Full Federal Court found that such an inference was reasonable and furthermore, the confusion arising from the similarities between the marks would not necessarily be dispelled by presenting the competing goods to a consumer in a retail setting. Ordinary consumers may believe that the two brands belong to the one family, in which the Tivo product represents that luxury end of the range and the Vivo product the economy end of the range.

In contrast, Nicholas J (with whom Dowsett J agreed) found that actual confusion of sales staff was improbable, but nonetheless, given the phonetic similarity of the marks, ordinary consumers with imperfect recollection may not appreciate the differences between the two marks.

Ultimately, the Full Federal Court upheld the primary judge's finding that the Vivo mark infringed the prior TIVO registration and decision to revoke the Vivo registration.

Determining what is deceptively similar

In determining whether a mark may be deceptively similar, it is important to consider the two factors raised by the court, that is:
  • the aural effect and impression of the relevant marks; and
  • the phonetic similarity of the relevant marks.
Although it's a fine distinction between those two factors, the sounds of two close marks should very much be taken into account, while bearing in mind the practical trading circumstances in which they will be used, and discounting a potential customer's excessive carelessness or stupidity.

Knowing exactly when those circumstances are enlivened requires careful judgment, because marks with phonetically and visually distinct portions may be found to be deceptively similar in instances where the marks have significant portions that are aurally similar and the products supplied under those marks are also similar.

Friday, January 11, 2013

Suppression orders in IP cases – will the new law change anything?

By Clare Young, Senior Associate

In the lifts and corridors of Sydney's Federal Court before Christmas, there were rumours that section 50 of the Federal Court of Australia Act 1976 (Cth) (the FCAA) had been repealed and some confusion about what had replaced it. Section 50 provided for the court to make an order prohibiting access to, or the publication of, particular evidence or the name of a party or witness, in two circumstances: (i) to prevent prejudice to the administration of justice; or (ii) for the security of the Commonwealth, State or Territory.

In one court, on 12 December, the trial judge was minded to grant a suppression order over part of the transcript to protect the confidential information of one of the parties, but was unable to specify the terms of the order because it was unclear what the new law was. (The relevant amending Act was published on ComLaw on 13 December 2012, the day after s50 had been repealed.)

Known as ‘section 50 orders’, these orders were commonly sought, particularly in IP proceedings, to protect confidential and highly sensitive or commercially valuable information. For example, in a breach of confidential information case, the applicant will usually have to put its confidential information into evidence, and witnesses may need to describe that confidential information during examination. If a non-party were able to gain access to the documentary evidence or the witness's evidence recorded in the transcript, that would likely defeat the purpose of the applicant litigating to protect its confidential information. The reasoning goes that it is in the interests of justice that the processes for determination of the proceedings do not destroy or seriously depreciate the value of that subject matter (Hogan v Australian Crime Commission [2010] HCA 21).

The Access to Justice (Federal Jurisdiction) Amendment Act 2012 (Cth) provides a replacement for s50, in the form of a new Part VAA in the FCAA. (Note that the version of the FCAA that still appears on Austlii and ComLaw at the time of posting contains s50, as that version is the last consolidated version of the Act. In time, these new amendments will be incorporated into a further consolidated version of the FCAA.)

In the circumstances of protection of commercial confidential information, the new Part VAA does not make any substantive changes to the old s50 but it is more prescriptive in terms of what the court must consider and what must be specified in the order. In particular, the order must now specify the duration of the period over which it operates (s37AJ), which may be by reference to a fixed period or to a specified future event. It is unclear how that period should be determined in the context of confidential information, which is likely to be confidential for an unknown period.

So, why the change?

According to the Explanatory Memorandum, the new Part VAA is intended to harmonise the law in relation to non-publication and suppression orders across the four Federal Courts and incorporate (with minor amendments) the model legislation of the Standing Committee of Attorney-Generals, which was tasked with drafting legislation to rein in the volume and breadth of suppression orders granted by some state courts. In particular, s37AE expressly refers to the primary objective of the administration of justice being to safeguard the public interest in open justice. In the context of protection of commercial confidential information (such as trade secrets), it is difficult to see how there could be a public interest in disclosure, so it seems unlikely that the new Part VAA will reduce the number of suppression orders granted in confidential information (and other IP) cases.