In this episode of Trade Mark News we focus on exam reports that have issued this week.

Not surprisingly, an exam report has issued in relation to a certification trade mark application for Manuka Honey, filed in the name of Manuka Charitable Trust. There are currently 11 other trade marks comprising MANUKA and HONEY for honey in class 30, in the name of various Australian and New Zealand entities.

If you have had your head in the sand and are unaware of the ongoing saga relating to Manuka Honey, you might want to read a recent article in ABC news on the subject, written by Clint Jasper (see: https://www.abc.net.au/news/rural/2023-01-23/manuka-honey-legal-win-over-new-zealand-in-europe-uk/101876528). Clint says:

• The NZ Manuka Honey Appellation Society argues manuka is a Māori word, and has attempted to trademark it in their home country, as well as the USA, UK, EU, and China.
• The Australian Manuka Honey Association, which has appointed two Māori board members, has demonstrated the word has been used in Australia to describe the plant and the honey produced from its pollen since the 1930s.

Previous hard fought legal battles in both the US and UK have held that manuka honey is produced in both Australia and New Zealand, such that New Zealand does not have exclusive rights to use of MANUKA HONEY as a geographic indicator. It will be very interesting to see whether the applicant can achieve acceptance of this application at all, but if it does there will likely be a lot of activity in regards to oppositions. It seems the Manuka Charitable Trust is walking into a bit of a hornet’s nest.

ARISTOCRAT TECHNOLOGIES, a prolific filer, having filed over 1500 Australia trade marks so far, has filed a new application for MIGHTY GENIE for its electronic gaming (or gambling) machines.

Well, from gambling to smoking…there have been some very interesting developments in relation to tobacco companies this week.

British American Tobacco Australia Limited have received an exam report in relation to their trade mark application for RVA responsible vaping Australia for education, scientific research and lobbying services in classes 41, 42 and 45. Obviously, that research is being funded by British American Tobacco Australia Limited, and will be released into the market to inform consumers about how to vape responsibly. On British American Tobacco’s website it states clearly that British American Tobacco is one of the world’s leading vapour companies, under its flagship VUSE brand. The VUSE brand is registered to an entity called Nicoventures Holdings Limited in Australia.

Another tobacco company, Philip Morris Brands Sàrl, have also received an exam report in relation to their trade mark application for MARLBORO CRAFTED SELECTION for goods such as “liquid nicotine solutions for use in electronic cigarettes” in class 34. This is very interesting because the Tobacco Plain Packaging Act 2011 only requires plain packaging on tobacco products, but many of these vapes include synthetic nicotine and other unknown substances which do not come from a tobacco plant and are therefore not tobacco products, which provides a loophole for these companies.

Two applications for ONDC stylised have received exam reports this week. These applications were filed by the Commonwealth of Australia as represented by the Department of Finance. I have addressed this issue in a previous Legalwise article (see: https://legalwiseseminars.com.au/insights/the-trade-marks-register-as-a-crystal-ball/?trk=organization_guest_main-feed-card_reshare_feed-article-content). It creates an interesting phenomenon where one branch of the executive is blocking another branch of the executive, and any acceptance of the application after an objection has been raised, could be seen as a conflict of interest.

Brisbane Markets Limited have received an objection for their application for SATURDAY FRESH MARKET & device. This is of personal interest to me as I am quite proud of the fact that I was the attorney who prepared the voluminous evidence required to achieve registration of BRISBANE MARKETS for markets held in Brisbane.

Hello Foods Limited have received an objection for their trade mark application for PASTA NOSTRA. NOSTRA means “our” in Italian, so translated into English this mark is “our pasta”. This thus brings to mind the high court decision regarding similar Italian words “Oro” and “Cinque Stella” which the High Court ultimately decided that those words were “not shown to convey a meaning or idea sufficiently tangible to persons in Australia concerned with coffee products as to be words having a direct reference to the character or quality of the goods” and thus were inherently adapted to distinguish. See: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.

If you are a fan of the Apple TV series We Crashed, and you thought that WE WORK was no more, well think again. WeWork Companies LLC have received an objection this week for their trade mark application for COMMON DESK. Maybe a whitewashing of their reputation, with a clean new brand.

If you are like me and you enjoy Ted Talks (I highly recommend anything by Simon Sinek), you might be interested to hear that Ted Conferences has received three adverse exam reports this week, in relation to applications for HOW TO CONNECT IN A DIVIDED WORLD, HOW TO NURTURE YOUR IMAGINATION, and HOW TO BOOST YOUR BRAIN + MEMORY in relation to class 41. It is understandable why. They are all quite descriptive. It’s a bit cheeky of me to say but perhaps they should have watched some of the Ted Talks on How to Nurture Your Imagination before they filed these applications. Forgive me Ted Talks…I still love you!

And lastly, Morrison & Foerster LLP have received four exam reports this week, for a series of trade mark applications for their MOFO brand. Many Australian lawyers and patent and trade marks attorneys wouldn’t have heard of them. But I came across them in my time in New York. They are a very progressive, very cool law firm, and they are clearly planning to carve out a place for themselves in the Australian legal market. It makes perfect sense, on the back of other big players such as Dentons successfully entering the Australian market, many other international law firms are likely to follow suit. Incidentally, I had the pleasure of hearing Michael Dempsey speak last week at an event for entrepreneurs and investors, and he mentioned that he is working on a start up to disrupt the legal industry. If it goes as well as EziDebit, then we all better watch our backs. So, more competition for lawyers from all angles.

To watch the earlier episodes of Trade Mark News, click here for Episode 2 and click here for Episode 1.