Our second episode of Trade Mark News was published by Legalwise Seminars today.
See: https://legalwiseseminars.com.au/insights/trade-mark-news-with-hayley-tarr-episode-2-familiar-brand-names-unexpected-applicants/
And the transcript for those who prefer to read:
This week, we have seen the filing of a couple of seemingly familiar brand names by unexpected applicants. PADEL POP has been filed for organising of sporting events and production of television programs in class 41. To me, PADEL POP immediately calls to mind the Paddle Pop ice cream brand. In this case Unilever still has its registration for PADDLE POP for entertainment, sporting and cultural activities in class 41, so it is unlikely that the PADEL POP application will go through. On the other hand, MYER JEWELRY has been filed for jewelry in class 14. This immediately calls MYER department stores to mind. Myer did have a series trade mark registration covering jewellery in class 14, but that has lapsed as the renewal fee was not paid. They do not have any registrations or pending applications in class 14 anymore, and do not have jewellery specifically mentioned in any of their class 35 registrations. As many listeners would know, it has been the practise of the trade marks office to deem retailing of a specific good is deemed to be closely related to that good, but retail services in general would not normally be cited against an application for a specific good. Perhaps Myer could jump on and quickly narrow one of the retail services claims in one of their registrations, to make specific mention of jewellery and any other unregistered goods, to save themselves the cost of a potential opposition if they are not cited and the MYER JEWELRY application is accepted.
Some humorous applications have come through – one for SANDY CRACKS, two for TOUGH TITTY’S, as well as GOLDGASM, PEACHGASM and LOVEGASM – and it will be interesting to see where Australia draws the line in regards to whether or not such marks are deemed scandalous. This is a particularly difficult task, in the face of limited judicial or legislative guidance on the matter. The registrar must not only consider “the general taste of the time, but also the susceptibilities of persons, by no means few in number who still may be regarded as old fashioned”. That is, there is a broad cross section of the community that must be factored in to the registrar’s decisions on these types of marks and I do not envy that responsibility.
There have also been some new applications by big brand names. Amazon has filed a new application for a mark that looks like a dice with 5 rolled on the dice. That’s for software in the field of medicine. National Australia Bank have applied for 3 new trade marks, for the acronyms NZDN, AUDN, and USDN. They sound like the jurisdictions and followed by the acronym for Debit Note. So, we’ll see how those applications go. And Bundaberg ginger beer company have filed a couple of new applications for clothing, and it looks like they are trying to get into the pajama space, which is likely a smart move given all the recent vegemite pajamas that have been so popular as prints on the Tradie and Peter Alexander brand pajamas. This is a potential revenue source for all product companies that are seeing the trend in licensing of Warner Bros and other character marks to various clothing and merchandise companies expand into other cult type products as a homage to Andy Warhol and the pop art space. We’ve had cans of soup on our wall and now we have images of tubs of vegemite on our pajamas. So, business owners, take note: it is a possibility to register your mark for goods outside what you use it for and license the mark to clothing and merchandise companies, as an additional and potentially lucrative revenue stream.
Along a similar line of companies that are already doing well but are expanding into new markets to gain additional revenue streams, Nando’s have filed a new application for classes 9 and 35, being virtual goods and the retailing of virtual goods. So, all you Nando’s fans will be pleased to know you’ll be able to go to a Nando’s store and buy yourself a Nando’s burger in the metaverse.
CAREBEARS seem to be having a come back. Those Characters from Cleveland LLC are the owners of the CAREBEAR IP, and they have filed three new Australian trade mark applications this week.
There’s an application for BOTA BOX for alcoholic beverages. On their website it states that the wine is low carb and low calories. By the sounds of it, it should also reduce wrinkles!
And finally, Weber has a new application for education and cooking classes in class 41. Not to stereotype, but I think a lot of men will be chomping at the bit to book in for those classes.
Contact Hayley on 0477 914 319 or hayley@tarrlaw.com.au to engage her to:
a) register or protect your IP rights and trade mark rights,
b) research emerging trends in Australian business as gleaned from the Australian trade marks database, and
c) present on intellectual property, trade marks or entrepreneurship.
