OPTUM not deceptively similar to OPTUS
Here’s the decision at Jade.
And on AustLii.
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Ben Gardiner
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Ben Gardiner
The Slants case: SCOTUS affirms non-disparagement provision in Langham Act is unconstitutional: https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf
Here is the decision: https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf
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Ben Gardiner
Screenshots from webpages held to be inadmissible hearsay by FCA
Screenshots from webpages are a quick and easy way to demonstrate use of a trade mark in infringement proceedings or disputes over ownership or non-use. While screenshots (including records from the Wayback Machine archive service) are useful in the Trade Marks Office where the rules of evidence do not apply, caution is required when seeking to rely on this type of evidence in Court.
The admissibility of this type of evidence is often unchallenged but when it is, there is a risk it will be excluded. This can, of course, have devastating consequences.
In Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474, Mortimer J held that screenshots taken by a lawyer for the purpose of showing use by other traders of the word SHAPE in relation to their businesses was inadmissible hearsay.
Her Honour said, at [24]:
- In my opinion the evidence sought to be adduced by the respondent is clearly hearsay within the meaning of s 59 of the Evidence Act. The statements made on various internet sites of other corporations or business entities … constitute a previous representation made by the person or persons who constructed the website, wrote the text and inserted the graphics. The purpose of adducing evidence of those statements of text and graphics is to prove the existence of a fact it can reasonably be supposed was intended by the drafter of the text and the person who constructed the graphics. The fact is that there were business entities trading on the dates specified (between August and October 2016) in the industries and markets set out on the pages exhibited by Mr Henry, in the locations those webpages identified using the names those webpages identified. It is the actual existence of those business entities, the names they were using, the industries and markets in which they were trading, the services they were offering and the locations in which they were offering those services which the respondent in my opinion seeks to use as part of its case to prove that there was no confusion in the marketplace generated by its use of the word “shape” in SHAPE Australia.
Similarly, in Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 at [258], Perram J ruled that screenshots from a webpage were inadmissible hearsay (and that the business records exception did not apply – see also ACCC v Air New Zealand Ltd (No 5)(2012) 301 ALR 352 at 356 [15]).
In contrast, in the following recent cases, screenshot evidence was accepted (and in most cases relied upon by the judge) without objection. (My search was limited to Federal Court cases, no doubt there are many more across the other jurisdictions).
In Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Ltd [2017] FCAFC 2, no objection seems to have been taken to evidence consisting of screenshots and the Full Court (Greenwood, Edelman and Markovic JJ) made no comment about it: see at [91] and [92].
Similarly, in ACCC v Valve Corp (No 3) (2016) 337 ALR 647, Edelman J (as a judge in the Federal Court), in the absence of any objection, “particularly” relied “upon the evidence of Ms Liskov [an ACCC investigator] as to what a consumer would have seen or done (including her careful inclusion of screenshots of many of these steps)”: at [12].
In ACCC v Hillside (Australia New Media) Pty Ltd (t/as Bet365) [2015] FCA 1007, screenshot evidence was heavily relied upon and accepted by Beach J in determining that the respondent had contravened the Australian Consumer Law.
In Buchanan Turf Supplies v Registrar of Trade Marks (2015) 114 IPR 81, Yates J accepted screenshot evidence apparently without objection.
In Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, Beach J accepted and relied upon screenshot evidence – apparently without any objection, though hearsay objections were taken to other parts of the evidence in that case.
A more comprehensive review is needed but this small selection is sufficient to show how common screenshot evidence has become. Despite these cases where such evidence has been accepted, I have not (yet) found a case where the question has been considered and a judge has found it to be admissible.
The leading statement of the rule against hearsay is (Subramaniam v Public Prosecutor [1956] 1 WLR 965 at 970):
Evidence of a statement made to a witness by a person who is not himself called as a witness may or may not be hearsay. It is hearsay and inadmissible when the object of the evidence is to establish the truth of what is contained in the statement. It is not hearsay and is admissible when it is proposed to establish by the evidence, not the truth of the statement, but the fact that it was made.
In that case, the appellant was charged with being in possession of firearms without a lawful excuse and his defence was that he was acting under duress in consequence of threats made by Malayan terrorists. The trial judge would not allow evidence of what the terrorists had allegedly said and he was convicted. The Privy Council quashed the conviction because the reported statements of the terrorists were tendered as original evidence and ought to have been received as such. They were not tendered as evidence of their truth but simply for the fact they were made.
This is the proper test for screenshot evidence as well. If the screenshot is being tendered for the truth of a statement it carries, it will be inadmissible hearsay. But if it is being tendered simply for the fact that the relevant statement or representation was made, then it is admissible as direct evidence.
This means careful thought should be given to the precise purpose of the evidence. There is no such thing as hearsay – only hearsay uses.
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Ben Gardiner
Realcover (stylised) not deceptively similar to REAL INSURANCE
Real Estate Institute NSW Ltd v Hollard Insurance Company Pty Ltd [2017] ATMO 15 (22 February 2017)
Application for removal (for non-use) of mark depicted below which was registered in respect of various services including advertising and insurance.
Removal opponent also sought registration of the mark depicted below in relation to advertising, insurance etc services. Removal applicant opposed registration of this mark pursuant to ss 42, 44, 58, 59 and 60.
Non-use application unsuccessful in relation to Class 36 (insurance, real estate affairs) but successful in relation to Class 35 (advertising etc).
(The removal opponent conceded on Class 35 prior to the hearing).
Opposition to registration unsuccessful – mark to proceed to registration.
Marks relied upon by the Opponent included REAL INSURANCE, REALSURE and the mark depicted below which were all registered in relation to various services associated with insurance.
Hearing officer considered that none of these marks was substantially identical with or deceptively similar to the mark applied for.
Grounds based on ss 42(b), 58, 59 and 60 also failed.
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Ben Gardiner
SILVER SERVICE insufficiently distinctive for taxi services
Registration was sought for SILVER SERVICE in respect of various services in Class 39 relating to taxi services. Opposed on s 41 grounds. Opposition successful.
Hearing officer satisfied that “the term SILVER SERVICE is recognized as indicating a higher standard of taxi service such that the fee for this service is not part of the standard fee but is an additional charge on top of this fee“.
Evidence of use insufficient to show that the Applicant “has educated the market that the plain words SILVER SERVICE indicate a taxi related service provided by [it]“.
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Ben Gardiner
Challenge to admissibility of survey evidence rejected
Survey evidence is often easy to criticise but very hard to exclude. Judges tend to take the view that it (often) has limited probative value but is relevant, and therefore (usually) admissible, despite its flaws.
In Frucor Beverages Limited v The Coca-Cola Company [2017] FCA 298, Yates J considered an interlocutory application seeking to have two affidavits excluded from an appeal from a decision of the TMO upholding an opposition to the registration of the appellant’s colour mark in relation to energy drinks (Trade Mark Application No 1496541). The TMO had rejected the mark on s 41 grounds (incapable of distinguishing) as that provision stood prior to the changes introduced by the Raising the Bar legislation.
An issue on the appeal was whether the hearing officer had erred in finding that the appellant has not established the requirement of s 41(6)(a) of the TMA (distinctiveness in fact as a result of use).
The affidavits in question concerned two surveys carried out by a market research firm. The surveys were said to assess consumer association between the relevant pantone (376C) and the appellant’s energy drinks. The deponent expressed the opinion that the surveys showed a “high level of identification between Pantone 376C and Frucor’s energy drink.”
The admissibility of the affidavits was challenged on grounds of relevance and “because their probative value is substantially outweighed by the danger that the evidence given by them might cause or result in undue waste of time or by unfairly prejudicial to [the respondent]“: s 135 of the Evidence Act 1995 (Cth).
Relevance
The relevance ground was based on three contentions:
(a) the surveys were conducted two and half years and three and a half years after the mark’s priority date and therefore could not be probative of the question of actual distinctiveness at the relevant date (for the purposes of the pre-RTB s 41(6)). The respondent relied on the Court’s doubting of the probative value of late survey evidence in Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 (Optical 88) at [396] and [410]-[415] and Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at [223].
(b) the statistics produced by the surveys were “unremarkable” and the level of identification was overstated by the charts and tables in the report; and
(c) the surveys failed to show use of the mark “as a trade mark” – mere association is insufficient – it must be association in a trade mark sense. The respondent relied on the comments of the Full Court in Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97; [2006] FCAFC 132.
Justice Yates noted that in Optical 88, Apple and Woolworths, despite the criticisms of it, the survey evidence was not excluded. Further, in the instant case, the deponent had sought to tie the results of the surveys to the relevant date. This was a feature that was absent in Optical 88 and Apple. His Honour was not persuaded that that the affidavits “should be rejected at the outset as lacking relevance on the basis that, as CCC contends, the surveys should be given no weight at all.”
After noting that there will be other evidence before him at the substantive hearing, his Honour said:
“The point of present significance is that I should proceed cautiously before concluding that, in advance of the hearing, when all of Frucor’s evidence will be before the Court, some part of that evidence should be rejected now as lacking relevance.”
Discretionary rejection: s 135 Evidence Act
To succeed in having evidence rejected pursuant to the statutory discretion provided by s 135 of the Evidence Act 1995 (Cth), an applicant must show that the evidence’s probative value is “substantially outweighed” by the danger that it might “be unfairly prejudicial to a party“, be “misleading or confusing” or “cause or result in undue waste of time.”
Justice Yates did not accept that any of these grounds were made out and so the discretion was not enlivened.
The application to have the affidavits excluded was dismissed with costs.
It will be interesting to see what Justice Yates says about the probative value of this evidence in the substantive decision.
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Ben Gardiner
Insufficient reputation in ANIMAL HOUSE – really? Am I that old?
Universal City Studios LLC v Philip Gorecki [2017] ATMO 18 (27 February 2017)
Registration was sought for the mark ANIMAL HOUSE and the mark depicted below in respect of various services including night club services, music festivals etc.
It was opposed on ss 42(b), 60 and 62A grounds.
No grounds successful – mark to proceed to registration.
Opponent relied on reputation vesting in the 1978 film National Lampoon’s Animal House.
Hearing officer considered that the Opponent’s evidence on reputation was insufficient to “establish that the title of the Film had a reputation in Australia, as a trade mark, among a significant section of the relevant public as at the priority dates of the Trade Marks“. This was fatal to the s 60 ground and also meant that there was no basis for a finding that the use of the marks would be misleading or deceptive (which was the foundation of the s 42(b) ground).
In relation to s 62A, the hearing officer accepted that the Applicant’s account of why he chose the mark (he had run a series of dance parties, the first of which had a Noah’s Ark theme where patrons were encouraged to dress-up as animals…) was “reasonable on its face and has not been refuted by the Opponent.”
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Ben Gardiner
Queen Adelaide just survives non-use application! Reportedly not amused.
Make Wine Pty Ltd v Modern Ancient Brands Pty Ltd [2017] ATMO 17 (24 February 2017)
This was an application for removal for non-use of the trade mark depicted below. The trade mark owner was unable to show use in the non-use period but discretion to not remove the mark from the register was exercised by the hearing officer.
The evidence showed that the mark had not been used by the owner since 2002 but it had been used by private individuals who had purchased wine prior to 2002 and subsequently sold it during the non-use period. There was evidence of a dozen bottles that had been sold by individuals in this way for an average price of $2 to $3 each.
The hearing officer considered that:
- The significant delay between the initial purchase of bottles and before they were offered for sale in the marketplace makes the link between the opponent and use of the Trade Mark within ‘the course of trade’ somewhat tenuous. Most of the very limited number of wines were essentially ‘off the market’ for a period of decades before they were sold at minimal prices during a time when the opponent was not promoting the Trade Mark on wine in the marketplace. While the wine was clearly not consumed while it was ‘off the market’ how long can goods be off the market and still remain in the course of trade for the purpose of defeating applications for removal for non-use? This is the question before me. While the wine before me has not been consumed, it has been off the market for many years before it was eventually sold at a public auction for what appears to be less than the wine originally may have been purchased for. The bottles were also sold individually rather than in cases by individuals. Given this substantial time lapse and the low reward for selling, I am not satisfied that those wines did remain in the course of trade over this period.
The hearing officer concluded that this did not amount to trade mark use in the relevant sense.
However, s 101(3) provides a discretion for the Registrar to elect to not remove a mark from the register even if the grounds for removal have been established.
The hearing officer considered that in this case it was appropriate to exercise that discretion (and not order removal) because:
- The opponent does have a significant and enduring reputation in its QUEEN ADELAIDE branded wines. It has adopted a refreshed and new label for its wine which is at least deceptively similar to the Trade Mark. The respective trade marks both prominently contain a graphic device depicting Queen Adelaide and contain the words QUEEN ADELAIDE. These are the most prominent and striking features of the respective trade marks. I also note that it is common for traders that have been trading in the marketplace for a long time to update and alter their trade marks to make themselves more marketable in a constantly changing marketplace. Some traders which come to mind are Adidas ® and Kentucky Fried Chicken ®.
- The opponent is actively selling its QUEEN ADELAIDE wine under the refreshed label in the Australian market place and individuals are still clearly buying and selling wine bearing the Trade Mark. This is much more than a case of the opponent having a residual reputation in the Trade Mark. The opponent has an active and ongoing reputation in its QUEEN ADELAIDE branded wine and it is selling that wine under a trade mark which is at least deceptively similar to the Trade Mark.
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Ben Gardiner
CITISALES & LEASING deceptively similar to CITI, CITILOAN
Citigroup Inc v George Sparsis [2017] ATMO 14 (22 February 2017)
Registration was sought for the mark CITISALES & LEASING in relation to various real estate services.
Opposed pursuant to s 44 in reliance on registered marks including CITILOAN, Citimortgage, CITI all registered in relation to financial services or real estate affairs.
Hearing officer considered that the applied-for mark was “coined in the same way as the Opponent’s CITI-[Extension] trade marks and is used or proposed to be used in relation to similar services as those in respect of which the Opponent’s CITI solus trade marks are registered” and that “most people would be immediately caused to wonder if there is some connection between the trade provenance of the similar services offered by both the Applicant under the Trade Mark and the Opponent under its CITI solus and CITI-[Extension] trade marks“.
Evidence did not support prior use (s 44(4) TMA) or honest concurrent use (s 44(3) TMA).
The s 44 ground therefore succeeded.
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Ben Gardiner
TM Attorney privilege is not the same as LPP
A recent decision on the scope of trade mark attorney privilege (TMAP) confirms that the privilege afforded to TM attorneys is not as broad (theoretically, at least) as legal professional privilege.
The decision is here: Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1275.
I know, privilege, right? Don’t get too excited. I’ll make it as painless as possible. Trust me.
OK – so here are the facts:
The Respondent (it was alleged) operated a website called BEWARE OF TITAN GARAGES which purported to catalogue a series of bad customer experiences with a business called Titan Garages and Sheds.
These are the Titan guys. Don’t mess with them.
Titan was unhappy about the website and initially sought to wrest the offending domain name (bewareoftitangarages.com – no longer active) from the Respondent via the WIPO domain name dispute process. That was unsuccessful and Titan subsequently issued proceedings in the Federal Court of Australia alleging trade mark infringement and breach of the Australian Consumer Law, among other things.
In the course of the FCA proceeding, a subpoena was issued to the firm of trade mark attorneys which had represented the Respondent in the WIPO proceeding. The subpoena sought, among other things, all records of instruction given by the Respondent or any other person, in that proceeding.
It should be noted that this case was unusual in that the Respondent did not appear in the FCA proceeding and could not be found. Part of the reason for the subpoena was to identify the Respondent and to determine the extent to which a second respondent had been involved in the development and promotion of the website.
The documents were produced to the Court but inspection by the Applicants was objected to (by the TM attorneys on behalf of their former client whom they were unable to contact) on the grounds that much of the content was subject to trade mark attorney privilege.
That objection was dismissed and full access to the unredacted documents was granted to the Applicants.
To understand the reasons for this decision, here’s a short refresher on legal professional privilege (a.k.a. client legal privilege):
LEGAL PROFESSIONAL PRIVILEGE
Legal professional privilege prevents unauthorised disclosure of certain confidential communications between the client and the legal adviser. The privilege has two limbs:
(1) Legal Advice Privilege
“Legal advice privilege” protects communications between the client and his or her legal adviser made for the dominant purpose of enabling the client to obtain, or the adviser to give, legal advice.
It protects oral or written communications between client and legal adviser (or real evidence – e.g. surveillance film) and documents prepared, which are confidential, and created for the dominant purpose of seeking or providing legal advice.
So, for example, it protects:
- Requests for legal advice
- Communications of legal advice
- Documents prepared for the purpose of providing legal advice (including, in some circumstance, documents prepared by third-parties)
BUT it does not protect:
- Documents that evidence transactions – e.g. contracts, conveyances, assignments
- Trust account ledgers
- Memoranda of fees
- Records of time such as timesheets, fee records
- Costs agreements
- Appointment records
- Documents delivered to the solicitor which were not created for the dominant purpose of obtaining legal advice
- Name of the client
- Address of the client
(2) Litigation privilege
“Litigation privilege” extends the protection to certain communications passing between the legal adviser or the client and third parties in relation to litigation that is actually taking place or was in the contemplation of the client, and is not restricted to communications made for the purpose of obtaining legal advice.
It is restricted to documents concerning proceedings in a court of law. The privilege “operates to secure a fair civil or criminal trial within our adversarial system of justice”: AWB Ltd v Cole (2006) 232 ALR 743 at [158] per Young J. In Grant v Downs (1976) 135 CLR 674, Stephen Mason and Murphy JJ noted that there are “powerful considerations which suggest that [litigation privilege] should be confined within strict limits.” (at 685).
Litigation privilege only applies to judicial or quasi-judicial proceedings. It does not extend, for example, to commissions of inquiry. Nor does it extend to matters before the Administrative Appeals Tribunal: Ingot Capital Investments Pty Ltd v Macquarie Equity Capital Markets Ltd (2006) 67 NSWLR 91. See also Three Rivers District Council v Bank of England (No 6) [2005] 1 AC 610. (Though there is some conflicting authority on this).
The question as to whether litigation privilege extends to matters before the WIPO Arbitration and Mediation Center had not been judicially considered but it would seem very unlikely that it does.
Similarly, it seems unlikely that litigation privilege would extend to matters before the Trade Marks Office or the Patents Office.
TRADE MARK ATTORNEY PRIVILEGE
Unlike LPP, TMAP does not exist at common law. It is created by s 229 of the Trade Marks Act 1995 (Cth) and is expressly confined to communications between trade mark attorneys and their clients in the course of providing “intellectual property advice”.
“Intellectual property advice” is defined in s 229 as being advice in relation to patents, trade marks, designs, plant breeder’s rights or any related matters.
So, TMAP only extends to the equivalent of the advice arm of legal professional privilege. The statute does not confer any privilege that is equivalent to litigation privilege – and if you’re not sure that that’s really what parliament intended, you only need to look at the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising The Bar) Bill 2011 which made some changes to the privilege afforded to patent attorneys and trade mark attorneys. It stated:
“it is inappropriate to extend attorney-client privilege to include ‘litigation’ privilege: this should be the sole preserve of lawyers”.
While there have been several decisions concerning the scope of patent attorney privilege (which, like TMAP, is wholly a creature of statute), trade mark attorney privilege per se had not been judicially considered prior to the Titan decision.
Justice Logan made the following comments about the scope of TMAP which, in light of the above review of the law, are not controversial:
- TMAP is not equivalent to legal professional privilege because “the assimilation is only with the advisory aspect of client legal privilege and then only to the extent that the advice constitutes “intellectual property advice” as defined.”
- “Not every service provided to a client by a registered trade marks attorney falls within the scope of s 229 privilege.
- “IN PARTICULAR – advice constituting “intellectual property advice” as defined aside, the communications or documents generated in the course of the provision by a registered trade marks attorney of services in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre do not attract s 229 privilege.”
- “NOR, subject to the same caveat, would services provided to a client by a registered trade marks attorney in relation to proceedings in a court attract s 229 privilege.”
The point is not to miss the caveat. Communications constituting intellectual property advice are covered – so are documents created for that purpose.
Justice Logan accepted that his construction of s 229 might not reflect current practice but said:
“it is for Parliament, not the courts, to make a value judgment as to whether the scope of s 229 privilege ought to be extended”
He also acknowledged that it may sometimes be difficult to determine whether a particular communication is for the purposes of providing intellectual property advice or not – for example:
“it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3).“
And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights extended to an Internet domain name – either by virtue of paragraph (b) or (e) of the s 229(3) definition.
But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege.
Likewise, advice as to what submission ought to be made to demonstrate that a trade mark right extended to a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission (for example on express instructions and without any element of advice from the TM attorney) would not.
The comments of the Court require careful consideration by trade mark and patent attorneys – not because they change the law but because they emphasise a fact that is easily forgotton: attorney privilege is not equivalent to legal professional privilege because it has no “litigation privilege” arm.
Importantly, to the extent that privilege may wish to be asserted over particular communications, it is essential that those communications are framed as intellectual property advice. The mere taking of witness statements, filing of documents, preparation of evidence will not be privileged unless it constitutes communications for the purpose of giving or receiving intellectual property advice.
The judgment leaves open the question of whether communications between trade mark attorneys (and patent attorneys) and third parties – including experts – are privileged. On the basis of the comments of Justice Logan and the Explanatory Memorandum, one would tend to conclude that they are not.
Ratio for Logan J’s decision
Finally, it is important to understand the ratio for Logan J’s conclusion that inspection of the unredacted documents should be permitted.
The reason for his decision was that the affidavit material filed by the Respondents was insufficiently focussed and specific to support a claim of privilege. That’s it. Nothing further. There is nothing controversial about that finding at all. It is well-established that if affidavit evidence in support of a claim of privilege does not rise above mere assertion, it will be insufficient to establish the claim.
And, I should add, there were unusual aspects of this case that help to explain why the affidavit evidence was insufficient. In particular, the trade mark attorney firm was unable to contact the Respondent (their former client) in order to obtain instructions from him as to whether the claim for privilege was maintained.
Disclaimer: the author was junior counsel for Titan in the proceeding before Logan J.
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