Intellectual Property Law Update - Abbreviations and the “own name” defence

Intellectual Property
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In Australia, hardly anyone gets called by their own name.  Not their full name anyway.  Micheal is Mick.  Deborah is Deb.  Corporate names are abbreviated too.  McDonalds is Maccas.  The St Vincent de Paul Society is Vinnies.

If you’re just using your own name, in good faith, the Trade Marks Act provides a defence if, by doing so you would otherwise be infringing someone else’s registered mark: s 122(1)(a)(i).  But what if you’re using an abbreviation of your full name?  It has been established for some time that merely dropping “Pty Ltd” from a corporate name won’t affect the application of the defence.  That makes sense – but what about more substantial abbreviations or contractions?

In the last couple of years, the defence has been used successfully by:

(a) Optical 88 Pty Ltd which used the mark OPTICAL 88 in various forms: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457; upheld on appeal (2011) 197 FCR 67;

(b) Digital Post Australia Pty Ltd which used the mark DIGITAL POST AUSTRALIA: Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) (2012) 293 ALR 369; upheld on appeal (2013) 308 ALR 1; and 

(c) Anchorage Capital Group LLC which used ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP: Anchorage Capital Partners Pty Limited v ACPA Pty Ltd[2015] FCA 882.

In both Digital Post and Anchorage, the finding that the defence applied was obiter as the judge in each case (Marshall and Perram JJ, respectively) had already decided there was no infringement for other reasons.

Importantly, in Anchorage, Perram J said:

I accept that, depending on the context, a contraction of a full name may be use of a name under  s 122(1)(a)(i) , just as leaving off expressions such as ‘Ltd’ does not make the defence unavailable…

In contrast to Anchorage, however, two 2016 decisions seem to restrict the defence to a narrower scope.

Last month, in Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4) [2016] FCA 138, McKerracher J considered it “doubtful” that Roy Weston Nominees Pty Ltd could rely on the defence in relation to its use of the marks ROY WESTON or ROY WESTON REAL ESTATE.  His Honour accepted that good faith use of ROY WESTON NOMINEES (without the corporate indicia Pty Ltd) would fall within the defence.

Last week, in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, Beach J considered that the use by the respondent Flexopack Australia Pty Ltd of the marks FLEXOPACK and the domain name http://www.flexopack.com.au did not enliven the defence.  In setting out some of the principles to be applied when considering the defence, his Honour said:

…where the respondent is a corporation its use to bring it within the defence may be without the corporate signifiers “Pty Ltd”: Wellness at [43] per Bennett J. It may be that even further truncation may not jeopardise the availability of the defence (see Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2015) 115 IPR 67; [2015] FCA 882 at [17] per Perram J). But that depends on the circumstances. In Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285, the defence did not prevail for uses of “Sweetheart” where the company name was “Sweetheart Plastics Inc” and “Sweetheart cup division of Maryland Cup Corp” (at 290 and 291) (see also Optical 88 (FC) at [65] and [66]). Sweetheart followed the UK position that an abbreviation of a name could not be protected if it increased the likelihood of deception or confusion. In the present case, in my view, the use of the truncation “FLEXOPACK” and the domain name http://www.flexopack.com.au could not take the benefit of the defence. It is not enough for the defence if the First Respondent has used only part of its corporate name. To drop “AUSTRALIA” cannot be said not to increase the likelihood of confusion.

In the end, this was obiter because Beach J concluded that the respondent’s use was not in good faith – and that appears to have been the primary reason for his conclusion that the defence did not apply.

Nevertheless, there seems to be a difference between the approach taken by Justice Perram in accepting the use of ANCHORAGE by Anchorage Capital Group LLC as falling within the defence, and the approaches taken by Justices McKerracher and Beach in the more recent cases.

But perhaps this difference is illusory.  Justice Perram noted that whether a contraction of a name falls within the defence provided by s 122(1)(a)(i) will depend on the context.  Applying Justice Beach’s approach, that seems to involve (at least) consideration of whether the use of the abbreviation increases the likelihood of deception or confusion.  That’s good for lawyers.  Not good for certainty.

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Ben Gardiner practises primarily in intellectual property litigation

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