Trade Mark Law
International brands have to vigorously protect their brand name and logo, as there are constant threats to their trademark in the form of infringement, often in the form of mimic brands. Therefore, protecting a company’s trademark is protecting its identity, and in many ways, its success.
On this fascinating subject, Rodney De Boos, Partner at Davies Collison Cave Law in Australia, speaks to Lawyer Monthly about the Australian trademark environment and how it compares on a global scale.
You ran your own law firm for three years before merging it with DCC; what led you to embark upon this merger? How has your workload changed since then?
Despite the fact that there were no ‘intellectual property’ subjects (other than a small segment on copyright) offered at Melbourne University in the late 60s, I have spent 45 years practicing in that area; principally as a partner and now a consultant with Davies Collison Cave Law.
My education in intellectual property was largely at the hands of non-lawyers whose interest was in the opportunities afforded by these rights rather than the technical processes by which they are obtained. This was during a stint of 11 years with ICI Australia including one year with Imperial Chemical Industries Limited in London. I then spent three years in my own practice. The attraction of joining the Davies Collison Cave firms was, and continues to be, the comfort and intellectual stimulation of being associated with leading practitioners in the intellectual property field. The philosophy of Davies Collison Cave firms has always been to be at the forefront of law reform and developments in the IP area. For instance, Marion Heathcote, Michael Wolnizer, Trevor Stevens and Adam Sears have worked tirelessly in INTA, whilst Michael Caine and Peter Huntsman have worked within FICPI. Des Ryan and I are heavily involved in LESI and Des has entered the IP Hall of Fame. The firm is also at the forefront of policy development in Australia, with significant involvement in the Australian Institute of Patent and Trade Mark Attorneys particularly through John Slattery and Keith Leslie; both former Presidents. Added to that is a strong commitment to education of the profession with many partners such as Ray Hind lecturing at a university level. That desire to provide clients with the best service and advice continues to this day through the firm’s offices in Melbourne, Sydney, Brisbane and now in Singapore.
How drastically has the Australian trademarks landscape evolved during the time you have been practising?
The Australian Trade Marks landscape has changed dramatically during the time I have been practicing in the intellectual property arena in Australia. Perhaps the most significant change was the introduction in 1995 of Australia’s new Trade Marks Act which reflected the changes required by TRIPS. In particular, Australia went from a split Register to a single Register and from an Act which was based on the UK Act to one designed for Australia. One of the significant changes brought by the 1995 Act was that wholly non-distinctive marks could be registered if they were shown to be factually distinctive. A further distinction between the UK and Australia now is also the approach to the examination of applications.
How do you navigate your clients through issues such as wrongful or groundless threats of infringement and international registration?
One of the interesting developments in the Trade Mark sphere in Australia in recent years has been the introduction of the Tobacco Plain Packaging Act 2011 which requires all tobacco products sold in Australia to be sold in plain packaging. A recent case which was affected by that legislation involved Scandinavian Tobacco Group and a parallel importer named Trojan Trading Company. In that case, Trojan imported genuine Scandinavian Tobacco products, repackaged them and applied the Scandinavian Tobacco trade marks in the required form. Scandinavian Tobacco sued for infringement and lost. The Court held that the defence of consent protected the activities of Trojan. Whilst this decision is perhaps explicable in light of the fact that the plain packaging legislation requires repackaging, it is probably fair to say that this construction came as something of a surprise to trade mark lawyers in Australia. It is presently on appeal.
I believe your practice focuses heavily on the commercial exploitation of intellectual property rights, including the negotiation and preparation of commercial agreements. What challenges arise within this and how do you structure your approach in order to overcome them?
In 2001 the Madrid Protocol was introduced which again impacted dramatically on the Trade Marks landscape and changed the strategies for the protection of marks overseas and for the protection of overseas originating marks in Australia. In addition, the rise of the internet has caused the law to struggle to keep up with new circumstances; particularly use which crosses national boundaries.
What quirks does Australian IP law possess that make it unique to other countries?
There are differences in the other intellectual property regimes. For instance, as between Australia and the United States, the rights of co- patentees are significantly different. There are also differences in the approach to inventorship and differences in the way in which applications or rights can be challenged and certainly in the ways in which intellectual property rights can be commercialised in light of competition laws and franchising laws.