Mark owners should use their marks as registered, or face losing them

Australia

The Federal Court of Australia's decision in Tricarico v Dunn Bay Holdings Pty Ltd ([2012] FCA 271, March 23 2012) demonstrates the importance of using a trademark in the manner in which it is registered. In this case, the court set aside a decision of the delegate to register the trademark MALTMARKET BAR & KITCHEN on the basis that the proprietor of that mark did not use it as it was represented on the register, and accordingly, had not used that mark within the meaning of Section 7(1) of the Trademarks Act 1995 (Cth).

This was an appeal from a decision of a delegate of the registrar of trademarks to register MALTMARKET BAR & KITCHEN in the name of Dunn Bay Holdings Pty Ltd in respect of "taverns" in Class 43 of the Nice Classification.  The applicant, Mr Tricarico (via his business), owns trademark registrations for MALT LOUNGE (which has an earlier filing date) and MALT SUPPER CLUB in respect of similar services in Classes 35, 41 and 43, such as hospitality, food, taverns and entertainment. Dunn Bay did not appear.

Tricarico filed the appeal on a number of grounds, including that, pursuant to Section 59, Dunn Bay did not intend to use or authorise the use of the MALTMARKET mark (having disposed of the appeal based on the Section 59 ground, the court found it unnecessary to consider the other grounds of appeal, which included Sections 42 and 44). In considering this ground of appeal, the court noted that, pursuant to Section 7(1) of the act, it may find that a person has used a trademark where it is used with additions or alterations that do not substantially affect the identity of the mark.

Tricarico relied on evidence that Dunn Bay had attempted to use the MALTMARKET mark only in the form of stylised logos (see depiction below), rather than as the trademark MALTMARKET BAR & KITCHEN. Tricarico submitted that the styling of the logos substantially affected the identity of the mark such that use of the logos did not constitute use of the mark.

Australian trademark registration
No 1282656

Actual use

Maltmarket Bar & Kitchen

The court considered a number of authorities where, in the context of whether alterations or amendments to trademarks substantially affected the identity of those marks, a strict approach was adopted: an alteration may substantially affect a trademark's identity if either the pronunciation or appearance is altered.

The court found that, since the word 'market' comprised half of the MALTMARKET mark's sole non-descriptive element 'Maltmarket' (the words 'Bar & Kitchen' being descriptive of tavern services), 'market' was therefore an integral component of the MALTMARKET mark. It followed that, in using the stylised logo depicting 'malt' in large orange font, with the word 'market' in small white font within the stem of the letter 'L' in the word 'malt', Dunn Bay obscured the word 'market' to the point of difficulty in detection, such that the identity of the mark was substantially affected. On this basis, the court held that Dunn Bay's use of the stylised logos did not constitute use of the actual mark as represented on the register, and the mark should not be allowed to proceed to registration.

Although in this instance, the MALTMARKET mark was represented in sentence case, not block capitals, the court did acknowledge that where a trademark is represented on the register in block capital letters, it is not to be limited by the precise script in which it is written. For example (and with the proviso that each case is to be decided on its particular merits), it may include use of the mark in a stylised form, provided the essential features of the mark remain discernible as such.

Lisa Ritson and Rachel Kay, Ashurst Australia, Sydney

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