The process of registering your trade mark can be a very difficult exercise. Trying to think of a unique name or logo within your industry can cause significant problems if the market is already saturated with similar businesses. However, learning from others’ mistakes can help you identify the best ways to protect your brand. This article details five strange, but true, trade mark cases and the key pitfalls that you should be aware of to avoid being another funny story.

1. Burger King

In the early 1970s, the famous American franchise, Burger King, started to expand to Australia. However, it came across a small takeaway food shop in Adelaide also called Burger King.

Problematically for Burger King America, the Adelaide shop also owned the registered trade mark for Burger King and refused to give it up. As a result, the American franchise chose the name Hungry Jacks. Despite the Adelaide Burger King’s trade mark lapsing in 1996, Hungry Jacks was so successful that it kept operating under the name. Interestingly, as of 2018, Burger King Corporation is the registered trade mark owner of both ‘Burger King’ and ‘Hungry Jacks’ in Australia.

Legal Lessons

Registering your trade mark in your home country does not automatically give you rights to that name worldwide. If you are a fast-growing business with plans to expand overseas, you must protect your name and logo in every country that you wish to market your brand.

2. App Store

Apple has been in many legal battles in recent years over the trade mark ‘App Store’, embroiling the likes of Amazon and Microsoft. Apple applied for the trade mark in Australia in 2008, just one week after launching.

However, IP Australia objected the application because it was too descriptive and lacked distinctiveness. Apple provided submissions to IP Australia to try and demonstrate that they revolutionised the term and even took it all the way to the Federal Court of Australia. Despite their efforts, the court upheld the decision of IP Australia and Apple was denied the trade mark for ‘App Store’.

Legal Lessons

Ordinary or commonly used words are more difficult to register because they are likely to fail the distinctiveness test.

This test requires that your trade mark distinguishes your goods or services from those of your competitors. If IP Australia objects to your application on these grounds, you have to show that consumers associate your trademark exclusively with your products or services. This may require evidence of:

  • when you first used the mark;
  • how you use the mark;
  • the range of goods and services your mark relates to; and
  • your advertising.

Overcoming an objection to trade mark registrability and preparing evidence in the required form can be difficult. Therefore, it is important to ensure that your trade mark is distinctive before you invest resources into it.

3. Cocky

Faleena Hopkins is a popular American romance novelist who has sold hundreds of thousands of her self-published ebooks on Amazon. She was also the holder of a unique and problematic trade mark.

Hopkins registered the word ‘cocky’ with the US Patents and Trade Marks Office (USPTO) in September 2017. She subsequently tried to enforce her trade mark rights against multiple independent authors who were using ‘cocky’ within the titles of their books. Unfortunately for Hopkins, this sparked a petition that more than 500,000 people signed, requesting the USPTO to revoke Hopkins’ trade mark. In June 2018, Hopkins lost her court case and withdrew her trade mark of the word ‘cocky’.

Legal Lessons

Enforcing a trade mark that is a common word can be difficult. It is important to have a distinctive mark that is clearly associated with your brand. Descriptive words and those that are others in your industry ordinarily use are likely to be problematic for your business.

4. Superman

In 2013, a company called Cheqout applied to register the trade mark ‘superman workout’ for their exercise classes in Australia. DC Comics, the owner of the trade mark ‘Superman’, opposed Cheqout’s trade mark application, claiming that it would likely deceive consumers or cause confusion between the two businesses.

The court dismissed DC Comics’ opposition, saying that there would be no confusion between exercise classes and the superhero.

However, the court found that Cheqout had made the trade mark application in bad faith. Someone can oppose an application on the grounds of bad faith when the application falls short of acceptable commercial behaviour. In this case, Cheqout attempted to gain a benefit by appropriating the brand built by DC Comics.

Subsequently, they attempted to influence consumers by associating with Superman’s branding. The court concluded that this was in bad faith and that IP Australia should reject the application.

Legal Lessons

Attempting to register a trade mark to associate with an existing, reputable brand and gain a commercial advantage will likely be found by a court to be in bad faith.

This is despite any differences in goods or services between the businesses. The courts and IP Australia will consider applications to have been made in bad faith if they deliberately attempt to:

  • mislead;
  • deceive; or
  • gain an unfair advantage.

As always, it is best to develop your own unique brand and protect original ideas.

5. PEPS

On 2 July 1906, the first Australian trade mark application was filed. Charles Edward Fulford made the first five trade mark applications in Australia to protect PEPS, a lozenge to treat coughs and colds; 112 years later and PEPS is still an active trade mark on the register.

However, searching the IP Australia database for “PEPS” returns 148 results. Among these results are “PEP”, “P.E.P.”, and “BIO PEP”. However, these trade marks are registered under different goods and services classifications than the original PEPS and, subsequently, do not infringe on Australia’s first trade mark.

Legal Lessons

It is important to understand that if you own a registered trade mark, your rights concerning the use and exploitation of that mark only relate to the goods and services that you registered it under.

Were he still alive, Charles Edward Fulford would have no claim against the similarly named products as they are dealing with goods and services substantially different to PEPS.

You may wish to use a mark in relation to a number of different goods or services. If so, make sure that you apply for your mark under the appropriate classes to comprehensively protect your rights.

Key Takeaways

When looking to register a trade mark, cases from the past can provide a guide on what not to do. It is always important to ensure that your mark is distinctive from those of competitors and is not a common word.

Furthermore, you should make sure that you have acquired trade mark protection for every country that you wish to market your products in. If you have any questions about registering a trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sam Burrett
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