LAW5341-Trade Mark Practice

Question 1

You act for Smack Agency Pty Ltd (Smack). Smack is a manufacturer and retailer of various soaps, essential oils, cosmetics, hair care products and the like. It manufactures its products in China and imports them into Australia. It sells them through specialist retailers branded with the trade mark “NATURE KING”.

Your client has sold approximately $5 million per year of product since 2016. You are told this translates into a significant volume of sales and that it has spent approximately 10% of that sales revenue on advertising and promotion.

The product labels typically have prominent trade marks. The NATURE KING Trade Mark appears on the front of the packaging. On the rear of the product packaging appear the words “SMACK AGENCY beneath the words ‘IMPORTED BY:’. The words ‘This product was designed & developed by SMACK Agency PTY LTD’ also appears on the label. This is the type of use which is typically found on the back, bottom or side of packaging rather than on the front. An example is provided below: 

Your client has recently become aware of another company called Smack Organics Pty Ltd which is selling the identical products under the trade mark “SMACK”. Your client does not know how long these products have been selling for and it is still investigating the extent of use. 

Your conduct a search and identify each of the entities contained in Annexure A. The last two entries, namely trade mark C and D, are in the name of your client.

1.1 Explain the process and relevant time lines for opposing trade mark applications A and B.

1.2 Explain in detail the grounds you consider might be advanced and the prospects of success on each of those grounds on the information available to you. Where you require further information, explain what information is required and how that information would change your view on the prospects of success.

1.3 If your client were to be unsuccessful in the Opposition then what rights of appeal and/or review are available to it? Explain those rights briefly including the scope.

1.4 Assume that your client did not oppose trade mark applications A and B in Appendix A and they proceeded to registration. How could these trade mark registrations be challenged? What are the advantages and disadvantages as against opposing those registrations?

Question 2

Grounds and Particulars. You do not include any particulars in the statement. The Registrar writes to you noting that no particulars have been provided and threatens to dismiss the opposition. Advise the client how this should be dealt with. Draft short particulars for each proposed ground of opposition.

Question 3

You file the Statement of Grounds and Particulars for the scenario in question 1 and there is no notice of intention to defend. Two months pass after the due date. You receive correspondence from the trade mark applicant indicating there had been an administrative error and no notice has been filed. They mention that they only recently received instructions but query whether you would consent to filing the late notice. Advise your client on a course of action.

Question 4

You commence the oppositions against the trade mark applications referred to in question 1. A notice of intention to defend is filed, meaning your client must file evidence by 4 April 2020. You had written to the client asking them to provide evidence and they have not responded. You pick up the file again on the 15 March 2020 and notice that the deadline is approaching. You have been away at a conference and have failed to follow up with the client. Please explain the process and criteria for getting an extension of time to serve evidence in support, together with your recommendation on a course of action

Question 5

Your client wishes to amend the pending trade mark application D to include skincare cosmetics made from a specific plant known as “Sativa”. Can this be done? Explain the process and your recommendation. Your client also wishes to amend that application to encompass “Deodorants” and “Gels”. Advise your client. 

Question 6

Your client has received an examination report dated 6 July 2019 on trade mark application D. This cites trade mark applications A and B under section 44 of the Trade Marks Act 1995 (Cth). Advise your client on overcoming these citations and relevant timelines. 

Question 7

Your client is considering filing a non-use action against the trade mark in Appendix B. Your client undertakes some searches and tells you it has never heard of the company but has done some google searches. Those searches reveal the owner is based in China and it sells sunscreen made from special edible oils sourced from a special plant found in mountainous regions of Tibet.

Those searches reveal that bloggers in Australia are very familiar with the trade mark but they are frustrated because the product has not been available in Australia for the past 4 years. This is for two reasons. The first is because the Australian government has imposed trade sanctions on the importation of products containing the plant. Sections of the community are lobbying for these sanctions to be lifted. The second is because global warming has reduced the growth of that plant. The trade mark owner is currently looking at how it might provide a synthetic substitute.

The searches also reveal a  This domain name is owned by the trade mark owner. It shows a variety of different sunscreens. It includes the words at the bottom stating: “Unable to ship outside China for the time being. We will keep you updated 

Please explain the process, issues and defences that might be raised by the trade mark owner if an application is made for a non-use removal. 

Question 8

Your client wishes to start selling other brand named products which it imports from various countries around the world. These products are bought from various traders in those countries and are what your client considers to be “genuine goods”. Notwithstanding this, some of these goods are of clearly inferior quality to the equivalent genuine goods sold in Australia. Briefly advise your client on the trade mark issues that this scenario raises.

One of these goods are particular car tyres which are available in Indonesia under the trade mark “FALCON”. The trade mark “FALCON” in each of these countries is owned by the local subsidiary of a large tyre manufacturer. Is this lawful from the perspective of the Australian trade marks law?

Your client tells you it is concerned that if it imports these goods from Indonesia that it will be subject to a customs seizure. Explain briefly how these provisions work and whether you consider this would be a real issue for the client. 

Question 9

Your client also wishes to sell products under its trade mark “Nature King” in China, United States, the United Kingdom, the Germany and New Zealand. Advise it on a filing strategy. Explain in brief terms the different strategies that might be adopted including any pros and cons.