Dominic is the CEO of Lawpath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the Australian Legal Innovation Index and recently a winner of the LexisNexis 40 Under 40 (APAC).
As the real estate turf wars continue over REA Group’s push to trademark ‘realestate.com.au’, we decided to recount some of the more remembered (and often absurd) Australian trademark claims over the past few years.
1. Apple’s attempt to trademark ‘start-up’
Apple infuriated Australia’s start-up community last year by moving to trademark the term ‘start-up’ in Australia. The move would have prevented the use of ‘start-up’ as a prominent branding feature, sparking several start-up community leaders to declare themselves ready to oppose the application if it passed examination.
IP Australia rejected the attempt in November 2013 but accepted Apple’s request to defer acceptance of the findings.
2. BP’s lost bid to trademark a colour
Multinational British Petroleum, or BP, recently lost its 12 year battle to trademark the colour green (Pantone shade 348C specifically). The trademark was first attempted in Australia in the early 1990’s after being successfully registered in Britain and Europe, with a BP spokesperson announcing that green had been “central to the BP brand since the 1930s”.
IP Australia rejected BP’s claim after a long-running battle with Woolworths, which considers the green shade in its apple logo too similar.
3. Mars’ bid to Own ‘FREE BARS’
Back in 2008 Mars Australia Pty Ltd applied for the registration of the trademark ‘FREE BARS’ for a range of class 30 goods, including confectionary. After initial acceptance from IP Australia, Kraft stepped in to oppose registration on the basis FREE BARS was a term not capable of differentiating Mars’ products from those of other traders.
4. Remit International’s ‘MH17’ trademark
Unknown Malaysian company Remit International applied to IP Australia to register the trademark ‘MH17’ just hours after the Malaysia Airlines plane crashed in eastern Ukraine. The trademark application has come under heavy fire from family and friends of victims, and is another example of the increasing trend of ‘trademark trolling’.
5. A real UGG-ly trademark dispute
There’s perhaps no better example of the risks in trading under a name that hasn’t been granted trademark protection than that of the Ugg Boot case.
Family firm Luda Production has been making sheepskin shoes under the name “Ugg Boots”locally for decades. However American sheepskin company, Deckers Outdoor Corporation, holds the trademark for “Ugg Boots” and has launched an attack on businesses like Luda that have adopted the name.
Despite Luda’s adoption of the term well before the trademark was lodged Deckers had the right to appeal the dispute in federal court, serving as a reminder to businesses the importance of pre-emptive trademark registration.
