Information Law - Advise of Options under the Law - Essay Example

Advise of options under the law Your name:   Course name:             Professors’ name: Date: MountainHiker Man & Company Advocate 1122 Boogie Boogie Avenue Anytown, AnyState 123456 Debts R'us.com 22211, Sydney ThisTown, ThisState 123658 Dear Sir/Madam, Slogan Infringement Thank you for your letter of 20th September, 2011 in which you wanted advice about on the your "Your debts R'ours” slogan infringement. Your questions, my answers to this question, and the reasons for my answers are set out below. In Australia, trademarks are protected by section 120(3) of the Trade Marks Act 1995 (Cth) (the "Act")1. Section 120 of the Act provides that: a person will infringe on a trade mark if he uses a sign that is identical with already registered mark; or goods that are closely related to registered services." or services that are closely related to registered goods. Copyright is part of an area of law known as intellectual property. In Australia legislations, Intellectual property law protects the property rights in inventive and creative endeavors, and it gives certain exclusive economic rights to the creators and inventors for a limited time to deal with their inventions.2 Any form of intellectual property is protected by a specific Act of the Commonwealth Parliament. In Patents Act 1990 grants Debts R’us.com monopoly rights of their advertisement slogan "Your debts R'ours". In addition, the Trade Marks Act 1995 grants protect the company against any infringement of their slogan.3 The Trade Marks Act 1995 grants protection to a word, phrase, letter, smell, sound, logo, shape that is used by a company on their goods and services to distinguish such goods and services from other traders. Initially the registration of a Trade Marks will last for ten years, but once that term has expired a company can renew the Trade Marks for as long as the mark is used.4 There are certain business practices, as reflected in the law, are not fair in a business setting. Unfair competition law have been applied in many business to make sure that competition among companies is fair, and one aspect of this law is the law of trademarks. Under the trademarks, a company is able to acquire certain rights under Australia common law.5 In our case study, since Debts R’us.com was able to register it slogan; they have enhanced rights in regard to the slogan. AAA Debts collectors Ltd has been unfairly competing with Debts R’us.com by adopting and using a trademark that is similar and confusingly to the prior adopted and used slogan of Debts R’us.com. The touchstone of any infringement case is when there is likelihood of confusion. In other worlds, AAA Debts collectors Ltd will be prevented from using their slogan if it is proven their slogan will cause confusion in the mind of Debts R’us.com customers. In our case, the court will try analyzing if they exist any trademark infringement through a number of factors that will help the court determine the likelihood of confusion, such factors include: closeness of sound, and meaning of the conflicting slogan.6 Debts R’us.com has several remedies if they believe their trademark has been found to be infringed by AAA Debts collectors Ltd. Under the common law Debts R’us.com can obtain an injunction preventing AAA Debts collectors Ltd from using the infringing mark (slogan) or any other mark that is confusingly similar to their slogan. In addition to the injunction AAA Debts collectors Ltd slogan, Debts R’us.com can ask for financial damages, and the court can increase these financial damages up to three times if the trademark infringement is deemed to be willful. Trademark dilution is another area that is found in unfair competition law. As stated, trademark infringement under the Australian law is the likelihood of confusion. In some cases, Debts R’us.com cannot find the likelihood of confusion but still damage has been done to their slogan by AAA Debts collectors Ltd. Section 186 of the Trade Marks Act 1995 (Cth) do not require a mark to be well known in order for the mark to be protected against infringement. This section has made it clear those other provisions of ss 120(1) and 120(2) which is mostly applied to the defensive registrations. Further, consumer protection legislation such as ss 53 and 52 of the of the Trade Practices Act 1974 (Cth) protects both registered and unregistered trademarks.7 In section 53 it prevents a company or corporation from making misleading and false representations, while section 52 of the Act states that a company or corporation shall not engage in conduct that will mislead or is likely to deceive customers.8 Debts R’us.com should not worry about financial losses because in common law if a plaintiff can show: a misrepresentation by the defendant, leading to deception; a reputation in the relevant mark or indicia; and damage to goodwill, or likelihood thereof, he will be compensated for the money the company incurred during the case proceeding. These business goodwill and consumer protections provide companies with methods to protect their trademarks which are additional to those provided by the Act. Since the Trade Marks Act 1995 (Cth) came into force, this Act gives protection to companies against the dilution of their marks.9 Anti-dilution provision are contained in s.120(3) of the Trade Marks Act 1995 (Cth) is,10 without doubt, an explicit anti-dilution provision that will protect Debts R’us.com against their slogan infringement. According to this provision under the common law require a company to have a “distinctive” mark to be protected.11 In any case, anti-dilution laws will protect Debts R’us.com slogan from two forms of damages: tarnishment, damaging the reputation of the slogan showing it in a distasteful light or damaging the reputation of the slogan by connecting it with an inferior; and blurring of the distinctiveness of the slogan and therefore its advertising value.12 In our case, under the blurring provision, the use of altered mark (slogan) by AAA Debts collectors Ltd will pose a risk of impairing the identification of the Debts R’us.com trademark. Further, we can argue that the distinctiveness of the slogan will be lost because the slogan will no longer exclusively identify the Debts R’us.com trademark. In fact, AAA Debts collectors Ltd slogan will bad for Debts R’us.com business because it will identify their competitor as the primary provider of certain products and services. As discussed above, “dilution” cases have received limited attention in Australia legal system. The most well known case in which dilution decision has been applied is in Campomar Sociedad v Nike (Campomar v Nike).13 In this case Campomar infringed on Nikes trade mark on their product (perfumes). During the judgment which was delivered by full bench of the High Court of Australia (consisting of Gleeson CJ, McHugh, Kirby, Hayne, Gaudron, Gummow, and Callinan JJ). In their ruling they stated that infringement action must be applied to activities that will affect owners of trademarks by the dilution. In this case, the ruling of the case considered s 28(a) of the Trade Marks Act 1955 (Cth) which provides that a mark: the use of which would be contrary to law; the use of which would be likely to deceive or cause confusion; which would otherwise be not entitled to protection in a court of justice; which comprises or contains scandalous matter, shall not be registered as a trade mark. In relation to s 28, the honor commented on in Renaud Cointreau v Cordon Bleu International.8 In that case, Moore, Tamberlin and Goldberg JJ considered an application by Renaud Cointreau for leave to appeal from a decision of the Federal Court in a matter involving the alleged infringement of Renaud Cointreau's CORDON BLEU trade mark. Bibliography Books/Articles/Journals Davison, Mark J; Ann Louise Monnotti & Leanne Wiseman (2008). Australian intellectual property law. Cambridge University Press. p. 180. Mark Davison, Tracey Berger and Annette Freeman, Shanahan's. Australian Law of Trade Marks and Passing Off (4th ed, 2008) 681. Michael Handler, "Trade Mark Dilution in Australia?" (August 2008). University of New South Wales Faculty of Law Research Series. University of New South Wales Faculty of Law Research Series 2008. Working Paper 48. http://law.bepress.com/unswwps/flrps08/art48 Cases Legislations Australian Copyright Act 1968 as amended Fair Trading Act 1992 (ACT) ss 12 and 14; Fair Trading Act 1987 (NSW) ss 42 and 44; Consumer Affairs and Fair Trading Act 1990 (NT) ss 42 and 44; Fair Trading Act 1989 (Qld) ss 38 and 40; Fair Patents Act 1990 Section 186 Trade Marks Act 1995 (Cth) s 120(3) Trade Practices Act 1974 (Cth) Ibid Read More