Unregistering rights can only get you so far in Australia
In Australia, brands may obtain registrations for aspects of packaging, such as colour schemes and design elements. Brand owners can still protect their rights even without registration. However, unregistering rights can only get you so far in Australia as there will be many obstacles that brand owners may find it difficult to pass through when a conflict occurs.
This statement can be made clear through the Brick Lane Brewing Co Pty Ltd v Torquay Beverage Company Pty Ltd in Australia.
This is a notable case where one party relies too much on the protection of unregistering rights, denying the support and robust, strong legal basis of a registration.
The dispute addressed the packaging similarities of Torquay’s Better Beer and Brick Lane’s own Sidewinder beer. Among these parallels is their usage of blue, yellow, and orange stripes. Torquay was sued by Brick Lane for misleading or deceptive conduct as well as misleading or false representation.
Basically, Brick Lane accused Torquay of intentionally create a package that is similar to theirs, with the ultimate goal of misleading the consumers, using their established brand awareness to gain commercial profits.
According to the company, the similarities might lead to customers mistake Sidewinder for Better Beer or vice versa, assuming Better Beer is associated with Brick Lane.
The Federal Court of Australia was unimpressed and ruled in favor of Torquay in February 2023.
According to experts, many comparable instances have occurred in the past, and the success rate of misleading and deceptive behavior proceedings involving product get-up in Australia is not exceptionally high.
In addition to establishing appropriate consumer awareness of the earlier product get-up, the similarities with the latter product get-up must be significant enough to raise the possibility of consumers mistaking one product for the other or perceiving the goods as being related in some manner.
Other branding or information on product packaging or utilized in relation to the product, such as in promotional materials, may minimize the possibility of customers being misled or deceived, as was the case in the Brick Lane Brewing judgment.
The result was reached after the court considered the two firms’ reputations, the distinctions between their beer products, the conditions under which the items were made accessible on the market, and whether Torquay knowingly copied or imitated Sidewinder’s packaging.
Brick Lane’s top mistake in this case is the reliant on the protection of unregistered rights. Although it exists, it will be extremely difficult to prove that in practice, leading to the losing of the company.
Consequently, companies should conduct trademark registrations to acquire protection for their trademark and brand even if the mark has not been used or in some countries, in constant use after registration (the requirement to submit declaration of use in commerce). There is no necessity in a trademark infringement lawsuit for the trademark owner to prove consumer recognition of their mark.
Another advantage of registering a trademark is that it usually gives wider protection in terms of the scope of products or services. With the information established on the IP database of countries or world organizations such as WIPO, other businesses might conduct search beforehand and avoid (if possible) that trademark so that there won’t be troubles in the future like what we are seeing at this case.
If there is no solid proof of existence, there is little ground to protect one’s rights.
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– You could see the Procedure of Trademark in Australia here.
– You could visit here to see the Required documents of filing trademark in Australia.
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