list of contributors - GALA

The regulations are designed to inform consumers in a more graphic, and
perhaps confronting, manner of the health risks associated with smoking and
provide them with contact details as to where they can obtain assistance to
stop smoking. Failure to adhere to the regulations means that a tobacco
manufacturer or importer will contravene s65D (1) of the Trade Practices Act
1974 and be guilty of a criminal offence.
3. Case note: Royal Doulton (UK) Ltd v Ghosen [2004] ATMO 32
Topic: Trade Marks and Brand Extension
Where: Australia
When: June 2004
What Happened: Brand extension occurs when a well established, familiar brand name is used
for new goods or services, sometimes unrelated to the goods or services
originally sold under the brand. It provides an approach to leveraging
existing consumer perceptions of brands to a new product category, thus
reducing the risk and cost of entering that new category. It is also
increasingly relevant in the context of trade mark oppositions under s.60 of
the Trade Marks Act 1995. S.60 states:
The registration of a trade mark in respect of particular goods or services may be
opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that,
before the priority date for the registration of the first-mentioned trade mark in
respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the
first-mentioned trade mark would be likely to deceive or cause confusion.
Royal Doulton (UK) Ltd (Opponent) is the owner in Australia of the trade
mark Royal Doulton for ceramic tableware, figurines, vases, glassware and
other goods for the home. At the time of the above decision, it did not have
the trade mark registered for eyewear nor was there any evidence that it had
sold those goods under the trade mark in Australia. However, it successfully
opposed the registration of the trade mark by Anthony Ghosen (Applicant)
in respect of eyewear under s60.
The delegate of the Registrar of Trade Marks (Delegate) was satisfied that the
words ROYAL DOULTON were only associated with the Opponent and that
the Opponent used and licensed the trade mark for a range of goods in
Australia (though not for eyewear) and elsewhere. He referred to the
“common commercial phenomenon” of brand extension and found that “the
public is well used to the licensing of trade marks such as that of the
Opponent on a range of goods.” The fact that the Opponent had in fact sold
eyewear in the United States under the trade mark was support for the fact
that members of the Australian public might expect the Opponent to extend
its mark into the eyewear range.
The Delegate was satisfied that there was a real and tangible chance that a
substantial number of persons finding the ROYAL DOULTON mark on the
Applicant’s goods would be confused or deceived. The s60 ground of
opposition was therefore made out.
Comments: Even when on the face of it a product may seem like an unlikely brand
extension, a strong reputation in a number of products will increase the
likelihood of a successful opposition under s.60 of the Trade Marks Act.