GlobalReport

Global Report: Asia-Pacific
In the News continued from page 7
AUSTRALIA: Why Qantas’s Trademark Opposition
Failed to Take Off
In a decision of June 23, 2016, Australian
airline Qantas failed on appeal to the Federal
Court of Australia in its opposition to a Class
25 device mark featuring a kangaroo. Qantas
Airways Limited v. Edwards, [2016] FCA 729
(23 June 2016). The respondent, Mr. Edwards,
sought registration of the following T-shirt logo
with respect to “clothing; footwear; headwear;
shirts; t-shirts” in Class 25:
The appellant, Qantas Airways Limited, unsuccessfully
opposed the registration of the T-shirt
logo before the Australian Trade Marks Office.
On appeal, Qantas argued that the T-shirt logo
was deceptively similar to its prior registration
for the following 1984 tail fin logo:
The 1984 tail fin logo was registered for
(among other things) “advertising, marketing
and merchandising services” in Class 35.
Qantas argued these services were closely related
to the applied-for goods. Mr. Justice Yates
(Yates J) held that “clothing; footwear; headwear;
shirts; t-shirts” were not closely related to
“advertising, marketing and merchandising services.”
While accepting that clothing and headgear
are typically used as promotional items,
Yates J stated that the respondent’s goods “are
no more and no less related to ‘advertising,
marketing and merchandising services’ than
any other goods or services that can be advertised,
marketed or merchandised,” which
could be limitless. He contrasted the case with
one involving a more specific claim for services
related to particular goods, such as television
repair services and televisions.
Yates J also considered the marks were not
deceptively similar. While accepting that the
stylized kangaroo was a prominent element of
each mark, he emphasized that the contrasting
triangular element of the 1984 triangle logo
and the T-shirt-shaped outline of the T-shirt logo
were also important aspects of the respective
marks, which provided memorable context to
the kangaroo elements. These were considered
significant points of distinction. Qantas argued
that it had, at the priority date, a significant reputation
in the following logos such that the use
of the T-shirt logo would be likely to deceive or
cause confusion:
1984 tail fin logo 1984 kangaroo logo
2007 tail fin logo 2007 kangaroo logo
Qantas had first adopted a kangaroo device
as part of its branding in 1944. Qantas’s core
services are air transportation services, but
the 1984 and 2007 marks had been used in
relation to a range of other services, ancillary
products, merchandise, and sponsorship activities.
Yates J was satisfied that the 1984
triangle logo and the 2007 triangle logo would
have been recognized by a substantial number
of ordinary members of the public as denoting
Qantas’s airline services at the priority date. He
was less certain about the recognition of the
1984 kangaroo logo and the 2007 kangaroo
logo. Absent a finding of deceptive similarity,
Yates J was not satisfied that the use of the
opposed mark with respect to the respondent’s
goods would have been likely to deceive or
cause confusion. His Honor considered that
general consumer awareness of brand evolution
and brand extension were not factors that
had any significant role to play in the case, or
that ordinary members of the public would
have seen the T-shirt logo as a development
of any of the 1984 or 2007 marks. Qantas’s
evidence of use of its marks on promotional
and sponsorship items was considered to be
evidence of use for promotional or sponsorship
purposes denoting the appellant as a supplier
of airline services, and not trademark use in
relation to the goods themselves.
Brand owners seeking to rely on a brand extension
argument in future cases will likely need
to show a clear connection between the core
services of their business and the applicant’s
goods or services. Applicants should also carefully
consider their filing strategy with a view
to relying on registrations for services against
applications covering specific goods.
Contributor: Carly Mansell
Davies Collison Cave, Australia
Verifier: Stephen Rebikoff
Barrister, Australia
CAMBODIA: New Regulation on
Certification Marks
On August 30, 2016, a new Prakas (declaration)
on the Procedures for Registration and
Protection of Certification Marks was enacted
by the Ministry of Commerce. The declaration
set forth procedures and documents required
for national and international registration, term
of protection, invalidation, and cancellation.
In order to register, the applicant must have
legal personality and competency for certifying
the goods and/or services. The application
form can be submitted to the Department of Intellectual
Property of the Ministry of Commerce
in the Cambodian or English language, using
the prescribed form, along with a statutory declaration/affidavit,
a certificate of competency,
and regulations governing use of the certification
mark.
The applicant can also claim the priority right
of an earlier application filed by the applicant
based on the Paris Convention. Further, a foreign
applicant must be represented by a local
trademark agent, accompanied by a registration
certification or an application in the foreign
applicant's home country, and an original notarized
power of attorney. The official fees will be
determined in a joint declaration between the
Ministry of Commerce and the Ministry of Economy
and Finance. Currently, the official fees for
ordinary trademark registration apply.
The applicant has six months to respond to the
Registrar if the application requirements are not
fulfilled. As soon as it is registered, the information
of the certification mark and the regulations
governing its use will be published. Any
interested person may submit a statement of
opposition to the Registrar within 90 days from
the post-registration publication date.
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INTA Global Report, February 2017