A dual approach – copyright and trade mark searches prior to launching a brand 

Trade mark searches are regarded by courts as of paramount importance in the adoption of a brand. There is a decision of the Federal Court of Australia which specifically addresses this issue: Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235 (11 March 2016) in which the court noted:

[147.]… In my view, there is no probative and reliable evidence to suggest that he did not have such an appreciation at an earlier point. Business proprietors would usually know of the importance of trade marks. It is common for new business owners to conduct basic trade mark searches using the IP Australia website. The IP Australia website included as of 2010 basic information directed to people unfamiliar with trade marks. It included information about trade marks, searching for trade marks and suggested contacting a patent and trade marks attorney or legal practitioner for assistance if necessary.

[150.] In my view, an experienced business person would have conscientiously considered the type of information set out above and, if acting in good faith, would have conducted further inquiries including a search of the trade marks register. Mr Katelis failed to do this and his excuses were unconvincing. If he was ignorant of the Applicant and the Applicant’s trade mark, it was only due to his own indifference and his failure to make the inquiries that an honest and reasonable person would have made in his position.

In other words, a person who does not do a trade mark search before adopting a brand is at best engaging in wilful blindness. I’d go further than this and include a Google search, which takes no skill to use at all.

But are we only looking at half the problem? Copyright issues are a real issue in brand creation, especially when graphic designers look to the internet for inspiration. This was underscored in a recent UK decision, ATB Sales Limited v Rich Energy Limited [2019] EWHC 1207 (IPEC) (“ATB”). This was a dispute over the copyright in two logos, both applied to energy drinks. Below are the logos, with the plaintiff’s on the left:

The defendants relied upon a decision of the Patents County Court in Mitchell v British Broadcasting Corporation [2011] EWPCC 42 at p122: “This illustrates the slippery nature of the allegation of subconscious copying when it is combined with the reality of the internet today. Since everything is available to everyone on the world wide web, no evidence can ever rule… out a subconscious influence.”

But the court found there was sufficient similarity between the two logos, and access to the plaintiff’s logo on the internet by the graphic designer (a defendant to the proceedings) was on the facts very likely. At [116]:

“In my judgment, there are two possibilities. The first is that [the defendants’ witnesses] are lying: they were familiar with [the plaintiff’s logo], and deliberately copied it to produce [the first defendant’s logo], making minor changes either to meet Mr Storey’s aesthetic preferences or to ensure the copy was not a facsimile of [the plaintiff’s logo]. The second is that Mr Kelly and Mr Storey are telling the truth: they do not remember seeing [the plaintiff’s logo] and have no familiarity with it, and did not copy it either knowingly or subconsciously, but created the misleading Brand Research document, the fake vector lines on the render and gave misleading evidence in order to support an evidentially weak, but otherwise truthful case of independent creation.”

And, importantly, at [119] the Court noted the insufficiency of a mere trade mark search: “In my view, it is therefore no argument for the Defendants to ask why he would be so careful about trade marks and less careful about copyright, when it appears that he did not understand them to be different. It may be that he and Mr Kelly simply thought that C’s Device was a great logo, and that it was one from a company sufficiently removed from their own business not to notice or complain about their copying, or that it did not attract copyright protection. Perhaps they thought that trade mark clearance was all that mattered.”

At the very least, a person creating a new brand can conduct a Google Images search, which is easy to use and which can assist in determining whether a logo has been copied.

It has long been established that in the context of misleading and deceptive conduct contrary to the Australian Consumer Law, that advertising agents are “the gatekeepers” with respect to compliance with consumer laws – see ACCC v Nissan Motor Co. (1998) ATPR 41-660, and see also Cassidy v Saatchi & Saatchi Australia [2004] FCAFC 24 in which the Full Federal Court considered at [39], “the proposition that an advertising agent who prepares an advertisement for a client does not make a representation under s 53 of the TP Act unless, in addition, either the advertising agent actually disseminates the advertisement or the advertisement is in terms which identifies the advertising agent as its (or one of its) publishers. [The judge at first instance] did not treat those propositions as definitive and conclusive. As he later said, whether the respondent [the advertising company Saatchi & Saatchi] in this case made the misleading statements depends upon all the circumstances. It would also depend on the case as pleaded.”

The fact that the designer of this logo was a defendant to the proceedings in ATB should be a cautionary tale to those who create new brands.