Re: Mr Brian Jones- Trade marks; fiduciary duty; and solicitor conduct 1. Executive Summary * Trade Marks: Mr Jones has a highly unlikely chance of success in an action against Vinerio Wine Company, as he has infringed their trademark under the Trade marks Act 1995 (Cth) and in accordance with the decision held in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144. * Fiduciary Duty: By analogy, Maguire v Makaronis (1997) 188 CLR 449 shows that Mr Jones has a likely chance of success as it outlines the principles of fiduciary duty. * Solicitor Conduct: Mr Jones will have a strong chance of success against Ms Anderson under s 418, 419 and 429 of the Legal Profession Act 2007 (Qld).
2. Can Mr Jones Continue Selling His Special Beer Under the Label Fruity Good? The Trade Marks Act 1995 (Cth) provides legislation relevant to Mr Jones’ situation. A trade mark is defined as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.
2.1 Has Mr Jones Infringed Vinerio’s Trade Mark?
Infringement occurs if a person uses a trademark that a “person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods”. In restating the facts, Mr Jones’ trademark is ‘Fruity Good’ whilst Vinerio’s is ‘Fruity Goodness’. Mr Jones’ trademark was made in respect of “beers” whilst Vinerio’s was made for “except beers”.
2.2 Is ‘Fruity Good’ Substantially Identical with or Deceptively Similar to the Trade Mark ‘Fruity Goodness’?
“A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. The mere fact that each trademark was registered under separate classes does not affect this (as was discussed in E & J Gallo Winery v Lion Nathan Australia Pty Ltd).
2.3 Can Mr Jones Establish that his Trade Mark is Not Likely to Deceive or Cause Confusion?
“However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion”. It is unlikely however, on the facts, that Mr Jones will be able to do this. The two trademarks are so closely related that a reasonable person would likely be deceived or caused confusion, simply because the difference between the two is minimal.
* 2.4 Can Mr Jones Counter Claim that Vinerio’s Trade Mark Had Not Been Used During Statutory Period and That, Consequently, it Should be Removed?
Vinerio wines did in fact use the trade mark in good faith in Australia within the three year statutory period. Without Vinerio’s knowledge a small number of cases had be distributed into Australia in 2009. Mr Jones cannot, therefore, seek removal of Vinerio’s trade mark through an application for non use. The decision held in in E & J Gallo Winery v Lion Nathan Australia Pty Ltd supports this. 0 2.5 What amounts to “Non Use”? 0 It was held in E & J Gallo Winery v Lion Nathan Australia Pty Ltd that “An overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade…”. * 1 2.6 Is Vinerio an Authorised User? Under s 8 of the Act, Vinerio is an authorized user. Vinerio is therefore a user…