News & Insights

I recently headed down to the MCG to watch India and Zimbabwe square off in the ICC Men’s T20 World Cup.

I wasn’t alone. The crowd at the ‘G was over 82,000 on a beautifully warm spring evening. Judging by the blue shirts and the level of vocal crowd support, probably 70,000 of those spectators were supporting India. They were richly rewarded too, as some spectacular late hitting from Suryakumar Yadav left Zimbabwe chasing an unlikely 187 for victory.

With so many Indian supporters in the ground, and obviously millions more watching back home, it was not surprising that some of the advertising displayed at the ground was for Indian businesses. One of those was Eatfit, an Indian food delivery service that does not appear to operate in Australia.

It’s highly likely this advertising was aimed at the TV audience back in India, probably in the tens of millions. However, as the advertising was displayed on the electronic scoreboard to all 82,000 attendees at the ‘G, it made me wonder – what are the Australian trade mark implications? What if the foreign trade mark is similar to a registered Australian trade mark?

It’s not such an esoteric question, when you look at the Indian brand and a couple of Australian trade mark registrations (image below).

The above Australian trade marks are registered in relation to a range of food-supply services, including catering, food preparation and provision of food and drink. These services are essentially the same kind of service as the Indian business supplies in India.

So, one has to ask, is this prima facie trade mark infringement?

Foreign trade marks used in Australia

Under section 120(1) of the Trade Marks Act 1995 (Cth):

“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 goods or services in respect of which the trade mark is registered.”

It is arguable that the Indian trade mark would be considered deceptively similar to the Australian registered trade marks as they convey the same overall impression, and both contain the dominant element ‘EATFIT’ (being a coined term that doesn’t ordinarily exist as a part of the Australian lexicon).

Accordingly, the next question is whether the Indian trade mark is actually being used in the course of trade in Australia.

Section 17 states:

A trade mark is 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.

On the one hand, you could argue that when a trade mark is used to advertise a business at a major sporting venue to over 82,000 spectators, it would constitute use of that trade mark. On the other hand, it could also be argued that the Indian business isn’t trading in Australia and that the ‘use’ in Australia is merely incidental to the dominant use, being advertising to the millions of Indian public viewing the match via the television broadcast into India. You could also argue the there was no ‘use’ at all given that the product isn’t targeted to the Australian public.

This type of cross-country advertising is not a new phenomenon and certainly not in international sport arenas. I remember watching Ashes test matches from England on TV years ago, with the Australian Ford Falcon being prominently advertised at the grounds. The Falcon was not offered for sale in the UK and the advertising was only aimed at Australian viewers.

Advertising overseas and protecting your trade mark

While it’s more likely the use of the Indian trade mark at the ‘G would constitute infringing conduct, the more relevant questions from a commercial perspective are:

• what can be done to avoid this situation if you’re looking to advertise overseas? And
• if your trade mark rights are infringed, is it worthwhile enforcing your rights against the overseas entity?

The most important step a business can take when considering advertising overseas is to conduct a trade mark search of that jurisdiction. This will alert you to any rights of local trade mark owners.

Even if you are not going to be trading in that country, your conduct could still cause a loss to local rights holders. For example, it may be possible to order your goods or services online. Or you might cause damaging marketplace confusion in other ways that leaves the trade mark owner aggrieved.

Of course, obtaining a registered trade mark in that jurisdiction will also protect you, as it is a complete defence to trade mark infringement. The cost to obtain trade mark registration is also generally far less than being involved in court proceedings – especially in a foreign jurisdiction.

In relation to the second question posed above, we recommend having a swift commercial approach to the situation. Usually this will start with contacting the party that has potentially infringed your trade mark rights in an attempt to resolve the dispute. However, if that doesn’t work (or if the loss you’ve suffered is significant to your business), then you may wish to commence legal proceedings to enforce your rights.

Take away points

1. If you are going to advertise your business in a foreign country, you need to consider the trade mark rights that already exist in that country. You need to do searches beforehand to ascertain those rights and any risks arising from your advertising plans.
2. If you do intend to promote your brand in another country as a way of driving business, you should consider registering your trade mark there to protect it.
3. Act swiftly when enforcing your trade mark rights using a commercial lens to justify any action you take.

The Macpherson Kelley IP team can assist you with your foreign IP search and registration needs, or enforcing your trade mark rights both in Australia and overseas. So speak with us before you start promoting your brand overseas, or if you need to enforce your trade mark rights.