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There is no doubt that Jack Daniel’s is one of the most well-known brands in the world of liquor, possibly even ranking among some of the most well-known brands of our time. But have you heard of Bad Spaniels? The US Supreme Court recently ruled that the Bad Spaniels’ mimicry of the Jack Daniel’s famous trademark design by reproducing it as a dog toy was in violation of US trade mark law.

But how would this play out in Australia? We examined the parties’ separate Australian trade mark registrations and conducted an infringement analysis under the Australian Trade Marks Act 1995.

What is a trade mark?

• A trade mark is a unique sign that is able to distinguish your business’s product or service from those of other traders.
• It can be a sign, symbol, letter, number, name, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.

When does infringement arise?

In Australia, trade mark infringement arises when a person uses a trade mark that is substantially identical or deceptively similar to a registered mark.

The trade mark needs to be in relation to:

• the goods or services in respect of which that earlier mark is registered (section 120(1) of the Trade Marks Act 1995); or
• goods of the same description as the registered goods, or in relation to services that are closely related to the registered goods, unless it can be established that the trade mark use is not likely to deceive or cause confusion (section 120(2))

Infringement can also occur in relation to unrelated goods or services, provided that:

• • the registered mark is well known in Australia;
  • the earlier registered mark is so well known that the later mark is likely to be taken as indicating a connection between the owner of the registered mark the unrelated goods or services; and
  • the interests of the registered owner are likely to be adversely affected (section 120(3)).

What is registered (in Australia)?

In addition to the whiskey registrations, Jack Daniel’s also has Australian trade mark registrations in relation to a range of promotional items, including “playthings”. We consider this would be broad enough to cover dog toys in class 28. These registrations protect, inter alia, its following iconic labels:

(Label Marks)

By contrast, VIP Products doesn’t have any registered trade marks in Australia for BAD SPANIELS or the slightly different label it uses (shown at the start). If it did, then this would have been a complete defence to trade mark infringement.

Would this constitute infringement in Australia?

VIP’s trade mark use is in relation to goods that are the same as Jack Daniel’s registered goods (the section 120(1) infringement test). As noted above dog toys are playthings.

Therefore, we next need to compare the trade marks to see if they are substantially identical or deceptively similar. This is always a difficult question to assess especially with complex marks. the assessment also needs to be made without recourse to reputation of the brands. Bearing that in mind, and given the uniqueness of the Label Marks, it is likely that the Bad Spaniels label would be considered deceptively similar to the Label Marks. The assessment is made considering the marks “as a whole”. It is worthwhile noting here that a consumer doesn’t necessarily need to think that Jack Daniel’s is selling the dog toy, but it is sufficient for them to believe that there is a real likelihood that the dog toy is being sold with the approval of Jack Daniel’s or is in some way affiliated with them. In our opinion, it is.

Key takeaways

As demonstrated by this case:

1. The importance of being aware of the existing trade mark field before entering the market is great.
2. Registering one’s own trade mark is also important, given the infringement exception that it creates.
3. Trade mark registration can be valuable as a shield from infringement claims, not just as a sword used to bring a claim.

The case also demonstrates the importance of securing protection for various elements of your branding, not just the name of the product. If Jack Daniel’s did not have any of the Label Marks registered, it is unlikely JACK DANIEL’S would have been considered deceptively similar to BAD SPANIELS. This would then leave Jack Daniel’s in a far more precarious position having to relying on common law rights (in Australia) and copyright protection for the design of the label – a much more difficult (and far more costly) case to argue.

Finally, consider as Jack Daniel’s has done, protecting the broader “non-core” products that may represent the trade mark. There needs to be an intent and then use of the mark on those goods, but for popular brands, merchandise is always likely.

Macpherson Kelley’s IP team can help with all aspects of trade mark law – from conducting freedom to operate searches, and preparing commercially focused IP protection strategies, to supporting any disputes that may encounter over the use of a trade mark.