News & Insights

While it has taken us a year to get here and it was looking very unlikely for a while, the world is currently gripped by Olympic fever. For us in Australia, it has of course been a particularly enjoyable Olympic Games to watch, with the phenomenal success of the Australian swim team and other athletes.

But just as we were mesmerised by the performances of Emma McKeon, Ariarne Titmus and co, Brazil has taken delight in its youngest ever Olympic medallist. Rayssa Leal, aged just 13, won a silver medal in women’s street skateboarding. Apparently Rayssa first came to attention in 2015 when a video of her wearing a fairy costume while riding her skateboard went viral, earning her the nickname “Fadinha” or “Little Fairy”.

Shortly after Rayssa won her silver medal, there was a news report that Brazilian lawyer Flavia Penido had applied to register “Fadinha” as a trade mark in relation to skateboarding clothes and equipment. Apparently, this wasn’t nefarious – Ms Penido has claimed that she wanted to safeguard the trade mark for Rayssa and transfer it to her.

As a lawyer, it’s easy to be cynical about such supposedly white knight behaviour. There are plenty of examples of significant fees being demanded to transfer the supposedly safeguarded registrations. But assuming that Ms Penido is genuine in her intentions, would this type of benevolent application hold up in Australia?

would the trade mark application hold up in australia?

In short – no.

Under section 27 of the Trade Marks Act 1995, a person may apply for registration of a trade mark in respect of goods and/or services if:

• the person claims to be the owner of the trade mark; and
• the person is using or intends to use the trade mark, the person has authorised or intends to authorise another person to use the trade mark, or the person intends to assign the trade mark to a body corporate that is about to be constituted.

Under section 59 of the Trade Marks Act, a trade mark application may be opposed on the grounds that the applicant does not intend to use, authorise the use of, or assign the mark to a body corporate for use by the body corporate. Ms Pendino’s public statement of her intention to assign the mark would effectively condemn the application to being successfully opposed.

If the mark was to proceed to registration without being opposed, it’s registration could at any point thereafter be challenged in court. Even if the mark was to be assigned to Rayssa, if she sought to enforce the mark through infringement proceedings, the alleged infringer could apply to have her mark revoked. The revocation action would likely succeed.

We learned in 2017 from the Full Court of the Federal Court in Pham Global v Insight Clinical Imaging [2017] FCAFC 83 that these issues need to be considered at the time that the application is lodged. Assigning the application to Rayssa is not going to fix the vulnerability but, of course, Rayssa should still accept an assignment from Ms Pendino. It is better for her to have the trade mark than somebody else. But she should then reapply for registration in her own name?

what if ms pendino uses the trade mark herself?

What if Ms Pendino hadn’t made her public statement and sought to exploit the trade mark herself?  This depends on the public renown of the “Fadinha” nickname in association with Rayssa Leal. With sufficient public recognition, the use of that name by somebody else in relation to skateboarding-related goods would likely be misleading and deceptive, contrary to the Australian Consumer Law. This would allow the trade mark to be opposed or revoked under section 42, on the basis that its use would be contrary to law.

key take-aways

As always, there are a couple of take-home lessons:

• Getting the applicant right for a trade mark application is critical. The wrong applicant can leave the trade mark forever vulnerable to challenge.
• Skateboarding has gone Olympic mainstream.

While we may not be great skateboarders, the Macpherson Kelley IP team is here to help win gold with your trade mark applications.