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The registrability of a trade mark for an online business considered
15 July 2010
In a recent case, Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664, Kenny J considered the registrability of a trade mark for an online business.
Partner and Sports Law expert John Mullins and Business Services Partner Andrew Nicholson discuss the case which Kenny J notes in his judgment raises contemporary issues about the use of trade marks at a time when the use of home computers for private purposes is widespread and includes the online purchasing of clothing, in this case for the game of tennis, as well as other items, as, in this case, equipment for playing tennis.
The applicant, Sports Warehouse, Inc, was incorporated in California in 1994 and retails tennis apparel and tennis gear predominately via an online website. It conducts its online retailing business through the internet domain name www.tennis- warehouse .com. Since 1995, Sports Warehouse has offered its products worldwide, including to customers in Australia.
Sports Warehouse lodged the trade mark application for "TENNIS WAREHOUSE" in respect of "online retail services featuring tennis clothing, tennis footwear, tennis gear, tennis equipment, tennis accessories, and tennis sport bags" on 18 August 2005. The trade mark application was advertised by the Registrar as accepted for registration on 28 September 2006.
The respondent, Fry Consulting Pty Ltd, is a wholesaler and retailer of tennis products with customers throughout Australia. It operates a store in Fitzroy, Melbourne. Fry Consulting was incorporated in early September 2004 for the purpose of running an online retail tennis gear store and, on 10 September 2004, was registered as the owner of the business name "Tennis Warehouse". In September 2004, Fry Consulting also registered its domain name www.tenniswarehouse.com.au and began operating its online retailing of tennis apparel and tennis gear.
Fry Consulting filed a notice of opposition to the registration of the trade mark "TENNIS WAREHOUSE" by Sports Warehouse, Inc. The delegate of the Registrar of Trade Marks allowed the opposition to Sports Warehouse, Inc's trade mark application.
The proceeding before Kenny J was an appeal from that decision.
The principal question raised by the appeal was whether s 41 of the Trade Marks Act 1995 (Cth) prevented registration of the trade mark "TENNIS WAREHOUSE".
Kenny J dismissed the appeal. He was not satisfied that, as at the lodgement date, the trade mark distinguished or will distinguish the designated services as being those of Sports Warehouse. Therefore, the mark "TENNIS WAREHOUSE" was taken not to be capable of distinguishing the designated services of Sports Warehouse from the services of other persons and should not be registered.
For further information, please contact:
John Mullins | Partner Andrew Nicholson | Partner
Mullins Lawyers Mullins Lawyers
t +61 7 3224 0210 t +61 7 3224 0261
f +61 7 3224 0333 f +61 7 3224 0333
jmullins@mullinslaw.com.au anicholson@mullinslaw.com.au
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