17th June 2018 - Sam Gilbert

W3IP Law attended the IPSANZ conference in Sydney hosted by Gilbert +Tobin Lawyers, and presented by Clive Elliot QC. The conference provided an update on Australian and New Zealand IP law and recent developments. Clive addressed some new and exciting case law and areas of IP reform in both NZ and Australia. This article will cover a further examination of a recent trade mark case that was discussed at IPSANZ, with a focus on the use of Google Analytics as potential evidence.

Google Analytics in the Centrefold for Trade Mark evidence

The recent case of Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249 (‘Centrefold’) reveals how Google Analytics can provide important evidence for a trade mark claim.

The case deals with an application under s 41 of the Trade Marks Act 1995 (Cth) (the ‘Trade Marks Act’) to remove a competitor’s trade mark from the Register.

Background of the case

At issue is the use of the trade mark “Centrefold” in providing promotional and adult entertainment services. The case arose out of a claim from Centrefold Entertainment (‘Entertainment’ – the Respondent) alleging that the Applicant Metro Business (‘Metro’) was infringing their trade mark for “Centrefold”. However, Metro denied these allegations and instead claimed that Entertainment’s trade mark “Centrefold” is not capable of distinguishing Entertainment’s services from those of others, and as such the trade mark should be expunged from the Trade Marks Register.

The Court’s findings

The decision handed down by Rares J in the Federal Court to remove the Respondents trade mark from the Register was based on the finding that “Centerfold” was not capable of distinguishing Entertainment’s services from those of others. Particularly, Rares J reasoned that the word “Centrefold” is not “allusive or metaphorical” of the services supplied by Entertainment:

I am of opinion that the word “centrefold” is not allusive or metaphorical of the services supplied by Entertainment: see Accor 345 ALR at 253 [236(9)]. The word is not inherently adapted to distinguish any services that Entertainment provides from the services that others, such as the Metro parties, Ms Scott or Ms Jones, provide in the adult entertainment services industry. Accordingly, the word “centrefold” falls within s 41(3)(a).

This finding is contrary to the submission put forward by Entertainment that the use of the word “Centrefold” was a “covert and skilful allusion to its services, and not descriptive of them”. Indeed, Rares J found that the use of the word “Centrefold” was used by Entertainment to describe its services. This was supported by the fact that Entertainment had always used the word in a composite form rather than by itself, and not in connection with the supply of its services so as to be able to conclude that “Centrefold” had developed a secondary or special meaning in relation to Entertainment’s services. In that sense, Entertainment had not used the word “Centrefold” as a trade mark. Rares J observed that:

Moreover, I am satisfied that, before March 2014, Entertainment did not use the word “centrefold” as a trade mark to any extent or as a brand or distinguishing feature of any of the services it offered, so as to distinguish it, or the services it offered, from those that Centrefold Strippers offered and provided since the latter had commenced trading in June 2013…

“Centrefold” is an ordinary English word that is apt to describe the kinds, qualities and characteristics of performers, models and others, as persons who appear, or have appeared or are prepared to appear, nude or scantily clad before strangers and in pages of magazines. Any supplier of adult entertainment services of the kind comprised in the designated services, without improper motive, might desire to use the word “centrefold” to describe that supplier’s services.

The use of Google Analytics

This case highlights the potential for Google Analytics to be a useful source of evidence in trade mark proceedings. The Court considered evidence obtained from Google Analytics which assisted Rares J in determining whether Entertainment had used the word “Centrefold” through Google AdWords or otherwise to distinguish Entertainment’s services online. Further, it was revealed that only 0.39% of 1 million users that searched for the term “Centrefold” either alone in combination with other words visited the website operated by Metro, and only 12 of those visitors had used the search terms “Centrefold Entertainment”. This evidence from Google Analytics went to demonstrating that there was minimal confusion experienced by online users between the two businesses.

Concluding Remarks

The case of Centrefold marks a signal from the Courts as to the admissibility and usefulness of Google Analytics as evidence. The use of this type of evidence in establishing trade mark use (or lack thereof) will surely be witnessed again soon.

Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney

For any more information on how to protect your brand, or to make an inquiry about a trade mark, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.

 
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.