Raise your glass for “Tallulah” ®
As the case below illustrates the combination of registered intellectual property rights, common law and trade practices law can be a very powerful means to prevent third parties benefiting from the efforts you have made to identify, develop and promote a successful new product. Mason Sier Turnbull actively works with our clients to strengthen and protect their rights in new products and/or brands both in Australia and overseas.
M.D.I International Pty Ltd v Trio Brothers Trading Pty Ltd and Ors
M.D.I International Pty Ltd (MDI) designs, manufactures, imports and distributes giftware and novelty products in Australia and overseas. In mid-2007, MDI perceived that a niche product might be developed in the “drinking glass novelty market for quality hand-blown and hand-decorated glassware”, and promptly developed such a range. The new products were given the name “Tallulah”. MDI subsequently obtained trade mark registration for a distinct, stylised from of the word “Tallulah” placed above an “arc and cross” graphic device. MDI also developed a unique, specialist packaging design incorporating the trade mark together with distinctive refinements to protect the glassware during transportation and display. The packaging was used to promote the new “Tallulah Range” to retailers at industry gift fairs etc. The range was launched in early 2008 and appears to have successfully penetrated the gift market.
In February 2010, MDI became aware that Trio Brothers Trading Pty Ltd (TBT) was supplying “strikingly similar” glassware to that of MDI. The supply was to sales outlets that fell within the same mix and scope of sales outlets which acquired the MDI product and allegedly used packaging that was the same/similar to that used by MDI, including the use of an “arc and cross” graphic device.
MDI was successful in obtaining an interlocutory injunction restraining TBT from displaying, selling or dealing with any glassware or packaging that had the same dimensions or appearance (including any “colourable imitation”) as that sold or offered for sale by MDI for its popular Tallulah Range. The injunction relied upon comparing the activities of TBT against a combination of passing off (common law), trade mark infringement (registered intellectual property right) and misleading and deceptive conduct (trade practices) principles.
Although limited to its facts, the decision highlights that, with an appropriate intellectual property strategy in place, it is possible to restrain third parties from obtaining benefit from the efforts you have made to identify, develop and promote a successful new product. Mason Sier Turnbull can assist you with planning, implementing and enforcing such a strategy for your new product.
Please contact on of our Intellectual Property lawyers for further information.
Author: Noelene Treloar