When the same slogan is used by different businesses

The Supreme Court has struck out a claim made by Ms Annika Karlsson in which she alleged that Griffith University had breached her trademark registration of the slogan “Know more. Do more.” The Court’s decision can be read here.

Registering the trademark – by both businesses

Griffith University first applied for registration of the slogan “Know more. Do more.” as a trademark back in 2013. Registration was granted by IP Australia in 2015. Griffith University’s trademark appears here.

In the meantime, Ms Karlsson applied for registration of the same slogan in 2014, to be used in her business of providing immigration and education services for migrants. Ms Karlsson’s trademark appears here.

Various correspondence then went between Ms Karlsson and IP Australia in relation to the application, including an “adverse report”. Various extensions of time were subsequently granted to her.

In August 2018, Ms Karlsson’s lawyers wrote to Griffith University and requested a letter of consent and threatened that if Griffith University did not grant the requested letter, Ms Karlsson would file a “non-use application” (pursuant to section 93 of the Trade Marks Act 1995 (Cth)). It was noted that although both marks were in class 41 (educational services), there would be neither conflict nor confusion between them because of the different context in which the trademarks appeared.

Griffith University subsequently gave Ms Karlsson the requested letter of consent, allowing Ms Karlsson to proceed with registration of her trademark. Griffith University also took steps to deregister its own trademark because it was not using it as a result of rebranding. It did point out to Ms Karlsson, however, that the slogan would still be present on its historical records and past references still appearing on the internet.

Ms Karlsson’s trademark was registered on 31 October 2018, following Griffith University's trademark cancellation.

Claim for damages

In April 2019, Ms Karlsson claimed that Griffith University was still using its trademark, in infringement of her trademark registration, and claimed damages of $500,000 – this was subsequently increased to $2 million. Griffith University responded by referring to the history between the parties, following which Ms Karlsson commenced proceedings in the Supreme Court.

Trade Marks Act 1995 (Cth)

The following sections of the Trade Marks Act 1995 (Cth) were referred to in the matter:

• Section 20 – the owner of a registered trademark has the exclusive rights to use the trademark and authorise another person to use the trademark.
• Section 20(2) – the owner of a registered trademark has the right to obtain relief if the trademark has been infringed.
• Section 21 – a registered trademark is personal property.
• Section 23 – the owner of a registered trademark that is the same or similar to another trademark registered by another person does not have the right to prevent the other owner from using the trademark.
• Section 120 – infringement of a registered trademark occurs if another person uses a sign that is substantially identical with, or deceptively similar to, the registered trademark.
• Section 122 – circumstances in which a registered trademark will not be infringed (e.g. use in good faith)

The response

Griffith University argued that it couldn’t have infringed a trademark when it was the registered trademark holder and accordingly was entitled to use it. It submitted that Ms Karlsson’s claim disclosed no reasonable cause of action. It referred to the authority of Shanahan’s Australian Law of Trade Marks and Passing Off (2016):

“On expungement of the registration, there will be no liability for past [use] of the expunged trade mark because expungement is not retrospective … but an action for infringement would lie thereafter at the suit of the remaining registered owner.”

The Court agreed, stating:

“[The claim]’s form is so embarrassing that [Griffith University] should not be required to plead to it.  I am also satisfied … that the [claim] discloses no reasonable cause of action.”

The Court struck out Ms Karlsson’s claim, and ordered her to serve on Griffith University an amended Statement of Claim by 22 October 2019, to which Griffith University is required to either consent or object to. If Griffith University objects to the amended claim, then Ms Karlsson will be required to seek leave from the Court before filing it.

Ms Karlsson was ordered to pay Griffith University’s costs for the application.

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As anticipated by the parties in last year’s communications, it is possible for parties seeking registration of a same or similar trademark to each other, within the same class of goods or services, to consent to the “coexistence” of the trademarks, if the circumstances are such with the parties operating within different markets, although within the same class of goods or services for the purpose of trademark registration.