18/08/2008

Clair Jennifer had a childhood dream since the age of 7.  She was raised to believe that when a person left school they set their goals and went out and achieved them.  So she did.
She studied fashion at TAFE and gained experience in all facets of the fashion retail, manufacturing and textile industries.
 
At the age of 17, she operated market stalls seven days a week.  Rising at 7 am and travelling all over Sydney and outskirts in a clapped out van.  Sometimes setting up in the evening and sleeping under the tables.
 
At 19 armed with $2000, second hand shop fittings and determination she opened a store and founded the WOMBAT name in 1988.  Within a month she could not keep up with the demand.  Within a year she opened 3 additional stores.  Within a decade there were nearly 50 stores employing over 250 with annual turnover of $36 million.  She was named Australia’s Young Entrepreneur of the year in 2001.
 
The stores mainly resold other manufacturers labels but due to agreements with various shopping centres, she was prevented from selling the more popular brands.  She therefore realized another of her goals and conceived her own brand of clothing in 1994 which she named HARRY POTTER. She initially used the brand in respect of womens clothing, but intended to expand into menswear and childrens clothing as the brand would appeal to all.  Sales under the brand rose steadily to amount to over $7 million by 1998.
 
She however did not seek to register the brand as a trade mark until 1998.
 
Her motivation to seek registration was prompted by the publication of the books by J K Rowling.
 
However by then Time Warner Entertainment Company was seeking registration for trade marks associated with the books, the films and the spin off merchandising associated with the character HARRY POTTER.
 
Clair was able to file an application for registration of the name in respect of clothing prior to Time Warner, but this was not the end of the matter.
 
Clair’s application was accepted by the Australian Trade Marks Office and a period was then allowed for other parties to oppose the registration.  Opposition was quickly lodged by Time Warner.
 
Time Warner argued that Clair was not the true owner of the mark; that her use of the mark would cause deception and confusion in the market place and if all that failed, it could not be a registrable trade mark as it consisted of a common given name and a common surname and therefore could not be distinctive (Time Warner actually found four Australians with the surname POTTER and the given names Harry, Harold and Henry).
 
A hearing was held before the Registrar of Trade Marks. The Registrar directed that her trade mark be registered.
 
Time Warner appealed to the Federal Court of Australia.  They put forward the same arguments as well as arguing that if they were unsuccessful, Clair’s registration should be restricted to women’s clothing as this is what she actually sold.
 
They also argued that the evidence placed before the Registrar by Clair was not accurate as it implied that she used the mark throughout Australia whereas she really only did so in NSW, Qld, Vic and South Australia.  Therefore her evidence was inaccurate and should be excluded.
 
The Court upheld the Registrar of Trade Marks decision and allowed the trade mark to be registered.  The Court allowed the evidence to be admitted as well as evidence that Clair had always intended the brand to be used on menswear as well as for children.
 
What do we learn from this?
 

   1.
      Clair overlooked a basic principle in protecting her intellectual property from the date she created it.  This allowed others to be ignorant of any rights she may have had prompting them to proceed with their own plans.

   2.
      By the time she sought registration, there was a new and powerful body who wished to claim international ownership of the name.

   3.
      Although the Registrar and the Federal Court recognized Clair’s right to the trade mark there was considerable cost to her as well as a 5 year delay in obtaining registration of the trade mark.  Although costs were awarded against Time Warner, Claire would still be considerably out of pocket.

   4.
      If Clair had her registration in place when the Rowling books were published, she would have been in a strong position to negotiate license agreements for Time Warner to use the mark in respect of certain clothing.  This opportunity appears to have been lost completely.

   5.
      By not having the registration in place and being confronted by the power and money of Time Warner, Clair could easily have lost the whole thing by not having the money and ability to fight the matter.

   6.
      In all probability J K Rowling and/or Time Warner may have conducted preliminary searches to determine the availability of the name before adopting it.  Obviously, this would have revealed that it was available and having subsequently adopted it, they would have seen Clair as another trader trying to cash in on their reputation.  They would then have had no hesitation to oppose the registration with the funds available to them.

   7.
      Treat your intellectual property with the respect that it deserves.

 
 
Copyright © Peter Close 2008