Tyrone Berger reports on attempts to register the mark "Pierre de Coubertin" (think Olympic Games).

With several attempts to trade mark the name of the founder of the modern Olympic Games, Pierre de Coubertin, Dutch-based Tempting Brands is on track to clash with the International Olympic Committee (IOC).

Going for Gold!

In April every year, the World Intellectual Property Organization (WIPO) and the IP community celebrate ‘World Intellectual Property Day. This year’s theme was ‘Reach for Gold: IP and Sports’. The Director-General of WIPO, Dr Francis Gurry, emphasised that “Intellectual property rights underlie and empower the financial model of all sporting events worldwide.” As any observant Kat will know there is no better example of this than the Olympic Games.

The Olympic Games remains one of the most well-known sporting events in the world, which alternate every two years with the Summer games set for Tokyo in 2020 and the Winter games in Beijing in 2022. In order to protect its brand and reputation, the IOC relies on the Nairobi Treaty, as well as national legislation (in Australia: Olympic Insignia Protection Act 1987), to protect its Olympic marks and insignia.

Furthermore, in the Olympic Charter, it specifies that:

The IOC may take all appropriate steps to obtain the legal protection for itself, on both a national and international basis, of the rights over the Olympic Games and over any Olympic property.

Olympic properties or symbols will generally include the Olympic ‘rings’, flags, its motto (‘Faster, Higher, Stronger’), anthems, and expressions such as ‘Games of the Olympiad’. Terms to be protected at Tokyo 2020 include:

Games of the XXXII Olympiad

Tokyo 2020 Paralympic Games

Tokyo 2020 Olympic Games

Tokyo 2020 Olympic and Paralympic Games

Tokyo 2020 Games

Tokyo 2020

A tale of two trade marks

In Tempting Brands Netherlands BV v Comite International Olympique (28 February 2019), the Intellectual Property Office of New Zealand (IPONZ) dismissed the IOC’s opposition to registration of the trade mark PIERRE DE COUBERTIN. Tempting Brands, a Dutch company (with the motto: ‘Turning trademarks into brands’), sought to register PIERRE DE COUBERTIN for clothing and assorted goods in several countries, including New Zealand (NZ) and Australia. The IOC opposed both registrations.

In the New Zealand case, the IOC failed to establish there was sufficient awareness of Pierre de Coubertin; in particular, the evidence of Pierre de Coubertin as a historical figure associated with the Olympic Games did not constitute use of the name as a trade mark.

A statutory declaration on behalf of the IOC, stated:

Given New Zealand’s involvement in the Olympic Movement for close to a century, the global nature of the Games, and the fact that New Zealand has such a strong sporting culture, it is likely that New Zealanders will be aware of Pierre de Coubertin and his inherent connection to the Olympics and the IOC.

However, with regard to the IOC’s evidence of its use of ‘Pierre de Coubertin’ online, the evidence did not refer to the IOC nor was any evidence presented regarding the extent to which New Zealanders had read any of the articles that mention Pierre de Coubertin as an historical figure associated with the Olympic Games. The Hearing Officer concluded,

I am not satisfied that the evidence adduced by the opponent establishes that there was a sufficient awareness in the New Zealand market of the IOC’s PIERRE DE COUBERTIN trade mark at the relevant date to meet the threshold requirement of reputation.

On 25 March 2019, the Australian Trade Marks Office (ATMO) handed down a decision in Comite International Olympique v Tempting Brands Netherlands BV. Here, the IOC successfully established that there is a connotation with the name Pierre de Coubertin and the Olympics, and therefore, use of the mark PIERRE DE COUBERTIN would be likely to deceive or cause confusion under the Trade Marks Act 1995. The Hearing Officer accepted submissions that Australians are aware of Pierre de Coubertin because he is honoured publicly, including at the two Olympic Games in Australia (Melbourne 1956, Sydney 2000), and concluded that –

there is a no doubt in my mind that there is a real tangible danger of deception or confusion arising out of the use of [Tempting Brand’s mark] in connection with [its] Goods.

On this occasion, the IOC filed evidence about the annual Pierre de Coubertin Award created by the Australian Olympic Committee (AOC) in 1992, with a total of 15,862 recipients of the awards throughout Australia by 2016.

In the Hearing Officer’s closing assessment –

Of particular relevance in this decision is the unusual nature of the name, Pierre de Coubertin, especially when used in Australia. If the modern Olympic Movement were begun by a person with what, in Australian terms, was a fairly nondescript, common name, such as John Smith, this ground of opposition might not have succeeded.

Tempting Brands has recently filed an appeal in Australia against the ATMO decision.

Picture by Roland Zumbühl and is licensed under the Creative Commons Attribution-Share Alike 3.0 Unported license.

Bruce's digital didgeridoo turned out to be quite a paw-full

Why is digital music more expensive in Australia? This question is currently being considered by the House of Representatives Standing Committee on Infrastructure and Communications. On 24 May 2012 the Committee resolved to inquire into IT price discrimination, following a request from the Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy. The often given example is that the Apple iTunes store in the United States sells most albums at between US$9.99 and US$12.99, whereas in Australia those same albums are sold for AU$16.99 or higher. In recent times, under the currency exchange rates, the value of the US and Australian dollars has almost been equal.

Eighty-one written submissions were received by the due date of 6 July 2012. The first public hearing was held in Sydney on 30 July 2012, with the following organisations were invited to make oral submissions: Australian Information Industry Association (AIIA), Australian Publishers Association (APA), Australian Performing Rights Association (APRA), the Australasian Mechanical Copyright Owners Society (AMCOS), Choice (consumer group), the Australian Retail Association (ARA) and the Communications Alliance.

Some of the more interesting comments were as follows:

The AIIA, represented by Suzanne Chambers, suggested the discrepancy could be due to the cost of doing business in Australia. She stated ‘where operating costs are higher, and the market is smaller, it would naturally follow that prices may need to be higher in order for the subsidiary of a multinational company to provide a reasonable return on investment’.

If you're working in the field of 'hit' music, having a name like Mallet is a great asset

Richard Mallet, Director of Revenue at APRA and AMCOS believed that it was ‘public knowledge that out of each sale of a single track download the DSPs [digital seller] will generally keep up to 30%, the record labels will receive between 60-70% and APRA-AMCOS receives 9%’. He further added that the ‘APRA-AMCOS's rate in Australia is similar to tariffs in operation in other territories. For example, in the UK and Europe it is 8%, in Canada it is 9% and in the USA it is US9.1c, which is a fixed rate irrespective of sale price’. When asked by the Chair for his view on what would be the reasons for price differentials between Australian and US markets, he responded that there were a range of reasons why the prices could be different, but he did not know why they are. However, he was adamant that the price difference was not caused by the APRA-AMCOS licence fee as this was the same or around about the same as it is in overseas territories.

Consumer group Choice, represented by Head of Campaigns Matthew Levey, provided details of research the organisation had conducted across a range of IT hardware and software products (including music downloads from iTunes, PC games, software, console games and computer hardware). That research identified an approximate 50% price difference between what Australian consumers and US consumers pay for more or less identical products. Compared to US consumers, Australians pay: approximately 52% more on iTunes for the equivalent top 50 songs; 88% more for Nintendo Wii console games for a selection of the 20 most recently released games; 34% more across a selection of 44 popular home and business software titles and 41% more for a selection of 12 Dell computers. To Mr Levey, the most likely cause of the price disparities in IT hardware and software products was international price discrimination—that is, the practice of international brand owners, suppliers and manufacturers setting the wholesale cost of their products for particular markets such as Australia. He called upon the government to investigate whether certain technological measures that sustained international price discrimination against Australian consumers were anti-competitive and should continue to be allowed. He further added that certain measures of this type are now to point of a kind of privatised tariff or privatised protectionism and that they had no place in the globalised market for these goods.

Russell Zimmerman, Executive Director of the Australian Retail Association, stated that it was ‘probably in the interests of all retailers to be able to supply consumers at close to or equivalent prices as their overseas competitors or equivalent prices as their overseas competitors’. In Mr Zimmerman’s view, much of what we had seen in Australia in pricing was due to the high value of the dollar. He suggested that in respect of downloads, that because there was no physical product there was ‘some prices that seem to be artificially set high because it is Australia’ and further speculated that perhaps suppliers felt ‘that there is a reason that Australians should or can pay more for those products’.

The IPKat recalls Europe being at the wrong end of music price differentials some time ago and still wonders why the European Commission, having been pointed in the right direction, never quite seemed to get to the bottom of the reason for it.   Merpel just wants to know why Australian wine costs so much more in England than it does in Australia ...

An apparently important decision regarding what is and is not patentable subject matter in Australia has come to the attention of the IPKat, courtesy of the Australian & New Zealand IP law blog from IP lawyers Philips Ormonde & Fitzpatrick. The decision (available in full here) concerns an invention relating to the new and exciting science of subtronics, which the IPKat was previously unfamiliar with. The claimed invention in Australian patent application 2003208113 by inventor Milton Edgar Anderson reads as follows:

1. The complete absence of any precedent or any assistance whatever from the scientific fraternity following the early disclosure of the existence of electrosubtronic fields that started with a letter to the CSIRO in Australia dated 23rd February 1999 has culminated in the discovery of the neutrino atom by splitting the electron thus conclusively confirming the existence of a nonmaterial of spiritual DNA through which God has conveyed the information to mankind that has enabled me to disclose new laws of electric induction that have been hidden from science for over 200 years due to a misinterpretation of the electrophorus invented by Volta in 1775 thus isolating the conceptual core of quantum theory in placing God as the principle arbitrator in the new science of subtronics that will guide mankind into the next millennium in establishing that God created the universe.

2. A practical application of the newly discovered laws of electric induction of claim 1 in providing the highly efficient automatic traction motor or ATM described in the Provisional Patent Specification.

3. Any new application of the new laws of electric induction claimed in claim 2.

4. Any improvement to an existing electromagnetic device or motor by employing the new laws of electric induction claimed in claims 1, 2 and 3.

5. Any new communication method derived from the new laws of electric induction of claim 1.

6. Any new computer or other device attributable to the disclosure of the neutrino atom and/or antimatter radiation.

One part of the specification illustrated the concept of subtronics through the use of an experimental set up (shown above right) including a vehicle spark coil, spaced brass rods, a plastic drinking straw and an oscilloscope, which was said to confirm the discovery of the neutrino atom and disprove the electron as being an indivisible unit of negative electricity.

The patent examiner had objected that the claims did not define any invention, and that the application did not pass the Australian patentability test of relating to "a manner of manufacture". The applicant was, after a total of ten examination reports, unable to move the examiner and the case then came to be decided by a Deputy Commissioner of Patents, who had little hesitation in agreeing with the examiner, adding:

"While expressed in an unconventional way, it appears that what is intended to be claimed is the discovery of “a new law of electric induction” or “the new science of subtronics” and, very broadly, the application of that “law”. I do not intend to make any judgement on the merit or validity of the applicant’s scientific theories however, from the specification, the applicant’s own submissions and my own knowledge of the field I would conclude that the applicant’s views on these matters are unlikely to be shared by many if any of the persons skilled in the relevant arts and particularly theoretical physicists or electrical engineers working in the field of motor design. It would also seem the case that in describing a new science or “law” the description falls far short of enabling those persons to understand the discovery said to be made or any application of it. Certainly the type of experiment referred to in the description or the submissions is not capable of altering that situation and similarly since the issue here is not one of utility I do not believe anything would be gained from attending the demonstration offered by the applicant.

There are limits to the subject matter for which a patent can be granted aside from the requirement that a claimed invention be novel and non-obvious. It must also be a manner of manufacture. This term derives from the Statute of Monopolies of 1623 and reflects a balance between those activities and developments to which society wishes to encourage by the grant of a patent and those to which granting patent rights is considered inappropriate. These notions have evolved over time however certain fields have always been excluded including expressions of human intellectual activity relating to literature, music and other of the fine arts. More relevantly to the current situation, discoveries of the laws of nature or science, scientific theories, ideas, mere schemes and plans and mathematical algorithms per se have also been regarded as not exhibiting the requirements of a manner of manufacture. This does not mean those activities are not important but simply do not reflect the fields of human endeavour for which a patent should be granted. Of course an application of a law or principle of science producing a particular practical and useful result is a different matter and is likely to fall within the scope of patentable subject matter."

The IPKat will leave any interested readers to figure out for themselves whether there was indeed anything patentable in Mr Anderson's application, but thinks that the judicious use of quotation marks in the decision seems to say as much about what the Delegate thought of the invention itself as the inventor's unconventional use of capitalisation in his application says about his state of mind. Merpel, however, just thinks that Australian patent examiners must have too much time on their hands.