Waltzing Matilda – a trademark?

The media last year picked up on the fact that a Victorian company had applied to IP Australia for a trademark over the phrase “Waltzing Matilda” for goods and services relating to online material, videos, CDs etc.  It was reported that as a result, the town of Winton, which claims it was the birthplace of the song Waltzing Matilda, would be prevented from using the phrase on its promotional and merchandise materials – suggesting instead that it would need to pay for the privilege.

The Mayor is reported as saying:

“We would like not to see it happen, because Winton is the home of Waltzing Matilda and also, Winton is the town that has promoted the song and Banjo Paterson since the 50s, and we’d be sad to see someone is doing this.”

“We’d like to be able to do what we wish with Waltzing Matilda. It is an important part of Queensland and Australia’s history.”

The term “Waltzing Matilda” was actually first trademarked in 1968, by the same Victorian company (WM Productions Pty Ltd) in relation to beverage products and the general film industry.  So over the years, the Victorian company has had to renew the trade mark registration every 10 years, to prevent anyone else applying for its registration.  Nevertheless, over the past 47 years since initial registration, there have been a number of oppositions lodged by other companies interested in securing the rights over the iconic term, usually by claiming that the original trademark holder has not “used” the trademark, therefore the registration should lapse.

Opponents of the renewed trademark have included, amongst others, the Winton Shire Council, the Waltzing Matilda Centre Limited, and Jolly Swagmen Pty Ltd.

Gavel

What is non-use?

As the owner of a trademark, you are required to use the trademark in the course of trade.  Otherwise, the trademark registration may be removed because of “non-use”.  Anyone can lodge an application with IP Australia for a trademark to be removed because of non-use – being either:

(a) the fact that the registered owner lodged the original registration with no intention of using the trademark (section 92(4)(a)); or

(b) the fact that the registered trademark has not been used for the 3 years prior to the application being lodged (see section 92 of the Trade Marks Act 1995).

Anyone who opposes the application can lodge evidence as to use of the trademark, warranting its continued registration.

One application leads to another, and another …

Interestingly, on the same day as the above media report appeared, an individual (with a contact address in Winton, Queensland) also applied for registration of the trademark “Waltzing Matilda” in so far as it relates to “paper postcards, picture postcards and postcards” (all within class 16).

And 5 days after the above media report appeared, another individual applied for registration of the trademark “Waltzin’ Matilda” for the same classes of goods and services as WM Productions Pty Ltd has applied for (being classes 16 and 41).

“Show cause”

As it turns out, the Victorian company’s application for the registration of “Waltzing Matilda” in the broader range of products was rejected, and the applicant now has until December 2016 to argue their case.

Watch this space …

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If you have a specific term or phrase that you would like to prevent your competitors from using, you should consider registering a trademark – contact Melissa Lammers on 95263444 or mlammers@shirelegal.com.au to discuss how Shire Legal can help you with the trademark registration process.

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What does it mean to be proactive, rather than reactive?

We have all heard of the saying – “be proactive, rather than reactive” – but what does that actually mean, particularly when you are talking in the context of a legal firm? It means taking steps sooner rather than later to avoid issues arising, rather than only taking steps once the issue has arisen – which usually takes more time, money and worry. In the legal context, this can best be demonstrated by looking at some of the issues we have dealt with in recent years, issues which could have been avoided if the client had their legal affairs in order at the start:

Situation 1OTP An employer was in dispute with an employee as to what the employee’s entitlements were.  The employee claimed that ….  How could this have been avoided?  By having a customised employment agreement drawn up and signed off by both parties at the time that the employee commenced. Commercial

Situation 2 After operating her business successfully for a period of years, a client allowed her sister to start working in the business as well, and after a short time, transferred ownership of the business name to her sister, and also allowed her to operate the bank account.  The client had a falling out with her sister, following which her sister proceeded to operate her own business under the same trading name, took some of the business’ core equipment, and continued to draw monies out of the bank account.  Neither the client nor the sister knew how to resolve the dispute between them.  How could this have been avoided?  By having a partnership agreement drawn up between them, they could set out the circumstances within which the partnership would come to an end, and what steps would need to be taken to those circumstances.

Situation 3ACCC A client was challenged by the ACCC about the labelling on its product.  How could this have been avoided?  By having a specialist lawyer review and approve the proposed labelling before it went into production.  The review would ensure compliance with labelling requirements regarding:

CommercialSituation 4 At the end of the fixed term of the franchise agreement, the franchisee was unsure as to whether or not they should renew the franchise agreement for a further term.  In the meantime, the franchisee continued to operate the franchised business, giving the franchisor the impression that the franchise had been renewed (although documents had not been signed).  When the franchisee decided to exit the franchise, the franchisor attempted to bind the franchisee to the terms of the franchise agreement, and sought damages.  How could this have been avoided? By approaching a specialist franchise lawyer at the end of the fixed period, the franchisee could have been guided as to what to do and not to do, to preserve their rights regarding the agreement, and to avoid creating the impression that the franchise agreement was continuing.

Situation 5 A client entered into negotiations with a prospective purchaser of its business, and subsequently signed off on a 1 page document by which the client agreed to sell the business to the purchaser for a fixed price.  This created a number of issues – the real asset to be sold was not the business as such, but the client’s shares in a Pty Ltd company which owned the business.  The lease was in the company’s name, and any change in control of the company lessee required the landlord’s approval.  Some of the business assets were under lease, and not owned by the company as such.  Although the client and the purchaser had negotiated to settle the deal within a matter of days, the matter eventually settled after a number of months because of the numerous issues to be dealt with.  How could this have been avoided?  By contacting lawyers at first instance, the 1 page document could have been drafted with the correct details and with the correct procedures, ensuring that the deal was negotiated and settled within a reasonable time frame and with correct documentation in place.

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Statements like “I don’t need a lawyer” or “I haven’t got the time/energy/money to get a lawyer involved in this” could end up costing you more time/energy/money in the long run.

Please contact the team at Shire Legal to discuss your situation and see how we can help you to minimise the time/energy/money spent in resolving any issues you may have.

Why do I need a lawyer when I start my business?

Starting a new business is a big event in anyone’s life. You’ve probably had the idea for the business in the back of your mind for some time, or perhaps someone has approached you with a business idea which they would like to develop with you. So you want to make sure it is a success. Part of this success is due, in part, to ensuring that you dot all the i’s and cross all the t’s when starting out. Being diligent at the start, and managing the potential risks that the business may or may not incur, is of significant importance. Because dealing with the risks at the start is a lot easier than dealing with the problems that come down the track if you don’t properly plan.

Anticipate the difficult by managing the easy

This is where advice from a lawyer can be so crucial to a business’ success. There are a number of legal issues that you should give due consideration to before you start trading, such as:

  • what business structure is most appropriate?  Should you operate as a sole trader, in a partnership, or as a registered corporation?
  • are you allowed to use the business name you wish to use?  Does another existing business already use the same or a similar business name?  Has that other name been registered?  Is there a trademark similar to your chosen business name?
  • what premises will the business operate from?  Will you be required to sign a retail or commercial lease?  How long will you have the right to occupy those premises?
  • what will the terms and conditions for your dealings with clients/customers be?  what rights will you have against them to recover unpaid debts?
  • are there any intellectual property issues that you need to consider, such as registering your logo as a trademark?
  • what laws will you need to comply with in your chosen business?  Workplace health and safety?  Trade practices?  Industrial relations?
  • what rights and obligations do you want to establish in terms of your partnership or directors/shareholders?

We always recommend that clients wishing to start up a new business speak to us about the various legal issues involved (part of our “Legal Health Check” service), and discuss the steps that can be taken to adequately manage the risks with each of the issues.

 

Was the kiss in the contract?

8808432-lawYou may recall reading earlier this year about the wedding photographer who was sued by the bride and groom because, amongst other things, he missed photographing the all important first kiss.

Whilst the photographer’s fee for the day was $2,700, the disappointed bride and groom refused to pay the remaining $390 of his fee, and instead sued him for $6,400 for failing to capture the kiss, the ribbon cutting and the certificate signing. The photographer counter-sued (that is, filed his own claim against the bride and groom) for $6,000, which included the $390 balance outstanding for his fee, court fees and $63 for paying for a meal out of his own pocket.

The Victorian Civil and Administrative Tribunal considered the importance of the first kiss photo, agreed that a wedding kiss is difficult to capture, but nevertheless ordered the photographer to pay the newlyweds $710 for failing to meet the value of the $2,700 package, and ordered the newlyweds to pay for the photographer’s $63 meal.

The lesson to be learnt is this – if there is an expectation that the other party to a transaction is going to perform a particular service for you, make sure you spell out in detail exactly what level of service will be provided. And ideally, in writing. Hiring a photographer and ensuring that you instruct the photographer to capture all of the important photos comes down to discussing everything in detail, so make a list of the photos that you definitely would like (such as first kiss, cake cutting etc) and give it to the photographer so that the photographer can ensure that they are in the right place at the right time, taking the photo when it needs to be taken.

The list should form part of a written legal contract between you and the photographer, outlining the services to be provided on the day, and all of the other rights and obligations of each party. The contract then becomes an enforceable document should things go ary.

There are a number of other legal issues that should be discussed with the photographer as well, such as who owns the copyright of the photos – this issue came arose in a case earlier this year when Lowes clothing used a photo loaded onto the photo sharing website flickr.com, without first obtaining the photographer’s permission. The photographer sued Lowes for breach of copyright.