Patent & Trade Mark

The reach of a famous mark

Date: 24 May 2012
Author: Joanne Martin
The decision of Twitter, Inc v HOL Holdings Pty Ltd (2011) ATMO 129 is an example of a highly motivated owner protecting its mark and is a lesson about the risks when trying to ride on the coat-tails of a famous mark.
HOL Holdings sought to register the following trade mark for real estate services:

Twitter, Inc opposed, relying on its reputation in the TWITTER mark and its registrations for the following in relation to telecommunications and related services:

The Hearing Officer found in favour of Twitter, Inc, concluding that
  • the trade marks TWITTER and TWITTER REAL ESTATE LOGO are substantially identical
  • when comparing the marks, the common element is the word TWITTER
  • the words REAL ESTATE in HOL Holding's trade mark are descriptive and, to a certain extent, can be discounted when comparing the respective marks
  • the services of Twitter, Inc are used by a broad cross-section of society 
  • a finding of likelihood of marketplace confusion does not require that the products of the parties be the same or similar
The court concluded that there was a risk of confusion in that a significant number of  consumers could have a reasonable doubt as to the existence of some connection between the two businesses.
Twitter, Inc also opposed the following mark for advertising services provided over the Internet and in line with the above decision this application was refused.
For further information about this subject, please contact Joanne Martin.

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