TRADE MARKS

Chill-Out Pty Ltd is a producer of insulated drink carriers (coolers). In its promotional material it describes its product as a ‘Chill-Out esky'.
Nylex Pty Ltd is the owner of the registered trade mark ‘Esky' for coolers.

What action is available to Nylex Pty Ltd to prevent Chill-Out Pty Ltd from using the word ‘esky' and what defences, if any, are available to Chill-Out Pty Ltd?

Question

Alfonso produces a range of wine gums. It has added a new product called the ‘Dimple' to its range. The ‘Dimple' is an alcoholic Scotch whisky flavoured wine gum confectionery made in the shape of the famous Dimple ‘three pinch decanter' bottle.

In addition, the confectionery has the colour and flavour of Scotch whisky and has the name ‘Dimple' in raised letters on each wine gum.

(The product itself is sold from boxes that have Alfonso's name and details on them. )

The product is advertised on radio and television under the slogan ‘Dimple - when only the best will do'.

No indication that Alfonso is the maker of the product appears in the advertisement. The product has been a great success.

Dang & Sons is the exclusive licensee of ‘Dimple' Scotch whisky for Australia and the holders of the registered trade marks in class 33 for alcoholic beverages for the name ‘Dimple' and the shape of the Dimple bottle.

The Dimple Scotch whisky is also marketed under the slogan ‘When only the best will do'. Dang & Sons institute proceedings against Alfonso for infringement of their trade marks in the name Dimple and the shape of the bottle.

Advise Alfonso supporting your arguments with appropriate authorities.

Questions from: Clarke, B., Sweeney, B & Bender, M. (2011). Marketing and the Law. Lexus Nexus