VGSO Seminar Series April Government Branding. Sam Funnell Principal Solicitor Commercial & Property

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1 VGSO Seminar Series April 2008 Government Branding Sam Funnell Principal Solicitor Commercial & Property

2 Table of Contents Page 2 Introduction...3 Preventative Measures...4 Trade Marks... 4 Domain Names... 6 Business Names... 7 Curative Measures...7 Trade Practices Legislation... 7 Domain Name Disputes... 8 Uniform Domain Name Resolution Policy (UDRP)... 8 Informal Complaint... 9 Passing Off Action... 9 Recommendation...9 (i) Pre-Search... 9 (ii) Early Registration...10 (iii) Law Reform...10

3 Government Branding Introduction In the past, when someone received a letter or a document with the Victorian Crest on it, they knew that it was from the Victorian Government. The Victorian Crest is used by the Victorian Government to authenticate documents. Page 3 Victorian Crest This monopoly on the use of the Victorian Crest is secured mainly by virtue of section 3 of the Unauthorised Documents Act 1958 (Vic) 1, which reads as follows: Every person who directly or indirectly without the previous written authority (proof whereof shall lie upon the person accused) of the Queen, or of any member of the Royal Family, or of any Government Department in the United Kingdom of Great Britain and Northern Ireland, or of the Governor-General or Governor or other the person administering the Government of any part of the Queen's Dominions (exclusive of the United Kingdom), or of any Government Department in any such part of the Queen's Dominions, or without the authority of any Act of Parliament or Ordinance in force in any part of the Queen's Dominions inclusive of the United Kingdom (a) (b) prints publishes or distributes or sends or delivers to or serves on any person; or causes to be printed published or distributed or sent or delivered to or served on any person any written or printed matter whatsoever in or upon which the Royal Arms or the Arms of any part of the Queen's Dominions, or Arms so nearly resembling the Royal Arms or the Arms of any part of the Queen's Dominions as to be likely to deceive, appear in such a manner as to be likely to lead other persons to believe that permission has been duly given by or under such authority as aforesaid to use such Arms in or upon such written or printed matter shall be liable to a penalty not exceeding 10 penalty units. In 1910, King George V granted a coat of arms to the State of Victoria. In 1973, certain additions including grassy mound compartment and modernisation of the gowns worn by two lady Supporters were made to the arms by way of a Royal Warrant was issued by Queen Elizabeth II. 1 Depending on the circumstances the offences of forgery and false documents may also occur.

4 In more recent times, the Victoria Government commenced using some more contemporary branding, such as the State Government of Victoria Slogan, namely the Victoria The Place To Be, on communication and promotional materials to signify that the communication comes from the State Government of Victoria. Page 4 State Government of Victoria Slogan However, this slogan does not receive any protection under the Unauthorised Documents Act. Furthermore, increasingly over recent years, the Victorian Government departments have been creating brands for the conduct of their activities which are outside of the traditional government brands. These new brands also do not receive any protection under the Unauthorised Documents Act. Accordingly, when a department is creating such brands, consideration should be given to seek other avenues of protection. The available measure may be grouped as preventative or curative measures. Preventative Measures The preventative measures available to a department revolve around three registration regimes: Trade Marks The Trade Marks Act 1995 (Cth) establishes the trade mark registration system. Under section 5 of the Trade Marks Act, a trade mark is defined as a sign, that is used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services provided by someone else. A sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packing, shape, colour, sound or scent or a combination of any of those things. 2 2 Section 6 of ibid.

5 Page 5 A few examples of the trade mark owned by the Victorian Government departments and statutory authorities are: Tourism Victoria - You ll love every piece of Victoria The Metropolitan Fire Brigade Victoria - MFB Protecting Our Community A trademark can be registered by submitting an application to IP Australia (a Commonwealth Government agency responsible for administering trade marks, patents, designs and Plant Breeder s Rights). There is no need for an applicant to establish any reputation for registration. Once the application is lodged, IP Australia must accept the registration unless the grounds for rejecting application set out in part 4, Division 2 of the Trade Marks Act are met. Those grounds for rejection are where the trademark in question: is not able to be represented graphically; is not capable of distinguishing the applicant s goods or services; is scandalous or contrary to law; is likely to deceive or cause confusion; or is identical to any prior registered trademark, in certain circumstances. The registration gives the owner an exclusive right to use the sign as a trademark with respect to the goods or services for which it is registered. That is, once it is registered, the owner is granted a monopoly right on the use of the trademark within the scope for 10 years. A registration can be extended an unlimited number of times as long as the renewal fees are paid every ten years. Also, a registered trademark can be assigned and licensed to third parties. The only disadvantage of trademark registration is that there may be some potential to be drawn into administrative and judicial proceedings concerning the validity of IP Australia s acceptance and registration of the department s application. These proceedings may be costly and time consuming. Under the Trade Marks Act, anyone can file to IP Australia an opposition against 3 : 3 In trade mark terms, 'opposition' is a formal objection to an action.

6 Page 6 an application to register a trade mark that has been advertised accepted (IP Australia advertises a trade marks application in their Official Journal to give other people an opportunity to oppose and the opposition needs to be made within 3 months from the advertisement) (section 52); an application to remove a trade mark from the Register of Trade Marks (section 96); and an application for an extension of time (section 224). Domain Names A domain name is a textual address for allocation on the internet, ie, an internet address. Some of examples for the domain names used by the Victorian Government departments and agencies are: for Business Victoria - an online resource site of the Department of Innovation, Industry and Regional Development, designed to help people to start and run their business. - a web site sponsored by the Department of Justice, maintained by the Office of the Emergency Services Commissioner, which helps the public to access existing safety and emergency information. All domain names in Australia which end with.au are managed by the Australian Domain Name Administrator (auda). In addition, government websites in Australia have a second level domain category ( gov.au ) which is available for use by federal, state and local government bodies only. Applications to register a domain name within.gov.au are managed by the Australian Government Information Management Office (AGIMO), a business group within the Commonwealth Department of Finance and Deregulation. Domain names are allocated on a first come first serviced basis. There are two domain name practices, which take advantage of this first come first served approach: cybersquatting or domain name trafficking which involves anticipating that a domain name is likely to be wanted by a particular person, organisation or business for ease of reference by clients or user, then getting in first to register that name. The name can then be offered for sale to the business that wants it; typosquatting - which is a form of cybersquatting relying on typographical errors made by Internet users when inputting a website address into a web browser. When a user accidentally enters an incorrect website address, they are led to an alternative website owned by a cybersquatter. According, a government department can protect itself from cybersquatting and other predatory internet practices by registering all available domains names corresponding to the brand prior to the launch of the brand.

7 Page 7 Business Names The registration of a business name is normally not available to government departments. A business name is a name under which a business operates. The Business Names Act 1962 (Vic) requires registration of business names used by sole traders, partnership and companies if the business name is different from the full name (or initial and last names) of the owners without other addition. For instance, if John Citizen trades under John Citizen or J. Citizen, he can register it as his business name only if he wants to. However, he must register his business name if he trades as John Citizen Builder or J. Citizen Gardening Services. The registration is automatically acceptable unless the chosen name is more or less identical to one that has already been registered or to a company name. However, the purpose of keeping the business name registration is to enable members of the public to have access to the contact details of the business and the persons responsible for the business operating under the business name. 4 Hence, it is only incidental that the registration protects the owner of the name by refusing to grant registration to deceptively similar names. Further, registration confers no propriety right as such to use the name. Curative Measures If a third party uses a government brand without authorisation and the government department has the relevant trade mark registration then an action for infringement of trade mark will successfully assert the rights of the department. In the circumstances where the department does not have the relevant trade mark registration or if a third party have registered or are using the department s name or mark in their domain name, then the department may seek to rely on the following actions: Trade Practices Legislation Section 52 of the Trade Practices Act 1974 (Cth) provides that a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. The similar prohibition is imposed under the fair trading legislation of the States & Territories. For instance, section 11 of the Fair Trading Act 1985 (Vic) provides that a person must not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the characteristics, the suitability for their purpose or the quantity of any services. Accordingly, the government department may seek for an injunction to restrain the third party from engaging in such conduct and seek damages against him or her under these legislation. However, an action under the trade practices and fair trading legislation are difficult to prove as the government department must show that it has a distinctive reputation and that the relevant public have been deceived by the third party s conduct. Further, it must be established that the 4 Section 6(2) of the Business Names Act 1962 (Vic)

8 Page 8 relevant conduct of the third party occurred in trade or commerce. proceedings are very costly and time consuming. Furthermore, these Domain Name Disputes Uniform Domain Name Resolution Policy (UDRP) If an internet predator registers a domain name corresponding to your brand then the department may file a complaint under the Uniform Domain Name Resolution Policy (UDRP) process developed by the Internet Corporation for Assigned Names and Numbers (ICANN). In order for a complainant to be successful the following three elements must be proven by the complainant: 5 the domain name is identical or confusingly similar to a trademark or services mark in which the complainant has rights; the domain name holder has no rights or legitimate interests in relation to the domain name; and the domain name has been registered and is being used in bad faith. One of the recent examples of a complaint under UDRP involves Metrolink Victoria Pty Ltd trading as Yarra Trams. Yarra Trams operates trams in Melbourne and the yarratrams.com.au website. However, the domain name, yarratrams.com was registered by an individual through a US registrar. The site at yarratrams.com contain indecent materials and hyperlinks. Yarra Trams filed a UDRP complaint with WIPO and rejected the individual s offer to sell the domain name to Yarra Trams. The WIPO panel ordered the domain name yarratrams.com to be transferred to Yarra Trams after finding that: the domain name yarratrams.com was identical to the Yarra Trams trade mark in which Yarra Trams had rights; the individual had no right or legitimate interests in the domain name yarratrams.com.au; and the domain name yarratrams.com was registered and was being used in bad faith. However, in the context of complaints of governments, the third element is difficult to establish. The UDRP lists four circumstances which can be considered as evidence that the domain name has been registered and used in bad faith. 6 These circumstances (which is not a exhaustive list) are as follows: 5 Paragraph 4(a) of the UDRP. 6 Paragraph 4(d) ibid.

9 Page 9 evidence which indicates that the registrant has registered the domain name primarily for selling, renting or transferring the domain name to the complainant who is the original owner of the trademark or service mark, or to a competitor; evidence which indicates that the registrant has registered the domain name in order to prevent the complainant from registering their trademark / service mark in a corresponding domain name; evidence which indicates that the registrant has registered the domain name primarily for the purposes of disrupting the business of a competitor; and evidence which indicates that the registrant of the domain name intended to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation or endorsement of the registrant s website or location. The difficulty for government is that bad faith is framed for commercial entities. Worldwide about half of the UDRP complaints by government entities fail due to a lack of demonstrated bad faith. Informal Complaint An informal complaint to the registrar may also achieve the desired deregistration of the cybersquatter. Passing Off Action The tort of passing off arises when a trader misrepresents his or her own goods or services by letting customers think they are the goods or services of another trader or having some association or connection with another trader. However, activities and functions of a government department may not fall within the realm of a trader therefore it might be difficult for a department to rely on an action in passing off. Recommendation (i) Pre-Search Before launching a new brand, it is important for a government department to conduct a series of detailed searches around the name or names they may be seeking to use. These searches should cover the Trade Marks Register, the register of relevant domain name authorities, the Australian Business Register (for company names and business names) and telephone directories. In addition, general inquiries through a search engine (eg, Google, yahoo etc) should be made to determine who may be using the name or similar to that name on the internet and in what context. Further, these searches may prevent the government department from finding itself the subject of legal action if the trade mark or domain name it proposes to use is already registered or in use by someone else.

10 (ii) Early Registration As discussed above, early registration as a trade mark and/or domain name allows a government department to be entitled to protections which are much broader and far easier to be enforced. Page 10 (iii) Law Reform The Unauthorised Documents Act 1958 (Vic) is outmoded and should be reformed. For instance, it might be necessary to introduce new legislation that sets out the circumstances in which permission to use the State arms, State symbols or brands will be granted. For more information For further information or legal advice on any issues raised in this paper contact: Sam Funnell on or Principal Solicitor The VGSO is the primary source of legal services to the Victorian state government and its statutory authorities, providing strategic advice and practical legal solutions. This topic was the subject of the monthly VGSO lunchtime seminar held on 23 rd April These notes are published with the permission of the presenter, Sam Funnell. The notes are not be regarded as legal advice.