Cork & Chroma is Queensland’s first paint and sip studio, with their flagship creative space launched in Brisbane in 2013. The business runs regular painting sessions for adults of all skill levels, where attendees are guided step-by-step by an artist to create their own masterpiece while enjoying BYO alcoholic (or non-alcoholic) beverages.
The paint and sip craze has become very popular and Cork & Chroma now have 5 studios on Australia’s east coast. After growing the business and gaining a huge following, founders Hillary & BJ Wall decided they needed to protect their brand and apply for trade mark registration.
Cork & Chroma filed applications for their 3 marks:
CORK & CHROMA
CORK & CHROMA (logo)
CORK & CHROMA PAINT AND SIP
The Opponent is a Sydney based operator who had set up a similar business under the name Cocktails & Canvas. In late 2016 they changed their name to Cork & Canvas.
The Opponent opposed all three of Cork’s marks, ultimately relying on the grounds that:
(a) Cork and Chroma’s trade marks did not distinguish their services – the marks are not distinctive. The Opponent failed on this ground, with the Hearing Officer stating that neither CORK nor CHROMA are descriptive of Cork’s services. These words were held to be allusive of the “paint and sip” services of Cork, but this does not exclude them from being qualified for registration as a trade mark.
(b) The Opponent’s mark CORK & CANVAS had such a strong reputation at the date of Cork & Chroma filing their marks, that confusion would likely arise in the marketplace as a result of Cork & Chroma using their marks.
The Hearing Officer found that the Opponent had filed no evidence to support that they had acquired a reputation in CORK & CANVAS at the relevant time.
Thus, Cork & Canvas were unsuccessful in their oppositions.
Essentially, Cork & Chroma started using their marks in 2013 and have been very successful in their industry. Cork & Canvas was not used until late 2016 so there was no way they could show significant reputation such as would cause confusion – as Cork & Chroma already had a strong reputation themselves prior to Cork & Canvas using their mark.
If Cork & Chroma had filed applications for their trade marks when they started business in 2013, they would have already had their registrations by the time Cork & Canvas started to be used. Cork & Chroma would have been able to enforce their trade mark registration and the matter would have been much simpler for them.
At the same time, Cork & Canvas should have carried out more research to get a better understanding of trade marks and to ensure they would not inadvertently infringe on someone else’s intellectual property rights.
Thankfully for a successful business such as Cork & Chroma, they had little trouble proving their reputation and significant amount of use in this instance. However, for other businesses the circumstances may be different and it may not prove as easy.
If you have a popular product or service, others may want to set up similar ventures. This is one of the reasons why early trade mark registration is often best. Not only do trade mark registrations deter competitors, but they also protect your brand and ensure you can be compensated if others choose to continue to operate in a way that impacts on or trades on your good will.
Also remember that it is best practice to keep evidence of use, including:
- copies of invoices, business cards, stationary, packaging and advertising material showing trade mark use in relation to as many goods and services as possible, in as many states of Australia as possible.
- Details of advertising and promotional costs relating to trade marks; and
- Indicate that a trade mark is registered by using the ® symbol wherever the trade mark appears.
If you do leave your trade mark application until later, or you are still determining exactly what your trade mark should be, then make sure that you read our recent article on inherent and acquired distinctiveness. The more you differentiate your brand from others in your industry, the easier it’ll be to protect.