13 February 2010

Public Recognition Evidence for Lack of Distinctiveness

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It may be possible to defend an infringement action if you can show that a mark has lost the capacity to distinguish goods or services in respect of which it has been registered. In Mantra Group Pty Ltd v Tailly Pty Ltd [2010] FCA 66, an affidavit of a witness, Dennis Porter included the following paragraph: "In my opinion, the name, Circle On Cavill has since become common knowledge recognised as a location. As a central location within Surfers Paradise the area is regarded as a meeting place, a destination, to go to, or to go from. And therefore “Circle On Cavill” provides a pinpoint descriptor location address".


Mantra objected to the admission into evidence of that paragraph. It held that Porter was not qualified to make that statement and was trying to give factual evidence in breach of our evidence legislation. Tailly responded by saying that Porter was a long time resident and had much experience as a marketing and advertising consultant on the Gold Coast (the municipality of the location in question).

Reeves J. explained that before a person’s opinion can be admitted as evidence, it must meet a number of criteria. Those were expressed by Lindgren J in Harrington-Smith and Others on behalf of the Wongatha People v State of Western Australia and Others (No 2)[2003] FCA 893(2003) 130 FCR 424 at [20], as follows:

  • The opinion must be relevant (including that the field of knowledge is one in which expert opinion can properly be called).
  • The person put forward as an expert must possess specialised knowledge in that field.
  • The specialised knowledge must be based on the person’s training, study or experience.
  • The particular opinion tendered must be based on the specialised knowledge.
  • The expert’s evidence must clearly expose the reasoning leading to the opinion arrived at and distinguish between the assumed facts on which an opinion is based and the opinion itself.

Porter failed to explain his reasoning. It could not be said whether his opinion was based on his specialised reasoning. Porter also failed to define "common general knowledge". Furthermore, Reeves stated that: "I do not consider long-term residency of an area the size of the Gold Coast or South East Queensland equips a person to express an opinion about the common knowledge of the population of that area. Even if Mr Porter was only purporting to express an opinion about the common knowledge of persons involved in the advertising and marketing industries on the Gold Coast, I do not consider his experience, extensive as it may be, equips him to express such an opinion."

So it would appear that some form of survey evidence would have been necessary to satisfy the court. Or perhaps the evidence of a number of witnesses would have sufficed. But this case does emphasise the need to be careful when preparing affidavits and particularly to keep an eye on probative requirements.

It will be interesting to see how this ends, especially since I like to visit "Circle on Cavill" from time to time.

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