Trade mark claims in industrial disputes? Not Really Maintainable, Actually

You might be surprised to learn that an organisation with the word “Roads” in its name would find itself in dispute with the Maritime Union of Australia (MUA) (which is now a branch of the CFMMEU).  However, it’s a long road which has no turning, and as the National Roads and Motorists Association Ltd (NRMA) has turned to diversification, the NRMA has found itself as the owner of the My Fast Ferry (formally Manly Fast Ferry) business, through a wholly-owned subsidiary called Noorton Pty Ltd.

Noorton, in turn, appears to have found itself in an industrial dispute with the MUA over wages and conditions for its “on-water” staff.  That dispute has involved the MUA adopting the slogan, “don’t let wages sink to the bottom of Sydney Harbour”, together with the logo of a sinking ferry (which the MUA described in internal communications as “graphics that hack the NRMA logo”).  The NRMA logo, and the MUA’s “hack”, are below:

Now, the NRMA logo is a registered trade mark, so one way of getting the upper hand in the industrial dispute might be to sue the MUA for trade mark infringement, yes?  Well, that was the plan, but in the Federal Court, NRMA’s claim sank without a trace (and with costs).

The NRMA did succeed in establishing that the MUA’s “hack” was deceptively similar to NRMA’s registered trade mark (which is not surprising, given the fact that the MUA deliberately set out to copy the NRMA’s mark).  However, where the NRMA failed was in establishing that the MUA was using the “hack” as a trade mark – that is, as a sign which distinguished the MUA’s goods and services from the goods and services of other traders.  This is important, because a registered trade mark (like the NRMA’s mark) will only be infringed where a similar sign is used “as a trade mark”.

The NRMA argued that the MUA was in the business of providing services in the nature of industrial organising and campaigning to its members, so that the “hack” was being used as a trade mark in relation to those services.  However the Court said that it was “artificial” to regard the MUA’s campaign for better wages and conditions as being a service to its members in the course of trade.  Indeed, said the Court:

“The MUA is not a business; it does not have a trade”.

So if the use of the NRMA trade mark as part of the hack was not use “as a trade mark”, then what was it?  The Court found that the use of the NRMA trade mark had the function of identifying NRMA as being the owner of the My Fast Ferry business and thus, being the ultimate target of the MUA’s industrial campaign.  The position might have been different in the United States, where the concept of “trade mark dilution” (which can include “tarnishment”) can provide an alternative remedy to trade mark owners seeking to prevent other parties from using their marks.  However, Australian trade mark law does not generally give trade mark owners a right to restrain conduct merely because the conduct “tarnishes” the mark.

This case appears to be the first occasion on which trade mark law has been deployed against a trade union by an employer involved industrial disputation.  However, as the claim did not succeed, the case presents as an excellent example of what Geoffrey Robertson QC described (in his book “The Justice Game”) as “the first and second rules of creative lawyering”:

“The first rule of creative lawyering is that if something has not been done before, that means there is no precedent to stop you from trying to do for the first time. (The second rule is that there soon will be).”

The case emphasises that the right to use a trade mark is fundamentally an economic right, so that where a trade mark is used for a campaigning purpose (whether an industrial campaign, or for some other social or political activity) it may be that a strictly legal approach is not the most effective approach to take.  What is worse, sometimes resorting to litigation might do nothing more than adding additional oxygen to a fire which otherwise have received little (or merely localised) attention.  It follows that before you wade into litigation to protect your trade mark in cases such as these, it might be worth asking whether the hurt to the brand is worth “sue!”, or just “shush”.

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October 7
Employment Law Intellectual property law