By Chris Round

In June IP Australia handed down a decision in favour of the pop star Madonna who faced an applicant seeking to register the trademark HARD CANDY which was the name of Madonna’s gym business. In Hard Candy Fitness, LLC v Hard Candy (Australia) Pty Ltd [2015] ATMO 61, IP Australia had no difficulty in finding that Hard Candy (Australia) Pty Ltd (AU Hard Candy) was acting in bad faith when it filed a trademark application for HARD CANDY in the week Madonna launched her new gym business under that name.

IP Australia found that the opponent (US Hard Candy) is a global luxury fitness brand and owner of a group of fitness, health and lifestyle centres around the world operating under the name HARD CANDY FITNESS. US Hard Candy was founded by American musician, entertainer, actress, author, cultural icon and entrepreneur Madonna in partnership with Madonna’s agent, Guy Oseary, and Mark Mastrov of New Evolution Ventures, LLC.

On 25 October 2010, US Hard Candy stated that it was intending to launch a gym business named after Madonna’s 11th studio album Hard Candy. Six-days later the opposed mark was filed. AU Hard Candy was owned and connected to a number of companies owned ultimately by Antonio Dattilo. Mr Dattilo was also the owner of companies, trusts, domain names, Twitter handles and other social media accounts that all had an  apparent connection to Madonna. None of them were found to be related to Madonna in any way.

In 2006 the Australian Trade Marks Act was modified to include a ground of opposition based on bad faith. The section simply read “The registration of a trademark may be opposed on the ground that the application was made in bad faith.” Examples that were given of bad faith applications included:

  1. A person who monitors new property developments; registers the name of the new property development as a trademark for a number of services; and then threatens the property developer with trademark infringement unless they licence or buy the trademark;
  2. A pattern of registering trademarks that are deliberate misspellings of other registered trademarks; and
  3. Business people who identify a trademark overseas which has no market penetration in Australia, and then register that trademark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

The third example was apposite to AU Hard Candy’s actions. IP Australia was shown numerous examples where Mr Dattilo had named businesses after international brands such as G-Star and the Italian brand Isotta Fraschini. There were also the examples of misappropriation of Madonna’s name. The denials by AU Hard Candy’s Counsel that the application was filed in bad faith were not believed by the hearings officer.

IP Australia found that the HARD CANDY trademark was filed in bad faith by AU Hard Candy and refused registration. Shortly after AU Hard Candy was placed into administration by Mr Dattilo.

The lesson for foreign brand owners is that IP Australia will not permit anyone to improperly impersonate and register the trademarks of foreign brand owners. Where an application has been filed to register a trademark that is a direct copy of a foreign brand in circumstances where the local applicant is merely trying to extort the brand owner or trick the Australian public, the trademark will be refused registration.