A dog of a trade mark dispute

A long running trade mark dispute between Black Dog Ride Pty Ltd (Ride) (http://www.blackdogride.com.au/) and the Black Dog Institute (Institute) has concluded almost four years after an acrimonious dispute arose between the two organisations ended what had been a mutually beneficial relationship. The Delegate of the Registrar of Trade Marks who heard the dispute ultimately dismissed each of the respective oppositions filed by the parties and confirmed the rights of Ride to register BLACK DOG RIDE (stylised) and the Institute to register BLACK DOG for various goods and services.

In 2002, the Institute was founded as a non-profit organisation specialising in the diagnosis, treatment and prevention of mood disorders. In 2008, Steve Andrews created Ride to organise charitable motorcycle rides to raise awareness of depression and suicide prevention. Importantly, the Delegate found that both Ride and the Institute adopted names including the words BLACK DOG as a result of Winston Churchill’s well known use of the phrase BLACK DOG when referring to his battles with the mood illness.

The Delegate found that Mr Andrews’ concept was independently created even though Ride would eventually approach the Institute about a potential partnership. Accordingly, despite the Institute’s previous use and registration of the marks including the words BLACK DOG such as BLACK DOG INSTITUTE, the Delegate found that the was no deceptive similarity between the marks such to prevent the registration of Ride’s marks.

The Institute’s other grounds of opposition were equally unsuccessful in part as the Delegate concluded that there were a number of factors that could potentially give rise to confusion between the respective organisations other than the marks themselves. One significant factor was the previous relationship between the organisations which resulted in Ride raising over AUD500,000 for the Institute over three years and Steve Andrews receiving numerous awards from Institute for his work. Another interesting factor was that because the deterioration of the relationship had not been publicised by either party, the public was confused that they were no longer working together, not because of their similar names, but because of the previous history.

The Institute was also successful in the proceedings as the Delegate found that although the term BLACK DOG was common parlance in the Australian community when it comes to metaphorical descriptors of mental illness and third parties may ‘want’ to use it, they do not require use of the expression. Therefore, the Delegate held that the words BLACK DOG were sufficiently distinctive to be registered.

Neither party has filed an appeal and therefore both parties will have their trade marks registered in Australia.

The clear message for brand owners in Australia from this decision is that if a trade mark contains a word or words that is in common parlance, you will be limited in the recourse you can take against a third party who independently selects a trade mark that contains the same common element.

K&L Gates acted pro bono for Ride in this dispute. Ride continues its charitable endeavors with rides in New South Wales, South Australia, Tasmania and Victoria scheduled to be held later this year.

By: Chris Round and Simon Casinader

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