• INTELLECTUAL PROPERTY LAW

California Court of Appeal

Antounian v. Louis Vuitton Malletier (Decided on 21.10.2010)

Trademark infringement-Antounians filed suit for malicious prosecution against defendant for trademark infringement and counterfeiting. The Antounians too filed a motion for summary judgment in the district court arguing that they did not sell or display any counterfeit merchandise. In opposition, Louis Vuitton/Dior cited evidence of counterfeiting activity at Bijou Palace, citing investigative reports and declarations other than those that had been found to be incorrect. Antounians' malicious prosecution complaint alleged that the defendants wrongfully pursued the federal litigation, which is activity protected by the free speech and petition clauses. The Antounians do not dispute that the federal lawsuit was protected activity or that their malicious prosecution complaint falls within the reach of section 425.16.

Whether trial court erred in determining that Antounians have shown a probability of prevailing on the merits?

Held, To establish that their malicious prosecution lawsuit had a probability of success on the merits the Antounians were required to show that they stated and substantiated a legally sufficient claim. The plaintiff must demonstrate that the complaint is both legally sufficient and supported by a sufficient prima facie showing of facts to sustain a favorable judgment if the evidence submitted by the plaintiff is credited.

Australian Trademark Office

Parle Products Private Limited, India v. Ms. Nina Bhavnagri, Australia (Dated 29.09.2010)

Trade Mark- Trade mark not used within relevant three year period- No case made for retaining registration- Applicant has ultimately pressed only the more specific ground under Section 92(4)(b), that the trade mark PARLE ("the trade mark") was not used by the opponent in Australia in the three year period ending 14 September 2008-Whether the opponent's evidence establish that she had used the trade mark, in the relevant three-year period, for relevant goods, or not?

Held, that the evidence does not show that there has been any commercial use of the trade mark by the opponent within the relevant period. It was decided that the registration has to be removed. For the purposes of deciding the relevant period is three years which ended on 14 September 2008, the thrust of Ms Rimmer's submission is that, while voluminous, the relevant part of the opponent's evidence consists of unsubstantiated assertions and that the evidence is, at times, self-contradictory. Even if it was assumed that the lists were orders of goods to be supplied by the opponent, and gloss over the irregularity of this alteration or addition of dates, none of the ascribed dates fell in the relevant period. Ultimately, it was clear that the opponent misunderstood a great deal about the present opposition process. She sees the process as one whereby "Parle India are using their heavy handed clout to persuade IP Australia to transfer the 'Parle' name to them". However, the opponent, having registered the trade mark, has simply failed to use it within the relevant three-year period therefore,her registration is thus potentially forfeit. The necessary conditions for the removal of the trade mark have been established and those for its retention on the register have not.

Therefore  it was directed that the trademark has to be removed from the register after one month from the date of this decision. If before the trade mark is removed from the register, the Registrar is served with a copy of a notice of appeal otherwise, the appeal would be withdrawn or discontinued. In the evidence in support there is a handwritten note from the opponent asking that these not be awarded against her, if she does not succeed, as she cannot afford to pay the legal bills of a "huge company with huge expenses". The opponent therefore knew, when she filed her evidence in support, that costs were likely to be awarded against her if she failed in her opposition. The only consolation offered to the opponent was that the scale of costs under the amounts recoverable would not compensate the applicant for its actual costs in bringing about the removal of the opponent's registration. Since the Applicant had requested an award of costs and since it had succeeded in its removal application it was therefore directed that the opponent had to pay the costs of the applicant to the extent set out in the scale in the regulations.