With so many new small businesses, cottage industries and start-ups using the internet to promote themselves and sell their products across the globe, it's important to understand that a trademark infringement on the internet could be very costly.
Tiffany & Co issues trademark infringement warning to small Australian business
Many small online businesses find themselves in trouble for unwittingly using a word that has a trademark placed on it somewhere else in the world.
The most recent was a small business that makes paper flowers for weddings and advertising campaigns.
Ms Hannah Poppins runs the entire paper flower business, which turns over less than $50,000 a year. In 2019, Ms Poppins made the mistake of describing the colour of one of her paper flowers as "Tiffany blue" in an online Etsy listing.
Within days she received a letter from Tiffany & Co warning she had committed a trademark infringement on the internet. The giant jewellery brand ordered Ms Poppins and Etsy to take down the reference to "Tiffany blue" flowers from the website.
The listing was taken down immediately and Ms Poppins changed the colour description to "blue turquoise". No further action was taken by Tiffany & Co and in this circumstance, Ms Poppins got off lightly.
Brand colours can be trademarked
Alongside the trademarked "Tiffany blue", there are many other brand colours that have been trademarked.
Cadbury has trademarked the shade of purple that is used on its chocolate bars. DeWalt has exclusive rights over the use of its yellow and black colours and "Barbie Pink" is trademarked in over 100 categories.
Trademark battle between Ikea and small business Stylkea
In 2017, Ikea sent a cease-and-desist letter to an Australian woman, Ms Kylie Hughes, whose fledgling business, "Stylkea" decorated Ikea furniture. When Ms Hughes applied for a trademark, the Swedish giant said it owned the -kea suffix and she was infringing its trademark.
Ms Hughes stood her ground and IP Australia approved her trademark in early 2018. Her business name was also registered with ASIC at the same time. However, Ikea appealed the trademark in March 2018 and in the following year, Ms Hughes withdrew her trademark registration.
Sydney ugg boot manufacturer sued for trademark infringement on the internet
Another case involved a Sydney sheepskin boot manufacturer, Mr Eddie Oygur. He was ordered by a Chicago court to pay $643,500 in damages for selling twelve pairs of ugg boots in the United States via the internet.
The American firm, Deckers Outdoor Corporation, said it bought the trademark "Ugg" in 1995 and the word was its registered brand, with annual sales of $1 billion. Mr Oygur unsuccessfully argued that "ugg boots" was a generic term for sheepskin boots in Australia, where they had been invented in the 1960s.
Early legal advice for your online business could save you thousands
Before venturing out to sell your goods or services online, it's wise to first seek legal advice. There are many trademark restrictions that you may not know about, and breaching any of these could result in very costly consequences.
Tony Mitchell
Intellectual property
Stacks Law Firm
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
