It was recently reported that the man behind the “not bhed, good syze” fishing video is taking steps to trade mark the catchphrase that made him a viral sensation in Australia. With the video’s star now capitalising on his new found fame, including starring in an advertisement for a space rental start-up, this has left many wondering whether they will have to refrain from uttering their favourite phrase, or otherwise run the risk of infringing his trade mark…
In short, not necessarily. Setting aside whether or not the phrase is sufficiently distinctive to qualify for registered trade mark protection, the likelihood of a trade mark infringement being successful will turn on whether or not the same or similar phrase is “used” as a trade mark (within the meaning of Trade Mark Act 1995 (Cth) (TMA)) with respect to goods or services protected by the relevant trade mark registration.
This is a useful case study to illustrate the challenges and risks associated with protecting and using viral content in branding and advertising – so in the words of the man behind the “not bhed, good syze” slogan, “have a look at that“…
The main issue that would arise in protection of a catchphrase of a similar nature is the possibility of the mark being rejected by an Examiner on the basis that it is not distinctive, rather it is laudatory (indicating praise or commendation) when used in relation to goods and services.
In order to overcome such a citation, the applicant would need to either argue that the phrase is not laudatory, and/or produce evidence of use which establishes that the trade mark has acquired distinctiveness through use, i.e. it distinguishes the relevant goods and services before, or at the date of, filing the application. In this case, the phrase is indisputably well-known, however, it may not be well-known in relation to the goods and services that would be protected.
With this risk in mind, a potential strategy to achieve registration might be to hold off filing a trade mark application and focus on engaging in in targeted use of the phrase with respect to a specific offering of goods and services for a period of time to build up the evidence to demonstrate acquired distinctiveness.
Assuming that the “not bhed, good syze” phrase receives registered protection, the owner would have rights that could be asserted against third parties.
Under s 120 of the TMA, the key requirements to make out a claim of trade mark infringement include:
- the sign is “used” as a trade mark – to mean a sign (such as a word, name, signature, brand, heading, label or sound) is used in physical or other relation to goods or services in the course of trade, for example, printing the “not bhed, good syze” slogan on t-shirts or hats or a person saying the phrase in a television or radio advertisement that promotes certain services. However, describing somebody as the “not bhed, good syze” guy or saying that something is “not bhed, good syze” in everyday conversation would not be “use” of the trade mark;
- the mark is deceptively similar or substantially identical to the registered trade mark – spelling the phrase as “not bad, good size” or “nut bed, gouda soize” would likely satisfy this element as they both sound and appear to be visually similar to the original “not bhed, good syze” mark; and
- the use is in relation to the same or similar goods and services protected by the registered trade mark – which depends on the goods and services that are protected, for example it would be problematic to print the phrase on t-shirts and hats where there is registered protection for these type of goods.
If all of these elements were satisfied, the owner may elect to take action against a third party for trade mark infringement. In such circumstances, the right to take action is backdated from the date of filing the trade mark application.
No doubt an interesting development in the world of trade marks and a space to watch closely!
This post was co-authored by Valiant Warzecha, Jessie Buchan and Melinda Upton.