INFORMATION TECHNOLOGY BRIEFLY
February 1999 Issue No 6

TRADEMARKS, DECEIT AND CONFUSION

A recent case before the Full Supreme Court of Victoria (Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd) provides a timely reminder of the advantages of registering your distinctive mark or logo.

Nettlefold Advertising invested a lot of time, effort and money in that mark and undertook an extensive promotion campaign for their new mark employing the name "nettlefold" in lower case letters. What Nettlefold Advertising did not do was proceed to take steps to register their mark. This was a mistake.

On 27 July 1989 - just one month after the end of Nettlefold Advertising's promotion campaign, another company - Nettlefold Signs, made an application to register the mark "nettlefold" in lower case letters but otherwise differing from the mark used by Nettlefold Advertising.

Because Nettlefold Advertising had not registered their mark they now had to challenge the application for registration in Court. Nettlefold Advertising had to bring extensive evidence to the Court establishing their reputation for using the mark and had to discharge the tactical burden of establishing for the Court the potential for their market base to be deceived or confused by the use of a similar mark by Nettlefold Signs.

For Nettlefold Signs the burden was to prove that there was no reasonable possibility of confusion if their mark was registered. At first instance Nettlefold Advertising failed. Only on Appeal did the Court hold that the mark should not be registered as it was likely to deceive or cause confusion.

This case serves as a useful reminder. If you use or have developed a distinctive mark to use in your business then you can avoid much time, effort and expense in defending your rights to use that mark by making sure it is registered. Your mark or logo is valuable intellectual property owned by your business and having invested time and money in that asset you should make sure it is protected.

For further information on this article, please contact:
Chris Darby, Associate, on (61 8) 8210 1286 or via E-mail: cdarby@normans.com.au

ELECTRONIC TRANSACTIONS BILL 1999

The Federal Government has just released an exposure draft of an Electronic Transactions Bill for comment. The Bill creates a "light handed" regulatory regime to enable the use of electronic communications in transactions. It is designed to remove a number of legal impediments that currently exist, putting electronic commerce and paper-based commerce on the same footing with a technology neutral approach.

The Bill is based on the recommendations of the Electronic Commerce Expert Group (as discussed in seminars delivered last year by Norman Waterhouse). It adopts most but not all of the approaches suggested by that group. Essentially the Bill is framed around the Model Law for electronic commerce developed by the United Nations Commission on International Trade Law, which was created to try to set some internationally accepted standards in this area.

The Bill provides that any general existing requirements for writing, signature, the production of documents and the storage of information can be satisfied by electronic communications and means, provided that certain basic criteria are met. However, the Bill does provide for regulations to exclude the use of electronic communications and means in relation to certain types of laws and requirements. Items previously proposed for exclusion included wills, powers of attorney and real property documents.

It is proposed that the scheme will operate by the states and territories enacting uniform legislation based on the Commonwealth Bill, rather than simply having one Commonwealth Act. This is due to various issues, including uncertainty about the constitutionality of the Commonwealth enacting laws on ecommerce.

If you wish to access an electronic copy of the bill and an accompanying explanatory paper then access http://www.law.gov.au and follow the ecommerce links. The draft is open for public comment until 26 February. More discussion of this bill and any subsequent legislation will be contained in later editions of this briefly.

REGULATING BIG BROTHER - DATA PRIVACY

The amount of information held about individuals grows constantly, along with the power of computer systems to store, sort, compare and distribute this information. This is particularly so in relation to the increasing amount of networking and the growing range of on-line activities. To some people it seems that nightmare visions of a "Big Brother" society are rapidly becoming reality - except now there are a multitude of big brothers, in both government and the "private" sector.

Unfortunately Australia does not have comprehensive privacy laws to control potential abuses of what people might think to be "private" information. The current Privacy Acts at the State and Commonwealth level largely relate only to information held by Governments or credit providers. There are no privacy laws which apply to the private sector as a whole, and there is no clear recognition that an individual has an inherent right to privacy under general principles.

However, this may change soon. If so it will be largely as a result of international pressures, especially the European Union's Data Privacy Directive. This law took effect in October 1998. It provides in part that personal information may only be transmitted from the European Union to another country if that country ensures an adequate level of privacy protection for the person to whom the information relates. Key principles relevant to showing "adequate" protection include:

  1. ‚limiting processing of data to a specific legitimate purpose;
  2. keeping data correct and current;
  3. making known to the individual the purpose for which the data is processed and the organisations which have it;
  4. using security measures appropriate to the level of sensitivity of the data; and
  5. giving individuals access to their own data and the ability to correct errors.
    Previously the Federal Government indicated that it would not impose further privacy regulation and that it wished to see industry self regulation in this area. However, with growing fears that this will be insufficient to provide adequate protection for individuals, in December 1998 the Government indicated that it would be putting forward privacy legislation. It has also been pressured to do so by Victorian government proposals to act in this area if there is no Commonwealth intervention.

    As a result, organisations handling personal data should be actively considering the adoption of privacy policies and procedures (if not already in place). These should deal with key issues such as:
    A good source of further information is the Federal Privacy Commissioner's web site: <http://www.privacy.gov.au>. You can also download from this site the "National Principles for the Fair Handling of Personal Information". This document was released in February 1998 and represents a first step to the development of a comprehensive national privacy scheme and the proper handling of information relating to individuals.

    For further information on these articles please contact:
    Robert Chalmers, Senior Associate, on (61 8) 8210 1229 or via email: @normans.com.au

    The contents of this newsletter are for information only and should not be taken as advice on the law. This newsletter may be reproduced in whole or in part with the prior permission of NormanWaterhouse and acknowledgement of its source and copyright.



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