The world of intellectual property is filled with interesting and unexpected stories. A strange one to come out of Australia around the turn of the millennium was a dispute between Stepsam Investments Pty Ltd, owner of local clothing company Wombat, and Time Warner, the international media giant responsible for the creation of the Harry Potter films.
Wombat's branding dilemma
Clair Jennifer, the co-owner of Wombat had been selling clothing labelled 'harry potter' since 1994. The range had sold in the thousands, generating over $9,000,000 by mid-1998.
When Clair first tried to trademark the name soon after creating it, she was told that because it could be someone's actual name, she would need to get it out there and known before a trademark would be granted. At the time of her second attempt at registration, only a few thousand copies of the first Harry Potter book had been sent over to Australia.
Time Warner opposed this second attempt at trademarking, but had their opposition dismissed and the application proceeded to registration. This was appealed, with Time Warner seeking orders for the registration to be refused. Early in the process – perhaps sensing it would be unsuccessful – Time Warner modified its position to not be in opposition to the trademark in general but instead request it be limited to adults clothing. Yet this too was rejected, with the trademark in relation to clothing eventually being granted to Stepsam.
The protection of being first
The fact that 'harry potter' had been first used on Wombat clothing long before the books ever existed was a decisive factor in the decision in favour of Wombat and Stepsam.
The Federal Court Justice Murray Wilcox said, "although it may be accepted that a person who first hears the name Harry Potter today . . . would most likely think of the J. K. Rowling character, it seems to me unlikely that a person seeing the 'harry potter' label on clothing in a Wombat boutique would assume a connection."
If you've been trading with a name that is now being used by someone else – without a trademark – it doesn't necessarily mean you have to stop using it. If you can prove that you used the phrase in question first, then you may have some common law protections.
If you have some trademarks you're wanting to file, but are not sure what the next steps are, contact Alder IP today. We can walk you through the process and do whatever we can to ensure your IP is protected.