July 25, 2017 | Maddalena Rinaldi

Rival reptile showmen, trademarks and an unrepresented applicant make for an interesting case read.  In a recent decision by the Federal Circuit Court of Australia, a self-represented wildlife demonstrator failed to attain an interlocutory injunction and was instead served with a cost order of nearly $3000.

Between 2011 and 2014 Mr Hoser had been contracted to perform live reptile shows at Bunnings stores around Melbourne. After Bunnings replaced Mr Hoser and started contracting with other wildlife performers, he became concerned that both Bunnings and one of his competitors were wrongfully utilising terms he had trademarked. After some mediation between the parties, Mr Hoser proceeded to seek an interlocutory injunction so that he could prevent a rival demonstrator from using the trademarked phrases ‘reptile party’ and ‘reptile parties’. Both of these terms were registered in the name of Mr Hoser.

In considering if the injunction would be granted, the court had to determine if there was a serious question to be tried. The court reflected on evidence from other wildlife performers and concluded that, on the facts, the applicant’s case was so unlikely to succeed that the injunction was refused. The court came to this conclusion largely due to the operation of s24 of the Trade Mark Act. This provision provides that if a trademarked term has, in the relevant industry, become a description of the type of service being provided, then the trademark owner cannot enforce exclusive rights over said term. In this instance the terms ‘reptile party’ and ‘reptile parties’ were considered to describe the service of bringing reptiles to parties.

Not only were the legal arguments weak, but the self-represented applicant made a number of errors throughout the court process. Mr Hoser did not properly swear an affidavit which resulted in an adjournment. He also filed post-hearing submissions without leave and failed to respond to a calculation of costs. Professional legal advice could have helped Mr Hoser deal with such technical oversights, but more importantly, given that the court found there was no serious question to be tried, a legal advisor may have been able to council the applicant and advise him not to take the matter to court at all.

So, what can we take away from this outcome?

Firstly, when registering trademarks, remember to avoid registering terms that merely describe the service you are providing.

Secondly, if you are thinking of pursuing a legal matter, don’t overlook the value of professional legal advice, not only to avoid technical errors but also to help determine if a matter is even worth litigating.

Lastly, if a dispute arises, court is not necessarily your first port of call. While we often frame litigation as the be-all-and-end-all of dispute resolution, less dramatic approaches, such as mediation or negotiation, can sometimes prove most rewarding.
By Steele McMahon
[1] Hoser v Bunnings Group Ltd & Anor [2017] FCCA 1624 (13 July 2017)