In the case Honest Tea Inc. v. Teavolution Pty Ltd., 72 IPR 431 (Australian Trade Marks Office March 9, 2007), the U.S. based Honest Tea company opposed Teavolution’s submission to register trademarks[1] containing the words “honest tea” for tea beverages sold in Australia. Honest Tea claimed that while it did not directly promote its products in Australia, it had been using the words “honest tea” as its company’s name on the World Wide Web and on advertisements in publications available in Australia; thus, Honest Tea argued the words should not be allowed to be part of Teavolution’s Australian trademark.
The Hearing Officer, while noting that the goods and services of both companies were substantially identical, concluded that Honest Tea could not claim ownership of the words “honest tea” in the Australian marketplace since Honest Tea could not produce substantial evidence of an intent to trade its products in Australia nor a measurable reputation in Australia. Accordingly, the Hearing Officer reasoned that Teavolution was the actual first party to use “honest tea” in association with its products in Australia.
LegalTEAS Lesson: This Australian case represents a common tenet of trademark law: the first one to use a term in the marketplace, be associated with the term, and apply for a trademark, is generally the company entitled to the protection and economic advantages a trademark affords.
While the web can provide a worldwide customer base for your product, do not overestimate the weight of your company’s message in the global marketplace. A trademark in one country does not entitle you to protection in all countries. If you have evidence that your product is engrained in a county’s economy to the extent that certain terms are associated with your product, be the first in line to protect this valuable commodity by filing a trademark application. In the competitive global economy, being second is not an option when it comes to trademarks.
