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The Case of Musashi v A-Sashi

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What You Don’t Know Will Hurt You

The Federal Court of Australia recently granted an injunction to prevent one business owner from using its trade mark because it was substantially identical or deceptively similar to an existing trade mark owned by another business. The case is this…

In one corner, we have the owner of the registered trade mark, Nestle, who supplies dietary supplements using the trade mark “Musashi”. In the other corner, we have small business owner and entrepreneur, James Christian, who established an online vitamin business called “A-Sashi Vitamins” in 2013.

While Christian followed the road taken by many entrepreneurs before him – he registered his business name, secured a domain name and created a logo showcasing his brand, “A-Sashi”, he was unaware of Nestle’s registered Musashi trademark. Currently, the battle remains ongoing as reports show that  Christian “will seek special leave to appeal to the High Court”. However, the damage has already been done, it is reported that the matter has been ongoing for 3 years and Christian has “lost the $200,000 invested in A-Sashi and now owes the costs to Nestle”.

Unfortunately, Christian’s story isn’t a stand-alone one. We’ve met with many clients who have invested time and capital into their business only to realise that they have unintentionally infringed on a registered trademark. The lesson here is the importance of seeking proper advice before investing precious time and resource into a business investment. It is money well spent to ensure that you’re not infringing on any existing trade marks but that ultimately, you’re building a brand that belongs solely to you.

If you’re thinking of starting a business or would like to speak with someone about registering a trade mark, feel free to get in touch. We look forward to hearing from you!

Trade Mark Enquiry

For more information on our trade mark services and quotes on our professional fees, please contact us or visit our quoting page. Our experienced trade mark lawyers will contact you to explore how we can improve your business and add to your balance sheet by realising the value in your intellectual property through trade mark registration.

Carina Yap

Carina Yap
Trade Mark Lawyer

Carina Yap is a solicitor with Phang Legal, an incorporated legal practice based in Parramatta CBD providing professional legal services in trade mark advice, representation and trade mark registration to businesses across Sydney and Australia.

What I’ve learned from Shark Tank

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By now you guys probably know that I really dig Shark Tank, the  Channel Ten reality television show about entrepreneurs, who are given the chance to pitch their business ideas to a group of investors (“Sharks”). They are unfortunately all out though – the last episode for the season was aired on 7 June 2015.

It’s a really cool show and I’ve blogged about it twice now. It has a whole heap of really good ideas and it provides great insight about the nature of entrepreneurship, business planning, business valuation, and ingenuity in finding gaps in the market.

So here’s some things that I learned from Shark Tank:

Have a Business Plan!

A lot of the entrepreneurs featured on the show had a solid idea but no real clear route to achieving success. Arguably that’s why they came on the show to begin with – to get mentoring and help from the Sharks, but you can’t expect every small business to have the opportunity to go on television like that. A good starting point for planning your route is to have a business plan. Business.gov can help out with how to write your business plan.

Know the numbers!

It was a little unnerving that a lot of the entrepreneurs on the show didn’t know the basics of business valuation and also weren’t 100% familiar about their accounts. I thought that this should be stuff that they should know like the back of their own hand. If you are in this position, you could consider getting professional help from an accountant or a book-keeper.

Protect your Intellectual Property!

Yes, I am an Trade Mark Lawyer, so this is my forte. I always believe that any entrepreneur worth their salt should take steps to protect their valuable intellectual property – whether that is an invention, or whether it is a brand of some sort – and the Sharks agree. I  believe that the Sharks were always enthusiastic whenever an entrepreneur who had a good idea came before them, and told them that they had already registered their trade mark, design, or patents.

To me however, to a small business, trade mark registration is the most important step. It is after all, your your branding, your mark, your  very identity as a business. It can stop others from copying you. If you want to sell your business or have people invest in your business, assure your investor that you have taken steps to protect what goodwill that you have built in the brand by registering a trade mark.

If you’re ready to take the next step in your business and you need your trade marks protected – give us a call. We’ll be sure to help you out.

Shark Tank again – this time with International Trade Marks!

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As you guys know, I’ve been watching a bit of Shark Tank recently. I recently wrote about it on this blog. Shark Tank is a reality television show about entrepreneurs, who are given the chance to pitch their business ideas to a group of investors (“Sharks”), in the hope that a Shark would bite on their idea and perhaps, invest in the entrepreneur. Shark Tank airs on Channel Ten on Sundays, at 7:30PM.

Episode 13 featured a number of interesting and enthusiastic entrepreneurs, but the one that caught my eye was two podiatrists who had invented an easy-to-customise orthopedic product and branded it “Synxsole“. Their product caught the attention of the Sharks, and soon three Sharks were bidding to be a part of their business.

One of the things that caught my attention was the foresight that the two entrepreneurs exhibited. They had, through their experience, identified a gap in the market for orthopedic soles, and after inventing their product, immediately applied for trade mark, patent, and design protection in not only one, but in multiple countries.

An expensive exercise for sure – but something that again, shows foresight. We have previously written that Trade Mark registration will grant you protection within Australia for a period of ten years – but in this day and age, products are not just sold within Australia, but all across the globe.

This means that if you intend to sell your product in the United States of America, it would be best to also seek for trade mark protection within the United States of America – or else a competitor in the United States of America might end up copying your branding!

Fortunately, just like Synxsole did, you too can register your Trade Mark in an overseas jurisdiction. Australia is a party to the Madrid Protocol, a one stop solution for registering and managing trade marks worldwide. You would still need to identify which countries that you wish to register your trade mark in, and the cost does increase the more countries you register your trade mark in.

If you have a brilliant and distinctive mark that requires trade mark protection in Australia and abroad, give us a call, and we’ll help you with the process.

Trade Marks and Shark Tanks!

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I’ve been watching a lot of Shark Tank lately. It’s really awesome. For those who aren’t in the loop, it’s a reality television show about budding entrepreneurs who are given the opportunity to pitch their business ideas in order to secure investment finance from a group of investors. Shark Tank airs on Channel Ten on Sundays, at 7:30PM.

While it’s extremely entertaining, Shark Tank also gives valuable insight in relation to the intellectual property process – after all, it is a program that’s built around the entrepreneur’s ideas to exploit a gap in the market – and that includes protecting both the idea (through a patent, if applicable) or the brand (through a trade mark).

In episode 3, a entrepreneur by the name of Anne Barclay approached the “sharks” for her business, “Simply Moreish Marinades”. While her product was undoubtedly delicious, the sharks discovered that not only had she failed to secure a trade mark over her product, but a competitor had already lodged a trade mark for “Moreish”, covering jams, sauces, and chutneys. Anne’s failure was because she had thought an Australian Business Name Registration was adequate protection for her branding.

I’ve written before on this subject – and unfortunately it’s simply not true. 

As Janine advised, “If you’re going into 25 stores, that person who’s got that trade mark can come and say, ‘you’re using my name’, and then they can actually sue you”.

Sound advice, which I also echo. Simply put – if you have a catchy brand name, you need protection over that brand name – and there is no better protection than a Trade Mark Registration.

Give us at Phang Legal a call if you need help or advice over your trade mark or your branding – I’ll be happy to help. Until then, I’ll be watching Shark Tank.

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