Sub Contractors

The importance of brand ownership: Snapshot of the UGG boot case

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Brand ownership is so important for businesses of any size.  There is a common misconception that owning a business name means that you own that brand, but the reality is brand ownership in Australia is protected by trade marking of your brand, through either logo protection or words protection.

The other important basic element of brand ownership is that it is jurisdictional, meaning that trade marks are owned in each jurisdiction.  Just because you own a trade mark in Australia does not guarantee that the same trade mark is available in the USA and vice versa.  Protections are obtained for trade marks in each particular country that you wish to sell your goods and services. 

You can own your brand in one country but not in another.

The recent USA “Ugg” case highlights some important lessons learned.

This case was recently heard in the USA where Australian Leather had sold a total of twelve pairs of ugg boots in the USA between 2014 and 2016, but without having any trade mark rights in the USA to the word or logo “UGG”.  Deckers Outdoor Corporation a Delaware corporation (Deckers) alleged the sales of Australian Leather UGG boots in the USA breached the Deckers owned US trade mark for ugg boots, being the registered brand of Deckers.  On Friday 10 May, a Chicago jury found these sales of ugg boots by Australian Leather in the USA meant that Australian Leather was guilty of wilful infringement of the Deckers owned UGG trade marks.  Accordingly, Australian Leather was ordered to pay statutory damages of $450,00USD.

Lessons learned from this recent Chicago case are that before your business makes any sales (including as in this case online sales) of an Australian good in the United States, you need to ensure that any sales don’t infringe a trade mark ownership in the USA.  This means at a minimum you should check the trade mark protections in existence in the US to ensure that your Australian brand does not infringe on trade mark ownership in the USA.

Secondly, if you plan to launch your brand in the USA it is wise to check whether your brand is available or already owned in the USA, particularly if you are looking at brand continuity within many countries such as Australia, New Zealand and the USA.  Ensuring availability of brand ownership in all the countries you intend to operate is important.  Strategic planning of your intellectual property is really important.

In Australia, let’s have a brief look at the trade marks each of these brands own and what each of these brands are able to do within Australia.   To understand this, let’s briefly examine some of the formal protections that are in place within Australia between these two brands. 

The UGG Australia logo is a logo trade marked and owned in Australia by Deckers.  This was registered by Deckers from 12 February 1999 in Class 25: Footwear, including boots, shoes, and clogs.  Click here to see the logo that Deckers owns and uses in Australia.

Among its trade mark portfolio, rival company Australian Leather owns a trade marked triangular shaped logo featuring the letters U and G in Australia.  This is registered from 1 October 2009 in Class 25: Clothing, footwear, headgear.  Click here to see just one of the logos that Australian Leather owns and uses in Australia.

In Australia, each of Deckers and Australian Leather have the right to sell and brand ugg boots using their trade marks that they own, within the same class (as noted above, being class 25 including footwear and in the case of Australian Leather, extending to clothing).  Provided each of the brands is used in accordance with their trade mark ownership in Australia, each brand is selling footwear under a brand that they own and is not infringing brand ownership of the other party.

At Coutts, we regularly assist with legal advice on brand ownership, trade mark applications, intellectual property licences and intellectual property management strategies and implementation.

For further information please don’t hesitate to contact:

Alexandra Johnstone
Partner
alexandra@couttslegal.com.au
02 4607 2110  

This blog is merely general and non specific information on the subject matter and is not and should not be considered or relied on as legal advice. Coutts is not responsible for any cost, expense, loss or liability whatsoever in relation to this blog, including all or any reliance on this blog or use or application of this blog by you.

Construction Contractors Beware - High Court confirm monies due to a sub-contractor cannot be withheld

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Overview

Construction sub-contracts will sometimes include a provision allowing a head contractor to retain a portion of the monies due to a subcontractor until a date after the subcontractor’s works have been complete - for example, at practical completion of the head contract or when the defects liability under the head contract has expired. This delay in payment can cause real unfairness to the subcontractor - especially when there is a large time lag between the works performed by the subcontractor and the completion of the overall build. It also raises the risk of a subcontractor never receiving full payment for its works if the contingent event never occurs or if the head contractor becomes insolvent in the meantime.

Building and Construction Industry Security of Payment Act 1999 (NSW) (the Act)

Recognising the unfairness caused to sub-contractors, the Act when introduced in 1999, included a “pay when paid” provision (section 12) which mandated that any provision in a construction contract which sought to make payment to the subcontractor contingent on the head contractor being paid by a third party, or payment to the subcontractor being made contingent on the operation of another contract, was of “no effect”. The scope of this section has previously received little judicial attention.

High Court rejects a narrow operation of the “pay when paid” provision

In Maxcon Constructions Pty Ltd v Vadasz [2018] HCA 5 the High Court upheld the finding of the adjudicator that the “retention” provisions in the subcontract fell within the operation of the Act’s “pay when paid” provision. In doing so, the High Court rejected a narrow approach to this provision which had been adopted by the South Australian Supreme Court. 

In Maxcon’s Case, the building contractor (Maxcon), and Mr Vadasz, a piling subcontractor, were parties to a subcontract under which Mr Vadasz had agreed to design and construct piling for a strata development in Adelaide. The subcontract required Mr Vadasz to provide a "cash retention" equivalent to 5% cent of the overall contract sum with the retention funds to be released in tranches as follows:

·        50% within 90 days of the occupation certificate being obtained;

·        the remaining 50% within 365 days of the occupation certificate being obtained.

Under this clause of the subcontract, Mr Vadasz would be denied a large amount owed for works performed by him at the initial construction stage until one year after the entire building was complete - lengthy period of time.

On 25 February 2016, Mr Vadasz served on Maxcon a payment claim under the Act stating that a progress payment of $204,864.55 was due (this amount included the retention monies). On 8 March 2016, Maxcon provided a payment schedule pursuant under the Act stating that it would pay only $141,163.55, ie it deducted a retention sum and administration charges. Mr Vadasz then applied for adjudication of his payment claim under the Act.

The adjudicator accepted Mr Vadasz's submission that Maxcon was not entitled to deduct the retention sum and determined the adjudicated amount to be equal to the total amount claimed by Mr Vadasz. In relation to the retention sum, the adjudicator concluded that the retention provisions of the subcontract did constitute “pay when paid” provisions and were thereby ineffective - meaning that Maxcon had no right to withhold the retention sum.

Maxcon appealed to the South Australian Supreme Court which found in favour of Maxcon. The Court considered that the retention provisions did not fall within the “pay when paid” provision of the Act on the basis that the date when occupation is achieved is not contingent on Maxcon either being paid or on the operation of the head contract.

The High Court rejected the approach of the South Australian Supreme Court. It held that the “pay when paid” provision of the Act meant that Maxcon could not withhold the retention monies from Mr Vadasz because, ultimately, the release of the retention monies to Mr Vadasz was dependent on the operation of another contract (ie the issue of an occupation certificate for the building was dependent on Maxcon performing the building works as required under the head contract).

Lessons from the Case

The High Court favoured an expansive interpretation to the “pay when paid” provision of the Act. In practice, the effect of the decision is that head contractors need to ensure that their subcontracts do not contain retention provisions which infringe the “pay when paid” provision of the Act, as interpreted by the High Court.

It is important to note that the decision does not affect the provision of “security” under a subcontract such as a bank guarantee or an insurance bond. In light of the High Court’s decision, we recommend that head contractors review their subcontractors to ensure that they are legally compliant and to consider other amendments to provide adequate protections for defective subcontractor works.

For further information please don’t hesitate to contact:

Alexandra Johnstone
Partner
alexandra@couttslegal.com.au
02 4607 2110  

This blog is merely general and non specific information on the subject matter and is not and should not be considered or relied on as legal advice. Coutts is not responsible for any cost, expense, loss or liability whatsoever in relation to this blog, including all or any reliance on this blog or use or application of this blog by you.