LAW4703 Introduction to intellectual property – Semester 1 2023

ASSESSMENT TASK 1 – Written assignment

PLEASE READ THESE INSTRUCTIONS CAREFULLY.

You are a solicitor who has been asked by your supervising partner, Ms Chol, to prepare advice for a
production company based in the United Kingdom (‘UK’) on a matter relating to a third party’s
registration of an Australian trade mark.

The UK company, Reality Productions International PLC (‘RPI’) believes that this third party plans
to use this registered trade to dishonestly profit from the production company’s internationally famous
reality series, Pie Eyed (‘PE’).

Please assume that the facts provided to you below are entirely fictitious, complete and comprehensive
and that there is no need, for example, for you to confirm whether or not RPI is the legally registered
trade mark holder of the PE brand in the UK or any other jurisdiction.

Beyond that proviso, this is a research assignment. Therefore, in addition to referring to your lecture
notes and the textbook, you should undertake independent research, beyond these to assist you to
formulate your opinion. References for these sources should appear in your footnotes and will not be
counted against your word count. A bibliography is unnecessary.

Attached to the below client letter is a copy of the third party’s trade mark registration, including the
goods this covers under the Nice Agreement classification class 30. As discussed in the Week 3 seminar,
students may find it helpful to use the Trade Marks Classification Search database on the IP Australia
website to compare these goods to the goods and services that RPI may seek to register its PE trade
mark under in Australia https://tmgns.search.ipaustralia.gov.au/.

You are welcome to seek clarification regarding any unclear aspects of the question, or any errors you
detect in the question. In fairness to all students, responses to questions will be disseminated via the
General Forum messaging facility on the Moodle site. The General Forum facility will also be used to
alert you to any amended version of the question paper.

As set out on the Assessment page on the Moodle unit site, your written opinion for this assignment
must not exceed 2,000 words.

All quotations included in the main text of the assignment will count towards this word limit. Headings,
sub-headings and client greetings and sign-offs are not counted as part of this total. Likewise, footnotes
will not included in the word count unless they contain substantive text. A bibliography is not required,
however if it is included, it will not be counted for purposes of the maximum word count.

Your advice should follow a general legal advice format, however you do not need to strictly follow
any of the examples provided on the ‘Assessments’ Moodle site. Nonetheless, please submit your advice
letter in a Microsoft Word format (.doc or .docx), not PDF, so that markers can provide feedback in
track changes. Assignments submitted in PDF format may not receive feedback.

The total mark for this assignment is 40 marks (out of a full semester mark of 100).

Please submit by 4.30pm on Wednesday, 5 April (or Monday, 10 April with the five-day extension)
via the Assessment 1 - Written assignment submission box on the ‘Assessments’ Moodle page.

Refer to the Marking and Feedback Procedure document in the Marking rubric & regulations
folder on the ‘Assessments’ Moodle page for the penalties that may apply for late submission.

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 Reality Productions International PLC,
202 Wood Lane, London W12 7TQ,
United Kingdom
28 February 2023

Wang, Chol & Brown,

Level 26,
101 Collins Street,
Melbourne VIC 3000

RE: Trade mark application and anti-squatting action

Dear Ms Chol,

Thank you for our recent exchanges over email and phone conversation last Thursday afternoon
(23/2) Melbourne time.

As I explained, I represent Reality Productions International PLC (‘RPI’), a content production

house incorporated in the United Kingdom (‘UK’).

In mid-2024, we are planning to commence production of an Australian version of our highly

successful reality television (‘TV’) show, Pie Eyed! (‘PE’), which is a combined pie-baking
and dating competition. We expect that the Australian PE will begin streaming locally from
early 2026.

We are seeking the assistance of your firm with a matter involving a third party who has
registered a trade mark that is very similar to the PE series name – namely: Pie Salty Eyed
(‘PSE’) in 2020 (see attached trade mark search result). So far, we understand that this third
party has not undertaken any business activity using this trade mark. However, we are
concerned that once the Australian version of PE begins streaming, they may start marketing
products that imply a connection with our series.

While admittedly, this third party was first to register this trade mark in Australia, we think we
can make a case for the PE brand’s priority, as our brand is very well known internationally
and online, beginning in 2010, when the series was first screened in the UK. Over the following
decade, the series has been licensed to over 20 countries in North America, Europe and East
Asia, and has come to enjoy a high profile online – with fans posting its most embarrassing,
notorious and endearing moments on all major social media platforms.

In addition, despite the fact that the series has never been distributed in Australia – on either a
free-to-air or streaming service – it already enjoys a strong local following. For example, in
2021, more than 700,000 Australia-based viewers live streamed that year’s UK pie / proposal
making final. This compares with the ‘record’ local audience of 900,000 for a 2022 episode of
MasterChef Australia (and we achieved our result without any Australian advertising).
In any case, due to this clear local interest, early this year, RPI began preparations for an

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Australian production of PE. This has included meeting with the streaming services active in
Australia and potential local retailers of our PE merchandise. Mid next year, we plan to begin
holding preliminary competitions of 50 hopefuls in each Australian capital city, in the quest
for our initial 24 national contestants.

I should make plain that the merchandise that I referred to above is a very important source of
revenue for our PE productions. Without income from advertising, the series relies heavily on
sales of our PE range of baking trays and tins, chefs clothing, aprons and co-branded electrical
kitchen equipment. We also sell limited edition evening wear to consumers that matches what
contestants wear at the momentous weekly pie nights.

Accordingly, we are concerned about any third-party trading in the culinary sector under a
name that suggests an association with our very successful series. We see these activities as
unfairly competing with us for sales in the present, and potentially denying us sales in future,
if their products are sub-standard and harm our reputation by association.

Therefore, please confirm whether you would be able to assist us with the following:

• registering PE as a trade mark in Australia;

• removing the third party PSE trade mark from the Register; and

• claiming any compensation owing from the third party for any harm already done to
our business, and any that occurs if they are using the PSE trade mark after the series
screens.

Best regards,

M. Tran
Margaret Tran

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28/02/2023, 20:54 Details view | IP Australia | Trade Mark Search

Trade mark 2137922

Words SHE'S
PIE STILL
SALTY THE ONE
EYED

Image

Image description

Status Registered: Registered/Protected

Priority date 23 Nov 2020 (Filing)

Class 30

Kind Word

Dates

Renewal due 23 Nov 2030

Registration advertised 01 Jul 2021

Entered on Register 01 Jul 2021

Acceptance advertised 24 Apr 2021

Acceptance 22 Feb 2021

Filing 23 Nov 2020

Registered from 23 Nov 2020

Owner Address for service

wissam atiah wissam atiah

Information on trade mark owners is available on request from IP Australia

Goods
Class &30:
Services
Celery salt; Common salt for cooking; Cooking salt; Mineral salts for preserving
foodstuffs;
Class 30: Pickling
Celery salt; saltCommon
for pickling
salt forfoodstuffs; Preparations
cooking; Cooking forsalts
salt; Mineral preserving foodstuffs (salt);
for preserving
Preservatives
foodstuffs; forsaltanimal
Pickling feedfoodstuffs;
for pickling (salt); Preservatives
Preparations forfor food (salt);
preserving Products
foodstuffs for use in food
(salt); Preservatives
preservation
for animal feed (salt); Salt for cooking;
(salt); Preservatives Salt
for food for Products
(salt); flavouring
forfood;
use inSalt
foodfor popcorn; (salt);
preservation Salt for
Saltpreserving
for
foodstuffs; Salt pellets for preserving foodstuffs; Salted biscuits; Salted tarts; Salted
cooking; Salt for flavouring food; Salt for popcorn; Salt for preserving foodstuffs; Salt pellets for wafer biscuits;
Salty biscuits; Sea salt for cooking; Sea salt for preserving foodstuffs; Seasoned
preserving foodstuffs; Salted biscuits; Salted tarts; Salted wafer biscuits; Salty biscuits; Sea salt forsalt for cooking;
Spiced Sea
cooking; salt;salt
Table salt
for preserving foodstuffs; Seasoned salt for cooking; Spiced salt; Table salt

https://search.ipaustralia.gov.au/trademarks/search/view/2137922/details 1/2