[Fsf-friends] Linux Trademark rejected by Australia

[V. Sasi Kumar]

Here is the entire report from ZDNet India:

news > software
Linux trademark bid rejected
By Renai LeMay, ZDNet Australia
16 September 2005 03:12 PM

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An attempt by the nation's peak Linux body to register the name 'Linux'
on behalf of Linus Torvalds has failed. 

The regulator, Intellectual Property Australia, turned down the
application because the word 'Linux' was not distinctive enough to be
trademarked.

The registration would have prevented companies from claiming the name
as their own, or using it in trade paying royalties to the Linux Mark
Institute, a global body established by Linux creator Linus Torvalds.

In a letter dated 31 August addressed to Perth-based lawyer Jeremy
Malcolm, who represents Torvalds, Intellectual Property Australia
official Andrew Paul Lowe said: "For your client's trademark to be
registerable under the Trade Marks Act, it must have sufficient
'inherent adaptation to distinguish in the marketplace'. 

"In other words, it cannot be a term that other traders with similar
goods and services would need to use in the ordinary course of trade."

However, as IP Australia found, it was highly likely that other traders
would also need to use the word Linux.

The letter also called into question Malcolm's right to speak for
Torvalds in providing evidence to support the application.

"It is not clear from the declaration in what way Mr Jeremy Malcolm is
authorised and qualified to make this declaration on behalf of Mr Linus
Torvalds," the regulator said.

The applicant used Wikipedia and Google to back its claim but IP
Australia dismissed the examples. "The entry from the Wikipedia
encyclopaedia indicates 'Linux is a computer operating system and its
kernel' ... demonstrating generic use rather than trademark use.

"Additionally, the Google searches provided simply show that the word
Linux is a frequently used term on the Internet, and do not demonstrate
trademark usage."


The Google searches provided simply show that the word Linux is a
frequently used term on the Internet, and do not demonstrate trademark
usage 
Andrew Paul Lowe, IP Australia


The regulator also rejected the application on the basis it was similar
to existing trademarks owned locally -- for example, 'LinuxWorld' is
owned by publisher IDG -- and that consumers could subsequently be led
to believe that services around such marks were provided by the same
organisation.

Malcolm declined to comment on the decision, citing the need to consult
with his client.

IP Australia initially set 7 September as the deadline for further
submissions but this has been extended.

Linux Australia president Jonathan Oxer told ZDNet Australia the
organisation would seek its members' advice on whether to proceed with
the application, and bear the cost of $100 per month payable to IP
Australia.

Oxer said the Linux Australia executive committee was in favour of
continuing with the process, although there might be "a fairly low
chance of success".

But ultimately, the rejection could be just what the doctor ordered.

"My understanding is that if Linux Australia can't register that [Linux]
as a trademark, then nobody else could either.

"Our goal was to make sure the name is used in a reasonable way. If it's
not possible [for anyone else] to register it as a trademark, then that
has to some extent been achieved," Oxer said.

Linux Australia's other aim was to prevent the name 'Linux' from being
used inaccurately, and the organisation was considering asking IP
Australia to provide a written statement that there was no chance of any
other organisation registering the trademark.

Excerpt from Intellectual Property Australia's letter rejecting the
application. 

"For your client's trademark to be registerable under the Trade Marks
Act, it must have sufficient 'inherent adaptation to distinguish in the
marketplace'. 

"In other words, it cannot be a term that other traders with similar
goods and services would need to use in the ordinary course of trade."

The entire letter is available at:
http://www.zdnet.com.au/shared/images/news/linux/linux_tm.pdf

Best
V. Sasi Kumar

On Sun, 2005-09-18 at 19:54 +0530, Ramanraj K wrote:
> http://www.osnews.com/story.php?news_id=11882 has reported:
> 
> <quote>
> Linus Torvalds' bid to have the word 'Linux' trademarked in Australia
> has failed, with the local intellectual property regulator sending his
> lawyer a vitriolic letter deriding efforts to provide evidence the
> trademark application was legitimate. In the letter, published by
> ZDNet, the regulator points out that information from Wikipedia and
> Google used by the lawyer to support the trademark application is
> simply not effective in making the case for a trademark to be
> registered.
> </quote>
> 
> _______________________________________________
> Fsf-friends mailing list
> Fsf-friends at mm.gnu.org.in
> http://mm.gnu.org.in/mailman/listinfo/fsf-friends
-- 
V. Sasi Kumar <sasi.fsf at gmail.com>
Free Software Foundation of India