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Spreading his wings: Joseph Kelly, Kelly Workplace Lawyers
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Spreading his wings: Joseph Kelly, Kelly Workplace Lawyers

Workplace lawyer Joseph Kelly was well out of his comfort zone when he took on American Airlines in a trade mark dispute and won. After recently opening Kelly Workplace Lawyers, he speaks to…

Workplace lawyer Joseph Kelly was well out of his comfort zone when he took on American Airlines in a trade mark dispute and won. After recently opening Kelly Workplace Lawyers, he speaks to Angela Priestley

Trading areas: Workplace lawyer Joseph Kelly, who has recent opened his own firm, Kelly Workplace Lawyers
When American Airlines took on Member Advantage, a small Melbourne-based loyalty rewards program, over the use of the word "advantage" in its name, the commercial arm of the Association for Professional Engineers, Scientists and Managers Australia (APESMA) called on the services of its in-house lawyers to help.

Joseph Kelly, who then managed APESMA's small legal team, entered the spotlight as the leading man to defend the use of the word "advantage" in the Member Advantage name, which American Airlines claimed bore too much resemblance to their own loyalty reward program, American Airlines AAdvantage.

There was just one problem: Kelly was a workplace lawyer who had never handled a trademark dispute. His team's purpose was to predominantly work on the employment- related issues of APESMA members.

Quickly plucked from his employment law "comfort zone", Kelly says he gave some initial advice to Member Advantage before seeking a quote from a barrister friend to help.

"The board said, 'The quote's too high, you'll have to run it yourself'. I thought, as an employment lawyer that makes perfect sense, that I should work on a trademark matter!" says Kelly.

Not surprisingly, Kelly says he did everything to avoid litigation and initially thought he was making good progress, despite the large amount of affidavit material being filed by American Airlines.

"They filed reams and reams of historical material to show the history and the money and goodwill that had gone into the name they were trying to protect," says Kelly. "We got literally bombarded with these box loads of materials and we thought 'ok their instructions are not to settle, its simply to litigate'".

Up against so much material and a number of "real" trademark lawyers, Kelly says he took a simple academic approach to the matter. "It was a very simple line: that we bare no relation to you and we don't think anybody would ever be misled between the two. You don't trade in this jurisdiction and your brand is so distinctive that there couldn't be any chance of confusion."

Kelly offered just a single affidavit for the matter from Cheryl Patten, the general manager of Member Advantage, detailing the organisation's historical information alongside its trading history and investment in the goodwill of the name.

The argument worked. The delegate of the registrar found that the word "advantage" carries a "low inherent distinctiveness" in relation to loyalty schemes and that the American Airline AAdvantage program could not seek protection under the Trade Mark Act because AAdvantage did not have enough recognition with Australian consumers.

While Kelly admits the matter did not take up that much of his time during his employment at APESMA, it was a four-year long battle in which the decision was handed down in February this year.

And it was enough for Kelly to decide he was ready to branch out on his own - not quite in the trademark space but in the area of law he knows best, workplace relations.

Kelly opened his own firm, Kelly Workplace Lawyers, last month and so far work has been good.

As a father and a regular blogger for a parenting magazine, Kelly says the flexibility of having his own firm is a huge benefit. "I'm at home with a sleeping 22-month-old in the next room. It's nice to structure my days so that I can have this time and work in the evenings if I want to."

In the meantime, Kelly can be content with the fact he took on one of the world's largest airlines in an unfamiliar area of law and won. "I think they even quoted part of my submission in part of the judgment," he says. "I felt like a real trademark lawyer after that!"

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