A Melbourne employment lawyer has crossed into the trademark dispute space to take on American Airlines on behalf of his in-house employer, the Australian commercial loyalty program, Member Advantage.
Joseph Kelly, who has recently started his own firm, Kelly Workplace Lawyers, was an in-house lawyer with Member Advantage, the commercial arm of the Association of Professional Engineers, Scientists and Managers Australia, when he was asked to answer attempts by American Airlines to restrict Member Advantage from using its name because it carried the word "advantage".
American Airlines sought the restriction because the word "advantage" is used in its frequent flyer program, American Airline AAdvantage.
After a prolonged four-year argument and a Trade Mark Hearing in December 2010, a decision was handed down earlier this month.
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.
According to Kelly, he never expected the matter to go as far as it did, and acknowledges that it took him directly out of his employment law "comfort zone". He gave initial advice to Member Advantage before seeking a quote from a barrister 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!" Kelly told Lawyers Weekly.
Kelly said he took a simple academic approach to the matter, arguing that the two names bore no relation to each other and that it would be difficult for consumers to be misled.
"We said 'we don't see how the consumer can be deceived and how a company that doesn't trade in this country can claim that there could be any deception.'"
Member Advantage general manager Cheryle Patten said they were relieved to hear about the win. "It was frightening to take on such a big US-based company which clearly had resources to launch and continue this action over a long period," she said.
Member Advantages has 450,000 customers in Australia and New Zealand, while American Airlines has no Australian presence and only ever flew direct to Australia, via Brisbane, between 1990 and 1992.
American Airlines was ordered to pay all costs.
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