Co-existence agreement in trade mark law. What is in a name? Ask the Tassie Devils

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The buzz around the announcement of the 19th team in the AFL has certainly been met with a lot of excitement. Tasmania and I think all of Australia who have a soft spot for the Apple Isle have embraced the announcement with memberships hitting record levels for a new team entering a competition in Australia, especially when they don’t officially enter the competition until 2028.

One of the interesting side stories that has emerged in relation to the bid was the use of the name and a possible stoush that could have emerged with one of the world’s largest entertainment companies.

Tasmanians and their supporters would be surprised to learn that Warner Bros which annual revenue of $US 26 billion could have stopped the use of the name of the newly formed franchise in its tracks.

Many of us would recall with affection the Looney Tunes cartoons and the characters such as Bugs Bunny, Daffy Duck, Porky Pig and Tweety, but few would remember the Tasmanian Devil called ‘Taz’.

Robert McKimson, the American animator who was known for his work on the Looney Tunes and Merrie Melodies series of cartoons designed the character based on the real Tasmanian devil, or more specifically its carnivorous nature, voracious appetite, and surly disposition.

The famous voice over actor Mel Blanc voiced the first version of Taz commencing back in 1954.

Warner Bros registered the trade mark in 1984 and when the AFL decided to proceed with the 19th team a search of the world wide trade mark register discovered the trade mark was owned by Warner Bros.

So, what did the AFL do? As most responsible corporate citizens would they contacted Warner Bros and sought their permission to use the trade mark.

An AFL spokesperson said: “There were some in the company in the US who were unaware that the cartoon character that was created and first appeared in cartoons in 1954 was actually based on a real animal that was native to the island state of Tasmania way down in Australia.”

It was rumoured that they even Googled it to confirm the Tassie Devil character was inspired by one of Australia’s best-known marsupials, albeit not as popular as Kangaroos and Koalas.

Warner Bros confirmed they were open to granting a licence for the team to use the trademark, and a Co-Existence Agreement was negotiated as long as it was only used to promote the sport of Australian Football.

What is a Co-Existence Agreement?

In simple terms it is an agreement reached in good faith to avoid trade mark disputes in the future where on party wants to use an identical or similar brand owned by another party.

The essential terms of such an agreement are:

  • the category it can be used in within trademark law
  • geographic location and boundaries where it can be used
  • time restrictions on its use
  • quality control
  • remuneration for it uses if any
  • dispute resolution process
  • confidentiality

It very important to appreciate that this type of agreement is legally binding on the parties and should be treated seriously.

An important lesson from the Tassie Devils AFL experience is the importance of searching trade mark databases.

An experienced lawyer can undertake a comprehensive search not just for currently registered trade marks but also for prior registered or unregistered trade marks and advise on ways that any risks might be overcome or reduced as was evidenced in the case of the Tassie Devils.

In this case an important lesson was that transparency and good will of the parties resulted in a workable solution for both Warner Bros and the new Tassie devils.

Who knows Taz may well be the focus of a future cartoon in his AFL outfit.

How can FC Lawyers help?

The team at FC Lawyers has over 30 years’ experience assisting clients with all their trade mark and intellectual property needs.

Contact our team today to discuss any aspect of intellectual property law.

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