MICHAEL WEST August 18, 2012
It took a government to bring down Big Tobacco but there's no bringing down Big Law.
On the same day the High Court delivered its astounding judgment, tossing out the challenge to plain packaging laws this week, there was another intellectual property stoush afoot.
This one was far smaller; a "David and Goliath" tale and a salutary warning for aspiring business people.
Sara Park, a single mother from Sydney's northern beaches, had set up her company Centurion Deals Pty Ltd last year, and registered the domain name centuriondeals.com.au. Her business was styled along "Groupon" lines. She offered health and beauty products, special deals and getaways to as large a client list as she could muster. Her hopes and dreams were high, her revenue as yet minuscule.
Out of the blue, American Express bobbed along last week with a menacing legal letter. It claimed she had infringed its intellectual property rights. She was guilty of "passing off" an Amex product.
Amex has a credit card called Centurion, you see. This is its most exclusive credit card: invitation only, $5000 upfront and $2500 in annual fees.
No matter that Sara Park's brand was not Centurion but Centurion Deals. No matter that her font, logo and colours bore no resemblance to the Amex marque. No matter that she was offering another product altogether, the letter wailed on with high indignation about her false, misleading and deceptive conduct.
By the tone of it you could be forgiven for thinking that Amex had just been denuded of its entire suite of brands and forced to sell credit cards in plain brown colours with a logo of a nicotine-stained mouth and a mangled lung.
If she didn't recall all her promotional material, delete the word "Centurion" from her website and "transfer to our client the brand name www.centuriondeals.com.au" by Wednesday 5pm, Sara Park would be dragged through the courts.
The global juggernaut also demanded a cut of her "profits", which was tricky as her entire income would hardly have covered the billings for Minter Ellison's staples and Post-It notes.
We were keen to lend American Express the benefit of the doubt, that it was not merely bullying a tiny start-up, and so inquired as how it was faring with other unscrupulous predators who had been meddling with the Centurion marque.
Had American Express taken action against Centurion Rugby, the supplier of tackle bags and goal-post protectors from Dewsbury?
The Amex spokesperson kindly replied with the good old, "the matter you are referring to is currently subject to legal proceedings and we are unable to provide a comment".
Ahem … the matter was not before a court, it was just subject to an intimidating letter whose origin might well have been a quick-witted paralegal scouring the trademarks register to drum up a bit of business.
What about Centurion Brands, we asked, the supplier of the superlative Winged Weeder? Surely this interloper from South Dakota must be infringing upon Amex's sacred and venerable intellectual property. After all, Centurion Brands' Winged Weeder 800 (with Telescoping Handle) was the Rolls-Royce of gardening instruments, priding itself on high-end deployment.
This was the weeder for the investment bankers of Wall Street. No more kneeling! Just the optimal tool for cultivating, hoeing, seed planting, edging and, of course, raking and circular-tilling.
But no, there was no response from American Express. Sadly the head of country, Lisa Vehrenkamp, was unavailable for an interview either.
That was a pity, for we may never know whether Lisa's legal eagles had brought proceedings against the dastardly Centurion Cage & Aviaries either. Here was another Centurion blithely touting bird cages and boasting of "Centurion Quality".
"Caged Birds can be Happy Birds if they're in a Centurion Cage", said the mission statement, clearly and despicably infringing upon the hallowed IP of American Express.
As its lawyers Minter Ellison had pointed out in their letter of demand to the young businesswoman, Centurion was a highly-valued and exclusive brand, a fact that was soon borne out when we discovered that Centurion had also been the brand name for a range of catheters.
Alas, these cutting-edge Centurion bodily insertion devices, which had been supplied to leading urologists, had also been the subject of a "recall" notice from the US Food & Drug Administration in 1999. It was a "Class 1" recall notice too, which was "the most serious type of recall and involve situations in which there is a reasonable probability that use of these products will cause serious injury or death".
In the course of our probe we also, rather incidentally, found that it was the ancient Syrians who had invented the catheter - from river reeds nonetheless! Had the ancient Syrians been availed of the pleasure of Minter Ellison's services, they might have charged those pesky ancient Greeks for usurping their intellectual property rights.
In any case, the moral of the story for business people is check the trademarks register before you do anything. Even then you're not safe. And the message for everybody else is, transaction levels are down, watch out, pettifogging is on the rise.