Exclusive: Rival Australian LGBTI+ news outlets Star Observer and QNews are involved in a behind-the-scenes stand-off in which legal action has been threatened over QNews registering a trademark and business using the same name as its competitor’s publication.
Gay Sydney News can reveal that Star Observer, which has been publishing news about Australia’s LGBTI+ community since 1979, unwittingly let its “Star Observer” trademark registration expire during the COVID pandemic, with it ceasing to exist as a registered trademark on May 25, 2022.
Credit: Star Observer / Richard Bakker’s LinkedIn profile.
Following this, rival QNews registered “Star Observer” as its own trademark on September 25 last year and later registered a business using the same name on May 5 last month.
QNews’ registration of the “Star Observer” trademark was accepted by trademark regulator IP Australia and put on its register on May 3 this year with no objections, although it has yet to make use of it.
Star Observer publisher and owner Lawrence Gibbons told Gay Sydney News he only found out last month while doing competitor research that QNews had registered a business in his publication’s name.
When Gay Sydney News informed him that a public records search showed QNews had also registered the trademark “Star Observer”, he said it was the first time he had heard about it.
Gibbons said he was shocked that a competitor had registered a business and trademark using the same name as his 45-year-old publication, which he acquired in June 2019 after its former owner put the publication into voluntary administration due to financial difficulties.
Company records show QNews is co-owned and co-directed by its publisher, Richard Bakker, and William “Bill” Rutkin, both of whom reside in Queensland.
Gibbons claimed to Gay Sydney News that QNews had “attempted to lay claim to the Star Observer through a bureaucratic sleight of hand”.
“We will defend our exclusive rights to publish the Star Observer through all means necessary,” he said.
“Mr Bakker has been advised through our lawyers that if he does not relinquish his dubious claims over the Star Observer, we will commence legal action against him.”
When Gay Sydney News approached Bakker on Monday night this week to provide comment for this story, he said he could not reveal his intentions for acquiring the “Star Observer” trademark and business name until he had spoken to his lawyer.
The next day, he emailed a statement that said QNews had “registered a business name and registered a trademark, both of which were lawfully available for it to register”.
“It has not done anything further with the registration to date.
“In so doing, QNews and its directors have acted lawfully, and despite what may be alleged against them by Star Observer, they have not acted fraudulently, maliciously, or in bad faith.
“QNews will continue to act lawfully and reasonably and is happy to continue discussions with Star Observer over the registrations.”
Asked in a follow-up email if QNews planned to do anything with the “Star Observer” trademark and business name; if QNews would ever trade under the Star Observer name; and if QNews was holding the name and trademark in order to sell it to Star Observer, Bakker replied: “You have already received my response, which pertains to a private commercial matter and should not be reported.
“However, I acknowledge that I cannot prevent you from doing so.”
An acquaintance of both Gibbons and Bakker, who did not wish to be named, told Gay Sydney News that the two media moguls were not fans of each other and that this intensified in July last year when QNews, once confined to Queensland, decided to launch a magazine in Sydney, where Star Observer has its largest readership. “The lesser I have to do with Lawrence the better,” Bakker told Gay Sydney News by phone.
Three academic legal experts Gay Sydney News spoke to for this story (quoted later in this article) said Gibbons’ Star Observer publication had many legal grounds upon which it could try to gain control of the QNews “Star Observer” trademark.
While the new trademark registration was technically legal under trademark law given the old trademark had lapsed, the experts said Star Observer could use multiple provisions in the Trade Marks Act to have it revoked or invalidated.
Gibbons said he was dumbfounded by QNews’ move to register his publication’s name as a trademark given he had helped his rival secure funding via a content licensing deal with Google in his capacity as co-chair of the Public Interest Publishers Alliance.
The alliance represented QNews and Star Observer, among other small publishers, in negotiations with Google, resulting in both publishers receiving new funds from the tech giant for their news content.
Responding to this, Bakker said: “…both Lawrence and I are bound by a non-disclosure agreement (NDA) with Google; therefore, I cannot discuss any related details.”
Legal letter
When Gibbons found out about the registration of the “Star Observer” business name by QNews last month, Alex Tees, a lawyer for Star Observer, sent a legal letter to multiple QNews staff members that made several untested allegations against the company over its registration of the business name.
Sent on Friday, May 24, and seen by Gay Sydney News, it demanded a response by the following Monday.
Acting for QNews, Robert King from law firm Cornwalls responded on Monday, May 27, rejecting the allegations. “… at the outset, our client and its directors deny any bad faith, abuses of process, making false declarations and most certainly, breaches of any criminal code provisions,” King wrote.
“Your client is simply wrong about malicious calculated moves to a number of matters set out in the email. Your client’s assertions are without factual basis. In any event, we are in the meantime confirming our client’s detailed instructions about the facts of the matters about which your client complains. We will be able to respond appropriately and accurately by tomorrow.”
The promised follow-up response by QNews’ lawyer never arrived the next day.
But then on Wednesday this week, more than three weeks later and just two days after Gay Sydney News’ initial inquiries with QNews, Gibbons heard back.
A QNews representative, Gibbons said, had been in touch to say that the company was willing to relinquish the “Star Observer” name registrations via a deed. The catch? Gibbons is not to disparage QNews.
As of Wednesday evening, the “Star Observer” trademark and business name remained in QNews’ hands.
What the trademark regulator says
A spokesperson for trademark regulator IP Australia told Gay Sydney News that while it could not comment on the specifics of a particular dispute, it is possible for a registered trademark to be “cancelled” by the Federal Court under provisions within the Trade Marks Act.
“There are several grounds under which a registered trademark can be cancelled,” the spokesperson said. “These grounds include that the person who has registered the trademark is not the true owner of the trademark (under common law), or that the trademark was filed in bad faith.”
The spokesperson said ownership of a trademark under common law doesn’t automatically cease when a trademark is deregistered. “In addition, if a person has established a reputation using a trademark, it is also possible to seek cancellation of a similar trademark registered by another person on the grounds that its use would likely cause confusion,” the spokesperson said.
“Similarly, there are defences under the Trade Marks Act which may allow a person who has been using a trademark to avoid infringing someone else’s similar registered trade mark.”
A person may also be able to register a trademark based on prior use, the spokesperson said, even if someone else already has a similar registered trademark.
“Each case must be considered on its merits based on the evidence available,” the spokesperson said.
“Unfortunately, sometimes resolving matters through the courts can be very costly, which highlights the importance of maintaining existing trademark registrations.”
What legal experts say
Dr Fady Aoun, a senior lecturer at the University of Sydney Law School who specialises in trademark law, said he believed Star Observer had grounds to have the newly registered trademark revoked.
The cheapest option it had available to itself, without going through a potentially lengthy and costly court case, was writing to IP Australia to request revocation of the trademark under Section 84A of the Trade Marks Act within 12 months of QNews’ trademark registration date.
“The registrar can, in certain circumstances, revoke the trademark if that trademark ought not [to] have been registered considering all the circumstances,” Aoun said.
This application could be made on the basis of some sort of administrative error, with circumstances including, according to the Trade Marks Act, “any use that has been made of the trademark”.
“If the registrar thinks that it’s reasonable to revoke the registration considering all the circumstances, then they’ll have that registration of QNews’ ‘Star Observer’ [trademark] revoked.”
He said Star Observer should have opposed QNews’ registration of “Star Observer” while it was still able to before it was put on the public register. “They didn’t do it,” Aoun said. “They should have done it. There was so many grounds on which they could have done it.
“Having said that, it’s not the end of the matter because many of the grounds in which you could oppose [it] are also grounds in which you can seek to revoke the trademark.”
If Star Observer was to instead pursue legal action as it has threatened, University of Melbourne Law School Associate Professor and lawyer Jason Bosland said there were multiple grounds upon which it could argue for revocation of QNews’ “Star Observer” trademark under Section 88 of the Trade Marks Act.
One of those grounds included arguing that the trademark’s use by QNews was “likely to deceive or cause confusion“.
“In order to apply for a trademark, you have to be the owner of it,” Bosland said. “And what [Star Observer the publication] could argue is that because [they were] … the first to use it all those years ago, they are the owner, and therefore they’re entitled to have it registered in their name.”
While stressing that he was not providing legal advice, Bosland said he would recommend, given the circumstances, using this part of the Act through a court process – instead of writing a letter to the trademark regulator – “because the rectification would [result in] transfer of the ownership of the trademark back to [Star Observer the publisher]” if it won such a case.
Bosland said Section 60 of the Act could also be used to argue that QNews’ trademark was similar to a trademark that had “acquired a reputation in Australia” and should therefore be cancelled.
Benjamin Hopper, a law lecturer at the University of Melbourne Law School, said using Section 60 of the Trade Marks Act was likely the best ground for Star Observer to argue its ownership of the trademark.
Hopper added that registering a business name alone did not give you any exclusive intellectual property rights, which was why trademarks were important to register to protect those rights.
Gay Sydney News editor