“123 Internet,” “Flexilearn Ltd,” “Moodle Partners NZ,” “Onlearn Ltd,” and citizen Gary Trevor Benner must abstain from illicit use of the Moodle brand and registered trademarks associated with the open source LMS, or face legal consequences in the Kiwi judicial system, The Reseller reports.
Benner was one of the early beneficiaries of the “MOODLE Partner Certified Services Provider Programme,” and the first in New Zealand, with a deal struck in 2004. It was terminated in 2006 by the removal of the association in the register, after which he continued using the name and trademarks without license. Throughout the partnership, Moodle received not more than $125 NZD, despite evidence that Benner was offering services under the official guise of contracts that would eventually prove “to be outside his ability to deliver.” In 2016, Moodle Pty Ltd failed to renew the trademark, which Benner applied to register and earned in 2017. “First use” claims and misrepresentation of an association no longer active were the basis for a request to invalidate and return the trademark last May. Considering Benner’s registration “made in bad faith” and “clearly opportunistic,” judge Venning in June 22 ruled in favor of the plaintiff. He reawarded the trademark to Moodle Ltd Pty and signed an injunction to restrain as means of relief. Benner is also liable for the legal costs incurred by Moodle and damages which the company can set as a share of the profits at a later time.
Moodle Pty Ltd had sent cease and desist letters before appealing to the nation’s High Court with probable cause under its Fair Trading Act. Signatory of international conventions, New Zealand is responsible for the protection of trademarks and other intangible assets against infringements including confusion, misrepresentation, and “unacceptable commercial behavior,” among others.
The ruling also seeks to prevent misleading use of web addresses, assets covered by the law of the land when they have the top-level domain ‘
.nz.’ Court rulings show Benner had registered at least two sites,
moodle.cloud.co.nz which falsely claimed endorsement from Moodle Pty Ltd intermittently up until early this year.
Brands and trademarks are essential assets in software and digital markets at large. Moodle has reportedly made copious efforts to protect its intangible assets in several countries beyond New Zealand, despite its failure to renew in 2016. Given its significance as a source of revenue, the “MOODLE Partner Certified Services Provider Programme” designation is highly regarded by Martin Dougiamas, founder, director, and majority stakeholder of Moodle Pty Ltd.
Private LMS companies are not under obligation to publish financial statements. As a reference Canvas LMS parent company Instructure’s financial statements at the end of 2017 claim “Intangible assets” worth $9 million USD.
Catalyst IT and HRDNZ are the only official Moodle Partners in New Zealand. Find the global list of official Moodle Partners up to date at moodle.com/partners.
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