Trademarks


June 20, 2017 11:02 AM | Posted by Nicole Reid | Permalink
A United States appeal court has recently found in favour of Google, Inc in a case that sought to argue that the word GOOGLE should lose trade mark protection because it has become generic. read more
June 9, 2017 10:55 AM | Posted by Nadia Braad and Lana Ristic | Permalink
The recent Full Federal Court decision of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd highlights the danger of filing a trade mark application in the wrong name. read more
May 9, 2017 8:56 AM | Posted by Nadia Braad & Lana Ristic | Permalink
A new Full Federal Court decision appears to have upended the treatment of metatags in the trade mark infringement context. read more
February 10, 2017 11:19 AM | Posted by Nicole Reid | Permalink
According to the Australian Trade Mark Search system, as at 9 February 2017, there were 953 shape marks registered as trade marks, and a further 195 pending shape marks. Some of these marks are shapes used in combination with one or more other kinds of marks (commonly a device, or both word and device), but many are shape marks only. read more
February 9, 2017 12:46 PM | Posted by Dutkowski, Rebecca | Permalink
In our previous blog post, we had reported that in a battle for the name KYLIE, Kylie Minogue had opposed a US trade mark application for "KYLIE" by Kylie Jenner, of "Keeping up the with the Kardashians" fame/infamy. Further developments in this battle, in both Australia and the US have now occurred. read more
January 25, 2017 4:52 PM | Posted by Hayley Tarr | Permalink
An analysis of the number of trade mark applications lodged in each class in 2016 reveals a great disparity between the classes. read more
December 23, 2016 4:15 PM | Posted by Nadia Braad & Edward Knowlman | Permalink
Not so long ago, but in a country far, far away, Australia Post set up the 'ShopMate' service, which offers consumers a way to obtain products from sellers in the US who do not normally ship to Australia.  In the lead up to 'Black Friday', monthly registrations for the service tripled.  However, trade mark owners might have a bad feeling about ShopMate, as it may have the unintended consequence of frustrating trade mark owners seeking to prevent cross-jurisdictional importation. read more
December 7, 2016 2:34 PM | Posted by Hayley Tarr | Permalink
In this post, Hayley Tarr, Senior Associate at Minter Ellison – Gold Coast, suggests that the greater social good would be achieved by a delegation of powers from the courts (the judiciary) to the Trade Marks Office (the executive). read more
July 19, 2016 3:27 PM | Posted by Brad Woods | Permalink
On 28 June 2016, the Full Court of the Federal Court of Australia handed down a landmark judgment, revealing trade mark owners risk forfeiting their registered trade marks if they fail to exercise actual control over the use of those marks by licensees. read more
July 8, 2016 9:59 AM | Posted by Rebecca Dutkowski | Permalink
In a recent example of what can happen when a company is able to obtain a trade mark for a commonly used word, in the United States, Citigroup is suing phone provider AT&T in relation to its newly launched rewards program 'AT&T THANKS', for alleged infringement of Citigroup's trade mark rights (among other stated rights) in the word THANK YOU. read more
April 29, 2016 3:53 PM | Posted by Jonathan Kelp and Rebecca Pereira | Permalink
Following on from our earlier blog post here, this post considers the key copyright and trade marks aspects of the Productivity Commission's draft report into Australia's intellectual property regime, released today. read more
March 18, 2016 4:08 PM | Posted by Alexander Horton | Permalink
The UK Court of Appeal recently handed down a further decision in the long-running trade mark and passing off dispute between Comic Enterprises Ltd and Twentieth Century Fox Film Corporation. The proceedings concern the right of Fox to use the word 'glee' as the name for its immensely popular TV series. read more
March 16, 2016 2:32 PM | Posted by Rebecca Dutkowski | Permalink
In a recent opposition filed with the USPTO, Kylie Minogue opposed a trade mark application for "KYLIE" filed by Kylie Jenner. Ms Minogue claimed that her earlier rights and use of KYLIE would likely give rise to confusion, mistake or deception and also that any use of KYLIE by Ms Jenner would dilute Ms Minogue's brand by either blurring or tarnishment. read more
December 18, 2015 9:42 AM | Posted by Paul Kallenbach | Permalink

In an eventful year for trade mark and copyright law (particularly in the online piracy domain), we look at 9 of the key developments in Australian trade mark and copyright law this year, in Whiskey, websites, bottles and blocks.

 

 

 

read more
December 15, 2015 12:44 PM | Posted by James Patto & Paul Kallenbach | Permalink
November 20, 2015 4:36 PM | Posted by Chen, Jialing | Permalink
The Federal Court has allowed registration of the "MALTITOS" trade mark following opposition by the trade mark proprietor of "MALTESERS". read more
November 11, 2015 3:12 PM | Posted by Jonathan Kelp | Permalink
The Full Federal Court has confirmed that Telstra's "YELLOW" word mark is not able to be registered as a trade mark. Subject to any potential appeal to the High Court, the Full Court's decision brings to an end a 12 year battle by Telstra and Sensis to protect the word as a trade mark, which it applied to register in July 2003.
read more
March 5, 2015 5:33 PM | Posted by Rebecca Pereira | Permalink
The Australian Competition and Consumer Commission (ACCC) has instituted proceedings against the sponsor of Nurofen products, Reckitt Benckiser (Australia) Pty Ltd (Reckitt Benckiser), in the Federal Court of Australia (NSD180/2015). The ACCC claims that Reckitt Benckiser made false or misleading claims in relation to its products "Nurofen Back Pain", "Nurofen Period Pain", "Nurofen Migraine Pain", and "Nurofen Tension Headache". read more
January 9, 2015 2:33 PM | Posted by Evetts, Megan | Permalink
Having battled on sales charts and childhood palates for well over a century, the Federal Court has handed down a judgment in the latest round of a four-year Court dispute between these soft-drink giants. Justice Besanko found in favour of PepsiCo, ruling that their bottle shape was not deceptively similar to Coca-Cola's trade marks and did not constitute passing off or misleading or deceptive conduct. read more
December 3, 2014 4:00 PM | Posted by Paul Jeffreys | Permalink
The High Court has held in an eagerly awaited trade mark decision that the words 'Cinque Stelle' and 'Oro' (Italian for 'Five Stars' and 'Gold' respectively) are inherently adapted to distinguish one trader's coffee products from another (a requirement of a valid trade mark under section 41 of the Trade Marks Act). read more
July 15, 2014 3:26 PM | Posted by Tsang, Gilbert | Permalink
The risk of failing to establish that a competitor has engaged in trade mark infringement is magnified when a registered trade mark owner has opted to use highly descriptive words, synonymous with the relevant field of business as, or as part of, their trade mark.  In a recent appeal decision, the Full Court of the Federal Court of Australia upheld a decision that a composite registered device trade mark containing the words "LIFTSHOP" was not infringed by a competitor who included the words "Lift Shop" in the title of their web page when shown in a page of search results.  The Full Court's decision was based on a finding that the trade mark owner had not shown that the use of the words "Lift Shop" in the search results page amounted to use "as a trade mark". read more
May 16, 2014 9:18 AM | Posted by Surkis, Amy | Permalink
On 10 May 2014, at the first day of the annual meeting of INTA (the International Trademark Association) in Hong Kong, WIPO announced the launch of a new addition to its Global Brand Database search tool.  read more
May 6, 2014 5:11 PM | Posted by Helen Paterson and Charles Alexander | Permalink

Carlton and United Breweries (CUB) has given the ACCC a court-enforceable undertaking after acknowledging that the labelling for Byron Bay Pale Lager (the Lager) may have misled consumers.

read more
April 10, 2014 8:22 AM | Posted by Paul Kallenbach | Permalink

Our team reviews key trade mark law developments from last year, and provides its predictions for 2014.

You can find the report here.

read more
March 25, 2014 5:47 PM | Posted by Surkis, Amy | Permalink
On 14 March 2014 the High Court granted special leave in the Cantarella Bros v Modena dispute over the use of foreign word trade marks for coffee and coffee related goods. read more
November 12, 2013 3:45 PM | Posted by Nicole Reid and Paul Kallenbach | Permalink
Knott Investments Pty Ltd (Knott) has appealed against the Federal Court's orders permanently restraining it from using the Winnebago name and logo in relation to motor homes on the basis that it had engaged in passing off and misleading or deceptive conduct. read more
January 16, 2013 12:00 AM | Posted by Posted by Charmain Panickar and Peter Kearney | Permalink
A recent decision by Perram J in the Federal Court case Solar Technology AG v Beyond Building Systems Pty Ltd [2012] FCA 1483 provides some instructive illustrations of the law of passing off and trade mark infringement.

read more
August 6, 2012 11:16 AM | Posted by Nick Liau and Paul Kallenbach | Permalink
Winnebago Industries, Inc (Winnebago) is a popular American manufacturer of motor homes (commonly known as RVs in the US). Knott Investments (Knott) had been using the Winnebago name to manufacture motor homes in Australia since 1982 without any official endorsement from the American company. read more