Frances Drummond (AU)

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Australian Trademarks Law Review – Edition 2

2018 marked the publication of the first Australian Trademarks Law Review from the Law Review series. The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organizations. Following the publishing of the first edition of the Australian chapter of 2018 … Continue reading

Social media influencers – to “like” or not to “like?”

Today, social media influencers are a key resource used by businesses to engage with consumers. Influencers include celebrities, bloggers or simply popular social media users in speciality areas like beauty or travel. Social media influencers’ posts can attract thousands, and sometimes millions, of views and likes. Such exposure allows businesses to instantly engage with a … Continue reading

Changes proposed regarding parallel imports – An exhausting concept for Australian trade mark owners?

In this article, we consider; the changes to the Trade Marks Act proposed in respect of parallel imports which the Draft Explanatory Memorandum states are aimed at ensuring that the law “better meet[s] the objective of facilitating the parallel importation of goods into Australia to the benefit of consumers by limiting the strategic use of … Continue reading

Shocking your clients just became passé: US Court takes away the edge from scandalous brands

Thanks to two recent rulings of the US Supreme Court and the Court of Appeals of the Federal Circuit Court, trade marks containing “disparaging”, “immoral” and “scandalous” matter are no longer barred from obtaining registration in the United States of America. In the past, the US Patent and Trade Mark Office (USPTO) had the power … Continue reading

Trade mark update: 11th Edition of the Nice Classification came into force on 1 January 2018

As many of you will know, the Nice Classification is the international system used to classify goods and services for trade mark purposes. The World Intellectual Property Office regularly updates and amends the Nice Classification in order to ensure that the lists remain current and include new products and services that come to market. On … Continue reading

Telstra hits a home run in defending its “Go to Rio” Olympiads

Last year, we reported on a decision of the Federal Court of Australia, in which the Australian Olympic Committee (AOC) unsuccessfully sought injunctive relief to prevent Telstra from running its “Go to Rio” advertising campaign in the lead-up to the 2016 Summer Olympic Games in Rio.[1] In an attempt to preserve the value of its … Continue reading

Beware the ghost of handshakes past – Could your IP licence survive termination?

What happens when an IP licence agreement is terminated? The obvious answer would of course be that the licence terminates too.  However, as the latest instalment in an ongoing saga involving the well-known PINK LADY brand of apples reminds us, imprecisely drafted licence agreements may come back to haunt unsuspecting licensors. How do you like … Continue reading

Who goes to Rio: Sports sponsorship and ambush marketing in Australia

The Australian Olympic Committee (AOC) is urging the public to support “true, valued Partners” after it lost its last minute bid to prevent ambush marketing ahead of the 2016 Summer Olympic Games. Australian Olympic Committee, Inc. v. Telstra Corporation Limited [2016] FCA 857 (29 July 2016). The decision by the Federal Court of Australia highlights the … Continue reading

Chinese trade mark decision creates greater certainty for manufacturers

There has been ongoing uncertainty over whether brand owners who manufacture branded goods in China, but do not sell those products in China, could infringe a Chinese trade mark registration held by a third party in that country. A recent Supreme People’s Court (SPC) decision clarifies that applying a trade mark to goods in China … Continue reading

Further changes to IP prosecution procedure in the pipeline for Australia

Following the barrage of changes under the “Raising of the Bar” amendments of April 2013, IP Australia have now released another public consultation paper seeking submissions on their proposals to further streamline IP processes. Whilst the proposals are more in the nature of procedural changes, if implemented, the changes would likely result in significant changes … Continue reading

Top 10 reasons to read the new and improved Brand Protection Blog

For more than two years, the Brand Protection Blog has posted timely information to help you promote and safeguard your brands in today’s increasingly competitive marketplace. Today we re-launch the Brand Protection Blog with a new look and tools to help you get the information you need more even more efficiently. If that wasn’t reason … Continue reading

Protecting the sports big bucks: Australia’s Major Sporting Events (Indicia and Images) Protection Act 2014 (the Act) effective 1 July 2014

PWC* has estimated that global sports sponsorship will be worth US$45.3 billion in 2015. Australia has a long history of hosting major sporting events such as the Olympics, Commonwealth Games, Rugby World Cup, Cricket World Cup and has also put in a bid for the Soccer World Cup. For many past events the Australian government … Continue reading

Band brands, band break-ups, and bickering in between

It is not something that any loyal music fan wants to hear, but bands, of all shapes, sizes and levels of musical talent, break-up. It is hardly the most optimistic forecast, but it’s one that, realistically, every musician needs to consider. Band break-ups, splits and band members being kicked out raise the question of ownership … Continue reading

ACCC v Kingisland Meatworks & Cellars: Food for thought

The Australian Competition and Consumer Commission (ACCC), the consumer watchdog in Australia, is cracking down on businesses making false and misleading premium claims to obtain a selling advantage. One type of premium claim suggests a product has a perceived quality through association with a place of origin, for example “Swiss chocolate” or “Belgian beer.” King … Continue reading

Brand owners continue to target parallel importers

A recent case brought by Electrolux in the Federal Court of Australia reflects the trend of brand owners targeting parallel imports of their goods into Australia. Electrolux Home Products Pty Ltd v Delap Impex Ltd [2013] FCA 600. The Federal Court strengthened the position of trade mark owners in this area in its decision in Paul’s Retail … Continue reading

Further changes to labeling and packaging for pharmaceutical businesses harmonization of ingredient names by the Therapeutic Goods Administration

In an effort to avoid confusion, the World Health Organization designates a generic name, or International Non-proprietary Name (INN), for each ingredient in medicines. Pharmaceutical companies may then use proprietary names, or trade marks, to distinguish their goods from those of other traders. An example of this is the INN ingredient ‘paracetamol’ which is also … Continue reading