Frances Drummond (AU)

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Choc it out: Lindt’s golden bunny granted trade mark recognition in the EU

By Frances Drummond (AU) and Isobel Taylor (AU) on September 15, 2021 Posted in Trademark

It is well-established that a shape or colour alone can function as a trade mark, that is, a badge of origin indicating to consumers the source of the relevant goods or services. However, in practice, achieving the level of ubiquity required to be granted such a trade mark registration can be difficult.[1] It is also … Continue reading

GIVE ME ONE REASON (Why I Should Settle this Copyright Infringement Dispute)

By Frances Drummond (AU) on February 11, 2021 Posted in Copyright, Intellectual Property

Sampling is a popular form of music borrowing, and it is common practice for artists to experiment and create derivative works of an existing song before obtaining a license from the copyright holder. This creative process received significant attention in a copyright infringement dispute brought by singer songwriter, Tracy Chapman, against rapper, Onika Tanya Maraj … Continue reading

Bacardi Must ‘Gin and Beer It’ In Failed Trade Mark Opposition Proceeding

By Frances Drummond (AU) and Vicky Zhang (AU) on September 24, 2020 Posted in Trademark

The decision of Bacardi & Company Limited v Dickinson Distribution Group Pty Ltd [2020] ATMO 117 (1 July 2020) confirms the acceptance of the similarity between goods in classes 32 and 33, and in particular accepts that gin is similar to beer. Hence, it is vitally important for owners of marks registered in classes 32 … Continue reading

A smooth [not crunchy] win in Bega’s favour

By Matt Allen (AU), Alyson Poole (AU) and Frances Drummond (AU) on June 18, 2020 Posted in Trademark

The facts of the 2019 Federal Court decision in Kraft Foods Group Brands LLC v Bega Cheese Limited were far from simple. The case centred around a battle between Kraft and Bega, involving considerations of ownership and divestment of rights in trade dress and goodwill and internal and external trade mark licensing structures. Ultimately, the … Continue reading

A different type of virus

By Frances Drummond (AU) and Alyson Poole (AU) on April 5, 2020 Posted in Advertising

When times become tough, stressful and trying, many people react with humour. As the world finds itself in the midst of a global medical virus, a different type of virus – a virtual virus – has taken off and continues to grow. COVID-19. A virus interchangeably referred to as Coronavirus. A virus which is familiar … Continue reading

Stranger than Sci-Fi Part 2: Should Artificial Intelligence machines be recognised as owners of IP?

By Frances Drummond (AU) and Isobel Taylor (AU) on February 26, 2020 Posted in Trademark

IP legislation often finds itself struggling to plug gaps in the law caused by the rapid pace of technological change, and the state of the law surrounding ownership of AI-generated products is no different. In the first article of this series, we considered how current Australian patent and copyright law frameworks would deal with questions … Continue reading

Stranger than Sci-Fi: Can (and should) Artificial Intelligence machines own intellectual property?

By Frances Drummond (AU) and Isobel Taylor (AU) on February 24, 2020 Posted in Copyright, General

Artificial Intelligence, or AI, refers to the capability of a machine to imitate intelligent human behaviour. Though it sounds like something out of a sci-fi film, the reality is that AI is quickly becoming a norm in our everyday lives, from the simple AI systems used to sort email inboxes, to complex AI systems known … Continue reading

Are IP Australia costs awards set to finally reflect costs incurred? Proposed changes to trade mark hearing cost awards

By Rebecca Brenikov (AU) and Frances Drummond (AU) on January 16, 2020 Posted in Trademark

In December 2019, after much anticipation, IP Australia released a draft of proposed amendments to the costs that may be awarded in relation to trade marks proceedings heard before IP Australia. IP Australia comments that these changes should ensure awards more accurately reflect the actual costs incurred by parties and are based on Federal Court … Continue reading

It’s NUT yours, it’s mine: Kraft Foods v Bega Cheese and the importance of intellectual property due diligence

By Rebecca Brenikov (AU) and Frances Drummond (AU) on May 13, 2019 Posted in Trademark

It’s the peanut butter packaging debate that has recently captured the hearts and minds of the Australian public. Whether you were confused or not, the Court’s decision (found here) highlights the need for thorough IP due diligence whether you are purchasing or selling a company, and reiterates the importance of understanding the assets being dealt … Continue reading

Ok Google, Hey Siri, Hi Alexa – have you renewed my trade mark yet?

By Frances Drummond (AU), Alyson Poole (AU), Sophie Lees (AU) and Rebecca Brenikov (AU) on March 18, 2019 Posted in Trademark

With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context. Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with … Continue reading

Australian Trademarks Law Review – Edition 2

By Frances Drummond (AU), Sophie Lees (AU) and Isobel Taylor (AU) on November 26, 2018 Posted in Trademark

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

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

By Frances Drummond (AU) and Rebecca Brenikov (AU) on April 6, 2018 Posted in Trademark

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

By Frances Drummond (AU) and Isobel Taylor (AU) on February 15, 2018 Posted in Trademark

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

Back to Basics – Australian Trade Mark Law 101

By Frances Drummond (AU) and Sophie Lees (AU) on February 14, 2018 Posted in Trademark

2018 marks the publication of the first Trademarks Law Review from the Law Review series. … Continue reading

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

By Frances Drummond (AU) and Rebecca Brenikov (AU) on January 21, 2018 Posted in Trademark

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

By Frances Drummond (AU) and Isobel Taylor (AU) on October 30, 2017 Posted in Advertising

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?

By Frances Drummond (AU) on May 18, 2017 Posted in Trademark

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

By Frances Drummond (AU) on August 5, 2016 Posted in Advertising, Copyright

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

New country of origin food labeling system

By Alyson Poole (AU) and Frances Drummond (AU) on May 9, 2016 Posted in Advertising

The Times, They Are A Changin’: From 1 July 2016, new country of origin labeling requirements will become a reality in Australia, with a new food labeling system commencing under the Australian Consumer Law. Both consumers and businesses need to be aware of the new system, which is intended to ensure that labels are clear … Continue reading

Chinese trade mark decision creates greater certainty for manufacturers

By Georgina Hey (AU) and Frances Drummond (AU) on May 4, 2016 Posted in Trademark

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

By Frances Drummond (AU) and Lai Lynn Choong (AU) on March 19, 2015 Posted in Trademark

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

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

By Frances Drummond (AU) on July 14, 2014 Posted in Trademark

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