Tag archives: trade mark law

Are tougher days coming for approval of agribusiness certification trademarks in Australia?

By Georgina Hey (AU) and Amanda Caldwell (AU) on November 29, 2018 Posted in Advertising, Trademark

On 22 November 2018 the Australian Competition and Consumer Commission (ACCC) issued its initial assessment of the rules governing use of four certification trade marks in the name of OxoPak Pty Ltd, indicating its intention deny approval for the certification rules, and therefore the trade marks will be denied.… Continue reading

V Energy loses a mother of a battle over color trademark: Australia court’s decision in Frucor v Coca-Cola

By Helen Macpherson (AU) and Alyson Poole (AU) on August 13, 2018 Posted in Trademark

We, as consumers, regularly associate colours with our favourite brands as we stroll down supermarket aisles and peer at billboards and banners in shopping centres. But for brand holders, gaining protection for proprietary colours is not a walk in the (green) park. The recent decision of Frucor Beverages Limited v The Coca-Cola Company [2018] FCA … 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

The European Commission has its say: EU trade marks post-Brexit

By Georgina Hey (AU) and Sophie Lees (AU) on March 15, 2018 Posted in Trademark

On 28 February 2018, the European Commission released its draft withdrawal agreement setting out a proposal on the arrangements for the withdrawal of the UK from the EU (Withdrawal Agreement). The full text of the Withdrawal Agreement can be viewed here: European Commission’s Draft Withdrawal Agreement dated 28 February 2018 (see Title IV on Intellectual … Continue reading

Cybersquatters – How to protect your brand from unwanted ‘guests’ online

By Georgina Hey (AU) and Rebecca Brenikov (AU) on March 9, 2018 Posted in Advertising, Trademark

The internet is now the normal conduit for everyday personal, commercial and social transactions. It is more important than ever to ensure that your consumers know where to find your business online, and that no third parties are seeking to trade off your reputation in the online space. Domain names are the primary form 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

What Brexit means for IP: The UK Law Society, the IP Bar, CIPA and CITMA weigh in on Brexit strategy

By Georgina Hey (AU) and Rebecca Brenikov (AU) on January 21, 2018 Posted in Advertising, General, Trademark

It’s no surprise that many in the professional and legal services industries are putting increasing thought into what the post-Brexit world will, or should, look like. The Chartered Institute of Patent Attorneys (CIPA) in the UK has been the latest body to put its two cents (or pennies) into the mix. Brand owners from all … Continue reading

‘Apples, Beatles and four decades of litigation’ – Cautionary tales for start-ups settling on a new brand name

By Georgina Hey (AU) and Isobel Taylor (AU) on October 31, 2017 Posted in Trademark

Apple: the world’s most successful company, with an estimated worth of three-quarters of a trillion dollars. It’s no wonder that would-be tech entrepreneurs around the world are sitting around in black turtlenecks, jeans and New Balance sneakers, poring over Steve Jobs’ biography and trying to work out how they might emulate his success in their … Continue reading

Accept no substitutes – Assignment will not cure defective trade mark filing

By Helen Macpherson (AU) on June 14, 2017 Posted in Trademark

The Full Court of the Federal Court has issued a significant decision in relation to trade mark ownership, which reconfirms the position in relation to the assignment of trade mark applications which have been filed in incorrect applicant names. The decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 … 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

Use them or lose them: US trademarks put to the proof

By Chandler Stephens (US) and Alicia Groos (US) on February 9, 2017 Posted in Trademark

In the United States, a trademark owner must use their mark in commerce to maintain a federal trademark registration. This requirement is different from many other countries which do not require use of the mark to maintain registration. Further, the trademark owner is required periodically to prove to the United States Patent and Trademark Office … Continue reading

Redskins seek to join Slants case at Supreme Court

By Andrea Shannon (US) on April 29, 2016 Posted in Trademark

While football teams and fans across the country are gearing up for this weekend’s NFL draft, the Washington Redskins will be preparing for another potential showdown—this one at the Supreme Court. The Redskins petitioned the high court on Monday to hear the case over the team’s controversial trademark registrations. Pro-Football, Inc. v. Blackhorse, et. al., … Continue reading

Supreme Court asked to review disparaging trademarks decision

By Andrea Shannon (US) on April 21, 2016 Posted in Trademark

On Wednesday, April 20, 2016, the United States Patent and Trademark Office petitioned the Supreme Court to take up the case on disparaging trademarks. Petition, Michelle K. Lee, Director, United States Patent and Trademark Office, Petitioner v. Simon Shiao Tam, No. 15-1293 (April 20, 2016). The filing comes after the Federal Circuit struck down the … Continue reading

PTO not required to register disparaging trademark until cert deadline passes

By Andrea Shannon (US) on April 14, 2016 Posted in Trademark

In December 2015, the Federal Circuit struck down the “disparagement” clause of §2(a) of the Lanham Act on First Amendment grounds. However, according to a recent ruling from the court, the USPTO is not required to register disparaging trademarks just yet. In re Tam, No. 16-121 (Fed. Cir. Mar. 30, 2016) (denying petition for writ of … Continue reading