Tag archives: trade marks

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

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

Update for Australian businesses: China continues its trade mark law refresh

By Georgina Hey (AU) on December 18, 2019 Posted in Trademark

For many years China has made deliberate attempts to model itself as a strong intellectual property (IP) economy. The Chinese IP system continues to evolve, and, most recently, changes coming into effect on 1 November 2019 have been made to improve the strength of the Chinese trade mark system. The changes are aimed at bad … Continue reading

Authorised use or something fishy? – Implications for trade mark ‘use’ in Australia in the inter-company context

By Georgina Hey (AU) and Matt Allen (AU) on November 27, 2019 Posted in Trademark

Trade mark licensing arrangements can often offer significant benefits for trade mark owners by increasing brand exposure and royalty revenue streams. However, as we have previously reported, recent Australian cases (such as Lodestar Anstalt v Campari America LLC [2016] FCAFC 92 (Lodestar)) demonstrated that licensing arrangements may expose trade mark owners to the risk of … Continue reading

No damages without invalidation ab initio – a look at Wenger SA v Travelway Group International Inc

By Bianca Pietracupa (CA) on October 8, 2019 Posted in Trademark

A valid trademark registration is an absolute defence to claims of passing off where there is no significant difference between the impugned mark as registered and the mark being used.[i] This is because a trademark registration gives the trademark owner the exclusive right to use that trademark throughout Canada.[ii] A party claiming passing off against … Continue reading

Confusion: More than just the sum of its parts

By Bianca Pietracupa (CA) on August 6, 2019 Posted in Trademark

In claims for trademark infringement and passing off, plaintiff success is determined by the ability to establish confusion. Section 6 of the Trade-marks Act (the Act) provides a non-exhaustive list of elements to be considered by the court, namely inherent distinctiveness, length of time, nature of the goods, services or business, nature of the trade … Continue reading

The highs and lows of the 2019 Australian IP Report

By Georgina Hey (AU) and Benjamin Kende on July 15, 2019 Posted in Trademark

The highs and lows of the 2019 Australian IP Report To mark World Intellectual Property Day, IP Australia released its seventh edition of the Australian Intellectual Property Report 2019 (Report). The Report provides a snapshot of the Australian IP landscape in 2018 by consolidating data, highlighting trends and critically analysing its future. In this article, … 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