Thursday, April 17, 2014

Grounds for complaint? Section 59 of the Trade Marks Act

By Sandi Forman, Senior Associate

A ground of opposition that is sometimes overlooked in trade marks is the applicant's lack of intention to use the trade mark.

Section 59 of the Trade Marks Act 1995 provides that an application may be opposed on the ground that the applicant does not, at the time of filing the application, intend to use the mark in relation to the specified goods and/or services. This ground can be difficult to establish, but can be usefully employed given the right circumstances.

In a recent Australian Trade Mark Office decision concerning an opposition to registration of the trade mark '707 estate', the Hearing Officer found in favour of the opponent, Southcorp Brands Pty Limited, on the basis that the section 59 ground had been established.

Thursday, April 10, 2014

The countdown is on - changes to the Franchising Code are upon us

By Nadia Guadagno, Lawyer

Successive governments have been talking about reforms to the Franchising Code of Conduct (the Code) for over a year now. But the time has finally come to take action. Last week, Exposure Drafts of legislation to create a replacement Code and add to its enforcement armoury were released.

The Federal Government says it's done with talking – only submissions regarding 'technical aspects of implementing the law' will be accepted over the next few weeks. So that means that the changes appear to be certain and with the start date said to be 1 January 2015, businesses and advisers have 9 months to get ready.

Here's a snap shot of the more significant changes.

Tuesday, April 8, 2014

Decoding your patent licence

By Adrian Chang, Lawyer

A decision earlier this month has brought light into one of the darker corners of the Patents Act 1990 (Cth).

Despite having an statutory equivalent in Australian patent law since 1952, MPEG LA, LLC v Regency Media Pty Ltd provides the first judicial consideration of section 145(1) which provides:
a contract relating to … a licence to exploit, a patented invention may be terminated by either party, on giving 3 months' notice in writing to the other party, at any time after the patent, or all the patents by which the invention was protected at the time the contract was made, have ceased to be in force.
Section 145(2) expressly prohibits contracting out of s145(1).

Thursday, April 3, 2014

Finding Nappyland: does a registered trade mark trump all?

By Julia Kovarsky, Lawyer

In short, the answer is no.

The recent decision in CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited, which involved two family businesses trading in commercial quantities of nappies and other products, examined whether having a registered trade mark can be a defence to a claim for misleading or deceptive conduct, or passing off.

CI JI Family Pty Limited (CJF) (whose sole director was Mr Ngo) had traded as 'Nappyland' in New South Wales since 1999. The business name 'Nappy Land' was registered in New South Wales to Mr Ngo and his wife. CJF traded under the logo:
It was not registered as a trade mark.

Thursday, March 27, 2014

Delegate for a Day – Designs edition

By Lester Miller – Patent attorney, Senior Associate

Pop quiz! We again invite you to be a delegate of the Registrar of Designs:

Step 1: Think like someone familiar with the products shown (an informed user).
Step 2: Get an overall impression of each design in the surveys below. In each category, ask yourself whether the designs are identical or substantially similar to any of the ones shown as prior art.
Step 3: Decide whether you would allow (if the designs are not substantially similar) or revoke (if the designs are substantially similar) the new design in light of the closest prior art provided.
Step 4: Enter your decision into the response and read our brief comments on these real-life cases.

Tuesday, March 25, 2014

Something brewing: a five-star debate on trade marks

By Deborah Jackson, Senior Associate 

Last year this IP blog reported on the legal battle between Cantarella and Modena over the registered trade marks CINQUE STELLE and ORO in relation to coffee. CINQUE STELLE means 'Five Star' in Italian, and ORO means 'gold'. While round one had gone in favour of the registered trade mark owner Cantarella, it rather looked as if the alleged trade mark infringer Modena had emerged victorious when the Full Federal Court had come down firmly on its side. The High Court has now entered the fray by granting special leave to Cantarella to appeal the Full Federal Court's decision.

Friday, March 21, 2014

Bugatti v Bugatchi: The cost of trade mark infringement

By Kimberley Evans, Trade Mark Attorney 

In early December 2013, this IP blog reported the decision in Bugatti GmbH v Shine Forever Men Pty Ltd (Shine Forever [Strike?] No. 1) in which Shine Forever's BUGATCHI UOMO trade mark was found to infringe Bugatti's registered BUGATTI trade mark. Since the time of our post, there has been an opposition decision from IP Australia as well as an order for compensation by way of an account of profits from the Federal Court and Shine Forever ain't looking so shiny now…