Friday, December 12, 2014

APP STORE not capable of distinguishing

By Kimberley Evans, Associate

Justice Yates of the Federal Court has declared that the words APP STORE are not to any extent capable of distinguishing Apple Inc.'s retail, telecommunications and computer-related services from those of other traders. This decision demonstrates the difficulty of registering a mark with descriptive connotations.


In 2008, Apple filed an application to register the trade mark APP STORE in Classes 35, 38 and 42, which claimed a Convention priority date from a corresponding application made in Trinidad and Tobago on 7 March 2008.

Friday, December 5, 2014

Delegate for a day

by James Gonczi, Associate

A recent decision of a delegate of the Registrar of Trade Marks has piqued some interest around our office. The issue arose in the context of an opposition involving the following trade marks: 

The NISON application covered a variety of goods and services such as shop fittings, refrigerator compressors, refrigerators and refrigerator installations, kitchen furniture and kitchen units, and the installation of kitchens and catering equipment. The NIKON mark is registered for an extensive range of goods and services such as  machines and machine tools, cooking, refrigerating and ventilating apparatus, installation services and repair or maintenance services for cooking apparatus for industrial purposes.

Before we tell you what the delegate thought, we wanted to know what you think. Click on the link below and, in the new page, select 'Yes' if you think the trade marks are deceptively similar or 'No' if you don't. Try to keep the following questions in mind:

  • Would you be potentially confused if confronted with both trade marks on similar goods or services?

  • Do you think both trade marks look alike?

  • Do you think that both trade marks may belong to the same owner?

  • Do you think that only someone being exceptionally careless or stupid would confuse the two trade marks?

We'll let you know what the delegate's answer after the jump.

Delegate for a day survey link

Wednesday, December 3, 2014

Are CINQUE STELLE and ORO inherently distinctive? High Court says YES

By Kimberley Evans, Associate

In a 4:1 judgement handed down this morning in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court of Australia has confirmed that the trade marks ORO and CINQUE STELLE (respectively, 'gold' and 'five stars' in Italian) are inherently adapted to distinguish coffee goods in Australia.


Earlier this year, trade mark owner Cantarella took its battle

with Modena over its registered trade marks CINQUE STELLE and ORO (in relation to coffee) to the High Court. CINQUE STELLE means 'five stars' in Italian, and ORO means 'gold'. Cantarella had sued for trade mark infringement. Modena had denied liability, saying that its use of CINQUE STELLE and ORO was in good faith to indicate the characteristics of the coffee products, and cross-claimed to cancel the marks. Cantarella won at first instance, but on appeal the Full Federal Court reversed the decision and ordered Cantarella's trade marks to be cancelled. Cantarella then sought leave to appeal the decision before the High Court, asking the court to consider the inherent distinctiveness of trade marks consisting of foreign words with laudatory qualities.

Thursday, November 27, 2014

Inaugural Scintilla film review: Dallas Buyers Club, LLC v iiNet

By Annie Zheng, Lawyer

Online copyright infringement is back in the spotlight again – this time under scrutiny from the bright lights of Hollywood.

In this post, we provide a brief synopsis and commentary on the Dallas Buyers Club v iiNet Ltd proceeding, ahead of its highly-anticipated premiere (ie hearing) in the Federal Court on 17 February 2015.


The plot goes a little like this: Dallas Buyers Club, LLC is a company that owns the rights to the film of the same name, which earned an Oscar for actor Matthew McConaughey (surprisingly, he had not previously been nominated for performances in other classic cinematic masterpieces such as Magic Mike and The Wedding Planner). The film's success, which can no doubt be attributed to the effect of the 'McConaissance', has meant that the film has been ripe for illegal downloading via peer-to-peer file sharing websites.

Act I

In mid-October, Dallas Buyers Club, LLC initiated proceedings in the Federal Court. The company filed evidence seeking to show that it has identified the IP addresses of persons who have illegally shared the film, and applied for preliminary discovery of documents belonging to various internet service providers including iiNet (together, the ISPs), for the purpose of obtaining information contained in those documents about the identity of the ISPs' customers.

Act II

On 17 November, Justice Perram of the Federal Court refused four applications by various interested parties in the media for access to the restricted evidence filed to date. The basis for this refusal was that the interests of the parties would be at risk of being adversely affected by the release of 'filed but as-yet-unused evidence', as the material had not been made available in open court yet,  and may be subject to confidentiality regimes or objections down the track.

Friday, November 21, 2014

Boosting commercial returns from research

By Clare Young, Managing Associate

In late October, the Ministers for Industry and Education released a consultation paper entitled Boosting commercial returns from research. At this stage the proposals are fairly vague, which suggests that the industry consultation process will be a key part of shaping those proposals into more concrete policy. Clearly, universities and research organisations will be affected by these proposals, but there will also be benefits – by way of additional project funding – to business in those industries which are identified as being relevant to Australia's research priorities.

Wednesday, November 19, 2014

Is a trade mark for the flavour of pizza a taste of things to come?

By Mark Williams, Senior Associate

It was with great interest that we noted the recent reporting of the decision of the Fifth Circuit Court of the US District Court in New York Pizzeria, Inc. v Syal et al.
The case centred around a claim of trade mark infringement after NYPI's former President allegedly conspired to create a copycat restaurant using the recipes, suppliers and internal documents of NYPI. NYPI claimed that its pizza flavour was distinctive, arguing that 'the flavour of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to trademark protection'.

Friday, November 14, 2014

Trade mark infringer skewered by additional damages claim

By Julia Kovarsky, Associate

The 'Raising the Bar' amendments to the Trade Marks Act 1995 (Cth) (the TM Act) introduced the power of the court to award additional damages for trade mark infringement. Section 126(2) of the TM Act came into force on 15 April 2013, allowing the court to include an additional amount in an assessment of damages for an infringement of a registered trade mark, if appropriate. The provision is similar to section 115(4) of the Copyright Act 1968 (Cth) which has been in operation for quite some time and applied by the court on many occasions (from Autodesk v Cheung in 1990 to Vertical Leisure v Skyrunner in 2014). The power to award additional damages under the TM Act raises the stakes for infringers of registered trade marks. Where only a nominal amount may have been payable before, the court can now set a hefty price for infringement by awarding additional damages.

Paying the wholesale price

This lesson was learned the hard way by a kebab wholesaler, Quality Kebabs, when it forged halal certification papers using the registered trade mark of the 'Rolls-Royce' of halal certifiers – the Halal Certification Authority Pty Limited (the HCA). When two kebab shops, customers of Quality Kebabs, asked for certificates that the meat sold to them was halal, Quality Kebabs provided them with HCA-branded certificates. The only problem was, HCA had not issued those certificates. According to the director of Quality Kebabs, a rogue employee decided to forge the certificates of his own accord, complete with HCA's seal (a registered trade mark), and then absconded to Germany with the hard drive which contained the only remaining copy of the forgery. Justice Perram found this series of events to be highly improbable. Instead, his Honour held that Quality Kebabs had deliberately used HCA's seal on the forged certificates and infringed HCA's registered trade mark rights.