In May 2013, Catchoftheday.com.au Pty Ltd applied to register the following marks:
Target Australia Pty Ltd (Target), a well known Australian retailer, opposed registration of the marks. It argued that under section 42(b) of the Trade Marks Act 1995 (Cth), use of the Trade Marks would be contrary to law.
On 8 March 2014, Malaysian Airlines flight 370 disappeared. Five days later, Aoan International Pty Ltd (Aoan) filed an application to register MH370 as a trade mark in class 41 of the NICE classification of goods and services for various services.
IP Australia initially rejected the application under section 41 of the Trade Marks Act 1995 (Cth) (Act) on the basis that other traders should be entitled to refer to MH370 with respect to the services proposed to be offered by Aoan. IP Australia then reconsidered its decision and decided to reject the application under section 42(a) of the Act saying that the trade mark was scandalous on the basis that the trade mark would offend a section of the community. Read More
Many businesses operate in the Middle East through entities licensed to use their trade marks. These businesses should be aware that many Middle Eastern countries require that trade mark licence agreements are recorded with the respective Trade Mark Registers or other named authorities in these countries. Not recording a licence agreement could lead to monetary penalties being imposed on the licensee or an inability to enforce trade marks against third party infringers.
For example, Bahrain, Qatar, Saudi Arabia and the United Arab Emirates each have more or less equivalent provisions in which a trade mark licence agreement must be in writing, it cannot include unregistered trade marks and it has no legal effect against third parties unless it is recorded on the respective Trade Mark Registers (or other named authorities in these countries). Each of these countries has slightly different processes and requirements for seeking registration of a trade mark licence agreement. Read More
Sound Marks in Australia
In September, IP Australia accepted for registration a trade mark described as “the Trade Mark consists of the sound of a fictitious character saying the word “Simples!” followed by a squeaking sound such as might be expected to be made by a Meerkat or other small animal”. You can listen to this trade mark here. This application was filed for an array of goods and services by the UK company BGL Group Limited. Read More
Oyster Bay’s Wine Bottle Trade Mark Application Rejected
In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:
Although acknowledging the ease of copying photographs on the internet, an Australian Court has warned through the publication of its decision that this copying should not continue. In the case of Tylor v Sevin, a Hawaii, U.S., based photographer sued a Melbourne, Australia, based travel agent regarding a photograph he took titled ‘Waikaki Pink Boat’. The travel agent used the photograph on its website promoting holidays to Hawaii.
After being put on notice of the case, the travel agent refused to take down the photograph or offer to pay a licence fee. Read More
A recent decision of the Australian Patent Office has underscored the importance of acting promptly and diligently at all times when preparing evidence in patent oppositions.
In this case the patent applicant was unable to complete and serve its evidence-in-support and sought an extension of time in which to do so. The Commissioner’s delegate considered the conduct of the patent applicant throughout the period provided for service of the evidence and decided that the patent applicant had not acted promptly and diligently at all times. Read More
Sports Data used to be the official supplier of statistics to the National Rugby League (NRL), the peak competition for the sport in Australia. In 2013 its contract was terminated and a new supplier Prozone was appointed.
In order to provide useful statistics relating to sporting events it is necessary for the statistics provider to have a template or set of criteria which identifies the events that will be captured or entered into the statistics database. Read More
BP’s Application for Registration of the Colour Green as a Trade Mark Rejected by IP Australia
IP Australia has again made it clear that the assessment of a colour trade mark under section 41 of the Trade Marks Act 1995 (Cth) should be no different from the assessment of any other trade mark.
However in rejecting BP’s application for registration of the colour green, the Office noted that while most objects have to be some colour, the act of applying a colour to a product will not act as an identifier for that product. Read More
On the evening of Sunday 11 May 2014, representatives from various K&L Gates’ offices hosted approximately 250 clients and friends of the firm at a reception in Hong Kong during the International Trademark Association (INTA) annual conference. INTA’s annual conference is the most important intellectual property conference each year for IP professionals around the world.
Read More
Copyright © 2023, K&L Gates LLP. All Rights Reserved.