Category: Litigation

1
Full Federal Court Decision Reaffirms That There Is No Infringement By Authorisation Under Australian Trade Mark Law
2
Guide: How to Enforce Intellectual Property Rights in China
3
Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case
4
Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?
5
Copyright Infringement? The Court is “Not Gonna Take It”
6
Just One More Thing For Swatch and Apple to Fight About
7
Amendments to China’s Copyright Law
8
Riding on Coat-tails, Doesn’t Come Free: UK High Court Awards Additional Damages for Oh Polly’s Flagrant Infringement of House of CB’s Unregistered Design Rights
9
High Court of New Zealand Trade Mark Clash Over the Colour Green
10
Battle of the ballet shoes: UK court finds infringement of registered community design

Full Federal Court Decision Reaffirms That There Is No Infringement By Authorisation Under Australian Trade Mark Law

The Full Court of the Federal Court of Australia has reaffirmed that a registered trade mark can only be infringed by the primary user of a trade mark and there is no concept of authorisation of infringement recognised under Australian trade mark law.

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Guide: How to Enforce Intellectual Property Rights in China

This step-by-step guide sets out the actions to be taken upon discovering an infringement of an intellectual property right (IPR) in the People’s Republic of China (China). The IPRs addressed in this guide include copyright, trademark, patent, and unfair competition (including counterfeiting).

View the full article here

Registrability of Shape Marks and Technical Function of Complex Products: The Pirelli Case

The CJEU has rendered its decision on the invalidity actions brought by Yokohama against the below shape mark filed by Pirelli. The mark represents a single groove of a tyre tread, covering “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“ in class 12.

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Australia’s Greatest Liability: Parodic Fair Use or Copyright Infringement?

Many companies and activists toe the line of trade mark and copyright infringement in the name of parody, satire and criticism. In Australia, the fair dealing copyright exception for the purpose of parody or satire had rarely been judicially considered. There have now been two recent cases considering the defence.

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Copyright Infringement? The Court is “Not Gonna Take It”

A clear cut case of copyright infringement involving Twisted Sister’s hit song “We’re Not Gonna Take It” (WNGTI) has demonstrated the Court’s willingness to award significant financial penalties where intellectual property rights have been “flagrantly” infringed.

In Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, Justice Katzmann of the Federal Court ordered Australian businessman and United Australia Party (UAP) founder Clive Palmer to pay AU$1.5 million in damages after finding that he had infringed copyright in WNGTI. Katzmann J notably awarded AU$1 million in additional damages, two-thirds of the total award, under section 115(4) of the Copyright Act 1968 (Cth) (Act).

The action was brought against Mr Palmer by joint applicants Universal Music Publishing Pty Ltd and Songs of Universal (collectively, Universal), which are the exclusive Australian licensee and copyright assignee respectively.

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Just One More Thing For Swatch and Apple to Fight About

Since the launch of the Apple Watch in 2015, Swatch, a well-known Swiss watch manufacturer, has been involved in a number of trade mark disputes against Apple regarding their overlapping product markets.

These disputes have concerned the marks ‘I-WATCH’ and ‘I-SWATCH’, ‘TICK DIFFERENT’ and ‘THINK DIFFERENT’ and, more recently, the mark ‘ONE MORE THING’.

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Amendments to China’s Copyright Law

The first substantial amendments to China’s Copyright Law in 20 years were passed in November 2020 and will come into effect on 1 June 2021 (the Amendments). The Amendments primarily focus on enhancing protections for copyright owners, better aligning China’s Copyright Law with international standards, and implementing the Beijing Treaty on Audiovisual Performances that entered into force in April 2020.

The heavy deterrence-related focus of the revised Copyright Law will strengthen protections for copyright owners, particularly relating to digital piracy.

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Riding on Coat-tails, Doesn’t Come Free: UK High Court Awards Additional Damages for Oh Polly’s Flagrant Infringement of House of CB’s Unregistered Design Rights

On 24 February 2021, the UK High Court found that a number of Oh Polly dress designs had infringed the unregistered design rights of its competitor, House of CB. This recent decision confirms the risk of additional damages being awarded if infringers flagrantly copy third party designs, whilst also confirming the difficulties brand owners face in bringing passing off actions based solely on copycat designs.

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High Court of New Zealand Trade Mark Clash Over the Colour Green

The High Court of New Zealand in Energy Beverages LLC v Frucor Suntory NZ Limited [2020] NZHC 3296 ruled that energy drink company Frucor Suntory NZ Ltd’s (Frucor) non-traditional green colour trade mark was valid. This decision is a rare example of a New Zealand based Court analysing non-traditional marks and highlighting the difference to Australia’s position. A full copy of the decision can be found here.

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Battle of the ballet shoes: UK court finds infringement of registered community design

The UK IP Enterprise Court has ruled that an Austrian shoe company infringed a registered community design (“RCD”) held by a US based sustainable fashion brand although there was no infringement of the corresponding unregistered community design (“UCD”). The decision is a relatively rare example of a UK, or EU, based Court analyzing fashion items and addressing design novelty issues between 2017 and now. A full copy of the decision can be found here.

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