Trademarks – Page 24 – IP Law Watch

Social Media: 10 Fundamental Questions All Businesses Should Consider About Their Online Presence

Feb 02 2015

Twenty years ago, the social media world we now live in was the stuff of science fiction. Today, social media is a critical business tool creating unprecedented opportunities for direct consumer interaction, brand awareness, checking the pulse of key constituents and so much more. This incredible opportunity is not risk-free, however, and is the subject of new laws, application of old laws to new situations, and a significant amount of murkiness. Fortunately, the risks can be managed by considering the issues created by social media and that begins with asking the right questions. Please click here to view a discussion of ten important questions every business can start with to better benefit from its social media presence.

Now Trending: #jesuischarlie Trade Marks

Jan 29 2015

Can you Register a Rallying cry or Trending Slogan as a Trade Mark in Australia?

Following the Charlie Hebdo massacre, supporters of free speech and freedom of expression rallied behind the phrase JE SUIS CHARLIE. Within two days, “#jesuischarlie” had been tweeted over five million times. Less than a week after the shooting, trade mark applications for both “Charlie Hebdo” and “jesuischarlie” were filed in Australia. This follows as many as 50 applications for the phrase in France and similar applications in the United States, European Union and Belgium. Read More

Continuation of the Dispute Between “SUPERGLUE” and “SUPER GLUE”: Decision of the Court of Justice of the European Union

Jan 20 2015

A decision issued recently by the Court of Justice of the European Union (C-91/14 P) (Court of Justice) concluded another stage in a dispute between Przedsiębiorstwo Handlowe Medox Lepiarz Jarosław, Lepiarz Alicja sp.j. (PH Medox) and OHIM and Henkel Corp. (an intervening party). The dispute concerned the following graphic designation:

IP Australia Rejects MH370 Trade Mark Application

Dec 18 2014

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

Recording Trade Mark Licence Agreements in the Middle East

Dec 09 2014

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

The Color Red Sparks a Dispute Between Banks

Dec 09 2014

The Secondary Distinctiveness of a Trademark: Ruling of the Court of Justice of the European Union

If a ‘significant part’ (at least 70%) of the consumer group is able to recognize given goods as deriving from a specific company using the trademark, then the mark has certainly acquired distinctiveness, including in the case of ‘secondary distinctiveness as a result of use’.

The European Court of Justice held on 19 June 2014 in a ruling (C-217/13 and C-218/13) in the case of Oberbank AG, Banco Santander SA and Santander Consumer Bank AG vs. Deutsche Sparkassen und Giroverband e.V. (DSGV), the result of three pre-trial questions submitted to the Court of Justice by the German Federal Patent Office (Bundespatentgericht). The findings were as follows: Read More

Apple Denied App Store Trade Mark in Australia

Dec 05 2014

It has been a bumper week for IP decisions in Australia. Earlier, we reported on the Coke v Pepsi and Cantarella decisions. Now, in a third major judgment, the Federal Court of Australia (Federal Court) has refused registration of Apple’s trade mark application for APP STORE in Australia.

Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 was an appeal from a decision by the Registrar of Trade Marks (Registrar). The Registrar found that the trade mark APP STORE was ‘purely’, ‘directly’ or ‘inherently’ descriptive, as it would be well understood by modern digital-savvy consumers to refer to a ‘store’ that sells or provides ‘apps’. Read More

High Court of Australia Decides Landmark Trade Mark Case

Dec 05 2014

Decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd Clarifies Test for Distinctiveness of Trade Marks in Australia

This week, the High Court of Australia (High Court) handed down only its third decision considering trade mark issues since the enactment of the Trade Marks Act 1995 (Cth). This decision could make it easier to register foreign language words as trade marks.

The Great Bottle Battle – Coke vs Pepsi

Dec 03 2014

Coke Loses its Action Against Pepsi Based on its Iconic Contour Bottle

The Coca-Cola Company v Pepsico Inc & Ors (No 2) [2014] FCA 1287

On 28 November 2014, the Federal Court of Australia dismissed claims of trade mark infringement, misleading and deceptive conduct and passing off made by The Coca-Cola Company (Coke) against Pepsico Inc, Pepsico Australia Holdings Pty Ltd, and Schweppes Australia Pty Ltd, the manufacturer and distributor of Pepsico Inc products in Australia (collectively referred to as Pepsi). Read More

UK Trade Mark Owners win Landmark Case Against ISPs

Nov 14 2014

ISPs Ordered to Block Websites Selling Counterfeit Products

In a landmark decision, a judge of the High Court of Justice, England and Wales has ruled that internet service providers (ISPs) in the United Kingdom may be ordered to take all reasonable steps to prevent or restrict access to websites selling counterfeit goods.

The case was brought by luxury brand owner Compagnie Financiere Richemont SA (Richemont), which relevantly owns the Cartier and Montblanc brands and associated trade marks, against the five largest ISPs in the United Kingdom.

Category:Trademarks