Limping Trade Marks and Distinctiveness in Australia
Oyster Bay’s Wine Bottle Trade Mark Application Rejected
In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:
MIKSEŁKO VS. MILKSEŁKO ŁACIATE
Ruling of the Supreme Administrative Court of 10 April 2014 (II GSK 255/13)
This case involved a clash between marks serving to identify fats comprising a mixture of butter and vegetable fats. In 1996, the word mark MIKSEŁKO was registered. This is a fantasy composition suggesting that the goods it identifies are a mixture of fats with the addition of butter. In 2008, a competitor of the owner of the first sign successfully registered the mark MILKSEŁKO ŁACIATE. That mark is a word-graphic mark consisting of two elements. The second is very well known as an independent mark used to identify milk and a line of goods produced from cow’s milk. The first element, by using the English word ‘milk’, emphasizes that the products are derived from milk, while the first element as a whole suggests that butter is contained in products bearing the mark. Read More
Suspected Fake Shoes Swooped in Hong Kong
Acting on a complaint that fake sports shoes were sold in Mong Kok, a popular shopping district for trendy teens and tourists, Hong Kong Customs went into action and raided retail shops and warehouses.
Customs Officers seized suspected fakes, including 1,905 pairs of sports shoes, to a tune of HKD1.67 million. The suspected head of the fake goods syndicate along with six other people were arrested.
The arrests included a 16 year old and Customs has appealed to young people to be on guard against dodgy dealings when working in summer jobs. Read More
On Tap at the U.S. Supreme Court: An Important Trademark Case
During its next term, which begins in October 2014, the U.S. Supreme Court will continue to decide important intellectual property cases.
In B&B Hardware, Inc. v. Hargis Industries, Inc., the Court will tackle an issue that has long vexed trademark owners and their lawyers: ‘how much deference to give determinations by the Trademark Trial and Appeal Board (TTAB) on the issue of likelihood of confusion, when a subsequent infringement action is brought in federal court?’. In other words, must a court accept the TTAB’s decision on likelihood of confusion, even though the TTAB’s jurisdiction is limited to a trademark’s registrability? Read More
A Second Helping of Kebab
Additional Damages for Past Trade Mark Infringements
In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.
Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.
Permitted Trade Mark Usage as Google AdText
Google AdWords Policy Change for Australia
As reported in April 2013, Google amended its AdWords policy in Australia allowing a company to purchase a competitor’s trade mark as a keyword in order to trigger sponsored ads during Google searches.
Google has now gone one step further and allowed resellers and informational sites from 27 July 2014 to use trade marks in ad text in Australia and New Zealand under certain circumstances. Read More
IP Haiku: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (No 2) [2014] FCA 418
Your IP Law Report in 17 Syllables
“Judgments are just getting longer and more complicated, I can’t keep up with all of them!”
A familiar refrain uttered by many a lawyer and law student alike, especially in the modern, digital age (although we expect the Courts might refer to the increasing volume of electronic evidence filed by parties in proceedings as a contributing factor!)
So, in that context, could the essence of a judgment be distilled into haiku (short form Japanese poetry consisting of three phrases of five, seven and five syllables)? Well, we are sure going to try! Read More
It’s Not Easy Being Green
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
That’s “a Lot of Kebab”!
Additional Damages Awarded for Trade Mark Infringement
Trade mark owners can take encouragement from the Federal Court of Australia’s readiness to award additional damages as a deterrent from further infringement. The Court made its first award of additional damages for trade mark infringement in a case about kebabs, where a claim for actual loss from an infringement could not be made. Additional damages are a useful weapon in a brand owner’s arsenal. Read More
Local Directories Wins in Telstra Dispute Over Yellow
It is very difficult for companies to effectively own colour, as was enforced in Local Directories’ Federal Court victory in its long running dispute against Telstra. Telstra claimed that by its use of the colour yellow for phone directories, Local Directories had engaged in misleading and deceptive conduct and passing off. The Court dismissed these claims and upheld that Telstra’s advertisements published in certain Yellow Pages directories were in fact misleading. Read More