Tag: Australia

1
Style is everything, but style names aren’t “trade marks”
2
SENSIS v SENSES – Federal Court makes findings of deceptive similarity
3
Bega claims the peanut butter throne in $60M war with Kraft Heinz
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Fashion Law Update
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IP Exemptions to Competition Laws to be Removed: Restrictions in Licences to be Subject to Competition and Consumer Act 2010
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K&L Gates releases 2017/18 Patents Year in Review – Second Edition
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Round 1 of Australia’s CRISPR patent dispute concludes
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New parallel importation laws in Australia
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Worth the fight: IP dispute resolution that won’t break the bank
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Frucor given red card over ‘V’ green trade mark

Style is everything, but style names aren’t “trade marks”

Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662

In a recent decision commenced by Pinnacle Runway against well-known swimwear brand Triangl, the Federal Court has chastised the parties involved for partaking in so called “ill-advised proceedings”. The Court also confirmed that use of a word as a style name to differentiate between product lines will not amount to use as a trade mark so as to constitute trade mark infringement.

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SENSIS v SENSES – Federal Court makes findings of deceptive similarity

The Federal Court of Australia has found that the use of “SENSES DIRECT” was deceptively similar to an applicant’s earlier registered “SENSIS” trade marks. Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719 concerned the Australian marketing and advertising business, Sensis (Applicant), who brought a claim for trade mark infringement against Senses Direct Mail and Fulfillment (Respondent), a direct mail services business. The Respondent cross-claimed on the grounds of non-use, arguing for the removal of SENSIS from the Trade Mark Register in relation to certain class 35 services.

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Bega claims the peanut butter throne in $60M war with Kraft Heinz

What you need to know

  • Under Australian law, an entity can’t transfer an unregistered trade mark to another entity without also transferring its entire business.
  • To transfer a trade mark without transferring a business, the transferor first needs to register its trade mark.
  • Failing to register a valuable trade mark used in a business can have major unforeseen consequences in the context of M&A transactions, especially where the business is operated by a subsidiary in a corporate group.
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Fashion Law Update

“Improvise. Become more creative. Not because you have to, but because you want to. Evolution is the secret for the next step.” Karl Lagerfeld

Our Fashion team has prepared the latest edition of Fashion Law where we provide you with the latest updates on legal issues affecting the fashion industry.

This edition covers:
• An update on Modern Slavery legislation
• Copyright infringement
• The benefits of design protection in an IP strategy
• A look at illegal phoenix activity.

Click here to read Fashion Law online.

By Jonathan Feder, Savannah Hardingham, Anna Smith, Simon Casinader, Olivia Coburn, Bianca D’Angelo and Paris Taylor

IP Exemptions to Competition Laws to be Removed: Restrictions in Licences to be Subject to Competition and Consumer Act 2010

The Australian Federal Parliament has been debating the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill), which seeks to repeal section 51(3) of the Competition and Consumer Act 2010 (CCA).
The Bill is expected to pass during this session of Parliament (by 6 December 2018). Section 51(3) of the CCA presently provides an exemption from most of the competition law prohibitions for certain types of transactions involving intellectual property (IP). The current exemption covers conditions in licences or assignments of IP rights in patents, registered designs, copyright, trade marks and circuit layouts.

Once passed, commercial transactions involving IP rights will be subject to the same competition laws as all other transactions involving other types of property and assets. The repeal will apply retrospectively but IP owners will have six months to review existing licences and agreements. It is important for brand owners to consider their key licensing arrangements and the possible competitive implications of those arrangements.

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K&L Gates releases 2017/18 Patents Year in Review – Second Edition

2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.

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New parallel importation laws in Australia

Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018

The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.

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Worth the fight: IP dispute resolution that won’t break the bank

Small businesses and individual rights holders are set to benefit from the Intellectual Property National Pilot Scheme in the Federal Circuit Court

A specialist IP list in the Federal Circuit Court of Australia (FCC) is open for business, with the goal of achieving quick, cheap and effective dispute resolution of intellectual property matters.

The Intellectual Property National Pilot Scheme commenced on 1 July 2018 and appeals to small and medium-sized enterprises, individual rights holders and young innovators who may have previously avoided the court system even though they had a legitimate right or a good defence, but found that it simply wasn’t worth the fight.

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Frucor given red card over ‘V’ green trade mark

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

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