Tag: consumer & retail

1
Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry
2
Frucor given red card over ‘V’ green trade mark
3
Australian liquor company may not get off scot(ch) free
4
Chocolate Slab-Gate
5
Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)
6
Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress
7
Jury awards profits for infringing sales in post-Samsung design patent case
8
Kardashian #copyright saga
9
Fashion Law Breakfast
10
Parody Marks, Reputation and ‘Misleading and Deceptive Conduct’ in Australia

Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

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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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Australian liquor company may not get off scot(ch) free

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia.  The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

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Chocolate Slab-Gate

Waitrose has agreed to stop producing “copycat” chocolate slabs following an ongoing dispute with Hotel Chocolat.

Hotel Chocolat accused Waitrose of infringing its intellectual property rights in its distinctive curved shaped chocolate slab.  This was further reinforced when individuals were taking to Twitter to question whether Hotel Chocolat were actually producing the chocolate slabs for Waitrose.  Hotel Chocolat requested that Waitrose removed the offending chocolate slabs from sale.

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Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)

On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.

Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.

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Sixth Circuit rules knurling pattern on rifle scopes could be nonfunctional trade dress

The Sixth Circuit Court of Appeals recently held that a reasonable jury could find a design pattern on rifle scopes is “nonfunctional” and thus potentially amenable to trade dress protection. Since 2002, Leapers, Inc. has been selling adjustable rifle scopes with knurling on the surface. Knurling is a common manufacturing technique that allows users to grip and fine-tune products more easily.

Leapers asserted “that it uses a unique knurling pattern that is distinctly ‘ornamental’ and by which customers recognize [Leapers] as the source of the product.” Leapers had executed an exclusive manufacturing contract with a Chinese company, but chose to end that relationship in 2011. The manufacturer agreed to cease using all technical specifications and designs, but later a factory manager from the manufacturer formed his own company and began manufacturing scopes allegedly using Leapers’ knurling design.

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Jury awards profits for infringing sales in post-Samsung design patent case

On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear.  Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.

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Kardashian #copyright saga

Is this the right angle?
Is this the best filter?
Do I have the legal right to post this content?

While the first two questions may be at the forefront of the mind of social media users, the third is arguably as important as the pressure to push content to followers mounts in a saturated market. It is all too easy to download, screen-shot or take a photo of an image and share it across many platforms, however, taking a laissez-faire attitude to copyright ownership can land social media users in hot water.

Not only is uploading and sharing content protected by copyright a breach of the terms of use of most social media platforms (and could lead to a  user’s accounts being suspended or terminated in some cases) but it may also lead to copyright litigation, as Khloe Kardashian recently discovered.

Last week, Xposure Photos UK LTD, an “international celebrity photo agency”, filed proceedings against Ms Kardashian in the Central District Court of California alleging that she had infringed its copyright in an image that was posted to her Instagram® account.[1]  The image in question had originally been licensed to The Daily Mail and contained a copyright notice “© XPOSUREPHOTOS.COM”. The version of the image that appeared on Ms Kardashian’s account did not contain this notice nor any acknowledgement of Xposure Photos. The unauthorised removal of the copyright notice attracts 17 US Code § 1202 -1203 which provide the basis for a civil action for such conduct. In addition to seeking an injunction to prevent Ms Kardashian from using the image, Xposure Photos is also seeking US$25,000 in statutory damages as well as any profits resulting from the infringement.

While this is arguably small change for Ms Kardashian (who allegedly earns up to US$250,000 for a sponsored post on her social media sites), once legal costs and any time invested in litigation or negotiating a settlement is considered, it seems a hefty price to pay for failing to obtain an appropriate licence from the copyright owner. It is a timely reminder to social media users to ensure that they have the appropriate rights to the content they intend to use.

  1. Xposure Photos UK Ltd v Khloe Kardashian et al, 2:17-CV-3088 (C.D. Cal).

By: Jaimie Wolbers

Fashion Law Breakfast

By Lisa Egan

Today we hosted our annual Fashion Law Breakfast as part of Virgin Australia Melbourne Fashion Festival’s business seminar series. Joining us on our panel to talk about issues such as copyright in images, defamation and making social media accounts the best they can be within the confines of the law, was renowned journalist and fashion commentator Patty Huntington. Over 100 attendees received our first edition of our Fashion Law Magazine for the year, soon to be released as an ePublication. If you would like to join our mailing list please email us on ipblog@klgates.com.

Parody Marks, Reputation and ‘Misleading and Deceptive Conduct’ in Australia

In May 2013, Catchoftheday.com.au Pty Ltd applied to register the following marks:

BP 2 BP1

 

 

 

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.

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