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  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.Read More
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.
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.
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.
Dallas Buyers Club LLC v iiNet Limited  FCA 317
In November 2014, IP Law Watch reported on attempts by the rights holder of the film Dallas Buyers Club to compel Australian ISPs to disclose the identities of BitTorrent users who allegedly shared copies of the film.
On 7 April 2015, Justice Perram of the Federal Court of Australia ruled in favour of Dallas Buyers Club LLC and Voltage Pictures LLC, ordering six ISPs to disclose the details of 4,726 customers.
The judgment has been widely reported in the Australian media as a landmark decision and a game changer in the battle regarding online piracy. In fact, the kind of order granted by Justice Perram is far from revolutionary. For many years, civil procedure rules at both state and federal levels have enabled a party to seek orders requiring a third party to produce documents or give evidence as to the identity of a prospective respondent. There are decisions going back as far as the 1970s in which this kind of preliminary discovery order has been granted (see for example Exley v Wyong Shire Council (10 December 1976, Master Allen, unreported) and Stewart v Miller  2 NSWLR 128).
Coke Loses its Action Against Pepsi Based on its Iconic Contour Bottle
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
Rachel ‘Champagne Jayne’ Powell’s passion for Champagne has helped her to become an award-winning wine expert, broadcaster, journalist and presenter. However, Ms. Powell’s ‘Champagne Jayne’ brand has put her at loggerheads with the trade organisation established to manage the common interests of the growers and the Champagne Houses behind the drink she loves so much. Read More
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.