The High Court of New Zealand in Energy Beverages LLC v Frucor Suntory NZ Limited  NZHC 3296 ruled that energy drink company Frucor Suntory NZ Ltd’s (Frucor) non-traditional green colour trade mark was valid. This decision is a rare example of a New Zealand based Court analysing non-traditional marks and highlighting the difference to Australia’s position. A full copy of the decision can be found here.Read More
In the recent judgment State of Escape Accessories Pty Limited v Schwartz  FCA 1606, Justice Davies of the Federal Court of Australia found a fashionable neoprene tote bag was not a “work of artistic craftsmanship” and therefore not an “artistic work” for the purposes of the Copyright Act 1968 (Cth) (the Act). Since the Court found that copyright did not subsist in the State of Escape bag (the Escape Bag), there was no finding of copyright infringement.Read More
In April, we wrote about the judgement Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 (Decision), in which Glass Candy and Air France were found to have infringed the copyright in the well-known 1970s hit song “Love is in the Air” (Love).
Now, in the recent judgement Boomerang Investments Pty Ltd v Padgett (Scope of Injunction)  FCA 1413, the Federal Court of Australia has finalised the injunctive orders necessary to give effect to the Court’s earlier conclusions on the issue of liability in the Decision, amongst other matters.Read More
In its recent judgment (Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535), the Federal Court of Australia has found that an American electronic musical duo copied the celebrated Australian disco song ‘Love Is In The Air’. The decision confirms that the sound of lyrics as sung forms part of a musical work. Furthermore, a short sung lyric with attending music can be the ‘essential air’ of a song.
While determining only “modest” levels of copyright infringement occurred and dismissing most claims for damages, Justice Perram described the copying as “flagrant” and indicated there will be a further hearing to assess damages.Read More
In the case Kraft Foods Group Brands LLC v Bega Cheese Limited  FCAFC 65, the Full Court of the Federal Court of Australia has dismissed Kraft’s appeal of a decision entitling Bega to exclusive use of the iconic yellow lid and yellow label with a blue or red peanut device on its peanut butter jars.Read More
The Federal Court of Australia recently handed down its decision in the copyright case of Hardingham v RP Data. This decision serves as a warning about the risks of informal licensing arrangements. The case centres around copyright infringement regarding the use of photographs and floorplans without authority.
The applicants in the case were Real Estate Marketing (REMA) and its sole director, Mr Hardingham. REMA had been operating its business since 2009 and entered into informal agreements with real estate agencies to create and provide photos and floorplans of properties for marketing campaigns. It was understood by REMA that, as part of marketing campaigns, the agents would upload the commissioned photos to platforms such as realestate.com.au. However, the scope of the permitted uses by the agents was not clearly agreed or recorded in writing.Read More
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.