Latest Intellectual Property Law Updates in Australia for 2025
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Federal Court of Australia denies removal of trade mark for non-use (Somers Enterprises Australia Pty Ltd v Basefun Pty Ltd)
Date: 26 March 2025
Court: Federal Court of Australia
Judge(s): Justice Bennett
Judgment date: 21 March 2025
Catchwords: Trade marks – removal of registration under s 92(1) – trade mark retained on Register – discretionary power under s 101(3)
Abstract:
The Federal Court of Australia has allowed the appeal by Somers Enterprises Australia Pty Ltd (Somers), dismissing Basefun Pty Ltd’s (Basefun) non-use application to remove the ‘Celebrity Head’ trade mark (Trade Mark) from the Register of Trade Marks (Register).
Background
The Trade Mark was first coined and used by Mr Daryl Somers on the television show ‘Hey Hey It’s Saturday’ in 1991. It was associated with a popular game segment on the show, which ran until 1999 when the show discontinued, and reappeared in the show’s 2009 reunion special and 2010 revival season.
The television game featuring the Trade Mark was also adapted into a board game in 1992, with Somers entering into an agreement with Basefun to manufacture and distribute it. Somers has been the registered proprietor of the Trade Mark since August 1992 in class 28 for board games and other…
TM – Full Court overturns ZIP case and finds the respondents failed to discharge their onus of proving honest concurrent use
Date: 18 March 2025
Source: World Intellectual Property Organization (WIPO)
Abstract
In the case of Firstmac Ltd v Zip Co Ltd [2025] FCAFC 30; BC20253213, the Federal Court of Australia Full Court clarified the defence of honest concurrent use in the context of trade mark infringement. The respondents, Zip Co Limited and Zipmoney Payments Pty Ltd (respondents), relied on the defence regarding their use of "ZipMoney", which Firstmac Limited (Firstmac) alleged was deceptively similar to its registered trade mark “ZIP”. The respondents failed to discharge their onus of proving the defence.
Background
Firstmac has owned the registered trade mark 1021128 for the word “ZIP” in respect of financial affairs (loans) services in class 36 (TM) since 2004. The respondents have operated a buy now pay later service since 2013. The service is provided using the mark…
The…
WIPO — 2024 saw growth in use of WIPO's IP registries
Date: 18 March 2025
Source: World Intellectual Property Organization (WIPO)
The World Intellectual Property Organization (WIPO) has reported a notable increase in the use of its global intellectual property (IP) registries for patents, trade marks, and designs in 2024. This growth reflects a rising trend among enterprises and individuals to leverage WIPO's systems for protecting and promoting their products in international markets. Notably, the Patent Cooperation Treaty (PCT) experienced a 0.5% rise in international patent applications. Additionally, the Madrid System for international trade mark registrations rebounded with a 1.2% increase after two years of decline.
Implications for patent filings
The PCT system's growth of 0.5% in 2024, with 273,900 filings, underscores the continued importance of international patent protection. China led the filings with 70,160 applications, marking a 0.9% growth. The Republic of Korea saw its 27th successive year of growth, with a robust 7.1% increase. However, the US, Japan, and Germany experienced declines, indicating potential shifts in global innovation dynamics. For Australian practitioners, this trend suggests a need to closely monitor emerging markets and technological hubs, particularly in Asia, for potential collaborations and competitive insights.
Trade mark registration trends
The…
ICIP — IP Australia publishes First Nations Strategy 2025–2030
Date: 17 March 2025
Source: IP Australia
Abstract
IP Australia has published its First Nations Strategy 2025–2030, an initiative designed to foster reconciliation and enhance collaboration with Aboriginal and Torres Strait Islander peoples. This strategy is structured around four key pillars: Capability, Development, Partnership, and Transformation, each aimed at addressing specific challenges and opportunities within the intellectual property (IP) system.
Capability
The Capability pillar focuses on uplifting the cultural competence of IP Australia and its workforce. By fostering skills, knowledge, and behaviors that respect and engage with Aboriginal and Torres Strait Islander cultures, the strategy aims to create a culturally informed service environment. This approach is intended to improve the socio-economic status and overall wellbeing of Indigenous communities by ensuring that public sector employees are equipped to deliver services that are culturally appropriate and inclusive.
Development
IP Australia commits to supporting Indigenous business development by increasing awareness of the IP system among Aboriginal and Torres Strait Islander businesses and organisations. Collaborations, such as the partnership with Indigenous Business Australia on the Northern Territory Indigenous Business Accelerator program, exemplify efforts to drive innovation and economic growth. By protecting Indigenous inventions, designs…
ATMO – “LORD OF THE RINGS” registration for baked goods unsuccessful in opposing “LORD OF THE” (Middle-earth Enterprises, LLC v Lord of the Fries IP Pty Ltd [2025] ATMO 48)
Date: 11 March 2025
Court: Australian Trade Marks Office
Delegate: Nicholas Smith
Judgment date: 4 March 2025
Catchwords: Trade Marks opposition under s 52 – ss 42(b), 44, 50, 60 and 62A pressed – no ground established – trade mark to proceed to registration.
Background:
In Middle-earth Enterprises, LLC v Lord of the Fries IP Pty Ltd [2025] ATMO 48, a trade mark application for the words “LORD OF THE” (TM), no. 2298514 (classes 29 and 30), was opposed by Middle-earth Enterprises, LLC (Opponent). The Opponent, who owns a number of IP rights in connection with the novels known as The Lord of the Rings pressed grounds of opposition under ss 42(b), 44, 50, 60 and 62A of the Trade Marks Act 1995 (Cth), relying on its trade mark registration for the words LORD OF THE RINGS (Mark), no. 887543 (class 30) as well as, for the s 60 ground, the reputation in THE LORD OF THE RINGS mark.
In examining s 44, the delegate found that the marks were not substantially identical or…
ATMO – Harvard registration for education unsuccessful in opposing HARVARD LEGAL
Date: 4 March 2025
Court: Australian Trade Marks Office (ATMO)
Delegate: Jonathon Galloway
Judgment date: 6 February 2025
Catchwords: Trade Marks opposition under s 52 – ss 42(b), 43, 60 and 62A pressed – no ground established – trade mark to proceed to registration.
Background:
In The President and Fellows of Harvard College v Harvard Legal Pty Ltd [2025] ATMO 25, a trade mark application for the word HARVARD LEGAL, no. 2237158, covering various legal services (TM) was opposed by the operator of Harvard University, based in Cambridge, Massachusetts in the United States of America. The university relied on the use of a number of trade marks it used that incorporated the word ‘HARVARD’.
The TM applicant argued that a number of universities and law firms share a name in the Australian marketplace, this being indicative of a lack of confusion if the providers of these services share a name. For example, Macquarie Lawyers, Bond Lawyers.
A number of grounds were pressed, but ultimately the opposition was unsuccessful and the registration was allowed to proceed.
The grounds of opposition pressed were ss 42(b), 43, 60 and 62A. The delegate first dealt with…
ATMO — Application to register THORNY DEVIL rejected
Date: 4 March 2025
Court: Australian Trade Marks Office (ATMO)
Delegate: Nicholas Smith
Judgment date: 18 February 2025
Catchwords: Trade Marks – s 44 ground for rejection – earlier registration for THISTLEDOWN THORNY DEVIL registered in the face of two earlier marks for THORNY DEVIL due to continuous prior use – application rejected.
Background:
In McAppion Enterprises Pty Ltd [2025] ATMO 34, a trade mark application for the word THORNY DEVIL, no. 2271623, covering spirits, spirit beverages and liqueurs (TM) was rejected by the Trade Marks Office under s 44 of the Trade Marks Act 1994 (Cth). The earlier trade mark that was identified by the examiner to support the ground for rejection was no. 1747073 for THISTLEDOWN THORNY DEVIL (Mark), registered for wine and wine beverages.
The delegate relied on previous case law to conclude that spirits and wines are similar goods, and decided that consumers may consider the absence of the “Thistledown” element in the TM was not sufficient to avoid confusion. The state of the market, with brand expansion being common in the alcoholic beverage industry, was relevant.
Background
The comparison of the goods and services were considered first. While the TM applicant…
TMs – Full Court dismisses Cantarella’s appeal regarding ownership of the ORO mark and Lavazza’s application for leave to appeal
Date: 18 February 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Nicholas, Jackson and Rofe JJ
Judgment date: 14 February 2025
Catchwords: TRADE MARKS — Validity — Ownership — Where primary judge found appellant (Cantarella) was not the owner of the ORO trade mark and ordered cancellation
Abstract:
In Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12 BC202501456, the court dismissed the appeals of both Cantarella and Lavassa who were in dispute over the ORO trade mark in relation to coffee products. The decision cites a number of important recent trade mark decisions as well as confirms the role of the court in reviewing factual findings made at trial and in reviewing decisions regarding the exercise of the primary judge’s discretion.
Background:
For a background, see our earlier update regarding the decision appealed here.
Grounds of appeal - Cantarella
Cantarella challenged the findings that Caffé Molinari SpA (Molinari) used the ORO mark in Australia before Cantarella first did, by shipping coffee beans in the Caffé Molinari Oro 3kg packaging (3kg Product) to Coffee Machine Services Pty Ltd (CMS) in…
New standard patent directions to be launched in the Federal Court of Australia
Date: 17 February 2025
Source: NSW Bar Association
The Federal Court of Australia is planning to launch new Standard Directions for Australian patent proceedings in the first quarter of 2025 as a pilot program.
During 2024, the Hon. Justice Stephen Burley and the Hon. Justice Helen Rofe convened two working groups, one in Sydney and the other in Melbourne, which assisted to draft the directions. Panel discussions will be hosted by the Hon. Justice Stephen Burley and the Hon. Justice Helen Rofe with participants including Registrar Susan O’Connor of the Federal Court of Australia and members of the working groups.
The documents to be discussed are:
- Draft standard directions;
- Draft instructions for expert conferences;
- Suggested common general knowledge direction to experts;
- Note on the proposed new costs assessment proposal; and
- Draft form statement of costs.
For more information, see the website of the NSW Bar Association here.
ATMO – FFWD not deceptively similar with FWRD
Date: 14 February 2024
Court: Australian Trade Marks Office (ATMO)
Delegate: Timothy Brown
Judgment date: 15 January 2025
Catchwords: Trade Marks opposition to registration – similar or closely related software products and services – no substantial identity or deceptive similarity – reputation does not extend to software or software services
Background:
In FWRD, LLC v Corezero Pty Ltd [2025] ATMO 11 FWRD, LLC (Opponent) opposed trade mark application no. 2272881 for FFWD in classes 9 and 42, covering data processing software and software as a service (SaaS) (TM). The opposition relied on the grounds under ss 42(b), 44, 58, 58A and 60 of the Trade Marks Act 1995 (Cth), on the basis of the Opponent’s registrations of the word, FWRD in various classes, including class 9 and 42. None of the grounds succeeded.
Notably, there was no deceptive similarity and although there was a reputation in some services, it did not extend to the relevant market. This highlighted the importance of ensuring a trade mark is used in the goods and services registered for so it can be relied on, and also of keeping reliable records to support claims of reputation.
Section 44: The comparison of…
China tweaks its requirements for collective and certification marks filed under the International system.
Date: 21 January 2025
Source: WIPO Information Notice No.1/2025
The World Intellectual Property Organization (WIPO) provided information on requirements that apply to collective and certification marks that are the subject of international registrations designating China. While Information Notice No. 1/2025 replaces WIPO Information Notice No. 7/2025, most of the changes are tweaks to wording (eg goods rather than good) and the reference to “the Office of China” is updated to “China National Intellectual Property Administration (CNIPA)”. Finally, there is a change to refer separately to individuals and corporations in paragraph 4, which requires a document attesting that a geographical indication is granted, if the holder of the mark is a “foreigner or foreign enterprise”.
See WIPO’s Information Notice No. 1/2025.
Government response to Productivity Commission report on Aboriginal and Torres Strait Islander visual arts and crafts supports ICIP legislation and new cause of action for infringement
Date: 15 January 2025
Source: Australian Government Productivity Commission
The Australian Government released its response to the 2022 study report on Aboriginal and Torres Strait Islander visual arts and crafts. In its response dated November 2024, published on the website of the Productivity Commission on 13 January 2025, the Government has agreed in principle to 8 out of 10 recommendations. In particular, it supports a number of recommendations relating to the introduction of new cultural rights legislation to protect Indigenous Cultural and Intellectual Property (ICIP), including a new cause of action for infringement of ICIP. Requiring further consideration is the mandatory disclosure requirement, including whether a ban of inauthentic products should be put in place, and the recommendation to increase funding to strengthen the Indigenous Art Code.
Background
The Productivity Commission investigated the value and structure of the current markets for First Nations arts and crafts in August 2021. It proposed policies to address market deficiencies caused by inauthentic art and craft in the style of First Nations peoples. A draft report was released…
FCA finds Aldi liable for copyright infringement and additional damages (Hampden Holdings I.P. Pty Ltd v Aldi Foods)
Date: 19 December 2024
Court: Federal Court of Australia
Judge(s): Moshinsky J
Judgment date: 17 December 2024
Catchwords:
COPYRIGHT — artistic works infringed by sale of children’s food products in packaging that reproduced a substantial part of the applicants’ works — whether the applicants owned the copyright in the relevant works — additional damages
WORDS AND PHRASES — “Concurrent findings” — “Counter-factual” — “Special or exceptional circumstances” — “Ultimate appellate court”.
Abstract
In Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452; BC202418505, the Federal Court of Australia found Aldi Foods Pty Ltd (Aldi) liable for copyright infringement in relation to eight out of eleven of its packaging for children’s snacks sold under the MAMIA brand. Aldi’s challenge to copyright ownership packaging designs failed, as did its claim for unjustifiable threats. Aldi was also found to be liable for additional damages.
Background
Hampden Holdings I.P. Pty Ltd (Hampden), an IP holding company, licenses its IP to Every Bite Counts Pty Ltd (EBC). Hampden engaged UK-based B&B Studio Limited to design packaging for its BELLIES brand, which includes BABY BELLIES, LITTLE BELLIES, and MIGHTY BELLIES products. Subsequently, Lacorium Health Australia Pty Ltd was tasked with designing additional packaging based…
HCA reaffirms limited circumstances in which it should review concurrent findings, declines to enforce undertaking as to damages due to lack of proof of loss (Commonwealth v Sanofi)
Date: 18 December 2024
Court: High Court of Australia
Judge(s): Gordon A-CJ and Edelman , Steward , Jagot and Beech-Jones JJ
Judgment date: 11 December 2024
Catchwords:
DAMAGES — Where interlocutory injunction obtained to prevent manufacture or sale of generic pharmaceutical products subject to usual undertaking as to damages — Whether generic products would have been listed on PBS but for interlocutory injunction — Onus of proof of Counter-factual approach not discharged.
APPEALS — Standard of review — Where concurrent factual findings of lower courts — Whether special or exceptional circumstances, plain injustice or clear error.
ONUS OF PROOF — Shifting evidential onus — Whether rigid legal rule applied for proof of loss arising from undertaking as to damages.
WORDS AND PHRASES — “Concurrent findings” — “Counter-factual” — “Special or exceptional circumstances” — “Ultimate appellate court”.
Abstract
In Commonwealth V Sanofi (formerly Sanofi-Aventis) [2024] HCA 47; BC202417948, the High Court of Australia (HCA) dismissed the appeal of the Commonwealth of Australia (Commonwealth) for loss suffered as a result of an interlocutory injunction obtained by pharmaceutical company Sanofi which prevented the market entry of a…
Government announces News Media Bargaining Incentive for digital platforms
Date: 12 December 2024
Source: The Hon Michelle Rowland MP
The Federal Government has announced a News Media Bargaining Incentive which aims to encourage digital platforms to enter into or renew commercial deals with news publishers.
The incentive will apply to large digital platforms operating significant social media or search services (regardless of whether or not they carry news) and will include a charge and an offset mechanism. Platforms that choose not to enter or renew commercial agreements with news publishers will pay the charge and platforms with these commercial agreements will be able to offset their liability. The charge will be set at a level higher than digital platforms would pay under direct deals with news media businesses.
The new incentive arrangement is intended to commence from 1 January 2025.
The incentive aims to strengthen the existing News Media Bargaining Code, which facilitates commercial agreements between news, businesses, and digital platforms. The Hon Stephen Jones MP stated that “[The new incentive] strengthens the existing code by addressing loopholes that could see platforms circumvent their responsibility to pay.”
The Government will consult on the final policy details, such as the amount…
Madrid – USA increases individual fees
Date: 11 December 2024
Source: World Intellectual Property Organization (WIPO)
Abstract:
From 18 February 2025, the individual fees payable for international applications, subsequent designations, and renewals of international registrations have changed for the following parties to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol):
As of 18 February 2025, the individual fees payable in respect of the United States of Ameria will be:
- For application or subsequent designation:
- For each class of goods or services: increase from 460 CHF (approx. $820 AUD) to 530 CHF (approx. $941 AUD).
- For renewal:
- For each class of goods or services: increase from 276 CHF (approx. $490 AUD) to 287 CHF (approx. $509 AUD).
Read the full WIPO Information Notice No. 27/2024 here.
ATMO – HAMILTON MOTT able to proceed to registration for legal advisory services
Date: 9 December 2024
Court:Australian Trade Marks Office (ATMO)
Delegate: Benjamin Goldsworthy
Judgment date: 29 November 2024
Catchwords: Trade Marks – Opposition to registration – trade marks a combination of two surnames HAMILTON LOCKE and HAMILTON MOTT – distinguished with SLATERS INTELLETUAL PROPERTY/SLATER & GORDON case
Background:
In Hamilton Locke Pty Ltd v Hamilton & Co Legal Pty Ltd [2024] ATMO 236 Hamilton Locke Pty Ltd opposed trade mark application no. 2267980 for HAMILTON MOTT in class 45, covering ‘Advisory services relating to the law’ (TM). The opposition relied on grounds under ss 42(b), 44, 58A and 60 of the Trade Marks Act 1995 (Cth). None of the grounds succeeded and the TM has been allowed to proceed to registration. Below is a brief summary of the reasons for the outcome.
Section 44, 58A: Given that trade marks for legal services are most likely to be used in signage, the visual differences between the TM and the opponent’s mark ‘HAMILTON LOCKE’, no. 2141056, both being a combination of two surnames, are sufficient such that they are not substantially identical. Further, MOTT is not a common surname and is unlike LOCKE…
TM — Australian fashion designer Katie Perry loses appeal to the pop star and loses trade mark registration
Date: 6 December 2024
Court:Federal Court of Australia — New South Wales District Registry
Judge(s): Yates, Burley and Rofe JJ
Judgment date: 22 November 2024
Catchwords: TRADE MARKS — Infringement of registered trade mark established — Where registered trade mark is a name — Joint tortfeasance — Principles discussed.
TRADE MARKS — Specification of registered goods — Meaning of “clothes” — Role of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks as an aid to construction.
TRADE MARKS — Defence to infringement — Where infringing mark is a name mark — Own name defence.
TRADE MARKS — Defence to infringement — Where infringing mark is deceptively similar to the registered mark — Whether person using the infringing mark would obtain registration.
TRADE MARKS — Cancellation — Whether, because of reputation in prior mark, use of the registered mark would be likely to deceive or cause confusion — Whether discretion should be exercised not to cancel the registration of the registered mark.
TRADE MARKS — Cancellation — Whether, because of circumstances applying at the time when the application for rectification is filed, the use of the registered mark is likely to…
Copyright (International Protection) Amendment Regulations 2024 comes into effect
Date: 2 December 2024
Source: Parliament of Australia
Abstract:
The Copyright (International Protection) Amendment Regulations 2024 have now come into effect.
The instrument aims to updated protections afforded to foreign countries in the Copyright (International Protection) Regulations 1969 (Cth) in accordance with Australia’s treaty obligations and commitment to protecting international sound recordings.
Part 1 of the Amendments extend the protection of secondary uses of sound recordings to two additional countries; St Kitts and Nevis, and Uganda. Copyright owners of sound recordings in these two countries will have the exclusive rights to cause a recording to be heard in public, and to broadcast a recording to the public in Australia.
Part 2 elucidates that Australian broadcasts and public performances of sound recordings from these two countries are protected from 1 January 2025 onwards.
The instrument was introduced with the rationale of meeting obligations under Article 19 of Universal Declaration of Human Rights which states that freedom of expression may be limited for non-copyright holders.
The instrument engages this right to freedom of expression as copyright owners of sound recordings in St Kitts and Nevis, and Uganda will have exclusive rights to make…
OVIC seeks input on VPS outsourcing guidance
Date: 25 November 2024
Source: Office of the Victorian Information Commissioner
The Office of the Victorian Information Commissioner (OVIC) is seeking input from interested parties on its ‘Outsourcing in the Victorian public sector’ guidance.
The guidance discusses the privacy and information security considerations Victorian public sector organisations subject that are to the Privacy and Data Protection Act 2014 should consider when outsourcing a program or service.
Feedback is due Friday 13 December 2024, with the new guidance to be published early 2025.
Read the Office of the Victorian Information Commissioner’s full media release and download the feedback form here.
IP Australia releases report on the business environment of patenting firms in Australia
Date: 15 November 2024
Source: IP Australia
Abstract:
IP Australia has released its report on the business environment of patenting firms in Australia.
Using data from Australian businesses that interacted with the Australian patents system between the years of 2011-2022, the report analyses the business environment and characteristics of patenting entities in Australia to better understand the contexts where innovation is fostered and how the patents system can play a role in that fostering.
Findings of the study include:
- Younger entities are more likely to file patents than older, more established ones. The study noted the importance of start-ups.
- Entities filing patents rely on external research and development funding as opposed to internal reinvestment of innovation funds.
- Patenting is a key indicator of an entities’ collaborations.
- Patent filing or grants are not significantly linked to a likelihood of an entities’ growth. The report notes that this may be a result of patent-holders tending to be specialised knowledge-suppliers.
- Entities are likely to experience dramatic growth decreases after their patents have retired.
The study aims to aid policy makers in creating an Australian patent environment that induces innovation.
Read…
IP Australia releases report on the structural change in patenting behaviour
Date: 15 November 2024
Source: IP Australia
Abstract:
IP Australia has released an analytical note on the Structural change in patenting behaviour in Australia.
Using data from the Australian Bureau of Statistics Business Longitudinal Analysis Data Environment, the study found that domestic patenting behaviours have shifted away from large companies to small and medium entities.
Notably the study also found that:
- Research and development spending by large entities has reduced whilst small and medium entities have risen from around 30% of total research and development spending in 2007 to 55% in 2022.
- Relatedly, a shift from large to small and medium entities has been seen in the number of patents held.
- From 2002 to 2022 the number of patent-holding small and medium entities increased at a rate 5 times faster than that of small and medium entities without patents.
- The same cannot be said for large entities however as the number of large entities without patents has increased nearly 3 times faster than those with patents.
The study forms part of IP Australia’s commitment to ongoing research in understanding innovation in Australia and how research and development investment is…
IP Australia releases report on computer implemented inventions patent applications outcomes
Date: 15 November 2024
Source: IP Australia
Abstract:
IP Australia has released its report: Computer implemented inventions (CII): patent trends at IP Australia, European Patent Office (EPO) and United States Patent and Trademark Office (USPTO).
The report provides a comparative analysis of computer implemented invention patenting activities from filing of patent applications and their outcomes. It refers to difficulties arising from different jurisdictional definitions of what constitutes patentable subject matter and approaches to what constitutes the patentability of CIIs. According to the report, policy makers would benefit from understanding the nuances in the different standards and outcomes, and how that affects inventors and applicant for CIIs. It aims to assess how the variation in standards affects filing trends for CII and non-CII patents, and the impact of court cases such as Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.
The key findings of the report illustrate the CII patent landscape in Australia:
- CIIs account for 32% of all patent filings within Australia, with 6% being those that are likely to raise an objection in an adverse examination report on the grounds that the patent is not patent…
“As clear a case of trade mark infringement as one is ever likely to see” (The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd)
Date: 14 November 2024
Court: Federal Court of Australia
Judge(s): O’Callaghan J
Judgment date: 12 November 2024
Catchwords: Trade Marks – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act) – whether the respondent used the plain word mark THE PRACTICE as a trade mark – whether the respondent’s marks are substantially identical with, or deceptively similar to, the applicant’s mark
Defence under s 122(1)(b)(i) of the Act – whether the respondent used its logo in good faith to indicate the kind, quality or intended purpose of the services it offers – defence under s 122(1)(f) or (fa) of the Act – whether the respondent would obtain registration of its logo under s 44(3)(a) or (b) of the Act
Good faith defences – Respondent’s use of its logo was not in good faith or honest due to inadequate searches – declaratory and injunctive relief granted – damages of $200,000 awarded, including $100,000 in additional damages
Abstract:
In The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299…
Federal Court finds no trade mark infringement or misleading conduct for coffee jar shape by Cantarella
Date: 11 November 2024
Court: Federal Court of Australia
Judge(s): Wheelahan J
Judgment date: 7 November 2024
Catchwords: Trade Marks – Shape marks – Distinctiveness – Passing Off
Abstract:
In Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277; BC202416039, the Federal Court dismissed claims of trade mark infringement, misleading and deceptive conduct, and passing off relating to the shape of a glass jar used for instant coffee products. The Court found that Cantarella Bros Pty Ltd (Respondent) did not use the jar shape as a trade mark and that there was no real chance of the Respondent’s conduct misleading consumers due to the prominent use of its “Vittoria” branding. The Respondent’s cross-claim to cancel the registration did not succeed, but its claim of unjustified threats of infringement proceedings did.
Background
Koninklijke Douwe Egberts BV and Jacobs Douwe Egberts AU Pty Ltd's (Applicants) are associated companies in a corporate group carrying on a global coffee and tea business. Koninklijke Douwe Egberts BV owns Australian trade mark no. 1599824 for the three-dimensional shape of a cylindrical glass jar with a flat-topped stopper lid, registered in…
Saudi Arabia will host the WIPO Diplomatic Conference
Date: 7 November 2024
Source: World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) has announced that Saudi Arabia will host the WIPO Diplomatic Conference to conclude a Design Law Treaty.
Delegates from WIPO member states will convene from 11 November to 22 November 2024 in Riyadh, Saudi Arabia, for the final stretch of negotiations on a proposed treaty that aims to support designers in protecting their work.
For more information on the Design Law Treaty see our previous Latest Legal Update, IPA is consulting on the draft Design Law Treaty: a key issue concerns ICIP, here.
Read the WIPO’s full media release here.
ATMO: Non-use while clearing stock found to be solely a deliberate business decision (369 Labs Pty Ltd v BP plc [2024] ATMO 209)
Date: 7 November 2024
Court: Australian Trade Marks Office (ATMO)
Judge(s): Jonathon Galloway
Judgment date: 24 October 2024
Catchwords: Trade Marks – Application for removal for non-use – No use during relevant period – No obstacles to use
Background:
369 Labs Pty Ltd v BP plc [2024] ATMO 209 involved an application for the removal of the following trade mark for non-use under s92(4)(b) of the Trade Marks Act 1995 (the Act):
- Number: 1673078
- Trade Mark (TM): PULSE (classes 9 and 35)
- Filing Date: 6 February 2015
- TM Owner: 369 Labs Pty Ltd
Since May 2016, the TM owner has offered a hardware device and related software under trade mark number 1668156 – EMBERPULSE (Word mark). Evidence was provided that the EMBERPULSE mark was used between April 2021 and February 2022 in connection with this device. However, other exhibits did not provide sufficient context to establish that the TM was used in reference to the physical device, including the following;
- a facebook post including the words “Run your dishwasher when Pulse is flashing” which did not include details of the physical…
TM — Full Court confirms no infringement of BED BATH ‘N’ TABLE and overturns finding of a breach of the ACL
Date: 1 November 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Nicholas, Katzmann and Downes JJ
Judgment date: 31 October 2024
Abstract:
Catchwords:
MISLEADING OR DECEPTIVE CONDUCT — Where primary judge found that respondent’s reputation was “crucial” to conclusion of misleading and deceptive conduct contrary to ss 18(1) and 29(1)(g) and (h) of Australian Consumer Law, by its use of trade mark “HOUSE BED & BATH” (appellant’s mark) in relation to soft homewares in a market in which respondent’s trade mark “BED BATH ‘N’ TABLE” (respondent’s mark) has a significant reputation, appellant found to have contravened — Where primary judge found appellant’s mark not deceptively similar to “BED BATH ‘N’ TABLE” but found appellant’s use of its mark misleading and deceptive — Where primary judge found that respondent had no independent reputation in “BED BATH” or “BED & BATH”, that there had been substantial and common third party use of “bed” and “bath” and “bed & bath” as navigational or category descriptors
TRADE MARK INFRINGEMENT — Where primary judge found that appellant did not infringe respondents’ marks — Whether primary judge erred in holding…
Administrative Review Tribunal comes into operation
Date: 28 October 2024
Source: IP Australia Manual of Practice and Procedure
Abstract:
The Administrative Review Tribunal (ART) came into operation from 14 October 2024. The ART replaces the administrative Appeals Tribunal (AAT) which ceased from 14 October 2024.
Section 224 of the Patents Act 1990 (Cth) and regulation 22.26 of the Patents Regulations 1991 (Cth) list the decisions that are reviewable by the ART.
These include decisions under:
Section 223 - Extensions of time
Section 32 - Disputes between applicants
Section 74 - Refusal under s74(3) of an application for an extension of term
All existing AAT matters will automatically transfer to the ART.
Read IP Australia’s full media release here.
WIPO announces 2025 version of Nice Classification
Date: 24 October 2024
Source: World Intellectual Property Organization
Abstract:
The World Intellectual Property Organization (WIPO) has announced its 2025 version of the 12th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) will enter into force on 1 January 2025.
This new edition will affect all new trade mark applications filed in countries including Australia on or after 1 January 2025.
Many additions, deletions and wording changes have been made in the new version under a majority of classifications in order to maintain currency.
This includes the addition of ‘biometric scanners’ and ‘humanoid robots with artificial intelligence for use in household cleaning and laundry’ to class 9 goods and services.
Class 10, which encompasses surgical and medical goods and services will include the additions of ‘electrolarynxes’, ‘cryogenic apparatus for medical purposes’, ‘cryogenic apparatus for veterinary purposes’ and ‘pet walking aids’.
These changes, among many others in a wide range of classes, reflect technological advancements and societal trends.
Read the WIPO’s full notice here and access the 2025 version of the Nice Classification here.
Patent for improved logistics method only a business scheme and lacked manner of manufacture
Date: 15 October 2024
Court: Federal Court of Australia
Judge(s): Rofe J
Judgment date: 1 October 2024
Catchwords: Patents — A logistics facility and related systems and methods for the provision of goods or services to an end user — Manner of manufacture — Computer-implemented scheme
Background:
This matter concerned an appeal against decision of the Australian Patent Office (APO) by Dei Gratia Pty Ltd (appellant). The APO had refused the appellant’s application for a standard patent in respect of methods for providing goods and services to the end user, from the appellant’s facility. The sole ground for refusal was that the patent, entitled “Last Mile Logistics”, lacked manner of manufacture.
The appeal was dismissed. The court considered that the substance of the invention claimed was an improved logistics method or scheme for the delivery of goods to an optimal location for consumer collection, where the computer would calculate the optimum modified local outlet for delivery. The computer technology involved in the invention did not advance the technology, but was conventional technology used for its well-known and understood functions. Nor did the invention solve any technological problem but solved…
Office of the Arts seeks input on Indigenous Art Code review by 29 November 2024
Date: 14 October 2024
Source: Office of the Arts
Abstract:
The Office of the Arts is calling for input from interested parties on the Indigenous Art Code review.
Established in 2010, the Indigenous Art Code Ltd administers a voluntary industry Code of Conduct (the Code). The Review aims to strengthen the protections provided by the Code for Indigenous artists and consumers, ensuring ethical and fair treatment of Indigenous artists by setting guidelines for dealers of Indigenous art.
Feedback can be made through a survey or written submissions. The deadline for both the survey and submissions is 29 November 2024.
For more information and to make a submission see the Office of the Arts website.
ATMO - Symbol ‘>’ functioned only as an embellishment
Date: 11 October 2024
Court: Australian Trade Marks Office (ATMO)
Judge(s): Benjamin Goldsworthy
Judgment date: 27 September 2024
Catchwords: Trade Marks – Application for registration – Distinguishing from designated services – Adaptation
Background:
Eli Lilly and Company [2024] ATMO 184 was an office action for rejection of the following trade mark application (TM):
- Trade mark application number: 2399323
- Owner: Eli Lilly and Company
- Trade mark: >HAIR (Word mark)
- Services: Class 44: Medical information services in the field of autoimmune diseases (Designated Services)
A ground of rejection under s 41 of the Trade Marks Act 1995 was raised by a delegate of the Registrar of Trade Marks (Registrar). The ground was described partially by the examiner as:
[T]he symbol > does not add a sufficient degree of adaptation to your applicant’s trade mark… “>” is likely to be viewed as a decorative chevron, and HAIR dominates the overall impression of the trade mark…
I consider the trade mark >HAIR to simply denote that your applicant’s services are providing medical information in the field of autoimmune diseases that are related to hair. I believe a reasonable consumer of such services would assume the same and that…
ATMO: Reputation in the word ‘SNAP’ insufficient to oppose protection in different goods and services (Snap Franchising Limited v IceColdNow, Inc [2024] ATMO 172)
Date: 4 October 2024
Court: Australian Trade Marks Office (ATMO)
Judge(s): Anne Makrigiorgos
Judgment date: 16 September 2024
Catchwords: Trade Marks – Extension of protection – Opposition – No grounds established
Background:
Snap Franchising Limited v IceColdNow, Inc [2024] ATMO 172 involves an opposition to the extension of protection to trade mark number 2362758 (classes 30 and 40) in the name of IceColdNow, Inc – S SNAPCHILL (Figurative) (the TM). Grounds of opposition were raised under sections 42(b), 43, 44, 58A, 59, 60 and 62A of the Trade Marks Act 1995 (Cth).
Snap Franchising Limited is the owner of the following trade marks relevant to this opposition (the Marks):
- 588580, 619185, 619186, 612790, 919131, 1338854: SNAP (Word mark);
- 978511: SNAPNET (Word mark);
- 1623984: SN@P (Figurative); and
- 2107375: SNAP (Figurative).
Sections 44 and 58A:
The TM and the Marks were found to not be registered in relation to similar goods and/or services, as the TM was registered for coffee beverages and brewing while the Marks were registered for services relating to printing, photocopying, design, communication and advertising in addition to other…
ATMO: Non-use applications may only be made in relation to Australia as a whole (Mae Watson v Whiplash’d Pty Ltd [2024] ATMO 168)
Date: 26 September 2024
Court: Australian Trade Marks Office (ATMO)
Judge(s): Anne Makrigiorgos
Judgment date: 2 August 2024
Catchwords: Corporations – False and misleading statements – Greenwashing – Pecuniary penalties
Background:
This matter concerned an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth) for the removal of trade mark number 2007748 (class 44) – WHIPLASH (Word mark) in the name of Mae Watson – for non-use for all services outside of Western Australia. The filing date for this application was 7 May 2019 (Relevant Date).
Section 92(4)(b) states:
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
- (i) used the trade mark in Australia; or
- (ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Notably, removal must be sought for registration in all of Australia and not part of Australia. The application…
Sydney business ‘Establishment’ granted injunction against Qld ‘Establishment 203’
Date: 24 September 2024
Court: Federal Court of Australia
Judge(s): Jackman J
Judgment date: 20 September 2024
Catchwords: Trade Marks – where applicant the owner of the trade mark consisting of the word ESTABLISHMENT in Classes 9, 25, 41 and 42, which include restaurant, bar and hotel services – where trade mark has been used since September 2000 in respect of a multi-level restaurant, bar and hotel business in Sydney – whether to cancel ESTABLISHMENT as a trade mark under s 88(2)(a) of the Trade Marks Act 1995 (Cth)
Abstract:
In Hemmes Trading Pty Limited v Establishment 203 Pty Ltd [2024] FCA 1100, the Federal Court of Australia (FCA) found that in using the trade mark ESTABLISHMENT 203 in the restaurant business, Establishment 203 Pty Ltd had infringed Hemmes Trading’s registered trade mark ESTABLISHMENT and contravened of sections 18 and 29 of the Australian Consumer Law (ACL).
Background:
Hemmes Trading Pty Ltd (Hemmes) is the owner of the word mark ESTABLISHMENT (Trade Mark No 876753) in Classes 9, 25, 41 and 42, which includes restaurant, bar and hotel services (Trade Mark) and has been operating under the Trade Mark in Sydney since September 2000…
South Australian nightclub hit with damages, additional damages and injunction after avoiding paying APRA licence fees
Date: 23 September 2024
Court: Federal Circuit and Family Court of Australia - Division 2 General Federal Law
Judge(s): Manousaridis J
Judgment date: 19 September 2024
Catchwords: Intellectual property — Application for default judgment based on the statement of claim alleging infringement of copyright in musical works — Whether the applicant’s statement of claim establishes an entitlement to relief for infringement of copyright — Whether it is appropriate to grant declaratory and injunctive relief — Assessing damage on the based on the licence fee that would have been paid to the applicant over period of time – whether additional damages can be ordered – Relief granted.
Abstract:
Read the full text of the court’s judgement here: Australasian Performing Right Association Ltd v K Illusion Pty Ltd BC202413345
Facts:
This was an application for default judgment made by collecting society Australasian Performing Rights Association (APRA). APRA claimed that the respondents, being a South Australian nightclub, K Illusion, and its director Mr Yang, had infringed copyright in six musical and literary works by the public performance or authorising the public performance of the works.
In particular, APRA claimed that the respondents had…
WIPO’s new Madrid System for international trade mark registration
Date: 23 September 2024
Source: World Intellectual Property Organisation (WIPO)
Abstract:
The World Intellectual Property Organisation (WIPO) has created a new “classification” helpdesk that can assist in complex classification issues for goods or services when users file an application for international trade mark registration. The new Madrid system will expedite the registration process by ensuring that trade marks are sufficiently and comprehensively protected in their relevant target markets.
Individuals can utilise the Madrid System for an international trade mark registration if they are nationals, or have domicile or business, in any of the 131 selected countries covered by the system. Once they have applied for a national or regional trade mark registration in the Intellectual Property Office of a Madrid System member. This means trade mark holders can expect to pay only one single set of fees for national or regional protection to apply overseas in multiple markets.
ATMO – “Johnnie Walker” brand reputation sufficient to protect against registration of “BLACK LABEL” trade mark
Date: 16 September 2024
Court: Australian Trade Marks Office (ATMO)
Judge(s): Nicholas Smith
Judgement date: 5 August 2024
Catchwords: Trade marks – reputation – similarity of goods – lack of evidence of confusion
Abstract:
This case concerned an opposition, by the global alcoholic beverage company that distributes Scotch whisky under the Johnnie Walker Label, to the registration of a word mark – “BLACK LABEL”. The applicant was also a distributor of alcoholic products in Australia. The enormity of the reputation that Johnnie Walker products have within Australia and globally, as well as the similarity between the goods sold by the two parties, were key factors in the Australian Trade Mark Office’s decision to refuse to register the applicant’s trade mark.
The case:
Diageo Brands B.V. (the Opponent) opposed the registration of trade mark application 2226227 (class 33) – BLACK LABEL (fancy) –– in the name of Australian Vintage Limited (the Applicant). The Opponent was a wholly owned subsidiary of the Diageo group, a global alcoholic beverage company who distributes Scotch Whisky under the Jonnie Walker label, along with several other renowned alcohol brands. The Opponent is the owner of trade mark…
DFAT seeks expressions of interest for bushfoods pilot program
Date: 16 September 2024
Source: Department of Foreign Affairs and Trade
Abstract:
The Department of Foreign Affairs and Trade (DFAT) is calling for expressions of interest by 11:55PM 25 September 2024 from eligible Aboriginal and/or Torres Strait Islander people and organisations to take part in a pilot program as part of an Australia-WIPO International Intellectual Property Cooperation Project.
The bushfoods pilot will have a focus on the export of Australian bushfood products and aims to identify intellectual property challenges First Nations business face when exporting their products.
The pilot program follows the adoption of the Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, as announced by the Minister for Foreign Affairs in August.
The Minister stated that the pilot “will help First Nations exporters navigate the international intellectual property landscape and enjoy the benefits of the world intellectual property regime.”
Interested parties should send their applications to bushfoodspilot@dfat.gov.au by 11:55PM, 25 September 2024 (AEST).
Further details can be found on DFAT’s website here.
Read the Minister for Foreign Affairs full speech here.
First Nations values reflected in consultation paper on the proposed mandatory guardrails for the safe and responsible use of AI in Australia
Date: 10 September 2024
Source: Department of Industry, Science and Resources
The Department of Industry, Science and Resources (Department) is seeking feedback on the mandatory guardrails for the use of artificial intelligence (AI) following the release of the proposals paper on “Safe and responsible AI in Australia”. The consultation closes on 4 October 2024. Notably, it reflects First Nations values and raises the need to consider Copyright issues.
Reflecting First Nations values
The proposals paper aims to harmonise emerging legal standards while preserving Australia’s local needs and context. This includes ensuring that AI systems are culturally appropriate and consider issues of Indigenous Cultural and Intellectual Property (ICIP), Caring for Country and First Nations values.
The non-consensual and misappropriation of First Nations cultural material by AI to create inauthentic art is a recognised risk that has caused harm to ICIP by failing to give proper attribution to those with cultural knowledge and in disregarding cultural protocols about how stories are told. The consultation seeks feedback on:
- suggestions for how the principles in defining high-risk AI could better capture harms…
IPA releases 2024-25 Strategic Corporate Plan
Date: 5 September 2024
Source: IP Australia
Abstract:
IP Australia has released its 2024-25 Strategic Corporate Plan, outlining a revised, consolidated vision and purpose: enabling Australians to benefit from great ideas by providing a world-leading IP system. The plan outlines IP Australia's strategic objectives and approach to achieving this purpose including through innovation and use of technology and collaboration including with other agencies to develop government policy and legislation related to IP.
The plan emphasises the importance of intellectual property as an economic asset that incentivises innovation, creates a secure environment for investment, research, development, and trade. The plan highlights the vital role of innovation based on collaboration, cooperation, and the exchange of know-how in Australia's economic success.
Emerging Technologies
The plan recognises Australia's strong advantage in emerging technologies such as quantum, artificial intelligence, and clean energy generation, and the potential to supercharge the growth of new industries by harnessing these strengths. It recognises the need to balance the interests of both existing rights owners and AI innovators.
Indigenous Knowledge
Following the approval by the WIPO member states on 24 May 2024, of the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional…
IPA is consulting on the draft Design Law Treaty: a key issue concerns ICIP. Deadline 22 September.
Date: 4 September 2024
Source: IP Australia Consultation page
Abstract:
The World Intellectual Property Organization (WIPO) will host a Diplomatic Conference in November 2024 to finalise the Design Law Treaty (DLT). IPA is inviting submissions on the proposed text for the draft articles and regulations by 22 September 2024.
The DLT aims to harmonise administrative procedures for protecting designs across different countries, without changing the substantive law around what a design right protects. The key outstanding issues to be resolved at the Diplomatic Conference include issues regarding grace periods, whether substantive law provisions should be included. Whether disclosure should be required when Traditional Knowledge and Genetic Resources are used in the design will also be considered. A disclosure agreement for patent applicants was approved by the WIPO member in the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge which was agreed to on 24 May 2024.
The key outstanding issues to be resolved at the Diplomatic Conference include:
Grace Periods (Article 6)
Discussions will focus on the grace periods allowed after public disclosure of a product, during which an applicant can still seek design registration.
Intellectual Property Legislation Amendment (Fee Amounts and Other Measures) Regulations 2024
Date: 3 September 2024
Source: Intellectual Property Legislation Amendment (Fees and Other Measures) Regulations 2024
Abstract:
Following the release of IP Australia’s Cost Recovery Implementation Statement (CRIS) 2024-25, IP Australia has set new fee changes to take place from 1 October 2024. The Intellectual Property Legislation Amendment (Fees and Other Measures) Regulations 2024 (‘Regulations’) subsequently amends the Designs Regulations 2004, the Olympic Insignia Protection Regulations 1993, the Patents Regulations 1991, the Plant Breeder’s Rights Regulations 1994, and the Trade Marks Regulations 1995 (collectively, the ‘Principal Regulations’) to establish new fee structures and amounts for proceedings. The Regulations increase the amounts in the scales of costs, expenses, and allowances that can be awarded against a party in a proceeding before the Registrar of Designs, the Commissioner of Patents or the Registrar of Trade marks.
The following points highlight key changes in the Regulations:
Increase to patent proceedings before the Commissioner
Item [25] of Schedule 8 of the Patents Regulation increases the costs, expenses and allowances that may be awarded to successful applications in patent proceedings.
Federal Court denies Fanatics, LLC stay in ongoing trade mark infringement proceedings (Fanatics, LLC v FanFirm Pty Limited)
Date: 26 August 2024
Court: Federal Court of Australia
Judge(s): Bromwich J
Judgement date: 14 August 2024
Catchwords: Practice and Procedure – application for a stay – Onus on applicant to demonstrate proper basis for the stay – irrecoverable losses comparable for both parties
Abstract:
Amidst an appeal against an adverse decision in which the Fanatics LLC, the applicants in this proceeding, was found liable for trade mark infringement, an interlocutory application for a stay of an injunction pending the outcome of the appeal being filed. The Federal Court considered the circumstances of the case and the applicable legal principles before deciding the interlocutory application was to be dismissed. The court decided that there were valid arguments for irrecoverable loss on each side if the stay was, or was not granted, but was unable to clearly identify which loss would be greater or which case was stronger. While the court noted the undesirability of determining the outcome by reference to the onus, it had to do so, finding that the applicant could not demonstrate that the evidence weighed in favour of granting the stay.
US Copyright Office report on “Copyright and Artificial Intelligence” (Part 1)
Date: 19 August 2024
Source: United States Copyright Office
Abstract:
The United States Copyright Office (Copyright office) has released the first part of its long-awaited report on “Copyright and Artificial Intelligence” (Report).
The Report defines “Digital Replicas” as “a video, image, or audio recording that has been digitally created or manipulated to realistically but falsely depict an individual”. Digital replicas can be produced using by many types of digital technology outside of artificial intelligence. While there are many genuine and productive uses for digital replicas, it is their potential for harm that has been the impetus for regulatory focus on this type of technology. Well known concerns have been raised in the creative sector eg as to loss of authenticity and creativity. Beyond this sector, the Report identifies three categories of potential harms, being the creation of sexually explicit material, creation of fraudulent material for scams/theft and false celebrity endorsements. Thirdly, the use of the technology to spread political disinformation.
The first substantive part of the Report, “Protection Against Unauthorized Digital replicas’, which makes up the bulk of the report, begins with an investigation into how existing legislation provides protection against harmful uses of digital replicas. This includes discussion of both State common and statutory law and Federal laws including the Copyright Act, Federal Trade Commission Act, Lanham Act and the Communications Act.
Federal Court of Australia doubles down on decision to allow preliminary discovery (Light & Wonder, Inc v Aristocrat Technologies Australia Pty Ltd)
Date: 15 August 2024
Court: Federal Court of Australia
Judge(s): Jackman J
Judgement date: 7 August 2024
Catchwords: PRACTICE AND PROCEDURE — Preliminary discovery — Application for leave to appeal — Where prospective proceedings concern misuse of confidential information and copyright infringement
Abstract:
Light & Wonder, Inc sought leave to appeal a decision of the Federal Court of Australia to allow preliminary discovery of certain material, on the basis that its competitor, global gaming content and technology company and mobile games publisher Aristocrat Technologies Australia Pty Ltd, already had sufficient information to decide whether to commence proceedings. The Federal Court analysed the primary judge’s reasons and considered the proposed grounds of appeal before dismissing the application for leave to appeal.
Background:
In Aristocrat Technologies Australia Pty Ltd v Light & Wonder Inc [2024] FCA 439, the applicants sought preliminary discovery pursuant to r 7.23 of the Federal Court Rules 2011 (Cth) on the basis that there were reasonable grounds to believe they could obtain relief for a number of causes of action. The causes of action included breach of confidence, breach of contract, copyright infringement, passing off, and misleading or deceptive conduct.
ATMO - Red Nose Day Limited sees “RED NOSE” trade marks trimmed by allegations of non-use
Date: 15 August 2024
Court: Australian Trade Marks Office
Judge(s): Robert Wilson
Judgement date: 30 July 2024
Catchwords: Trade Marks – s 94 application to remove for non-user – s 96 opposition to application for removal for non-use – application partially successful
Abstract:
An application for the removal of a total of nine trade marks for non-use was partially successful as the Australian Trade Mark Office analysed the evidence of use for each trade marks in relation to the relevant goods and services.
Background
Red Nose Limited opposed an application by National Cancer Foundation Limited for the removal of a total of 9 trade marks registered in the name of Red Nose Limited (490285, 756801, 909947, 1022837, 1276629, 1276630, 1528114, 1730666, 1730667). All 9 trade marks were primarily made up of the words “RED NOSE” or RED NOSE DAY”.
For each of the 9 trade marks in question, National Cancer Foundation alleged that firstly, pursuant to s 92 (4)(a) of the Copyright Act 1968 (Cth), on the corresponding filing date Red Nose Limited had no intention in good faith to use its trade mark in Australia in relation to some or all of goods and services for which its registered.
The Federal Court updates practice notes concerning enforcement of foreign judgements and overseas service and evidence
Date: 15 August 2024
Jurisdiction: Commonwealth
Abstract:
On 13 August 2024, the Federal Court of Australia published a Notice to the Profession to publicise recent updates to two of its practice notes, namely:
Both practice notes were updated on 12 August 2024.
A summary of the updates is set out below.
Updates to Foreign Judgments Practice Note (GPN-FRGN)
GPN-FRGN provides guidance for registration of certain New Zealand judgments under the Trans-Tasman Proceedings Act 2010 (Cth) and the Trans-Tasman Proceedings Regulation 2012 (Cth) and the registration of certain foreign judgments under the Foreign Judgments Act 1991 (Cth).
As of 12 August 2024, the practice note was updated to incorporate the following changes:
- Clarification of the material required to accompany an application for registration of a New Zealand judgment and how it is to be provided to the court;
- Provisions for the court to issue an order confirming registration;
- Clarification that the party who has the benefit of a registered New Zealand judgment must give notice to every person liable within 15 days of the date of registration;
- Highlighting that an application under the Foreign Judgments Act 1991 (Cth) must be made within 6 years of the judgment; and
ATMO — Hugo Boss uses reputation to successfully oppose TM applications for BOSS UP
Date: 5 August 2024
Court: Australian Trade Marks Office
Judge(s): Bianca Irgang
Judgement date: 19 July 2024
Catchwords: TRADE MARKS – opposition ground – s 60 – trade mark similar to another with a reputation in Australia
Abstract:
Hugo Boss Trade Mark Management GmbH & Co. KG v Boss Up Pty Ltd [2024] ATMO 129 concerned an opposition to trade mark application no’s. 2256997 and 2257215 in the name of Boss Up Pty Ltd for BOSS UP (Word); BOSS UP (Device TM) (TMs). The opponent successfully relied on registration a number of 'BOSS' Marks, including BOSS; BOSS HUGO BOSS (stylised) and their use (Marks). Registration was refused on the ground under s 60 of the Trade Marks Act 1995 (Cth), being that the TMs were similar to a trade mark that has acquired a reputation in Australia.
Background
The TM applicant filed the TMs covering a number of goods including cosmetics (class 3); apparel (class 25); bottled water/drinks (class 32); alcoholic drinks (class 33); and tobacco (class 34).
The opponent is a German luxury fashion house established in 1924 by Hugo Ferdinand Boss. Evidence indicated that the brand originally focused on uniforms and is now a major global fashion house that sells clothing, footwear and headgear, fragrances and body care products, leather goods, accessories, eyewear, watches and jewellery, amongst other items, by reference to the opponent’s various BOSS Trade Marks.
ATMO — ZOOM’s trade mark proceeds to registration
Date: 23 July 2024
Court: Australian Trade Marks Office
Judge(s): Timothy Brown
Judgement date: 16 July 2024
Catchwords: TRADE MARKS — opposition ground — owner of the trade mark
TRADE MARKS — opposition ground — reputation under s 60 unsuccessful — follows that s 42 unsuccessful
TRADE MARKS — opposition ground — bad faith — no bad faith
TRADE MARKS — opposition ground — deceptive similarity — no deceptive similarity after microphones removed
Abstract:
Kabushiki Kaisha Zoom v Zoom Video Communications, Inc [2024] ATMO 127 concerned an opposition to trade mark application no.2022717 (classes 9 and 38) in the name of Zoom Video Communications, Inc, for ZOOM (Figurative) (TM). The opponent relied on registration no. 529001 (class 15) and 2194854 (IR 1267107) (class 9 and 15) for ZOOM (Word) and ZOOM (fig) (Marks), however the opposition was not successful and the application could proceed to registration after ‘microphones’ in class 9 were removed.
Background
The opponent manufactures musical instruments and AV equipment, eg microphones, audio recorders, drum machines under the Marks. The opponent claimed to sell these musical instruments in Australia since 1989 via
FCAFC confirms no infringement of patent for hinges used for soft closing glass panelled doors (Glass Hardware v TCT Group)
Date: 22 July 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Yates, Charlesworth and Rofe JJ
Judgment date: 17 July 2024
Catchwords: Intellectual property — Innovation patent — Infringement — Non-disclosure
Abstract:
In Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95; BC202409459, the Federal Court of Australia Full Court (FCAFC) dismissed an appeal against a patent for hinges for alleged infringement. The FCAFC found that the appellant could not sufficiently establish the alleged error in the construction of the invention disclosed in the patent.
Background
The proceedings were an appeal of the decision of the primary judge in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493; (2022) 170 IPR 313, concerning an alleged infringement of an innovation patent for a hinge to be used for soft closing glass panelled doors like those found on shower screens and pool fences.
There were two related innovation patents in the dispute before the trial judge, but the appeal was only concerned with one of those, being patent no. 2020102918 entitled “Hinge” (918 Patent).
ATMO – “IRL FILTER” word mark found to be not inherently associated with cosmetic products
Date: 11 July 2024
Court: Australian Trade Mark Office
Delegate: Anne Makrigiorgos
Judgement date: 24 June 2024
Catchwords: Trade marks – word marks – able to distinguish goods under s 41 – word mark has no ordinary signification
Abstract:
An application to extend protection of an international trade mark (TM) to Australia was examined and rejected for insufficiently designating the applicant’s goods. Despite several submissions being made by the applicant, the examiner maintained this position. The validity of the examiner’s ground for rejection was considered at a hearing.
The facts:
Revolution Beauty Holdings Ltd (Revolution), the holder of the TM, sought to extend protection of an internationally registered trade mark to Australia. The application concerned the word mark “IRL FILTER” in the cosmetics and make-up goods class (Class 3).
The Examiner refused the application in the first instance and maintained this position in a further three reports, each issued following a new set of submissions by Revolution. The examiners primary ground for rejection was that the TM was not inherently adapted to distinguish all of the goods in Class 3 claimed by Revolution through the TM, pursuant to s 41(4) of the Trade Marks Act 1995.
ATMO – Uses of offensive language in mainstream media titles sufficient to demonstrate their use in trade marks isn’t scandalous
Date: 4 July 2024
Court: Australian Trade Mark Office
Delegate: Robert Wilson
Judgement date: 12 June 2024
Catchwords: Trade marks – word marks – offensive language – community standards
Abstract:
In Kristopher Preston [2024] ATMO 103 the applicant for the trademark in question (TM) opposed an adverse report issued by the examiner of the trade mark. The report indicated there was a ground to reject the application for containing scandalous matter under s 42(a) of the Trade Marks Act 1995.
Background:
Krisopher Preston, the applicant, filed an application for the word mark “ZRO FUX” on 4 September 22. Upon examination, the examiner issued an adverse report indicating there was a ground to reject the application under s 42(a) of the Trade Marks Act 1995. Section 42 reads:
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The examiner’s view was that TM was phonetically identical to, and clearly referenced, the phrase “ZERO F*CKS” making it scandalous and “considered offensive to a significant portion of the Australian consumers of the goods” being claimed.
Australian Government releases framework for the safe and responsible use of artificial intelligence in government
Date: 28 June 2024
Abstract:
Following a meeting of Australia’s Data and Digital Ministers on 21 June 2024, the National Framework for the Assurance of Artificial Intelligence in Government (the Framework) was agreed to and released. The purpose of the framework is to provide a nationally consistent approach for the assurance of artificial intelligence (AI) in government, enabling lawful, safe and responsible use of the technology.
The bulk of the report is spent detailing how Australia’s AI Ethics Principles – Human, societal and environmental wellbeing, human-centred values, fairness, privacy protection and security, reliability and safety, transparency and explainability, contestability, and accountability – can be practically applied by governments in their assurance of AI. Further, the Framework establishes five ‘cornerstones of assurance’ that are intended to assist governments to ensure their assurance practices are aligned with the AI Ethics Principes. The five cornerstones are the following:
- Governance – AI governance comprises the organisational structure, policies, processes, regulation, roles, responsibilities and risk management frameworks that ensures the safe and responsible use of AI in a way that is fit for the future. Challenges in the use of AI cut across core government functions such as data and technology governance, privacy, human rights, diversity and inclusion, ethics, cyber security, audit, intellectual property, risk management, digital investment and procurement.
Additional damages not awarded despite admission of conscious and deliberate copyright infringement (Lift Shop Pty Ltd v Next Level Elevators Pty Ltd (No 4) [2024])
Date: 1 July 2024
Court: Federal Circuit and Family Court of Australia
Judge(s): Judge Baird
Judgement date: 26 June 2024
Catchwords: Copyright Infringement – Admission by one respondent – Extension to other respondents – Award of additional damages
Abstract:
This case involved claims of copyright infringement and misleading and deceptive conduct under Australian Consumer Law between two direct competitors in the Australian residential lift market. The copyright infringement claim was in relation to a template used for quotations, while the misleading and deceptive conduct claim was in relation to the lift products marketed by each company. After lengthy consideration, all claims of misleading and deceptive conduct were dismissed. Copyright infringement was conceded by one of the respondents but was not extended to the others.
Background Facts
The relevant parties in this case were Lift Shop Pty Ltd (“Lift Shop”), the applicant, and six total respondents. Three of the respondents were related companies and the other three were directors and employers of one or more of those companies.
There was firstly a claim against the one of the NL Entities by Lift Shop of copyright infringement. In 2019, one of the respondent companies, Next Level Elevators Pty Ltd (“NLE”) obtained a copy of a quotation that Lift Shop had issued to one of its customers.
Further analysis needed before passing Fair Pay for Radio Play Bill
Date: 25 June 2024
Source: Parliament of Australia
Jurisdiction: Commonwealth
Abstract:
The Legal and Constitutional Affairs Legislation Committee has issued its report following public hearings and submissions concerning the Copyright Legislation Amendment (Fair Pay for Radio Play) Bill 2023 (the Bill). The Bill aims to enable recording artists and labels to negotiate fair market rates for the use of their sound recordings, removing the fixed cap rates that have been in place since 1968. The Bill was introduced and debated in August 2023 (see our summary of the second reading speeches here).
Over 50 submissions were made to the Committee, including from artists, radio stations, and industry bodies.
Arguments for and against removing caps
The Committee noted the following key arguments for the removal of the caps:
- the caps prevent fair compensation for the use of artists’ music on radio, which is a significant part of their income, and
- the caps, set decades ago, are outdated due to changes in the music and broadcasting industries, especially with the advent of digital streaming and changes in media consumption.
- The key arguments made to the Committee against the removal of the caps were:
Patents - Parasiticide lacked inventive step despite formulae not being common knowledge (Elanco Australasia Pty Ltd v Abbey Laboratories Pty Ltd)
Date: 21 June 2024
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 14 June 2024
Catchwords: Patents – Validity – Routine product development steps – Lack of inventive step
Patents – Prior art – Common knowledge – Product labels and trade notices
Abstract:
This case is an appeal from two decisions of the Commissioner of Patents in which Abbey successfully opposed Abbey’s patent application on the basis it lacked inventive step. The patent application claimed a method for controlling lice on sheep or goats by administering thiacloprid in a specific dosage and concentration range.
Abbey's Argument: Abbey contended that developing a pour-on formulation of thiacloprid would be obvious to a person skilled in the field. The Australian Pesticides and Veterinary Medicines Authority had issued a Trade Advice Notice which disclosed thiacloprid for use in plunge dipping formulations, and a pour-on product had already been developed for imidacloprid (an anti-lice formulation for sheep). Abbey emphasized that determining the solubility of thiacloprid in known solvents and conducting proof of concept and dose determination studies were routine steps in product development.
Elanco's Counterargument: Elanco disputed the premise that thiacloprid’s chemical structure and the necessary solvents for making a pour-on product were common general knowledge by virtue of product labels on similar products.
Ten million dollar fraud executed using trade marks (Cargill, Incorporated v Cargill Financial Services International Pty Ltd)
Date: 18 June 2024
Court: Federal Court of Australia
Judge(s): Brett J
Judgment date: 4 June 2024
Catchwords: Trade marks – trade mark infringement – use as a trade mark – fraudulent use of deceptively similar signs
Australian consumer law – fraudulent use of deceptively similar signs – misleading and deceptive conduct – injunctive relief
1. Background Facts:
Cargill Financial Services International Pty Ltd (the Respondents) set up a fraudulent scheme to deceive Ecowas Bank, a client of Cargill and its subsidiaries (the Applicants), into making a payment of over $10.8 million to their account. The Applicants alleged the Respondents had engaged in misleading and deceptive conduct under the Australian Consumer Law and had infringed the Applicants trade marks under s 120 of the Trade Marks Act 1995 (Cth).
The Respondents had used the domain cargiii.com with the last two letters capitalised to make the domain look like cargill.com, and had opened a bank account in the name Cargill Financial Services International Pty Ltd. The Respondents had also used the signs CARGILL and/or the Cargill logo to make letters appear as though they had been sent from the Applicants in the course of the fraud.
The court found that the Respondent’s conduct constituted both trade mark infringement and misleading and deceptive conduct.
Court strikes balance between confidential information and open justice with search order amendments (Fortescue Ltd v Element Zero Pty Ltd)
Date: 14 June 2024
Source: Federal Court of Australia
Court: Federal Court of Australia
Judge(s): Logan J
Judgment date: 30 May 2024
Catchwords: Confidential information – practice and procedure – Anton Piller search orders – suppressed proceedings
Abstract:
The Fortescue parties (Applicants) alleged that the respondents had misused confidential information about Fortescue's green iron technology. The technology involves an electrochemical process to produce iron without carbon dioxide emissions. The respondents included Element Zero and former employees of Fortescue.
The Applicants claimed that two former employees took Fortescue’s confidential information when they resigned from their R&D roles in late 2021 and used that information to develop a pilot plant for Element Zero Pty Ltd. To preserve evidence potentially at risk of destruction, Fortescue successfully applied for Anton Piller search orders, which were executed on 14 May 2024.
This hearing was the return date for the search orders. The respondents sought to keep the proceedings suppressed to avoid potential commercial and reputational damage from publicity. The court had to decide whether to continue these suppression orders.
Justice Logan emphasised the principle of open justice, stating that confidentiality in court proceedings is an exception rather than the norm. He noted that public confidence in the judicial system requires transparency. While acknowledging the respondents' concerns about reputational harm, the judge did not find sufficient reason to keep the entire proceeding suppressed.
Updates to Federal Court Rules 2011 (Cth) regarding service of documents in patent and trade mark proceedings
Date: 12 June 2024
Source: Federal Court of Australia
Jurisdiction: Commonwealth
Status: In force: 5 June 2024
Abstract:
The Federal Court Legislation Amendment Rules 2024 (Cth) came into force on 5 June 2024, changing rules 10.07 and 10.08 of the Federal Court Rules 2011 (Cth), which relate to service of documents in patent and trade mark proceedings.
In particular, the requirements for service set out in s215 of the Trade Marks Act 1995 (Cth) (‘Trade Marks Act’) and s221 of the Patents Act 1990 (Cth) (‘Patents Act’) now extend to appeal proceedings in the following circumstances:
- An appeal brought against an applicant for, or opponent to, the grant of a standard patent under s60(4) of the Patents Act
- An appeal brought against a patentee for, or opponent to, the grant of an innovation patent under s101N(7) of the Patents Act; and
- An appeal brought against a party in relation to a decision of the Registrar of Trade Marks under s56 or s104 of the Trade Marks Act.
The requirements for service set out in the Trade Marks Act and Patents Act continue to apply to proceedings brought against the patentee or registered trade mark owner.
ATMO – submissions of confusion arising from 20 year old advertisements “verge on the heroic”
Date: 11 June 2024
Court: Australian Trade Mark Office
Delegate: Nicholas Smith
Judgment date: 21 May 2024
Catchwords: Trade marks – s 59 established for some of the Goods and Services – Amendment of marks made – trade marks (as amended) to proceed to registration
Abstract:
In FreshFood Holdings Pte Limited v Pablo Enterprise Pte. Ltd. [2024] ATMO 94, the Delegate considered grounds of opposition to the trade marks (TM) B PABLO (Figurative); and THE CHEESE TART B PABLO MINI (Figurative) under ss 42(b), 43 , 44, 59 , 60 and 62 of the Trade Marks Act 1995 (Cth).
The marks were ultimately amended and proceeded to registration.
Consideration:
Section 59: A lack of intention for some of the goods and all the services was found and TM amended to remove those.
Evidence showed that the TM applicant only trades in limited categories of goods and services and used the TMs in Australia to sell cheese tarts in Sydney. This was sufficient to shift the onus to the TM Applicant to show an intention to use the TMs for the Goods and Services for which no use in Australia has been shown.
ATMO – Famous Asterix character mark rejected for subset of class 9 goods
Date: 11 June 2024
Court: Australian Trade Marks Office
Hearing Officer: Anne Makrigiorgos
Judgment date: 3 June 2024
Catchwords:Trade marks – composite marks – overall impression – not deceptively similar
Trade marks – deceptive similarity s44 – aural equivalence – restriction of claimed goods or services
Trade marks – IRDA – presumption of registrability in Australia – deceptive similarity
Trade marks – deceptive similarity – s44(3)(b) – reputation not relevant to overcome deceptive similarity
Background:
In July 2022, Les Editions Albert Rene (‘Holder’) applied to extend protection to Australia for International Registration number 1689749 under Australian trade mark number 2307501 (‘IRDA mark’). The IRDA mark is a composite, consisting of the word ASTERIX and a warrior cartoon character wearing a winged helmet. The application sought registration across classes 9,16,25,28,35 and 41. Relevantly, registration was sought for a broad range of goods in classes 9 and 25.
The examiner cited four prior registrations as objections under s44 of the Trade Marks Act 1995 (Cth), focusing on their deceptive similarity to the IRDA. The cited registrations were:
- The 221 Mark: Australian trade mark number 902211, consisting of the word ASTERISK and a prominent, stylised image of an asterisk registered in Class 25.
- The 510, 525, and 916 Marks: Australian trade mark numbers 1076510, 1082525 and 1270916 registered in Class 9. These consist of the word ASTERISK and, in the case of 510, a composite mark with an image of an asterisk.
Seven Network’s trade mark appeal allowed in part for limited services (Seven Network (Operations) Limited v 7-Eleven Inc)
Date: 28 May 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Burley, Jackson and Downes JJ
Judgment date: 27 May 2024
Catchwords: TRADE MARKS — non-use — whether primary judge erred in finding that registered trade mark owner had not established use during relevant period — use in relation to particular goods and services alleged to have occurred by display of mark on website — use partially established for one category of goods and services but not the remaining
TRADE MARKS — non-use — Trade Marks Act s 101(3) — discretion to permit mark to remain on the Register in relation to remaining categories of goods and services — discretion not exercised in favour of trade mark owner.
Abstract:
The Federal Court of Australia (Full Court) (“Full Court”) has allowed in part the appeal filed by Seven Network (Seven) of the decision of the primary judge in Seven Network (Operations) Limited v 7-Eleven Inc BC202306054. The Full Court allowed Seven’s Word mark for 7NOW no. 1540574 (TM) to remain on the register for some of the services that were in dispute (noting that the TM remains registered for a wide range of services).
WIPO's historic new treaty on IP, Genetic Resources and Associated Traditional Knowledge
Date: 24 May 2024
Source: WIPO
Abstract:
On 24 May 2024, World Intellectual Property Organization (WIPO) member states approved the final form of the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, a historic international legal instrument to protect Indigenous Cultural IP (ICIP). Addressing IP, genetic resources and traditional knowledge and including provisions specifically for Indigenous Peoples as well as local communities, the treaty is the first of its kind and will affect patent law.
The Intergovernmental Committee on Intellectual Property and Genetic Resources, which WIPO established, has been developing and negotiating international legal instruments to protect ICIP since 1999. It will enter into force three months after fifteen Member States of WIPO deposit their instruments of ratification or accession to it.
Once it enters into force, each contracting party will require a disclosure to be made by patent applicants whose inventions are based on genetic resources and/or associated traditional knowledge. The treaty provides that the disclosure requirement is not retrospective.
What will need to be disclosed is set out in Article 3:
- where the claimed invention is “based on” “genetic resources”: the applicant must disclose the country of origin or, if unknown, source of the genetic resources.
2024 Australian IP Report highlights growing strength of IP applications and IPA’s increased focus on AI
Date: 24 May 2024
Source: IP Australia
Abstract:
IP Australia (IPA) has released the 2024 Australian IP Report, providing key insights into the country's intellectual property landscape. Artificial intelligence (AI) is a growing focus of IPA in the administration of IP rights, particularly given the ongoing debates concerning patent protection of computer technology and computer implemented inventions. As the ongoing debate represents an opportunity for countries to show leadership in AI, quantum computing, and other growing areas of technology, this debate will no doubt continue. IPA has commissioned a study to compare the outcomes of patent applications covering computer technology and computer implemented inventions, and to compare the alignment of Australian law with international laws.
The report also details the use of AI / machine learning by IPA, in its role of administering IP rights, including:
- Machine learning for patent evaluation: IPA has integrated machine learning to assess the characteristics and quality of patents. In collaboration with the Centre for Transformative Innovation (CTI) at Swinburne University of Technology, a study was conducted to compare Australian patents with those granted in the United States and the European Patent Office using advanced machine learning models.
IP Australia’s AI-powered TM checker goes live
Date: 22 May 2024
Source: IP Australia
IP Australia has officially launched its AI-powered TM Checker, designed to assist users in the trademark application process. The tool, which has been in pilot since October 2022, is being used for approximately 140 applications per week and its user base is 94% small businesses.
The TM Checker allows users to input their word mark or upload a logo and then use a search function to identify relevant goods and services for registration. It is able to assess a trade mark and search the register to return warnings if the trade mark being applied for lacks distinctiveness or is too similar to existing registered trade marks.
The tool shows promise, particularly in supporting small businesses, though its 'similar marks' functionality could be improved in future by being more discriminating in the marks it returns and considering nuanced considerations, such as the state of the register.
Users who decide to proceed with their applications are directed to IP Australia's TM Headstart service. The TM Checker aims to streamline the initial stages of trademark registration and can be accessed at https://tmchecker.ipaustralia.gov.au/start.
“Snakeman” has no reasonable prospects of success against Meta for some ACL breaches, or for trade mark or moral rights infringement, but other issues given a biting chance (Hoser v Harrison)
Date: 20 May 2024
Court: Federal Circuit and Family Court of Australia
Judge(s): Judge Manousaridis
Judgment date: 16 May 2024
Catchwords: Intellectual Property — Practice and procedure — Application by second respondent to dismiss paragraphs of amended statement of claim relying on allegations that, by reason of material posted on the first respondent’s Facebook and Instagram Pages, the second respondent engaged in conduct in contravention of s 18(1) of the Australian Consumer Law (ACL) and infringed the applicant’s trade marks
DEFAMATION — Practice and procedure — Application to strike out pleaded imputations on various grounds— A number of challenged pleaded imputations struck out but with leave to replead granted.
Amendments to Trade Marks Act and Patents Act now in force following Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 (Cth)
Date: 17 May 2024
Source: Intellectual Property Laws Amendment (Regulator Performance) Act 2023 and Statute Law Amendment (Prescribed Forms and Other Updates) Act 2023
Abstract:
The balance of the changes to the Trade Marks Act 1995 (Cth) and Patents Act 1990 (Cth), as well as the complementary and consequential changes to the Trade Marks Regulations 1995 (Cth) and Patents Regulations 1991 (Cth), have come into force as of 17 May 2024. In 2023, the Intellectual Property Laws Amendment (Regulator Performance) Act 2023) was passed, see our earlier Latest Legal Update here. The Intellectual Property Laws Amendment (Regulator Performance) Regulations 2024 (Cth) has made further minor changes to the Regulations to implement the changes.
Trade Marks Regulations 1995 (Cth)
- Grace period to renew reduced from 10 months to 6 months: (ss 80F(b), 80G (heading) and 80G(1)(b) of the Trade Marks Act; and reg 21.21(6) of the Trade Marks Regulations). Amendments apply only to trade marks that are registered after commencement of this item: new reg 22.26.
ATMO - while common use of “kindergym” and “kindygym” by traders of the field, SOMERTON PARK KINDERGYM (figurative) in class 41 found distinctive
Date: 13 May 2024
Court: Australian Trade Marks Office
Delegate: Robert Wilson
Judgment date: 30 April 2024
Catchwords: Trade marks – whether ground for rejection of application under s 44 – element which is common to the trade marks is common to the trade and descriptive – not satisfied that use of trade mark is likely to give rise to deception or confusion – application accepted
Abstract:
In Somerton Park Kindergym Pty Ltd [2024] ATMO 80, the trade mark of Somerton Park Kindergym Pty Ltd (Somerton) was found to not be substantially identical or deceptively similar to other trade marks containing the words “KINDERGYM” or “KINDYGYM” due to their distinctive graphics.
Background
Somerton filed an application to register their figurative trade mark which included the words “Somerton Park Kindergym” that circled three children playing. Following an examination under s 31 of the Trade Marks Act 1995 (Cth) (Trade Marks Act), the examiner issued an adverse report stating there were grounds for rejection under s 44 due to earlier trade marks that contained the words “KINDERGYM” or “KINDYGYM”.
Somerton provided letters of consent for three trade marks and argued its trade mark was neither substantially identical nor deceptively similar to the remaining four, but was issued a second adverse examination report.
ATMO finds unsuccessful opposition regarding arguments about misleading “GREEN” terms on single use plastic packaging (One Green Cup Pty Ltd v The Green Cup Pty Ltd)
Date: 10 May 2024
Court: Australian Trade Marks Office
Delegate: Louise Tuohy
Judgment date: 29 April 2024
Catchwords: Trade marks – opposition under section 52 – section s 42(b), 43, 44, 59, 60 and 62(b) pursued – none established
Abstract:
One Green Cup Pty Ltd v The Green Cup Pty Ltd [2024] ATMO 77 involved the opposition of One Green Cup Pty Ltd (OGC) to the trade mark registration held by the similarly named company The Green Cup Pty Ltd (The Green Cup). Amongst others, OGC argued that the use of “GREEN” on The Green Cup’s single use plastic packaging would mislead or deceive consumers about how environmentally friendly their product was, contrary to ss 18 and 29 of the Australian Consumer Law (ACL). All grounds of opposition were unsuccessful and costs were awarded against OGC.
Background
OGC is an Australian company established in 2009 that provides an environmentally friendly alternative to single-use plastic cups with its drinkware items branded with their trade mark “ONE GREEN CUP”. Customers could buy or rent drinkware with space to print their logo and information and the cups would be washed and reused.
ATMO finds significant reputation attached to Peter Alexander’s dachshund logo (Peter Alexander Sleepwear Pty Ltd v Harmont & Blaine SpA)
Date: 6 May 2024
Court: Australian Trade Marks Office
Delegate: Tracey Berger
Judgment date: 25 March 2024
Catchwords: Trade marks — opposition to extension of protection under regulation 17A.33 — s 60 established — extension of protection refused
Abstract:
Peter Alexander Sleepwear Pty Ltd v Harmont & Blaine SpA [2024] ATMO 54 involved the opposition of Peter Alexander Sleepwear Pty Ltd (Peter Alexander) to an IRDA held by Harmont & Blaine SpA (H&B). H&B’s trade mark was successfully opposed due to the shared use of dachshund images that would make it likely to deceive or cause confusion with the significant reputation of Peter Alexander’s dachshund marks.
Background
Peter Alexander is a company that produces, distributes and sells a wide range of lifestyle goods, clothing and homeware through its 106 retail stores and online since 2000. Since 1997, Peter Alexander adopted its blue, right-facing dachshund outline logo which it used alone and in conjunction with the word trade mark ‘PETER ALEXANDER’.
H&B is an Italian company founded in 1995 that specialises in the design, production and distribution of premium casual apparel and accessories. H&B have a combined total of over 700 stores across 34 countries. H&B’s trade mark consisted of small, realistic and left-facing dachshund above the words ‘harmont&blaine’.
Isentia’s copying of Sky News content in providing media monitoring services for government bodies found to not infringe copyright (Australian News Channel Pty Ltd v Isentia Pty Ltd)
Date: 26 April 2024
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 12 April 2024
Catchwords: COPYRIGHT– statutory construction – section 183(1) of the Copyright Act 1968 (Cth) – meaning of “for the services of the Commonwealth or State” – whether provision of media monitoring services to government clients within s 183(1)
In Australian News Channel Pty Ltd v Isentia Pty Ltd [2024] FCA 363, the Federal Court held that Isentia Pty Ltd (Isentia) had met the requirements of s 183(1) of the Copyright Act 1968 (Cth) (Copyright Act 1968) and had not infringed copyright of content provided by Australian News Channel Pty Ltd (ANC) when copying both online and television content in the provision of media monitoring services to their government clients.
Federal Court declares infringement of Vald patent by two of KangaTech’s products but finds enforceable undertaking excessive (Vald Pty Ltd v KangaTech Pty Ptd (No 6))
Date: 24 April 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgment date: 23 April 2024
Catchwords: PATENTS — Form of orders following judgment on claim and cross-claim — Whether declaration of non-infringement should be made when relief not sought in cross-claim — Whether respondent should be (or needs to be) released from proposed undertaking
Abstract:
In Vald Pty Ltd v KangaTech Pty Ltd (No 6) [2024] FCA 408; BC202404869, Downes J declared the infringement of two products made by KangaTech Pty Ltd (KangaTech) on a patent held by Vald Pty Ltd (Vald). Orders restraining KangaTech conduct for the making, supplying and selling of the infringing products, requiring KangaTech to supply the products and related materials to Vald, and releasing KangaTech from its proposed enforceable undertaking were also made.
Background
In Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333; BC202403965, the KangaTech Product (KT Product) and the KangaTech360 (KT360) were found to infringe on patent 2012388708 held by Vald for an apparatus that assesses knee strength. The updated KT360 was not found to infringe the Vald’s patent as it no longer allowed force measurements to be provided during assessments of knee strength.
See our previous Latest Legal Update for a summary of the previous proceedings here.
Economic opportunity and empowerment in Indigenous Knowledge initiatives
Date: 22 April 2024
Source: IP Australia
The ongoing Inquiry into economic self-determination and opportunities for First Nations Australians and the National Farmers Federation’s roundtable discussions for the Indigenous Agricultural Framework Project continue to further economic opportunity and empowerment of First Nations peoples.
Both support IP Australia’s commitment to promote Indigenous Knowledge initiatives and give effect to the four key themes of control, protection, recognition and respect that prioritise First Nations people and perspectives in supporting cultural integrity.
Inquiry into economic self-determination and opportunities for First Nations Australians
On 27 March 2024, the Joint Standing Committee on Aboriginal and Torres Strait Islander Affairs (Committee) adopted an inquiry into economic self-determination and opportunities for First Nations Australians.
The inquiry’s terms of reference include:
- opportunities for and barriers to training, employment and business development;
Attorney-General releases statement on copyright reform to protect remote learning
Date: 16 April 2024
Source: Attorney-General’s portfolio
Abstract:
In a statement released by the Attorney-General, he outlined the goals of the Government in making amendments to the Copyright Act 1968 (Cth) to ensure that students who attend classes remotely have access to copyrighted material in online learning in the same manner as students who attend in person.
During the Ministerial Copyright Roundtables, concerns were raised over the access of students to copyright material, proposed amendments to make it clear existing rules for copyright materials in the classroom will also apply when lessons are delivered online.
Progress on these reforms will occur in line with the Government’s ongoing work on Copyright and AI through the Copyright and AI Reference Group, as established at the Ministerial Copyright Roundtables.
Read the full media release here.
Two of four KantaTech products found to infringe certain claims of Vald patent for apparatus assessing knee strength (Vald Pty Ltd v KangaTech Pty Ltd (No 5))
Date: 8 April 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgement date: 5 April 2024
Catchwords: PATENTS – patent for apparatus for use in assessing the strength of at least one knee flexor muscle of a subject – claim construction – patent for method of assessing strength of at least one knee flexor muscle using an apparatus – infringement – validity
PATENTS – validity – sufficiency and support – whether patent met requirements of ss 40(2)(a) and 40(3) Patents Act 1990 (Cth) if claim 1 was construed as only requiring one leg to be secured by securing member – whether lack of inventive step
PATENTS – infringement – infringement conceded in relation to original device and later device prior to software modifications – no infringement found in relation to device after software modifications made – whether infringement within meaning of s 117(2)(b) Patents Act 1990 (Cth) – whether instruction or inducement within s 117(2)(c) Patents Act 1990 (Cth)
Abstract:
Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333; BC202403965 involved a dispute over a patent owned by Vald Pty Ltd (Vald) that mainly turned on claims 1 and 18 for an apparatus that assesses knee strength by measuring the hamstring muscles during contraction.
Dates for community engagement sessions for First Nations art added for Queensland, Australian Capital Territory and Western Australia
Date: 12 April 2024
Source: Office for the Arts
Abstract:
As part of the legal reform process to protect First Nations peoples’ traditional knowledge and cultural expressions, dates for public engagement sessions during April and May for Queensland, the Australian Capital Territory and Western Australia have been released.
The Australian Government aims to hear from Aboriginal and Torres Strait Islander peoples on the following topics of discussion regarding Indigenous cultural and intellectual property (ICIP):
- aspects of ICIP that should be protected under the new law;
- rights for Traditional Owners that should be protected;
- key principles and objectives of the new law;
- preferred terms: Indigenous/First Nations/Aboriginal and Torres Strait Islander; Ownership/Custodianship; and Traditional Owner/Traditional Custodian;
- harms caused by breaches of cultural rights;
- acknowledgement of rights;
- communal ownership, ensuring consent and resolving disagreements;
- enforcement by Traditional Owners of their cultural rights; and
- other measures to assist Traditional Owners with protecting their art.
Online sessions to discuss the above will also be held on 3 June, 14 June and 26 June.
World Intellectual Property Day on 26 April 2024
Date: 8 April 2024
Source: World Intellectual Property Organization
Abstract:
World Intellectual Property Day will be held on 26 April 2024 to celebrate global intellectual property (IP) developments and encourage innovative and creative IP efforts to achieve the UN Sustainable Development Goals (SDGs) for peace and prosperity for people and the planet.
The World Intellectual Property Organization (WIPO) promotional materials include an AI-generated video that serves as a call to arms to emphasise the importance of IP and innovation to address SDGs such as reduced inequalities, sustainable cities and communities, and peace, justice and strong institutions.
See WIPO’s website for more information on World Intellectual Property Day here and the United Nations website for more information on the 17 SDGs here.
IP Australia seeks submissions for WIPO Diplomatic Conference on Genetic Resources and Associated Traditional Knowledge
Date: 27 March 2024
Source: IP Australia
The World Intellectual Property Organization (WIPO) will host a Diplomatic Conference on Genetic Resources and Associated Traditional Knowledge (Diplomatic Conference) from 13 to 24 May 2024 at Geneva. The Diplomatic Conference will be the final stage of negotiations before the adoption of an international agreement on patent disclosure to prevent erroneous grants of patents for applications under Genetic Resources and Associated Traditional Knowledge that are not novel or inventive. Submissions to IP Australia on the Diplomatic Conference will be due on 15 April 2024.
The WIPO Diplomatic Conference will discuss international rules aimed to improve the efficiency, transparency and quality of the patent system. If adopted, applicants would need to disclose the source of the Genetic Resources and Associated Traditional Knowledge used in inventions if a country is a member of the treaty. Increased transparency will allow for Australian Genetic Resources and Associated Traditional Knowledge to be more easily identified and will be important to protecting Indigenous Knowledge.
IP Australia is accepting submissions on patent disclosure and examples and collaborations or patents that may require Genetic Resources or Associated Traditional Knowledge to be disclosed.
New laws to tackle fake Indigenous-style art
Date: 27 March 2024
Source: IP Australia
Abstract:
The Office of the Arts has begun consultations for the development of legislation to tackle fake Indigenous-style art under the National Cultural Policy, Revive. The Australian Government is committed to renewing and reviving Australia’s arts, entertainment and cultural sector by protecting the traditional knowledge and cultural expressions of First Nations peoples. Community engagement sessions will continue across Australia until 2 May 2024 and online sessions will be held in June.
The legislation will be delivered in stages to ensure the following are addressed in order:
- The issue of fake art, merchandise and souvenirs.
- Broader Indigenous Cultural and Intellectual Property rights and enforcement.
Written submissions can also be provided by 15 June 2024.
See IP Australia’s release here with further details on the community engagement sessions here and the written submissions here. For further information on the National Cultural Policy, Revive, see the Office of the Arts’ website here and the previous Latest Legal Update here.
Moral rights not infringed by statements that an author’s work is “unscientific” and “dishonest” (Hoser v Georges [No 2])
Date: 20 March 2024
Court: Federal Circuit and Family Court of Australia
Judge(s): Judge Manousaridis
Judgment date: 15 March 2024
Catchwords: INTELLECTUAL PROPERTY – moral rights – right of integrity of authorship provided for by s 195AI of the Copyright Act 1968 (Cth) (Copyright Act) – whether statements made about the contents of an author’s literary works (works) and about the author that prejudices the author’s honour or reputation constitute the doing of an act in relation to the works within the meaning of s 195AJ(b) of the Copyright Act and, for that reason, constitute the subjection of the works to derogatory treatment within the meaning of s 195AI(2) and, for that reason, constitute an infringement of the author’s right of integrity of authorship in respect of the works provided for by s 195AI
Abstract:
In Hoser v Georges [No 2], the court dismissed Mr Hoser’s argument that the respondents’ statements about his work being “unscientific” and should never be cited was derogatory treatment s 195AJ of the Copyright Act 1968 (Cth) (Copyright Act).
Aristocrat residual claims not a manner of manufacture (Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3))
Date: 18 March 2024
Court: Federal Court of Australia
Judge(s): Burley J
Judgement date: 8 March 2024
PATENTS — Operation of 23(2)(a) of the Judiciary Act 1903 (Cth) — Approach to be taken by single judge on remitter — Full Court decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 applied.
PATENTS — Manner of manufacture — Innovation patents for Electronic gaming machines and methods for providing feature games — Residual claims not a manner of manufacture within meaning of s 18(1A)(a).
Abstract
In Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3) [2024] FCA 212; BC202402530 His Honour Burley J concluded that none of the residual claims in three patents owned by Aristocrat were a manner of manufacture. In reaching that conclusion, Burley J had to consider the operation of s 23(2)(a) of the Judiciary Act 1903 (Cth); the effect of the remittal order made by the Full Court of the Federal Court of Australia (Full Court) in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 163 IPR 231;
Resale royalty — amending regulation commencing 31 March adds list of reciprocating countries
Date: 15 March 2024
Source: Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth)
The Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth), will amend the Resale Royalty Right for Visual Artists Regulations 2021 (Cth) commencing on 31 March 2024, by inserting a new s 6A prescribing a number of countries as reciprocating countries for the purposes of s 14(1)(c) of the Resale Royalty Right for Visual Artists Act 2009. Section 14(1)(c) provides for an individual satisfying the residency test if they are a national or citizen of a reciprocating country.
See the Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth).
$150K for flagrancy of copyright infringement by competing essential oil company, but confidential information claim fails (Native Extracts Pty Ltd v Plant Extracts Pty Ltd (No 2))
Date: 15 March 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgment date: 23 February 2024
Catchwords:
INTELLECTUAL PROPERTY – whether information about extraction machine was confidential information owned by company where second respondent was former director – where second respondent was informed about machine by third party on unrestricted basis – where evidence insufficient to establish that information was confidential information owned by company
CONTRACTS – construction – scope of confidentiality clause – whether extended to information about commercially available product – where contract contained restraint of trade clause which permitted return to industry after 12 months
COPYRIGHT – flagrant infringement of copyright – award of additional damages
Abstract:
Native Extracts Pty Ltd v Plant Extracts Pty Ltd (No 2) [2024] FCA 106; BC202401766 involved a dispute between two companies that sold botanical plant extracts that operated within the same warehouse. The court initially made orders by consent for the publication of correction notices under the ACL and declared various breaches of confidence: Native Extracts Pty Ltd v Plant Extracts Pty Ltd [2023] FCA 1265; BC 202314972. In this decision, the court held that allegedly confidential information about the extraction machine was not confidential in nature and had entered the public domain.
Trial judge erred in remedies granted to Hells Angels (Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited) [2024] FCAFC 15
Date: 13 March 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Perram, Nicholas, Burley, Rofe and Downes JJ
Judgement date: 23 February 2024
Catchwords: Intellectual property – remedies – nominal damages – must be small Intellectual property – remedies – additional damages – award of nominal damages is a relevant factor under s126 of the Trade Marks Act 1995 – Intellectual property – remedies – injunction – not available where compliance not possible Intellectual property – remedies – declaratory relief – not necessary where nominal damages made
Abstract:
Redbubble was found at trial to have infringed five trade marks belonging to Hells Angels Australia. The trial judge ordered the payment of nominal damages, additional damages, granted injunctive relief and declaratory relief. On appeal to the Full Federal Court, decisions of the trial judge were overturned in respect of the quantum of nominal damages, the award of additional damages, the framing of the injunctions and the making of declaratory relief.
Nominal damages
On appeal the court held that nominal damages must be small. In this case, an award of $8,250 at trial was not nominal.
No procedural fairness where improbable events are uncritically accepted – Microsoft gets a retrial (Microsoft Corporation v CPL Notting Hill Pty Ltd)
Date: 14 March 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Nicholas, Rofe and Jackman JJ
Judgement date: 4 March 2024
Catchwords: Intellectual property – procedural fairness – uncritical acceptance of improbable events – decision overturned
Intellectual property – procedural fairness – delay between trial and reasons – whether three years is an operative delay
Abstract:
The Full Court of the Federal Court of Australia in Microsoft Corporation v CPL Notting Hill Pty Ltd [2024] FCAFC 20; BC202402250 set aside the decision of the trial judge and ordered a new trial on all issues except for the declarations of copyright infringement and finding of authorisation of infringement in 30 instances. The case at trial concerned copyright infringement, trade mark infringement and misleading and deceptive conduct relating to the wrongful use of Microsoft Windows 7 products by CPL Parties.
Background
It was alleged that CPL parties pre-installed unauthorised versions of Windows 7 onto new computers and supplied these to end users. The trial judge found copyright infringement had been authorised in 30 instances but ruled that claims of infringement in an additional 1467 cases were unsubstantiated.
ATMO decides band members of ‘Taxiride’ unable to seize trade mark for themselves (Jason Singh v Tim Watson & Tim Wild)
Date: 13 March 2024
Court: Australian Trade Marks Office
Delegate: Tracey Berger
Decision date: 22 February 2024 (ASIC)
Catchwords:
Trade marks — opposition under ss 42(b), 43, 58, 50, 62(b) and 62A of the Trade Marks Act 1995 (Cth) pursued — s 58 ground established — trade mark application refused
Jason Singh v Tim Watson & Tim Wild [2024] ATMO 33 involved Taxiride band member Jason Singh’s opposition of the registration of the word trade mark of their band name ‘Taxiride’ by two other band members. The application was successfully opposed as the trade mark, an asset of the partnership between the original band members, was jointly owned by the three of them and could not simply be seized by the two applicants.
Background
The band Taxiride (Band( formed in 1999 and both trade mark applicants are original members of the Band. Active members of the band varied from 1996 to 2023 and the Band continued to perform as ‘Taxiride’.
In 2021, Mr Watson contacted Mr Singh for his availability to perform in anticipation of lifted COVID-19 restrictions.
MSA 4x4 Accessories Pty Ltd patent not infringed by Clearview Easy Glide product – MSA threats unjustified and communications misleading (MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd)
Date: 6 March 2024
Court: Federal Court of Australia
Judge(s): Charlesworth J
Judgement date: 26 February 2024
Catchwords: Intellectual property – trade marks – originating application alleging infringement of trade marks including the plain word mark mercato – whether the respondent has used, as a trade mark, a sign that is deceptively similar to any one of the applicant’s trade marks sued upon
Abstract:
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138; BC202401917 involved a dispute over several registered trade marks owned by Caporaso Pty Ltd (Caporaso) that included the word “mercato”. The court held that trade marks of Mercato Centrale Australia Pty Ltd (Mercato Centrale) were not deceptively similar to Caporaso’s marks and that “mercato” did not bear an ordinary signification descriptive of goods and services associated with Italian supermarkets. However, one of Caporaso’s trade marks was ordered to be removed from the register of trade marks in connection with certain services in Class 43.
Background
Caporaso operated an Italian themed supermarket, restaurant and wine retail business since 1972 and traded by reference to the trade mark “Imma & Mario’s Mercato” in 2005 and then later under simply “Mercato” from 2011.
MSA 4x4 Accessories Pty Ltd patent not infringed by Clearview Easy Glide product – MSA threats unjustified and communications misleading (MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd)
Date: 7 February 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgment date: 24 January 2024
Catchwords:
Patents – validity – lack of novelty,
Patents – validity – lack of inventive step
Patents – infringement – construction of claims
Patents – counterclaims – unjustified threats and false and misleading allegations
Abstract:
MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24 involved a patent dispute with Clearview Towing Mirrors (Clearview) over a mounted, sliding-rail car storage system. The court upheld the patent’s validity and found no infringement by Clearview. MSA’s communications were found to be unjustified threats and misleading and deceptive allegations.
Background:
MSA held a patent for their DropSlide technology of their accessories which allowed consumers to store and transport ‘car fridges’ and tool boxes in their vehicles via mounted sliding rails. MSA argued that the Clearview Easy Slide had infringed their patent due to taking the following features:
- a biasing means allowing the item to shift between two positions;
- the arms that were ‘pivotally connected’; and
- the function and connections of the ‘offset levers’.
Madrid update — 12th edition of Nice Classification now in effect
Date: 25 January 2024
Source: World Intellectual Property Organization
Abstract:
The 12th edition of the Nice Classification, referred to in previous Latest Legal Update ‘Madrid update — new version 12th edition of Nice Classification commences 1 January 2024,’has now come into effect as of 1 January 2024.
See Information Notice No. 35/2023, dated 10 November 2023, for more information.
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IP Australia to replace current Trade Marks Goods and Services list with Madrid Goods and Services list from March 2024
Date: 25 January 2024
Source: IP Australia
IP Australia has announced that it will replace the current Trade Marks Goods and Services list (the AU picklist) with the Madrid Goods and Services (MGS) list in March 2024.
The MGS list is a database of terms that are used to classify goods and services for trade mark applications in the Madrid System. It's used by the World Intellectual Property Organization (WIPO) and has a wider range of terms than the AU picklist.
To make searching the MGS list easier, IP Australia will also add a semantic search function, so terms can be found on the MGS list that have a similar meaning to the term being searched for.
This change aims to reduce the volume of issues for Australians filing trade mark applications internationally.
Read IP Australia’s full media release here.
Defendant pays over $100,000USD in damages after NFT trademark infringement: Hermes International et al v. Rothschild
Date: 23 January 2024
Source: Hermes International Et Al V. Rothschild
Abstract:
A jury in the United States has returned a unanimous verdict against the defendant, an artist who was found liable for trademark infringement, trademark dilution, and cybersquatting after creating ‘MetaBirkin’ NFTs that resembled the plaintiff’s - Hermes International and Hermes of Paris, Inc. (collectively, "Hermes") - intellectual property. Hermes was awarded $133,000USD in damages.
The defendant appealed the decision and briefing is underway before the Second Circuit.
Australian courts are yet to deal with the issue of enforcement within the metaverse. Enforcement can also be difficult given that the real identity of users can be private. Australian courts will need to deal with them when they arise.
Patents and AI – UK Supreme Court confirms inventor must be a natural person
Date: 22 January 2024
Court: Supreme Court, UK
Judge(s): Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt, Lord Richards
Judgment date: 20 December 2023
Catchwords: PATENTS - inventorship
Abstract:
Thaler was unsuccessful before the Supreme Court regarding his appeal of a Court of Appeal decision that refused to accept the designations of DABUS, an AI machine, as the inventor on two patent applications. On 20 December 2023, the Supreme Court confirmed that an inventor under the 1977 Act must be a natural person.
The Supreme Court potentially opened the door to the granting of a patent where a human and an AI machine work together: “… in this jurisdiction, it is not and has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different.”
Read the full text of the court’s judgment here: Thaler v Comptroller General of Patents, Designs and Trade Marks [2023] UKSC 49
ACCC to have increased powers under expanded News Media and Digital Platforms Bargaining Code
Date: 18 December 2023
Source: The Hon Stephen Jones MP
All recommendations made in Treasury’s review of the News Media and Digital Platforms Mandatory Bargaining Code (the Code) will be implemented by the Government, as announced by Government Ministers Michelle Rowland and Stephen Jones.
Treasury made five recommendations to improve the Code’s operation, in response to which the Government will introduce legislative amendments to facilitate the Australian Competition and Consumer Commission (ACCC) preparing periodic reports on the digital platforms that should be covered by the Code. In addition, the ACCC will have compulsory information-gathering powers to assist it to prepare these reports, and to allow scrutiny of commercial deals between the digital platforms and Australian news businesses.
The joint media release from MPs Michelle Rowland and Stephen Jones is available here and the full Government response is available here.
Trade marks - Registration of HFC trade mark proceeds after unsuccessful opposition (KFC THC V Ltd v Grill'd IP Pty Ltd)
Date: 18 December 2023
Court: Australian Trade Marks Office
Judge(s): Delegate Robert Wilson
Judgement date: 27 November 2023
Catchwords: Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – nexus between application and impugned behaviour of applicant considered – trade mark may proceed to registration
Abstract:
KFC THC V Ltd v Grill'd IP Pty Ltd [2023] ATMO 192 was a decision of a delegate of the Registrar of Trade Marks concerning an opposition to the registration of application 2119899 (29, 30) – HFC – in the name of Grill'd IP Pty Ltd. The opposition was unsuccessful and the trade mark was to proceed to registration.
Background:
The Applicant, Grill'd IP Pty Ltd, sought to register TMA 2119899 (Mark) in classes 29 and 30: foodstuffs and beverages.
The Opponent, KFC THC, filed its Statement of Grounds and Particulars nominating grounds of opposition under ss 44, 60 and 62A of the Trade Marks Act 1995 (Cth) (Act).
IP Australia public holidays 2024
Date: 13 December 2023
Source: IP Australia
IP Australia has announced the 2024 public holidays that its Canberra office will be closed on:
- Monday 1 January 2024 — New Year's Day
- Friday 26 January 2024 — Australia Day
- Monday 11 March 2024 — Canberra Day
- Friday 29 March 2024 — Good Friday
- Monday 1 April 2024 — Easter Monday
- Thursday 25 April 2024 — ANZAC Day
- Monday 27 May 2024 — Reconciliation Day
- Monday 10 June 2024 — King's Birthday
- Monday 7 October 2024 — Labour Day
- Wednesday 25 December 2024 to Wednesday 1 January 2025 (inclusive) — Christmas close down
Read the full announcement here.
IP Australia releases 2024-2025 draft Cost Recovery Implementation Statement and Costs Awarded
Date: 11 December 2023
Source: IP Australia
IP Australia has released its 2024-2025 draft Cost Recovery Implementation Statement and Costs Awarded. Public consultation is open until Sunday 21 January 2024 and may be submitted via the public consultation page.
Fee changes will be implemented from 12 am AEST 1 October 2024.
Changes include:
Patents:
- Patent International PCT search request fee will increase from $2,200 to $2,400, the PCT CHII exam request fees will increase from $820 to $900 for a preliminary exam request, and $590 to $650 for a preliminary exam request filed with an Australian International Search Report (ISR).
- Patent application fees fee for both direct route and national phase entry standard applications will increase from $370 to $400, while the fee for filing by “another means” will increase from $570 to $600.
- Patent examination standard fee will increase from $490 to $550, while the exam request with international preliminary report (IPE) will increase from $300 to $350, and the exam request under subsection 44(3) will increase from $100 to $150.
Federal copyright and artificial intelligence group to be established
Date: 06 December 2023
Source: Attorney-General’s office
Abstract:
On 5 December 2023, the Attorney-General Mark Dreyfus KC MP announced that the federal government will establish a copyright and artificial intelligence (AI) reference group. This group aims to prepare for copyright issues arising from the use of AI, including the material used to train AI models and whether AI-generated works should receive copyright protection.
Details surrounding the group were informed by multiple roundtable sessions enabling the government to hear from over 50 peak bodies and other organisations about copyright reform issues. The group will continue to engage with stakeholders to enable Australia to make use of AI opportunities.
The group will be led by the Minister for Industry and Science Ed Husic. Further information will be released on the Attorney-General’s Department’s website following this announcement.
For more information, read the full media release here.
High Court finds infringement of DreamDesk copyright not authorised (Real Estate Tool Box Pty Ltd & Ors v Campaigntrack Pty Ltd & Anor [2023] HCA 38)
Date: 06 December 2023
Court: High Court of Australia
Judge(s): Gageler CJ, Gordon, Edelman, Steward and Jagot JJ
Judgment date: 16 November 2023
Catchwords:
Copyright — Infringement — Authorisation of infringement — Nature of relationship
Abstract:
This matter was an appeal from the Full Court of the Federal Court of Australia dealing with a person’s liability under s 36(1) of the Copyright Act 1968 by authorising another person to do any act which would infringe upon a copyright. The second appellant, Biggin & Scott Corporate Pty Ltd, had instructed the second respondent, Mr. Semmens, “to build a web to print delivery system that does not breach any other companies’ IP or ownership”. This led to the creation of the “Real Estate Tool Box” software (the Software) and the incorporation of the first appellant, Real Estate Tool Box Pty Ltd. The creation of the Software infringed copyright in DreamDesk, owned by Campaigntrack Pty Ltd, as it ”involved a reproduction of a substantial part of the DreamDesk Source Code Works”. The appellants were not aware of this reproduction.
TM — use of BED & BATH not an infringement, but applicant’s reputation leads to a success in claims under the ACL and passing off
Date: 23 November 2023
Court: Federal Court of Australia
Judge(s): ROFE J
Judgment date: 14 December 2023
Catchwords: TRADE MARK INFRINGEMENT – deceptive similarity – independent reputation in “BED BATH” or whether the words are descriptive – relevance of confusion evidence
TRADE MARK DEFENCES TO INFRINGEMENT – s 122(1)(b)(i) good faith defence – defence would not apply if there was infringement
TRADE PRACTICES – well-established reputation of the applicant – wilful blindness of the respondent – elements established of breaches of ss 18 and 29 of the ACL and of passing off
Abstract:
In Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587, Global Retail Brands Australia Pty Ltd, which owns stores and trade marks incorporating the word “House”, was found not to infringe the trade marks comprising the words “BED BATH N’TABLE”, by use of “BED & BATH” in its logo.
Amendments to Olympic Insignia Protection Act, Trade Marks Act and Patents Act under the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 assented to
Date: 23 November 2023
Source: Intellectual Property Laws Amendment (Regulator Performance) Act 2023 and Statute Law Amendment (Prescribed Forms and Other Updates) Act 2023
Abstract:
Recent changes made under the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 amend the Olympic Insignia Protection Act 1987, Trade Marks Act 1995 (Cth) and Patents Act (Cth), including corresponding changes to the Trade Marks Regulations and Patents Regulations.
Additionally, the Statute Law Amendment (Prescribed Forms and Other Updates) Act 2023 has now repealed s 144 of the Patents Act 1990 (Cth) (Patents Act).
Intellectual Property Laws Amendment (Regulator Performance) Act 2023 – assented to on 17 November 2023
Some amendments made by the Act have already commenced, see below.
Madrid update — new version 12th edition of Nice Classification commences 1 January 2024
Date: 22 November 2023
Source: World Intellectual Property Organization
Abstract:
The World Intellectual Property Organization (WIPO) has announced a new version of the twelfth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”) that will enter into force on 1 January 2024.
A new edition of the Nice Classification is published every five years, and since 2013, a new version of each edition is published annually.
See Information Notice No. 35/2023, dated 10 November 2023, for more information.
Madrid – Australia and Finland decrease individual fees
Date: 21 November 2023
Source: World Intellectual Property Organization (WIPO)
Abstract:
From 9 December 2023, the individual fees payable for international applications, subsequent designations, and renewals of international registrations have changed for the following parties to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol):
As of 9 December 2023, the individual fees payable in respect of Australia will be:
- For application or subsequent designation, whether or not the mark is a collective mark
- For each class of goods or services: 232 CHF (approx. $400 AUD).
- For each class of goods or services: 232 CHF (approx. $400 AUD).
- For renewal, whether or not the mark is a collective mark
Hungry Jack’s trade mark not deceptively similar to McDonald’s mark, found to breach ACL (McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412)
Date: 20 November 2023
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 16 November 2023
Catchwords: Trade marks – Application for cancellation – Infringement – Deceptive similarity
Abstract:
Mcd Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 involved a trade mark dispute where the Applicants (collectively referred to as McDonald’s) alleged that the Respondent (Hungry Jack’s) infringed upon two registered trade marks through the usage of two deceptively similar marks. Burley J found that the infringement case failed, as BIG JACK and BIG MAC are not deceptively similar; nor were MEGA JACK and MEGA MAC. However, Hungry Jacks was found to have engaged in misleading and deceptive conduct in breach of s 18 of the Australian Consumer Law when it represented its burger contained 25% more Australian Beef.
US Copyright Office extends feedback deadline for AI and copyright inquiry
Date: 20 November 2023
Source: U.S. Copyright Office
Abstract:
The US Copyright Office has extended the deadline for feedback in response to its notice of inquiry regarding artificial intelligence (“AI”) and copyright, published on 30 August 2023 and previously reported on in our Latest Legal Update “US Copyright Office seeks views on AI and Copyright by 30 October 2023.”
To inform the Office’s study and help assess whether legislative or regulatory steps in this area are warranted, the Office seeks comment on these issues, including those involved in the use of copyrighted works to train AI models, the appropriate levels of transparency and disclosure with respect to the use of copyrighted works, and the legal status of AI-generated outputs.
Feedback is now due by 11:59 p.m. eastern time on 6 December 2023.
Read the United States Copyright Office media release here.
Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 awaiting royal assent
Date: 13 November 2023
Source: Parliament of the Commonwealth of Australia
Abstract:
As of 09 November 2023, the Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 (Bill) has passed through both houses and is awaiting royal assent. The Bill was introduced on 22 June 2023 and will amend the Olympic Insignia Protection Act 1987, the Trade Marks Act 1995 and the Patents Act 1990.
The Bill resolves issues regarding the use of the Olympic insignia in response to Australia being selected to host the upcoming 2032 Olympic Games, as well as makes technical improvements to Australia’s IP rights system.
The Bill is divided into six parts with differing commencement dates:
- Schedule 1, Part 1 – Trade marks that contain, or consist of, olympic motto etc;
- Schedule 1, Part 2 – Renewal of registration
- Schedule 1, Part 3 – Revocation of registration
- Schedule 1, Part 4 – Restoration of trade marks to the Register
- Schedule 1, Part 5 – Official Journal etc.
- Schedule 1, Part 6 – Spent provisions
Federal Court dismisses Halal trade mark infringement claim and cancels registration (Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd)
Date: 10 November 2023
Court: Federal Court of Australia — Full Court
Judge(s): Nicholas, Burley and Cheeseman JJ
Judgement date: 2 November 2023
Catchwords: Trade Marks – use as a trade mark and subjective intentions - whether primary judge erred in finding that the use of the Trade Mark was likely to deceive or cause confusion – whether primary judge erred in finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons in relation to the registered services
Abstract:
In an example where the protection afforded was limited by the scope of the registration, which did not cover goods, the Federal Court (Full Court) dismissed an appeal by the Halal Certification Authority Pty Limited (HCA). HCA, a private company that provides halal certification to those engaged in providing halal goods, had appealed a judgement that dismissed its claim for infringement of HCA’s registered trade mark. The Full Court also partially allowed the respondents’ cross-claim by cancelling HCA’s trade mark registration. It also stated that the primary judge was correct not to consider the respondents’ subjective intention on the question of trade mark use.
IP Australia Annual Report 2022-23
Date 9 November 2023
Source: IP Australia
IP Australia has published its Annual Report for 2022-23 (Report). The Report was tabled in Parliament on 18 October 2023.
The Report outlines the work undertaken to achieve IP Australia’s purpose (to ensure Australians benefit from great ideas) and vision (of creating a world leading IP system, building prosperity for Australia). IP Australia seeks to achieve its outcomes through programs regarding IP rights administration, professional registration, education and awareness, advice to the Government, and international engagement.
Some of IP Australia’s key achievements include:
- maintaining administration of high quality and customer-centric IP rights in support of Australian business and innovation;
- increasing influence and contribution across the entire IP ecosystem;
- providing excellent experiences for customers underpinned by contemporary and accessible products and systems;
- focusing efforts on identifying, building and maintaining workforce capabilities to meet the current and future needs of the IP rights system; and
- supporting and enhancing a wide array of digital services that positively influence customer and staff experience.
See IP Australia’s Annual Report 2022-23 here.
IP Australia public holidays 2024
Date: 9 November 2023
Source: IP Australia
The Director General of IP Australia has announced IP Australia’s non-working days for 2024 pursuant to the requirements under s 136A of the Designs Act 2003 (Cth), s 14A of the Olympic Insignia Protection Act 1987 (Cth), s 222A of the Patents Act 1990 (Cth), s 76A of the Plant Breeder’s Rights Act 1994 (Cth), and s 223A of the Trade Marks Act 1995 (Cth).
The IP Australia Canberra office will not be open for business on:
- Monday 1 January 2024 (New Year's Day)
- Friday 26 January 2024 (Australia Day)
- Monday 11 March 2024 (Canberra Day)
- Friday 29 March 2024 (Good Friday)
- Monday 1 April 2024 (Easter Monday)
- Thursday 25 April 2024 (ANZAC Day)
- Monday 27 May 2024 (Reconciliation Day)
- Monday 10 June 2024 (King's Birthday)
- Monday 7 October 2024 (Labour Day)
- Wednesday 25 December 2024 to Wednesday 1 January 2025 (inclusive) (Christmas close down)
See IP Australia’s official notice here.
Updated Trade Marks Manual of Practice and Procedure
Date: 30 October 2023
Source: IP Australia
Abstract:
IP Australia has made several updates to the Trade Marks Manual of Practice and Procedure (Trade Marks Manual). These updates add guidance and up-to-date case law references to the following Parts:
- Part 19: Trade mark use, particularly in relation to:
- the use of a trade mark generally;
- use ‘in the course of trade’;
- use by a predecessor in title or an authorised user;
- use with additions or alterations; and
- the use of multiple marks.
- an applicant’s grounds to respond; and
- evidence of use.
- Part 23: Overcoming rejection grounds under s 41, including:
- Part 24: Effect of a disclaimer on examination;
- Part 27: Overcoming rejection grounds under s 44; and
- Part 28: Honest concurrent use.
Trade marks — FC finding Cantarella not the owner of ORO word marks leads to finding of no infringement
Date: 25 October 2023
Court: Federal Court of Australia
Judge(s): Yates J
Judgment date(s): 7–11 December 2020, 8 June 2021, 6–8 December 2021, 30 May 2022, 20 October 2023
Catchwords: TRADE MARKS — Infringement — Whether the respondents have infringed the applicant’s registered trade marks comprising the word ORO — Whether the respondents can establish the defences under ss 122(1)(b)(i), 122(1)(e) , 122(1)(f) and (fa), and 124 of the Trade Marks Act 1995 (Cth).
TRADE MARKS — Validity — Whether the word ORO is not capable of distinguishing the applicant’s goods by reason of the common use of, or the desire of other traders to use, the word in relation to the registered goods — Whether the applicant is the owner of the trade mark ORO for the registered goods
TRADE MARKS — Cancellation of registered trade marks — Where ground of cancellation established — Whether discretion should be exercised not to cancel the registrations
Abstract:
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 involved a trade mark dispute where Cantarella Bros Pty Ltd (Cantarella) sued Lavazza Australia Pty Ltd and Lavazza Australia OCS Pty Ltd (together, Lavazza) for infringement of two registered trade marks, while Lavazza brought a cross-claim seeking cancellation of the two marks.
Updated Patents Manual of Practice and Procedure
Date: 20 October 2023
Source: IP Australia
IP Australia has released an updated version of the Patents Manual of Practice and Procedure (Patents Manual). Version 2.0 of the Patents Manual is intended to be more streamlined and easier to access and navigate. It has new chapter numbers and page references as well as updated content and wording.
Practitioners are reminded to check the new volume or chapter numbers in the updated Patents Manual to ensure that their correspondence and documentation remains correct.
See IP Australia’s media release here and the updated version of the Patents Manual of Practice and Procedure here.
US Copyright Office seeks views on AI and Copyright by 30 October 2023
Date: 18 October 2023
Source: US Copyright Office
The US Copyright Office has seeks feedback in response to its notice of inquiry regarding artificial intelligence (“AI”) and copyright, published on 30 August 2023. Comments on policy issues raised by AI systems are due by 30 October 2023 (an extension from an initial deadline of 18 October 2023).
To inform the Office’s study and help assess whether legislative or regulatory steps in this area are warranted, the Office seeks comment on these issues, including those involved in the use of copyrighted works to train AI models, the appropriate levels of transparency and disclosure with respect to the use of copyrighted works, and the legal status of AI-generated outputs.
The study follows the issuing of guidance by the Office in March 2023, “Copyright Registration Guidance for Works Containing AI-Generated Materials”. The requirements include the provision of a brief statement in the “Author Created” field that describes the authorship contributed by a human.
In the context of directions hearing, orders should be prepared and distributed to each affected party at least a day in advance of the hearing.
List of terms too broad for classification in IP Australia Trade Marks Manual of Practice and Procedure
Date: 5 October 2023
Source: IP Australia
Further to our Latest Legal Update dated 4 October 2023, IP Australia’s Trade Marks Manual of Practice and Procedure has been updated to include Annex A13 in Part 14 Classification of Goods and Services. Annex A13 sets out the List of terms too broad for classification (List).
For example, an unqualified claim for “jelly” would be too broad to classify. The List clarifies that “jelly” may refer to Class 3: Petroleum jelly for cosmetic purposes, Class 4: Petroleum jelly for industrial purposes, Class 29: Fruit jelly spreads, or Class 30: Flavoured jelly crystals. An applicant would be asked to provide further information, with reference to the precise terminology suggested by the examiner.
The List includes common terms such as “appliances”, “art”, “bands”, “bars”, “caps”, “drinks”, “foil”, among many others.
See IP Australia’s Trade Marks Manual of Practice and Procedure here and new Annex A13 here.
Update to IP Australia Trade Marks Manual of Practice and Procedure – Classification procedures in examination
Date: 4 October 2023
Source: IP Australia
Part 14.4 of IP Australia’s Trade Marks Manual of Practice and Procedure (Manual) has been updated. Generally, classification matters should only be raised in a first report, as opposed to a further report, in limited circumstances. The Manual has been amended to include a new circumstance in which classification matters should be raised in a first report: if the item appears in the List of terms too broad for classification (List).
The List includes common terms that are broad in nature and could be correctly classified in several different classes. The purpose of the List is to:
- better define the scope of protection of a trade mark’s goods or services;
- prevent cluttering on the register, reducing barriers for new entrants;
- reduce section 44 grounds for rejection based on notional conflicts between specifications; and
- align with international practice, reducing irregularities for the benefit of Australian holders seeking international registrations.
If the applicant claims an unqualified term appearing on the List, they will be asked to provide further information and the examiner will provide more precise terminology for the applicant to consider.
Copyright – FCA grants extension of injunction blocking access to illegal streaming sites including ‘Project Free TV’, ‘Torlock’, ‘LosMovies’, etc
Date: 29 September 2023
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 29 September 2023
Abstract:
Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders) [2023] FCA 1167 involved two proceedings concerning the operation of s 115A of the Copyright Act 1968 (Cth) (Act), which provides for the grant of injunctive relief restraining access via carriage service providers and online search engines to online locations outside Australia that enable the infringement of copyright. The court extended the site blocking orders made in previous proceedings for a further three years.
Background:
In earlier proceedings, the court granted site blocking orders pursuant to s 115A of the Act (Foxtel Management Pty Limited v TPG Internet Pty Ltd [2017] FCA 1041; 349 ALR 154; Roadshow Films Pty Limited v Telstra Corporation Limited [2020] FCA 507; 151 IPR 449).
Madrid – Amendments to Regulations under Madrid Protocol
Date: 27 September 2023
Source: World Intellectual Property Organization (WIPO)
At its 57th (25th ordinary) session, the Madrid Union Assembly adopted amendments to Rules 17, 18, 32 and 40 of the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regulations) that will enter into force on 1 November 2023. The Madrid Union Assembly also adopted changes to Rules 21, 23bis and 32 of the Regulations that will enter into force on 1 November 2024.
Changes from 1 November 2023
Rule 17 of the Regulations has been amended to require Offices of the designated Contracting Parties to clearly indicate in the notification of provisional refusal the start and end dates of the time limit to file a request for review of, or an appeal against, or a response to, a provisional refusal.
Further amendments to Rule 17 require Contracting Parties to provide holders of international registration with a minimum time limit of two months, or 60 consecutive calendar days, to file a request for review of, or an appeal against, or a response to, the provisional refusal of registration.
Trade marks — Registration of BIN 2 and BIN 8 trade marks refused after successful opposition under s 41
Date: 20 September 2023
Source: Australian Trade Marks Office (ATMO)
Decision date: 29 August 2023
Catchwords: Opposition under section 52 Trade Marks Act 1995 (Cth) — grounds of opposition under ss 41 and 58 – s 41 ground established – registration of each trade mark refused
Abstract:
Endeavour Group Ltd v Southcorp Brands Pty Ltd [2023] ATMO 127 involved an opposition by Endeavour Group Ltd to the registration of TMA 1906783 (class 33) and TMA 1906784 (class 33) (together, TMs) both in the name of Southcorp Brands Pty Ltd. A delegate of the Registrar of Trade Marks found that the ground of opposition in s 41 had been established, and refused registration of each trade mark.
Background:
The Applicant sought to register the trade marks BIN 2 (Word mark) and BIN 8 (Word mark), both as wines in class 33. The Opponent’s Statement of Grounds and Particulars (SGP) nominated ss 41 and 58 of the Trade Marks Act 1995 (Cth) (Act) as grounds of opposition.
Decision:
The Opponent’s SGP alleged, and the delegate agreed, that the TMs were not to any extent inherently adapted to distinguish the Applicant’s goods from the goods of other persons.
Trade marks – Registration of ELEVAGE BarriQ trade mark proceeds after unsuccessful opposition
Date: 20 September 2023
Source: Australian Trade Marks Office (ATMO)
Decision date: 22 August 2023
Catchwords: Opposition under section 52, Trade Marks Act 1995 (Cth) — ss 43, 58, 60 and 62A considered – none established – trade mark to proceed to registration
Abstract:
Direct Barrels Pty Ltd v Elevage Global Pty Ltd as trustee for P & G Steer Family Trust [2023] ATMO 121 was a decision of a delegate of the Registrar of Trade Marks concerning an opposition to the registration of TMA 2051073 (class 20) – in the name of Elevage Global Pty Ltd as trustee for P & G Steer Family Trust (Elevage). The opposition was unsuccessful and the trade mark was to proceed to registration.
Background:
The Applicant, Elevage, sought to register TMA 2051073 (Mark) in Class 20: Staves of wood. Parts or components of wooden barrels namely, cut staves, split staves, cut and split staves, sticks, balls made with staves. The Mark involved the words ‘ELEVAGE BarriQ’ in a tear drop design.
The Opponent, Direct Barrels Pty Ltd, filed its Statement of Grounds and Particulars (SGP) nominating grounds of opposition under ss 43, 58, 60 and 62A considered – none of the Trade Marks Act 1995 (Cth) (Act).
Patents — FCA makes final orders in patents dispute about car park technology
Date: 13 September 2023
Court: Federal Court of Australia
Judge(s): Moshinsky J
Judgment date: 12 September 2023
Catchwords: Patent litigation — form of final orders — costs — where applicant successful in defeating infringement claim and largely successful in unjustified threats claim
Abstract:
In UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3) [2023] FCA 1079, the Federal Court handed down final orders, including a declaration that certain threats of patent infringement were unjustifiable, injunctive relief and costs, in a patents dispute where both parties supplied technology to car park owners and operators.
Background:
In previous proceedings, the court held that TMA Capital Australia Pty Ltd (TMA) had made unjustified threats of patent infringement proceedings against UbiPark Pty Ltd (UbiPark) within the meaning of ss 128 and 129 of the Patents Act 1990 (Cth) (UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885).
The court had also found that UbiPark’s technology did not infringe the relevant claims of TMA’s Australian Patent No. 2019213335, dismissing the infringement claim as well as the ACL claim against UbiPark brought by TMA.
Recent Australian Designs Office decisions
Date: 8 September 2023
Source: Australian Designs Office (ADO)
Abstract:
The Australian Designs Office has published three decisions:
Wynnes Patent and Trade Marks Attorneys Pty Ltd v Wamlez Pty Ltd [2023] ADO 3 (31 July 2023)
- Request for examination by Wynnes Patent and Trade Marks Attorneys Pty Ltd (“Wynnes”).
- Design registration 201712220 in the name of Wamlez Pty Ltd, being a driver bit for a fastener.
- A certificate of examination had been issued. Wynnes requested examination pursuant to s 63(3) of the Designs Act 2003 (Cth). The examiner did not raise any grounds for revocation and proposed to issue a certificate of examination. Wynnes requested to be heard.
- The evidence was lengthy, and in some instances irrelevant and the ADO noted that formal requirements for statutory declarations were not met in some documents.
- It was found that there was not a sufficient amount of disclosure in prior art to enable a fair comparison between the designs. In any event, what was disclosed was not substantially similar in overall impression. The material provided did not provide a basis for concluding the design was not new.
John Farnham hit ‘You’re The Voice’ made anthem of referendum’s Yes campaign
Date: 4 September 2023
Source: Yes Campaign
Abstract:
John Farnham’s 1986 hit ‘You’re The Voice’ has been made the official anthem for the Indigenous Voice to Parliament referendum as it soundtracks a new advertising campaign.
“This song changed my life. I can only hope that now it might help, in some small way, to change the lives of our First Nations peoples for the better,” Farnham said.
Some reports state this to be the first time the song has been licenced in a commercial. However, when looking closer at the song’s use this doesn’t ring entirely true. In 2001, it was used in the Australian Electoral Commission’s enrolment ad, in 2009 it was temporarily used by Cadbury in a redub of its iconic drumming gorilla ad and in 2012, it was used by Ford in their TV ad campaign.
It has also been used in the soundtracks of movies, including ‘Hot Rod’, a comedy from 2007.
Even with these cases, Farnham has long been against the use of the song in “negative” cases. For instance, when it became an unofficial anthem for anti-vaccination protests during the pandemic, Farnham voiced his disapproval.