17th April 2013
Different international markets have different price tolerances and other characteristics, and trade mark owners therefore commonly divide the world into territories to maximise return on brand investment.
11th April 2013
The Madrid Protocol facilitates the international protection of trade marks. Trade mark owners can protect their marks in any of the countries who are members of the Protocol1 by filing a single “international” trade mark registration designating those countries, rather than filing separate trade mark applications for each country. Protection of trade marks in multiple countries via a single international trade mark registration usually significantly reduces management and renewal costs when compared to the management and renewal of individual national trade mark registrations.
8th April 2013
By Lauren Eade
New trade mark opposition procedures commencing on 15 April 2013 will substantially change the trade mark opposition system in Australia. Trade mark owners will need to take steps to prepare for these.
1st March 2013
By Lisa Lennon, Lauren Eade, Anna Smyth
The Australian Government has introduced a number of legislative reforms to the IP system in relation to trade marks. These changes commence on 15 April 2013. Click to read the changes.
25th July 2012
By Lisa Lennon, Frances St John
As the Olympic flame makes its way to the London Olympic Stadium, marketing departments all over the world are running campaigns that capitalise on the spirit and excitement of the Games. For official sponsors, this means using the Olympic symbols – the rings and torch – and the Olympic name to associate themselves with the event. But for those companies who are not willing or able to hand over the rumoured 100-million-pound fee to become official sponsors, it can mean a quagmire of legal problems.
24th May 2012
The new national business names registration scheme comes into force on 28 May 2012.
2nd May 2012
The Full Federal Court has overturned the trial judge’s decision in the Optus TV Now case, involving a service whereby Optus customers could have TV broadcasts recorded and played back later on mobile devices (National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd [2012] FCAFC 59).
6th December 2011
Most attempts to rely on actions under the misleading and deceptive conduct provisions of the Trade Practices Act or Australian Consumer Law or the tort of passing off to prevent copying of product designs have been unsuccessful, at least where the knockoff products bore differentiating brands from the original. The recent Full Federal Court case of Bodum v DKSH Australia Pty Limitedi (Bodum), which found that copying a plunger design was misleading and deceptive conduct, has been hailed by many as indicating that the tide is turning in favour of designers.
6th October 2011
In 2006, the Trade Marks Act was amended to include a new grounds of opposition to a trade mark application where “the application was made in bad faith” under section 62A. It was thought that the new ground might cater for situations where opponents otherwise had no remedy, including deliberate misappropriation of overseas marks (where the opponent could not establish a reputation in Australia for the purposes of section 60), bad faith use of marks which were not sufficiently similar to marks in which opponents could claim rights, or bad faith use of marks for different goods/services to those of the trade mark owner.
6th October 2011
A recent case has again demonstrated that Australian product design protection law is notoriously complex, and that designers should seek expert advice on design protection before putting a product on the market.
27th September 2011
By Matt Mackenzie, Andrew Floro
The Australian Competition and Consumer Commission (ACCC), brought a case against Google Inc and Trading Post alleging that they had engaged in misleading or deceptive conduct in connection with the publication of sponsored links on Google’s search results pages in contravention of s 52 of the Trade Practices Act 1974 (Cth) (TPA). An equivalent provision to s 52 of the TPA is now found in s 18 of the Australian Consumer Law (ACL).
22nd June 2011
By Lisa Lennon
After 6 years of debate, the ICANN board approved the general release of new gTLDs at the ICANN Singapore meeting on 20 June.
3rd June 2011
The new .xxx registry for adult entertainment providers is set to launch shortly. The .xxx registry is intended for adult entertainment providers. If you do not want your brand associated with an .xxx domain, you can take steps to reserve and block your trade marks from release as .xxx domain names in the future.
6th May 2011
By Lisa Lennon
auDA’s Names Policy Panel has now considered the submissions from the first round of public comments and released its draft recommendations for public consultation. The closing date for submissions is Friday, 10 June 2011.
24th January 2011
By Lisa Lennon
A new national business name registration system is being developed to replace the existing framework which requires business names to be registered separately in every state or territory where a business operates.
8th December 2010
By Lisa Lennon
Every couple of years auDA’s Names Policy Panel (the Panel) conducts a periodic review of the policy framework underlying the allocation and use of domain names in the .au domain space. The Panel has released a Discussion Paper which is open to public comment until 21 January 2011. The Panel has also released a survey to assess user requirements in relation to the .au space. The response deadline on the survey is the same date.
26th November 2010
By Lisa Lennon
In the UK, Nominet has announced that previously restricted ‘short’ domain names comprising of single and double characters (0-9 and a-z) will now be available for registration under .co.uk, .org.uk, .net.uk and .me.uk.
20th October 2010
By Michael Williams, Claire Bothwell
Click here for an article authored by Michael Williams and Claire Bothwell that looks at whether the law of confidentiality could help IP owners protect their databases in light of the IceTV case. This article first appeared in the October 2010 issue of the Managing Intellectual Property Magazine.
1st July 2010
By Lisa Lennon, Anne Clement
The .co domain was originally only for use as the country domain suffix for Colombia. On 26 April 2010 it was opened up for general use, providing an additional option for companies, particularly in view of the fact that the .com domain is now nearing saturation.
5th May 2010
By Lisa Lennon
“Location” is the catchcry of the real estate industry, but a recent case shows that where a particular location is trademarked, others wishing to mention that location in their advertising must tread a fine line between legitimate descriptive use and infringing trade mark use.
4th May 2010
By Lisa Lennon
auDA is seeking public comment about reactivating the second level domains conf.au and info.au and establishing the new domains blog.au and event.au. auDA is also interested in the community’s thoughts about its approach to establishing new domains in the .au space.
22nd March 2010
By Lisa Lennon, Claire Bothwell
If your sweet tooth has you wandering the confectionary aisle in your local supermarket you have probably noticed the raft of imitation chocolate confectionary products, often manufactured under the supermarket’s “home brand” and descriptively labelled. Products such as “milk whip” (think Milky Way) and “cherry bites” (think Cherry Ripe) spring to mind.
22nd March 2010
By Lisa Lennon
The Australian Domain Name Administrator (auDA), which is responsible for regulating the .au domain space, is introducing an official Domain Drop List to alert the public when an expired or deleted domain name will be back on the market.
19th February 2010
By Lisa Lennon
Have you ever picked up a new brand of your favourite product in the supermarket and noticed that its packaging looks suspiciously similar to that of your trusted old brand? A recent case between the producers of NutrientWater and Grassroots Enhanced Water reminds us that it is difficult to stop a little shrewd copying of packaging unless it infringes your registered rights or is likely to confuse customers.
16th February 2010
Click here for our latest update.
8th February 2010
By Lisa Lennon
A new regime is being introduced that will affect the holders of security interests in intellectual property rights.
25th November 2009
By Lauren Eade
Under Australian law, there is no constitutional guarantee of freedom of speech. Australian Courts therefore, have approached the question of parody only incidentally, as part of the application of black letter trade mark law.
18th November 2009
After taking into account submissions on the options paper, on 5 November 2009 the Minister for Innovation announced significant changes to the operation of the Franchising Code of Conduct (the Code) and the operation of the Trade Practices Act 1974 (Cth) (TPA) generally. Draft legislation to implement these changes is currently expected to be introduced in early 2010.
29th October 2009
Click here for tips for Brand Management on Social Networking sites.
21st October 2009
By Lisa Lennon
On 2 November 2009, the Australian Domain Name Administrator (auDA), which is repsonsible for regulating the .au domain space, issued an invitation for proposals for new second level domains (or 2LDs) and for the re-activation of the 2LDs conf.au and info.au.
31st July 2009
By Lisa Lennon
When trade mark applications are accepted anywhere in the world they are published in the relevant official journal, most of which are now available online. For a number of years, there have been a range of companies that review legitimate journals and send false invoices to trade mark owners offering to include the recently accepted or registered trade marks in fictional registers or other publications for a fee. In the past, this fee was generally around USD$1000. More recently, the fee is AUD$1450. The invoices often include your full trade mark details and look authentic.
30th July 2009
By Peter Jones, Peter Leonard, Tim Gole
A recent case handed down by a US District Court provides a timely reminder about the importance of properly crafting, and of diligently adhering to, software licence terms. Carefully drafted terms can increase the chance of a licence breach amounting to copyright infringement (which can often attract more substantial damages), instead of (or in addition to) a mere breach of contract.
21st July 2009
By Simon Snow, Michael Williams, Ken Saurajen, Claire Bothwell
The Trade Practices Amendment (Australian Consumer Law) Bill 2009 (the Bill) proposes fundamental changes to the way in which consumer contracts are regulated in Australia across a wide range of industries. The Bill, which is the first phase in the implementation of a new, uniform, national consumer law, proposes to introduce provisions that will result in `unfair` and `prohibited` terms in consumer contracts being found void. In some circumstances it will also be a contravention of the Trade Practices Act (or the ASIC Act, as relevant) to apply or rely on these terms. Civil pecuniary penalties may also apply in connection with contraventions involving `prohibited terms`.
23rd June 2009
As noted in our earlier update of 15 December 2008, the government has been considering its response to the report by the Parliamentary Joint Committee on Corporations and Financial Services (the Committee) of 1 December 2008 entitled `Opportunity not opportunism: improving conduct in Australian franchising` (the Report).
12th June 2009
By Lisa Lennon
Cybersquatters have long caused headaches for trade mark owners by registering Internet domain names containing their trade marks. Now trade mark owners will have to think about protecting their rights in a whole new forum. Facebook, the world`s largest free-access social networking site, has announced that as of tomorrow, 2:01pm (Sydney time) Saturday 13 June 2009, users will be able to obtain personalized usernames for their Facebook page in the form facebook.com/yourname, on a first-come first-served basis.
10th June 2009
Web 2.0 has arrived in all its Facebook, MySpace and Twitter glory, bringing with it a host of opportunities for trade mark abuse, as well as a rash of articles published under awful puns. Twitter is a social networking page, by which users sum up current events in their lives in 140 character updates or `tweets`. While this might at first seem harmless, Twitter has proven a relatively fruitful arena for attack on trade mark rights through the registration of marks as Twitter usernames.
17th April 2009
By Lauren Eade
This article addresses the key issues to consider in relation to trade mark use.
15th December 2008
On 25 June 2008 the Parliamentary Joint Committee on Corporations and Financial Services (the Committee) resolved to examine the Franchising Code of Conduct (the Code) and its operation within Australia. The Code is a mandatory industry code established under s 51AE of the Trade Practices Act 1974 (Cth) (TPA). Broadly speaking, the Code seeks to regulate the conduct of the parties to a franchise agreement, including ensuring that a prospective franchisee is sufficiently informed about the franchise on offer before entering into it.
28th April 2008
The Franchising Code of Conduct (Code) imposes on franchisors numerous obligations that must be complied with prior to a franchise agreement being entered into with a franchisee.
7th April 2008
Classification of entertainment media such as films, videos/DVDs, computer games and certain publications has been regulated since 1995 pursuant to the Classification (Publications, Films and Computer Games) Act 1995 and the requirements for classification and process are now well established. The task of classification is undertaken by the Classification Board. The provisions of the current legislation dealing with advertising of classified media under the current scheme are, however, unwieldy and unworkable in today`s environment and are rarely used by the entertainment industry having regard to the pace of the industry and the likelihood of clearance occurring prior to release of a film or game. It is hoped that amendments proposed in the Classification (Publications, Films and Computer Games) Amendment (Advertising and Other Matters) Bill 2007 will provide a more workable and relevant regime.
9th February 2008
In the recent decision of ACCC v Kyloe Pty Ltd,1 Tracey J dismissed the application or alleged contraventions of the Franchising Code of Conduct (the Code)2 brought by the Australian Competition and Consumer Commission (ACCC) against Kyloe Pty Ltd (Kyloe), Impact Design Accessories Pty Ltd (Impact) and the companies’ directors.
