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Intellectual Property

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23rd December 2014

The Full Court clarifies the starting point for inventive step

23rd December 2014

By John Lee, Edward Thompson

The Full Federal Court in AstraZeneca AB v Apotex Pty Ltd has upheld the trial judge’s finding that AstraZeneca patents relating to its blockbuster drug CRESTOR are invalid. The key issue on appeal, and the reason the Full Court agreed to sit as an enlarged bench, related to determination of the appropriate “starting point”, if any, for assessing inventive step. G+T IP lawyers consider this issue, and some other interesting aspects of the decision. This was first published in the Australian Intellectual Property Law Bulletin (2014) 27(10) IPLB.

4th April 2014

The High Court has the last word on misleading or deceptive claims in TV advertising cases: ACCC v TPG Internet Pty Ltd

4th April 2014

In Australian Competition and Consumer Commission (ACCC) v TPG Internet Pty Ltd (TPG), the High Court of Australia, by majority, found for the ACCC on its appeal against TPG for alleged contraventions of the Trade Practices Act 1974 (Cth) and, following its passage into law, the Australian Consumer Law. This was first published in Competition and Consumer Law News (2014) (30)2.

27th March 2014

Australia Post loses its appeal against Digital Post Australia

27th March 2014

By Lisa Lennon, Claire Bothwell

This was first published in the Australian Intellectual Property Law Bulletin (2014) 27 (2).

13th December 2013

Trimming the fat on International Trade Mark Portfolio costs

13th December 2013

By Lisa Lennon, Lauren Eade

International trade mark protection strategies can be complicated and expensive, particularly, as brand owners move to take advantage of “international” registration in preference to country based registrations. Fortunately, there is a way to reduce ongoing portfolio management costs whilst retaining priority of rights as you transition your portfolio. This involves the replacement of national registrations with International Registrations registered under the Madrid Protocol international trade mark registration system.

11th December 2013

Louis Vuitton Malletier v Sonya Valentine Pty Ltd: s 120(1) doesn’t give a damn about Louis Vuitton’s reputation

11th December 2013

By Lisa Lennon, Lauren Eade, Angela McDonald

The article discusses reputation of an existing mark under s 120(1) of the Trade Marks Act. This was first published in the Australian Intellectual Property Law Bulletin (2013) 26(6).

29th November 2013

Submissions to ACIP’s September 2013 Review of the Designs System Issues Paper

29th November 2013

By Lisa Lennon, Lauren Eade, Rebecca Smith

G+T made a submission to ACIP’s review of the design system issues paper.

1st November 2013

Knott Investments Pty Ltd v Winnebago Industries, Inc

1st November 2013

By Lisa Lennon, Siabon Seet, Frances St John

The Full Federal Court handed down a judgment that will have significant implications for the way brand owners think about protecting their brands in Australia. The decision illustrates the weaknesses in seeking to protect brands without trade mark registrations and how even a successful claim may not result in clear protection of an unregistered brand, particularly where there is delay.

31st October 2013

Adidas AG v Pacific Brands Pty Ltd

31st October 2013

By Lisa Lennon, Claire Bothwell

Four stripes and you’re (sometimes) out – Court finds that four stripes infringe Adidas “three stripe” trade mark.

25th October 2013

Release of New GTLDs

25th October 2013

By Lisa Lennon, Lauren Eade

The release of the first new generic Top Level Domains (gTLDs) is imminent. Applications to register and operate the new gTLDs opened in the first quarter of 2012.

16th October 2013

3D Printing – Design revolution or intellectual property nightmare?

16th October 2013

By Lisa Lennon, Lauren Eade, Anna Smyth

From King Kong the Musical’s animatronic ape to medical devices and dental prosthetics, 3D printing is set to transform manufacturing and design but it could also pose serious dilemmas for those seeking to protect intellectual property. This first appeared in this form in Volume 51 of the Law Society Journal (NSW, Australia), October 2013.

2nd October 2013

Protecting business data in the information age

2nd October 2013

By Michael Williams

With the advent of the digital age, business data has become the life-blood of many, perhaps most businesses. Intellectual Property specialists Michael Williams and Michael Cooley discuss some of the strategies available to businesses for maximising their capacity to protect their valuable data and to respond to data breaches effectively.

25th September 2013

Deadline to register security interests over registered IP – 30 January 2014

25th September 2013

By Lisa Lennon, Lauren Eade

The Personal Property Securities regime has now been live in Australia for just over a year and a half, having come into force on 30 January 2012.

24th September 2013

ACIP inquiries into reform of the innovation patent and designs systems

24th September 2013

By Michael Williams, Chris Williams, Edward Thompson, Lauren Eade

The Australian Government Advisory Council on Intellectual Property (ACIP) is calling for submissions to its co-pending inquiries into the innovation patent system and the designs system.

1st September 2013

Is there any use crying over spill-over reputation? Renewed hope of protection for owners of international marks

1st September 2013

By Angela McDonald, Lauren Eade, Lisa Lennon

It has technically been possible to protect trade marks with a reputation in Australia, even without use here, on the basis of “spill-over reputation” since at least Conagra Inc v McCain Foods (Aust) Pty Ltd (McCain Pizza/ McCain’s Healthy Choice case). This was first published in Internet Law Bulletin (2013) (16)5.

24th July 2013

TPG Internet Pty Ltd v ACCC

24th July 2013

Considering the attributes of the ordinary or reasonable consumer when determining whether advertisements are misleading or deceptive. This was first published in Competition and Consumer Law News (2013) (28)10.

1st July 2013

Football Dataco Ltd v Stan James plc; Football Dataco Ltd v Sportradar GmbH: the case and its relevance in Australia

1st July 2013

By Siabon Seet, Rebecca Smith

In Football Dataco Ltd v Stan James plc; Football Dataco Ltd v Sportradar GmbH, Football Dataco Ltd, which commercialises data relating to UK football matches on behalf of the English and Scottish football leagues, has succeeded in restraining the unlicensed use of that data by the German sports data provider Sportradar and one of Sportradar’s customers, the bookmaker Stan James. This was first published in the Australian Intellectual Property Law Bulletin (2013) (26)1.

14th June 2013

3D Printing: A design revolution; an IP nightmare?

14th June 2013

By Lisa Lennon, Lauren Eade, Anna Smyth

3D printing, otherwise known as “Additive Manufacturing”, is set to transform the landscape in which businesses in the manufacturing and design based industries operate.

13th June 2013

ALRC releases its much anticipated Second Consultation Paper on ‘Copyright and the Digital Economy’

13th June 2013

By Michael Williams, Siabon Seet, Kate Harrison, Rebecca Dunn, Edward Thompson

The Australian Law Reform Commission has released its much anticipated second consultation paper for its Inquiry ‘Copyright and the Digital Economy’. We discuss the major proposed reforms.

21st May 2013

The International Comparative Legal Guide to Trade Marks 2013 Edition

21st May 2013

This article appeared in the 2013 edition of The International Comparative Legal Guide to: Trade Marks; published by Global Legal Group Ltd, London. www.iclg.co.uk

1st May 2013

Phonographic Performance Co of Australia Ltd v Commercial Radio Australia Ltd

1st May 2013

By Siabon Seet, Will Aplin

The unanimous decision of the Full Court of the Federal Court in Phonographic Performance Co of Australia Ltd v Commercial Radio Australia Ltd provides some much-needed clarity on what constitutes a “broadcasting service” in the Broadcasting Services Act 1992 (Cth). This was first published in Internet Law Bulletin (2013) (16)1.

17th April 2013

Trade marks without borders – parallel importation into Australia

17th April 2013

By Lisa Lennon, Lauren Eade

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

International Trade Mark Registration Update – India, Mexico, and New Zealand join The Madrid Protocol

11th April 2013

By Lisa Lennon, Lauren Eade

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

How does Raising the Bar affect trade marks?

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

Raising the bar – Trade marks

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

Ambush Marketing – Marketing and the Olympics

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

National Business Name Registration Scheme – commencing 28 May 2012

24th May 2012

By Lauren Eade, Lisa Lennon

The new national business names registration scheme comes into force on 28 May 2012.

2nd May 2012

The Full Court finds that the Optus TV Now service breaches copyright

2nd May 2012

By Kate Harrison, Will Aplin

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 October 2011

Bad faith update – same old song?

6th October 2011

By Lauren Eade, Lisa Lennon

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

Are you protected? Australian design law’s traps for new and overseas-based players

6th October 2011

By Lisa Lennon, Lauren Eade

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.

22nd June 2011

Release of new top level domain names (gTLDs)

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.

6th May 2011

.au Policy review – 2nd round public comments

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

National Business Name Registration Regime

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

Public Comment Period

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

Release of short domain names

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.

1st July 2010

Release of a new top level domain – .co

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

Location, Location, Location

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

New .au Domains – Call for Submissions

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

A Sweet Finding for Sweet Rewards

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

Vigilance required to counter domain drop lists

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

Careful copying not always taboo

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

Soft landings: Chiropedic Bedding continues trend of strong protection for pre-2004 registered designs

16th February 2010

By Lisa Lennon, Lauren Eade

Click here for our latest update.

8th February 2010

New Regime – Security Interests in IP

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

Getting away with (brand) murder: the limits of trade mark parody in Australia

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.

29th October 2009

Tips for Brand Management on Social Networking Sites

29th October 2009

By Lisa Lennon, Lauren Eade

Click here for tips for Brand Management on Social Networking sites.

21st October 2009

New .au Domains

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

Old scam – new scammer

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.

12th June 2009

Important notice – Protect your trade mark on Facebook

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

All a Twitter: Twitter.com and Trade Marks

10th June 2009

By Lisa Lennon, Lauren Eade

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.

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