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 Andrew Floro, Matt Mackenzie
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 Claire Bothwell, Michael Williams
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 Anne Clement, Lisa Lennon
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 Claire Bothwell, Lisa Lennon
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
By Will Shiel
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 Tim Gole, Peter Jones, Peter Leonard
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 Claire Bothwell, Ken Saurajen, Simon Snow, Michael Williams
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
By Will Shiel
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
By Will Shiel
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.
28th July 2006
A number of recent decisions demonstrate the continuing difficulty in Australia of securing trade mark protection for colours. This issue, we look at four recent decisions – two in relation to Cadbury`s the COLOUR PURPLE trade mark application, one involving the BP GREEN trade mark and finally a Federal Court decision about a `passing off` claim by Clark Rubber in relation to its colour scheme.
28th July 2006
Major copyright reforms
On 14 May 2006, Attorney-General Philip Ruddock announced significant copyright reforms, including:
making it legal for people to tape TV or radio programmes and play them at another time;
allowing consumers to legally “format shift” materials, such as music, newspapers and books;
introducing new exceptions allowing schools, universities, libraries and other cultural institutions to use copyright [...]
28th July 2006
This article looks at the proposed Trade Practices Amendment Bill (No. 2), which is likely to mean that agreements and other commercial arrangements relating to intellectual property will now be subject to general competition law.
28th July 2006
Intellectual Property Laws Amendment Bill 2006
The following amendments to the Patents Act 1990 (Cth) are proposed:
A widening of the spring-boarding scheme for generic pharmaceuticals. The effect of the amendments will be to allow spring-boarding on any pharmaceutical patent at any time for purposes related to generating information necessary to support an application for regulatory [...]
28th July 2006
Intellectual Property Laws Amendment Bill 2006
This Bill proposes amendments to the Trade Marks Act 1995 (Cth) (the TM Act) including:
expanding the grounds on which the Registrar may revoke acceptance of a trade mark (i.e. prior to registration);
giving the Registrar the power, in certain circumstances, the power to revoke the registration of a trade mark on [...]
28th July 2006
Legislation proposed for introduction in the 2006 Winter sittings includes the Trade Practices Amendment Bill (No. 2) which proposes to amend the Trade Practices Act 1974 (Cth) in response to the 2000 Ergas review into intellectual property.
Free Trade Agreement
On 2 May 2006, the government published its response to the final report of the Senate Select [...]
28th June 2006
Spare parts provision
On 23 June 2006, the Parliamentary Secretary to the Minister for Industry, Tourism and Resources, Bob Baldwin, released the report Review of the “Spare Parts” Provision in the Designs Act 2003. When the new designs regime was introduced into 2003, it was decided that although spare parts should be able to be [...]
1st January 2006
The term ‘format’ in the television industry is commonly understood to mean the style, plan or arrangement of so-called ‘format elements’ which create the structure of the television program and its particular ‘look and feel’. Format elements may include the setting of the program, the type of contestants, the nature of the goals, competition or challenge and the number of episodes. The complexity of formats varies widely, from tens to hundreds of format elements.
1st July 2005
On 15 April 2005, the Minister for Justice and Customs released the eagerly awaited report of the Copyright Law Review Committee (CLRC) on the ownership of copyright material by Commonwealth, State and Territory governments (Crown Copyright). The report follows the publication of an issues paper by the CLRC in February 2004 (the Issues Paper) and a public consultation process through which interested parties were invited to lodge submissions on the appropriateness of the current law relating to Crown Copyright in Australia.
1st January 2005
It is rare that a Bill to amend the Copyright Act 1968 (Cth) (the Act) receives as much media1 and legislative2 attention as the Copyright Legislation Amendment Bill 2004 (Cth) (the Bill). The Bill was introduced into Parliament on 30 November 2004 in response to claims by the US that the US Free Trade Agreement Implementation Act 2004 (Cth) (FTAIA) had not adequately implemented relevant provisions of the Australia-US Free Trade Agreement (FTA).3 The amendments contained in the Bill were described by Senator Ellison in the second reading speech as ‘minor and technical’.
13th November 2002
At its most basic level the grant of a licence is an agreement by the owner of intellectual property rights not to enforce those rights against the licensee in defined circumstances. This paper discusses the nature of licensing, the commercialisation continuum, key licensing issues, licensing drivers and opportunities, criteria that should be considered when selecting licensing partners, how to get your house in order including internal structuring and, finally, royalty structures.
