Australia

Australia’s economy is being challenged on all sides with impact on trademark activity yet to be seen

The country’s filing data is an early indicator that recovery is under way, but the government must still deal with the long-term impacts of the bush fires as well as the health crisis - all on top of escalating tensions with China and its first recession in nearly 29 years.

Australia’s economy is being challenged on all sides with impact on trademark activity yet to be seen
Inside Treasury Wine Estates’ 10-year battle to register its Penfolds mark in China
23 Apr 2020

Inside Treasury Wine Estates’ 10-year battle to register its Penfolds mark in China

WTR speaks to Treasury Wine Estates’ global director of intellectual property to get the inside track on how the company prevailed in a decade-long trademark squatting case.

INTA coronavirus donation drive; IPAustralia added to TMview; Harry and Meghan domain snafu – news digest
10 Apr 2020

INTA coronavirus donation drive; IPAustralia added to TMview; Harry and Meghan domain snafu – news digest

In our latest edition, we look at a warning over a long-term counterfeits risk, WIPO revealing its top corporate filers, Finland joining DesignClass, a change in Syrian trademark fees, and much more.

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2 Jul 2020

In a space of their own: new second-level ‘.au’ domains

Australian third-level domains may soon be outdated due to the release of the new second-level ‘.au’ domain. This update presents key takeaway points to maximise the prospects of securing a second-level ‘.au’ domain. Read more

29 May 2020

Goodwill and trademarks: crunchy not smooth

In Kraft v Bega, the Full Court of the Federal Court has confirmed that Bega retains the right to use the trade dress for its peanut butter in Australia, which it acquired through purchasing the peanut butter business of Mondelez in 2017. Read more

8 Apr 2020

The claws come out – Caterpillar partially successful in IRONCAT oppositions

Well-known US construction equipment manufacturer Caterpillar has been partially successful in its oppositions to the registration of the word mark IRONCAT and the logo mark IRONCAT TYRES for tyres and related services in Australia. Read more

30 Mar 2020

Australia Patent Attorney Firm of the Year: FB Rice

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Anti-Counterfeiting

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25 Feb 2020

International Anti-counterfeiting Coalition relocates annual conference to Rome; WIPO election heats up; BlackBerry dispute – news digest

In our latest round-up, we look at unauthorised SUSSEX ROYAL trademark applications being filed across the globe, PepsiCo purchasing a Chinese snack brand, the USPTO giving an update on its engagement efforts, and much more. Read more

18 Feb 2020

Holden brand retired; EUIPO coronavirus extension; Japan GI cancellation – news digest

In our latest round-up, we look at Amazon car seat criticism leading to calls for legal reform, New Zealand being added to the TMview roster, US and China battling over the WIPO director general position, and much more. Read more

12 Nov 2019

Counterfeit hotspots in Australia and New Zealand that brand owners must be aware of

In the latest edition of our regular series focused on marketplaces across the world that reportedly engage in the trade of counterfeit goods, we head to Australia and New Zealand. Read more

12 Jul 2019

IP Australia launches visual search, most boycotted brands, and CNIPA reveals trademark data: news digest

In our latest round-up, we look at Colgate making an offer for Filgora’s skincare business, Tencent questioning the existence of singular or plural TLDs, Kylie Minogue commenting on that trademark dispute with Kylie Jenner, and much more. Read more

Brand management

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23 Jan 2020

Sussex Royal trademark challenged: Prince Harry and Meghan Markle face legal battle after receiving threat of opposition

A trademark application filed by the Foundation of the Duke and Duchess of Sussex for the brand name 'Sussex Royal' has received a notice of threatened opposition this week, WTR can reveal. Read more

17 Jan 2020

Siemens’ controversial coal mine contract has put brand at risk of greenwashing accusations

The German conglomerate has portrayed itself as a steward of sustainability, but when it comes to corporate social responsibility, it’s an all or nothing game as this week’s coal mine contract backlash illustrates. Read more

20 Dec 2019

IP Australia fee consultation, Ferrero denied in Singapore, and call for USPTO examining attorney help: news digest

In our latest round-up, we look at the Serbian IPO reducing its fees, the Korean IP Office getting a budget boost, US Senators opposing China’s WIPO director general nominee, and much more Read more

28 Oct 2019

Havarti cheese backlash highlights controversial and emotive nature of geographical indications

Last week, the European Commission entered the name ‘Havarti’ onto the register of protected geographical indications. The ensuing backlash serves as a microcosm of the emotive political discourse that surrounds this form of IP protection. Read more

Enforcement and Litigation

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5 Mar 2020

When inspiration becomes misappropriation: Hashtag Burgers left DOWN-N-OUT

The Federal Court of Australia has ruled in favour of US fast-food chain In-N-Out Burgers against Australian fast-food chain Hashtag Burgers, which had started selling its burgers under the mark DOWN-N-OUT as a ‘tribute’ to In-N-Out Burgers. Read more

19 Feb 2020

Federal Court finds URBAN ALE descriptive for beer

In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Federal Court of Australia has concluded that the trademark URBAN ALE for beer should be cancelled because it is descriptive of beer products produced in an inner-city location. Read more

6 Dec 2019

Litigation procedures and strategies: Australia

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31 Oct 2019

Trademarks and "style names" - can you tell the difference?

The decision of the Federal Court of Australia in Pinnacle v Triangl provides a new characterisation of the defence that a name is not being used as a trademark, when there is also use of a principal or ‘house’ brand. Read more

Government/Policy

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1 Oct 2019

A tale of two flags: who owns the right to use?

The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. The debate raises questions over whether similar moves could occur in other jurisdictions. Read more

1 Oct 2019

Asia’s top filers reveal strong growth prospects

World Trademark Review takes a deep dive into the top Asia-Pacific trademark offices and how they are modernising their systems to better protect applicants and streamline procedures. While this has positively affected filing levels, economic performance and domestic businesses will be key going forward. Read more

23 Sep 2019

The Aboriginal flag dispute in focus: who owns the right to use?

The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. Kate O'Rourke of Mewburn Ellis takes a deep dive into the debate. Read more

10 Sep 2019

Taking the Pisco: protecting regional products

The discussion of geographical indications (GIs) in Australia has recently heated up as IP protection is a focus of the forthcoming Australia-EU Free Trade Agreement. Here is what Australian producers need to know. Read more

Law Firms

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10 May 2019

IP takes backseat in Australian election as trademark practitioners grapple with recent law amendments

With campaigning in the Australian federal election in full swing, WTR finds that practitioners on the ground are not bracing for change based on the election result, but are adapting to recent legislative changes that international brand owners should be aware of. Read more

29 Mar 2019

Change.org responds to The Independent Group new name, IPOS GI registry, and delays at IP Australia: news digest

In our latest round-up, we look at consumers being frustrated by “disjointed” brand experiences, an Oregon-based clothing retailer in a trademark fight against Under Armour, brands in an age of political division, and much more. Read more

20 Nov 2018

Russian president on fakes, Google trademark win, and tale of the counterfeit-catching brothers: news round-up

In our latest round-up, we look at Pakistan stepping up its fight against fakes, the Finnish IP office reminding users about an impending trademark change, IP Australia seeking user input, and much more. Read more

28 Aug 2018

Registrations double in Cayman Islands, Peppa Pig victory in China, and Aldi most trusted brand in Australia: news round-up

In our latest round-up, we look at China and Indonesia giving up the plain packaging fight, a Colin Kaepernick trademark application generating media buzz, why US colleges have been accused of trademark bullying, and much more. Read more

IP Offices

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7 Jun 2019

Next-generation trademarks: IP Australia on using blockchain to create smart IP rights

In a world first, IP Australia is using blockchain technology to create a “digital representation” of trademark registrations. We speak with the registry’s CIO, Rob Bollard, to find out more. Read more

30 Apr 2019

Copycat wine corked, Dettol most trusted brand, and Lego gang knocked out: news digest

In our latest round-up, we look at China hitting back at IP criticism, USPTO revealing cryprocurrency-related trademark applications, Alibaba settling a counterfeits case, and much more. Read more

26 Apr 2019

World IP Day celebrated around the globe, Special 301 released, and IP Australia annual report: news digest

In our latest round-up, we look at planned IP improvements in Kuwait, research which finds consumers are quick to “dump brands”, LL Cool J prevailing in a trademark dispute, and much more. Read more

24 Apr 2019

IP Australia, EUIPO and UKIPO ranked most effective IP offices

A new survey conducted by WTR has found that IP Australia is the IP office most lauded by trademark practitioners around the world. However, users raised concerns with operations at a number of IP offices. Read more

Online

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16 Aug 2019

When a domain name is dropped, you need the best catcher in your team

A recent decision involving the domain name ‘ogio.com.au’ under the ‘.au’ Dispute Resolution Policy is an important reminder of how panels can have different approaches to the same facts in complex cases. Read more

26 Jun 2019

Brands warned of counterfeit apps on Google Play; academic finds trademark protection of little help

A major new study has discovered nearly 50,000 potentially copycat apps on the Google Play store, with 2,000 deemed high-risk. However, the academic behind the study tells WTR that trademark protection is of limited help to combat such a widespread issue. Read more

15 Feb 2019

Venezuela trademark warning, IP Australia chatbot success, and triumph for Butlers in the Buff: news digest

In our latest round-up, we look at a new online service launched by the Swedish IP Office, the Babybel wax-coating trademark being invalidated, scammers filing “fake trademarks” to hijack Instagram accounts, and much more. Read more

8 Feb 2019

Irish Whiskey GI protection, no-deal Brexit anti-counterfeiting “travesty”, and Alibaba and eBay on fakes: news digest

In our latest round-up, we look at Brainbase raising money to bolster its licensing platform, the discovery of fake leukaemia drugs, the EUIPO turning to blockchain to fight counterfeiting, and much more. Read more

Portfolio Management

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9 Sep 2019

Federal Court clarifies limitation of own name defence

In Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd, the Federal Court of Australia has found that use of the name V. Mitolo and Son infringed trademark registrations for the mark MITOLO in relation to wine. Read more

5 Aug 2019

Sportsbet takes punt on descriptive mark

The decision of the Australian Trademark Office in Sportsbet Pty Ltd regarding the inherent capacity to distinguish of the mark SAME GAME MULTI provides a reminder of the perils of adopting descriptive trademarks. Read more

29 Jul 2019

Bad-faith oppositions beat BEN FORD, LIKE A BOSS

Recent Australian opposition proceedings involving the marks BARRY FORD, BEN FORD and LIKE A BOSS show that comprehensive monitoring is essential to help businesses identify and oppose applications which either infringe on an existing mark or are filed in bad faith. Read more

21 May 2019

Smooth victory for Bega in peanut butter trade dress case against Kraft

A dispute between Bega Cheese and Kraft Foods in Australia has been resolved with the Federal Court awarding Bega the exclusive rights to use a distinctive yellow, red and blue packaging to market its peanut butter. Read more

Trademark law

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3 May 2019

“Just be respectful” – why brands must wise up to indigenous IP rights

WTR analyses how indigenous cultures are protecting their intellectual property and speaks with an expert on how trademark practitioners must be more aware of this burgeoning field of rights. Read more

28 Nov 2018

Changing the law and elevating practice: dispatches from IP Australia

Following a record number of trademark applications, 2018 has been a busy year at IP Australia. Alongside core operations, the office has undertaken various initiatives this year – with more planned for 2019. Read more

13 Nov 2018

Time to end the false dichotomy contained in the Australian Trademarks Act

In this exclusive guest op-ed, a call is made for the removal of "substantially identical" from Section 44 of the Australian Trademarks Act. Read more

24 Jul 2018

Dispute between Dunlop and Goodyear highlights importance of maintaining control over use of marks

In <em>Dunlop v Goodyear</em>, the Federal Court of Australia has considered a dispute over the use and registration of the mark DUNLOP and the 'flying D' device mark.

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Find an expert

Frode André Moen
Senior Partner
Oslo, Norway
Zacco