Australia

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.

IP Australia, EUIPO and UKIPO ranked most effective IP offices
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.

22 Feb 2019

Time to place your bets? Casino gaming companies dominate EU and US trademark registers

Online gaming has driven significant growth in the gambling industry and key players are capitalising on intellectual property to protect their innovations.

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22 Mar 2019

Review your IP arrangements: IP exemption from competition laws soon to be repealed

Section 51(3) of the Australian Competition and Consumer Act, which exempts conditional licensing or assignment of IP rights from most of the prohibitions on cartel conduct, is due to be repealed. Businesses are strongly urged to review their IP arrangements to ensure that they comply with the competition laws. 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

22 Jan 2019

Don’t call me Pal - PayPal wins trademark fight against FinPal

In opposition proceedings before the Australian Trademarks Office, PayPal has successfully prevented the registration of the word mark FINPAL and the logo mark FINPAL by financial service provider FinPal. Read more

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Anti-counterfeiting

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18 Oct 2018

“Leveraging the law is not the whole solution”: interview with Philip Morris’ Herman Cheung

In an exclusive interview, the tobacco giant's Manager of Illicit Trade Prevention talks to WTR about the importance of anti-counterfeiting efforts as the company transitions to a smoke-free future. Read more

14 Aug 2018

IP Australia wins digital award, Stephen Colbert talks trademarks, and USPTO seeks new judge: news round-up

In our latest round-up, we look at a Minneapolis official who sought registered trademark protection of a blog that criticised her, a Delhi court getting tough on perjury in a trademark case, and much more. Read more

11 Apr 2018

Customs concerns: counsel identify significant room for improvement in India, Iran and Turkey

Trademark counsel have had their say on the efficiency of customs authorities across the globe – with some of the largest importers of counterfeit goods giving cause for continued concern. Read more

25 May 2016

Successful trademark infringement claim without physical evidence

In Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd the Full Federal Court found in favour of Aristocrat. It held that Global’s counterfeit goods had infringed Aristocrat’s trademark – despite Aristocrat being unable to produce the infringing gaming machines in court for inspection. Read more

Brand management

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6 Mar 2018

Alibaba reveals law enforcement tip-offs, importance of logos questioned and a new design for designs: news round-up

In our latest news round-up, we look the FTC leaving out trademark solicitation scams in its annual report of complaints, a marketing expert questioning whether logos matter in today’s climate, and much more.  Read more

1 Dec 2017

Trademark filings in Australia stagnant but enforcement win rates remain surprisingly high: exclusive data analysis

World Trademark Review provides a breakdown of the Australian trademark landscape. Read more

17 Nov 2017

Australia launches “world first” trademark platform, set to go head to head with service providers

​​​​​​​This week, in partnership with Swinburne University of Technology and the University of Melbourne, IP Australia has announced its development of a “single, internationally-linked trademark database”, TM-link. Read more

9 Oct 2017

Sheep protest over trademark dispute hits the headlines but unlikely to derail legal proceedings

An Australian senator has led a protest, accompanied by a flock of sheep, against a trademark lawsuit initiated by Deckers Outdoor Corporation. The dispute focuses on the UGG brand of boots, with Senator Nick Xenophon arguing that the term should be protected as a geographical indication. Read more

Enforcement and litigation

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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

22 Jan 2019

Don’t call me Pal - PayPal wins trademark fight against FinPal

In opposition proceedings before the Australian Trademarks Office, PayPal has successfully prevented the registration of the word mark FINPAL and the logo mark FINPAL by financial service provider FinPal. Read more

23 Nov 2018

Australian salumi manufacturer defeats Italian food giant in trademark battle over logo

Australian salumi manufacturer Borgo Salumi has defeated an attempt by Italian food giant AIA Agricola Italiana Alimenare to stop it from registering the logo that it had used for decades. 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

Goverment/policy

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10 Sep 2018

Where did it all go wrong in the WTO plain packaging dispute?

The World Trade Organisation’s panel report in the cases brought against Australia’s plain packaging regime is difficult reading – and some of its key arguments are without merit. Read more

2 Jul 2018

INTA “extremely disappointed” with WTO plain packaging ruling, considering next steps

In a landmark ruling, the World Trade Organisation has upheld Australia’s tobacco plain packaging regime as being consistent with its trade obligations. The response has been mixed, with INTA voicing its disappointment and confirmed it is regrouping on the issue. Read more

6 Apr 2018

Trademark offices prepare for the future as users give poor performance grades

The performance levels of the Chinese, Brazilian and Indian trademark offices have clear room for improvement but change could be afoot. Read more

30 Mar 2018

Australian trademark law amendments, WHOIS fears, and EUIPO launches anti-counterfeit prize: news round-up

In our latest round-up, we look the end of a heated legal dispute over an Icelandic chant, fears increase of future WHOIS access, Australian government's draft version of an IP law amendment bill, and much more. Read more

Law firms

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15 May 2017

Vast majority of listed Australian IP firm clients think reduction of private ownership is against their interests

Australia has led the way in adoption of the public traded company model for IP law and attorney practices. But the findings of recent market research indicate that more than three-quarters of these firms’ clients believe that a reduction of private ownership in the sector is against their interests – again stoking critics’ concerns about the business model’s ethical implications and its impact on client-counsel relationships. Read more

14 Dec 2016

The limited scope of Section 229 privilege

The Federal Court of Australia has outlined the limited scope of the privilege applicable to the work of registered trademark attorneys contained in Section 229 of the Trademarks Act 1995. Trademark attorneys should be aware that not all activities will fall within the scope of the privilege, which covers only communications made for the dominant purpose of providing IP advice. Read more

1 Dec 2016

The spread of publicly listed IP law firms continues as Xenith acquires Australia’s Griffith Hack in strategy play

It has been announced that Australian Securities Exchange-listed holding company Xenith IP Group is buying Griffith Hack for A$152 million (US$112.5 million) in cash and shares, as Australia’s trend towards publicly traded IP law firms continues. Read more

7 Nov 2016

Listed trademark firms look to Asia for growth as Spruson & Ferguson acquires Ella Cheong in $21 million deal

Trailblazing publicly traded IP law firm Spruson & Ferguson has made its first overseas acquisition with its parent company’s HK$162 million (US$20.9 million) purchase of Hong Kong-based boutique Ella Cheong and subsidiary Ella Cheong Intellectual Property Agency (Beijing). The deal will significantly expand Sprusons’ presence in Asia – a key objective in the growth plans of firms involved in Australia’s recent flurry of IP practice initial public offerings. Read more

IP offices

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31 Oct 2018

Clarivate Analytics snaps up TrademarkVision as new research offerings eyed

While the move is fundamentally a trademark industry acquisition, the move could also open up access to new industries and customers. Read more

22 Oct 2018

On the up Down Under – IP Australia lays out ambitious trademark plans

A senior representative from IP Australia reveals to WTR that the office is “exploring emerging technology solutions such as APIs” to ensure it is at the cutting edge of innovation in the years ahead.  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

12 Apr 2018

Inside IP Australia’s digital transformation: from apps to brand-backed lending

​​​​​​​In an exclusive interview with World Trademark Review, the general manager of IP Australia’s innovation & technology group expands on how the office’s digital transformation is helping users and reveals some of the organisation's ambitious future plans. Read more

Online

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4 Oct 2018

Descriptive explanation narrowly wins: L’Oréal fails to obtain transfer of ‘urbandecay.com.au’

In a recent decision under the ‘.au’ Domain Name Dispute Resolution Policy, a panel has refused to order the transfer of the domain name ‘urbandecay.com.au’ to L’Oréal, the owner of numerous URBAN DECAY marks. Read more

8 Dec 2017

Court orders ‘anywhere in the world’ injunction against Twitter

A recent case demonstrates the willingness of the Australian courts to grant injunctions on an ‘anywhere in the world’ basis against social media operators. Read more

12 May 2016

Court provides clarity on Google AdWords and use ‘as a trademark’

In Veda Advantage Limited v Malouf Group Enterprises Pty Limited clarification has been provided on whether use of a competitor’s trademark as a Google AdWords search term constitutes use ‘as a trademark’. Read more

Portfolio management

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30 Oct 2018

Battle over TRIDENT trademark in Australia continues

In Trident Seafoods v Trident Foods, the Federal Court of Australia has allowed Trident Foods to retain its registrations for TRIDENT in Class 29, despite the mark not having been used in relation to Class 29 goods during the relevant period. Read more

16 Jul 2018

Full Federal Court considers nature of appellate review in cases involving evaluative assessments

In Aldi Foods v Moroccanoil, the Full Federal Court of Australia has considered the approach that should be adopted when it is called upon to consider mixed questions of fact and law. Read more

20 Jun 2018

Patron Spirits International's shot across the bow misses the mark in protecting PYRAT's territory in rum market

International premium spirit giant Patron, owner of PYRAT in Class 33, has failed to prevent Australian distillery Fernbrew from registering THE PIRATE BAY RUM COMPANY in Class 33. Read more

21 Mar 2018

Bohemia decision: Federal Court confirms approach to distinctiveness assessment where mark contains geographical term

In Bohemia Crystal v Host Corporation, the Federal Court of Australia has found that the marks BOHEMIA and BOHEMIA CRYSTAL were not distinctive as they indicated a geographical origin known for crystal glassware. Read more

Trademark law

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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

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

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 Dunlop v Goodyear, the Federal Court of Australia has considered a dispute over the use and registration of the mark DUNLOP and the 'flying D' device mark. Read more

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