Australia

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.

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

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.

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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

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

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

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

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Anti-counterfeiting

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13 May 2019

“Time for our political leaders to get involved” – war of words escalates after UGG decision in favour of Deckers

A jury in the US has found that Australian Leather wilfully infringed a trademark registered to Deckers Outdoor Corporation. The defendant has vowed to appeal, with one member of its legal team calling on the Australian government to intervene. 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

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

Brand management

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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. 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

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

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

Enforcement and litigation

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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

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

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

3 Jul 2019

Trademark use control requirements in a corporate group eased by recent Full Federal Court decision

In Trident Seafoods Corporation v Trident Foods Pty Ltd, the Full Federal Court of Australia has provided useful guidance on the control of trademark use in a corporate group to ensure the maintenance of registered trademark validity. Read more

Goverment/policy

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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

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

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

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

Law firms

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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

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

IP offices

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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

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

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

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

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

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

Portfolio management

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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

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

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. 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

Trademark law

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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

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

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

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Joseph T Simone
Partner
Wanchai, Hong Kong
SIPS