Australia

“You cannot stop the IP train”: experts consider impact of Australia-China trade disputes on rights holders

The political relationship between Australia and China has further broken down. But IP experts remain confident that the tensions will not have a dramatic impact on brand work.

“You cannot stop the IP train”: experts consider impact of Australia-China trade disputes on rights holders
“The myths can make companies disengage” – exclusive interview with IP Australia’s China representative
27 Oct 2020

“The myths can make companies disengage” – exclusive interview with IP Australia’s China representative

Charlotte Trinh has big ambitions to grow the role and push for more engagement between Australian brand owners and the Chinese IP system.

“An opportunity to break new ground” – why GI negotiations between Australia and EU could be positive, despite concerns
12 Oct 2020

“An opportunity to break new ground” – why GI negotiations between Australia and EU could be positive, despite concerns

The FTA negotiations have Australia pressured to adapt an EU-centric geographical indication regime. Local experts tell WTR of the concerns felt by rights holders.

Latest

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1 Mar 2021

Full Federal Court: don’t count descriptive elements out

This decision of the Full Court of the Federal Court of Australia demonstrates that descriptive elements may constitute the striking and important feature of a mark. Read more

18 Jan 2021

In-N-Out makes mincemeat of Hashtag Burgers

US fast-food restaurant chain In-N-Out Burgers objected to the use of DOWN-N-OUT by Hashtag Burgers in Australia. The decision shows that it is not necessary to have a place of business in the country in order to maintain a passing-off action. Read more

3 Dec 2020

Full Federal Court confirms that URBAN ALE is descriptive and deceptively similar

Following on from the Australian Federal Court's decision in February this year, the Full Federal Court has agreed that the word ‘urban’, when used in relation to beer, is descriptive as it conveys the notion that the product "was brewed in a city location". Read more

30 Nov 2020

Kraft Heinz left holding an empty peanut butter jar with no label (or lid)

The long-running battle between food giant Kraft Heinz and Australian company Bega Cheese over packaging for their peanut butters has come to an end, with Australia’s highest court throwing out Kraft’s bid to appeal an earlier ruling allowing Bega to continue using its distinctive trade dress. Read more

Anti-Counterfeiting

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1 Oct 2020

Amazon expands Transparency in Asia-Pacific, provides update on counterfeit interceptions

Amazon has announced the expansion of its Transparency product serialisation service to Australia and Japan. Read more

15 Sep 2020

Apple seizure controversy; USPTO launches innovation council; McDonald’s versus Hungry Jack’s – news digest

In our latest round-up, we look at a counterfeit crackdown in Guangzhou, Oracle seemingly prevailing in bid for TikTok, branded product labels being used to spread awareness of social causes, and much more. Read more

11 Aug 2020

Apple versus Prepear; IP Australia teams up with National Rugby League; ‘China quit India’ campaign launched – news digest

In our latest round-up, we look at WhatsApp and Google being used by scammers to dupe consumers, ICANN heads to Kuala Lumpur, Lao joins TMclass, and much more. Read more

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. Read more

Brand management

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30 Sep 2020

QAnon™ – the global efforts to trademark a far-right movement

New investigation finds trademark applications around the world related to the controversial QAnon movement, with one applicant revealing an ambitious plan to launch a global brand to “plant trees and save the oceans”. Read more

29 Sep 2020

Brands less important to consumers demanding social improvements, report reveals

Brandwatch has released the results of a survey of consumer perception on brand purpose in the light of the coronavirus pandemic. Read more

8 Sep 2020

Controlling Black Lives Matter: the battle to trademark a movement

A WTR investigation finds over 50 attempts to register Black Lives Matter brands in 2020 so far, with one activist telling us that legal protection is necessary “so that people can't profit from it who haven't shed blood for this movement”. Read more

4 Sep 2020

Queen Elizabeth II prevails in trademark dispute; Big Mac versus Big Jack; Kraft Heinz licensing – news digest

In our latest round-up, we look at a warning to act on counterfeit goods before it’s too late, Lord & Taylor filing for bankruptcy, IP Australia updating its trademark classifications, and much more. Read more

Enforcement and Litigation

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25 Nov 2020

Rhymes but not a crime: BOTOX v PROTOX

In a blow to pharmaceutical company Allergan, the Federal Court of Australia has concluded that the use of PROTOX and BOTOX in composite phrases for skincare products did not infringe Allergan's prior BOTOX marks. Read more

19 Nov 2020

WICKED v WICKED SISTER: Federal Court considers issues of deceptive similarity, ownership and removal

There was no sweet victory before the Federal Court of Australia for the owners of the WICKED SISTER mark, used mostly for dairy desserts, in their attempt to prevent use of the WICKED mark for dipping sauces and related products. Read more

10 Nov 2020

Film titles - trademarks or not trademarks?

The recent decision of the Australian Trademarks Office in a case involving a film called Lion again discusses the issue of whether a film title may function as a trademark. Read more

4 Nov 2020

Federal Court finds that MONSTER’s reputation is not enough

In a blow to well-known energy drinks company Monster Energy, the Federal Court of Australia has refused to invalidate Japanese software company Mixi’s application to extend the protection of its international registration for MONSTER STRIKE to Australia. Read more

Government/Policy

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14 Aug 2020

Innovation at IP Australia: spotlight on non-core tools and services

In a new regular series on WTR, national IP offices share the innovative non-core tools and services that they have launched or are developing for the future. This week, we focus on innovation at IP Australia. Read more

16 Jul 2020

A connected world: learnings from the first internationally linked trademark database

In an exclusive guest post, academics in Australia share findings from their new study into the first database that links equivalent trademarks across national offices into a single comprehensive offering. Read more

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

Law Firms

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23 Sep 2020

Flying high: registry data shows Asia-Pacific filings are skyrocketing

Filing data at the top Asia-Pacific IP offices reveals a region undergoing spectacular growth, accounting for a colossal 80% of trademark activity worldwide last year. Spearheading the effort is China – a nation with increasing influence over its neighbours, which shows no signs of slowing down. Read more

28 Aug 2020

Economies are battered but many major offices set for record trademark numbers

As the data continues to be updated, we are able to get a better understanding of the extent of the coronavirus’ impact on the trademark ecosystem. Read more

5 Jun 2020

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. 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

IP Offices

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21 Sep 2020

China eclipses United States in latest Asia-Pacific filing figures – with Alibaba top of the pile on home turf

WTR crunches the numbers at the leading Asia-Pacific trademark offices to reveal the extent of China’s emergence as a regional superpower, with Alibaba leading the way among both agent and corporate filers at its home registry. Read more

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

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

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

Online

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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

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

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

Portfolio Management

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27 Oct 2020

Is it a Big Mac? Is it a Big Jack? No, it’s a Big MacJac!

Australia’s burger wars have heated up again, with McDonald’s threatening trademark infringement proceedings against restaurant chain Rashjays over its Big MacJac burger. This comes after McDonald’s took action against rival Hungry Jacks over its Big Jack burger. Read more

7 Sep 2020

BLACK SHEEP trademark dispute - not all sheep are the same

This Australian decision provides guidance on what types of evidence may - or may not - be sufficient to prove use of a trademark in the course of trade. Read more

27 Jul 2020

Same same but different: SAMSUNG QLED not deceptively similar to LG Electronics’ QLED mark

Samsung’s trademark SAMSUNG QLED has proceeded to registration in Australia despite it wholly containing LG Electronics’ QLED trademark, and despite the products on which the trademark is used by Samsung not actually using QLED technology. 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

Trademark law

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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. Read more

6 Dec 2019

Litigation procedures and strategies: Australia

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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

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