Region: Australia

Full Federal Court decision in ‘community bank’ case highlights difficulty of protecting descriptive trademarks

This decision of the Full Court of the Federal Court of Australia highlights the risks of choosing a descriptive trademark, even where trademark registration has been obtained and held for a long period of time.

19 May 2021

Federal Circuit decision crushes Australian boot maker in long-running politically fraught UGG dispute

The US Court of Appeals for the Federal Circuit has dealt a blow to a small Australian footwear company in the latest in an ongoing political and legal saga over the genericism of the UGG mark.

11 May 2021

A case of striking impression (and all that jazz)

This decision of the Federal Court of Australia in a case involving the use of the terms ‘corner’ and ‘corner hotel’ for live music venues reinforces the importance of considering the ‘striking’ impression left by the uncommon element(s) of a mark.

29 April 2021

The Rolling Stones and New Balance feature in Asia-Pacific Legal Updates you may have missed

Each quarter we will be running a series of pieces presenting recent Legal Updates that you may have missed. For this instalment we turn our attention to the Asia-Pacific region.

27 April 2021

Changes to ‘.au’ domain name rules: implications for Australian trademark owners

New eligibility rules for holding a ‘.au’ domain name came into effect on 12 April 2021. It is particularly important for foreign entities holding ‘.au’ domain names to assess whether they will remain eligible.

16 April 2021

While “You can’t always get what you want”, the Stones did get some “Satisfaction”

The “Hand of Fate” - or at least IP Australia - was smiling on Mick Jagger and the Rolling Stones in their recent victory over Australian fashion company We the Wild Ones.

14 April 2021

RestQ sleep aid products restrained due to similarity to Rescue Sleep products

The Australian Federal Court has restrained the maker of a sleep aid product from using the name RestQ due to the similarity with an existing product for dealing with sleeplessness sold under the names Rescue and Rescue Sleep.

09 April 2021

Federal Court issues decision in LA FAMIGLIA case

In a case that raises several interesting points in respect of trademark registration and litigation, the Federal Court of Australia has considered whether the respondents could use LA FAMIGLIA RANA for their filled pasta products in the face of existing registrations for LA FAMIGLIA for bread products.

08 March 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.

01 March 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.

18 January 2021