Region: New Zealand

Telstra Corporation victorious in typosquatting case

In <i>Telstra Corporation Limited v E-Promote</i>, a Domain Name Commission expert has ordered the transfer of the domain names 'telstaclear.co.nz', 'telsraclear.co.nz' and 'telstarclear.co.nz' to Telstra Corporation Limited. According to the expert, the inference that the domain names were registered with misspellings of Telstra's trademarks in order to direct traffic to the registrant's websites was inescapable.

04 July 2008

Not so HEFTY account of profits

In <i>Intellectual Property Development Corporation Pty Ltd v Primary Distributors New Zealand</i>, the Auckland High Court has allowed in part a claim for an account of profits for the unlawful sale of products bearing the mark HEFTY. Among other things, the court held that an account of profits was not available for the period during which the plaintiff was aware of the defendant's acts but failed to take action.

03 June 2008

Defendants found to be in breach of court order

Brand Developers Limited has successfully enforced an interlocutory order against Kanji Corporation Limited and the company's sole director in a case involving the infringement of Brand Developers' trademark rights in the Ab King Pro name. Among other things, the court held that "corporate defendants cannot avoid the effect of court orders simply by acting through directors".

20 May 2008

Genealogy services not similar to services to trace living relatives

In <i>Intellectual Reserve Inc v Robert Sintes</i>, the High Court has ordered the registration of a stylized version of the words 'family search' for services for locating birth parents and adopted children. The court found that there was no likelihood of confusion with the earlier mark FAMILYSEARCH for genealogical services as there was only a superficial similarity between the services offered.

14 February 2008

Great Barrier Air banned from using its name

In <i>Great Barrier Airlines Flight Operations Limited v Great Barrier Air Limited</i>, the High Court has issued an interim injunction preventing use of the name Great Barrier Air in relation to flights to and from Great Barrier Island. Interestingly, the court did not consider whether Great Barrier Airlines, which sought the injunction, had the requisite reputation - a necessary ingredient for a passing off or Fair Trading Act claim.

07 February 2008

Application to register mark by co-owner deemed to be in bad faith

In <i>Neumann v Sons of the Desert SL, </i>the High Court has confirmed that where there are co-owners of a trademark, an application to register the mark by only one of the owners without the other's knowledge is deemed to have been made in bad faith. The court held that the attempt to register the mark would deprive the other co-owner of the benefit of registration and use of the mark in New Zealand.

04 February 2008

Significant amendments to IP legislation proposed

Recognizing the growing trade in illegal counterfeit goods, the New Zealand government has proposed changes to the Trademarks Act 2002 and the Copyright Act 1994 to increase the powers of the New Zealand Customs Service at the border. Among other things, the proposed changes will enable Customs to initiate discretionary prosecutions against importers of counterfeit and pirated goods.

29 January 2008

Opponent wins the battle only to lose the war

The recently established Supreme Court has determined its first trademark case in <i>Austin Nichols & Co Inc v Stichting Lodestar</i>. The main issue was the weight to be placed on the decision of the commissioner of trademarks in an opposition. The Supreme Court held that while the extent of the consideration given to the decision appealed from is a matter of judgment, the appellate court must form its own view.

24 January 2008

Injunction against sale of Summer Ale beer denied

In <i>DB Breweries Limited v Lion Nathan Limited</i>, the Auckland High Court has rejected DB Breweries' application for an interim injunction restraining Lion Nathan from selling beer under the name Summer Ale. Among other things, the court held that a passing off claim cannot be sustained solely on a descriptive or generic term where there is no proof of a secondary reputation.

07 December 2007

Local council logo upsets television station

An argument has broken out between Triangle Television, an Auckland television station, and Auckland City Council regarding the latter's new branding. Triangle Television is reportedly concerned that members of the public will be deceived or confused by the similarities between its TRIANGLE TELEVISION logo mark and the council's triangle device.

29 November 2007

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