“Made in…?”: Country of Origin Labelling Reforms in Australia

Recent changes to the Australian Country of Origin Food Labelling Information Standard 2016 (“CoOL”) was no doubt influenced by the notorious frozen berry scare in Australia in 2015, which allegedly linked a hepatitis A outbreak to imported frozen berries. This generated public interest in transparency in origin of food labelling. The changes will have a significant effect on businesses that market unpackaged goods, bringing these […]

The Core of the Pink Lady Trade Mark Dispute: High Court of Australia refuses to revisit Apple and Pear Australia Ltd v Pink Lady America LLC [2016] VSCA 280 (23 November 2016)

In April 2017, the High Court of Australia refused special leave to appeal the decision of the Court of Appeal of the Supreme Court of Victoria. This resolved the long running contractual dispute over the “Pink Lady” trade mark. (It effectively ensures that all use of the “Pink Lady” trade marks used in respect of Chilean-grown apples and fruit that are exported from Chile […]

Bye, Innovation Patents (and other news): Australian Productivity Commission – The Federal Government Response

The Australian Federal Government’s response to the controversial Productivity Commission’s Inquiry into Intellectual Property Arrangements was released on Friday. It deals with the many recommendations made by the Commission. Here are some of the highlights, in so far as they directly affect Australian businesses: Copyright In principle, the government supported the recommendation that restrictions on parallel importations of […]

Like a Boss: Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 (24 July 2017)

CrossFit, an entirely too vigorous regime of exercise as far as we are concerned, is an international fitness business with many adherents across the world and in Australia. As the evidence in this matter noted, “[The Opponent] licences the CrossFit mark to affiliates throughout the world, and there are now approximately 12,836 gyms providing specialised […]

Limitations on the Prior Use Defence: Cabcharge Australia Limited v E2 Interactive [2017] ATMO 76 (28 July 2017)

On 30 August 2011, e2Interactive Inc. (the Applicant) filed a trade mark registration application for the following logo (the Trade Mark), covering a wide variety of products and services under classes 9, 35, 36, 38, 40, and 41, but mostly in relation to cards, communication, entertainment, and marketing/advertising. The application was initially rejected after examination revealed possible grounds […]

Swiss Style Claims and Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129

On 18 August 2017, the Australian Full Federal Court has overturned a prior decision made by the Administrative Appeals Tribunal in 5 September 2016 over Re AbbvVie Biotechnology Ltd [2015] APO 45, with regard to several applications for an extension of term for Australian patents 2012261708, 2013203420 and 2013257402. Patent extensions of five years are permissible in Australia for pharmaceutical products. These patents […]

Fishing for Phishers: Recent UDRPs brought by the UK Commissioners for HM Revenue and Customs

Phishing, the fraudulent act of soliciting money from members of the public through emailed demands, is a scourge, in which phishers deceive especially the elderly or naive. On 22 February 2017, the Commissioners for Her Majesty’s Revenue and Customs of London (the Complainants) filed a complaint  at the WIPO Arbitration and Mediation Center over the domain name HMRCONLINEGOV.COM, which […]

Snakes and No Ladders: Hoser v Bunnings Group Ltd & Anor [2017] FCCA 1624 (13 July 2017)

Mr Raymond Hoser describes himself as a “globally recognised reptile expert” and is a government-licensed wildlife demonstrator. Mr Hoser owns registered Australian trade marks for the term “snake man” and “Snake man”. Mr Hoser initiated an interlocutory application with the Federal Circuit Court seeking to prevent Mr Michael Alexander from using, amongst other things, “Snake man” in the course of trade. Mr Alexander conducts business under the name […]

Trade marks and graphic design: the bear trap of industry themes

One consideration for graphic designers upon receipt of a brief to design a new brand identity is to mitigate the risk of confusion between a client’s brand and competitors’ brands. There is a tension between this, and rendering a logo so that it looks like it falls into a particular category of goods and services. […]

Who owns Neptune’s fork?: Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 (3 May 2017)

A trident, the indicia of the Poseidon, Greek god of the sea (or Neptune for those of a preference for Roman mythology), is one of those valuable symbols which are highly suggestive of marine or maritime goods and services, but which is not descriptive. It is valuable real estate from a marketing perspective. It is entirely […]

The Concept of “Careful Purchasers” Strikes Again: Basler Electric Company v BOGE Elastmetall GmbH [2017] ATMO 64 (30 June 2017)

On 17 November 2014, motor and vehicle parts manufacturer BOGE Elastmetall GmbH (the Holder) applied for a trade mark in Australia, relying upon an extension of protection based upon international registration no. 1227675 (“the IRDA”). This was an image mark consisting of a stylised letter “B” (the company’s logo) inside a black rectangle. The mark’s […]

OECD/EUIPO Report Reveals Important Details About Most Common Counterfeit Trade Routes

The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) has recently published a new report titled “Mapping the Real Routes of Trade in Fake Goods.” The report uses data collected from 10 different industries, notably ones that span a wide range of IP-intense, tradable goods such as foodstuffs, […]

Philip Morris Ordered to Pay Australia’s Legal Costs After Failing to Challenge Plain Packaging Laws

The Permanent Court of Arbitration has recently ordered tobacco company Philip Morris to pay the Australian government’s costs, after Philip Morris failed to get the Australian government’s plain packaging legislation overturned. For the uninitiated, the Tobacco Plain Packaging Act 2011 makes it mandatory for tobacco companies that wish to conduct business in Australia to sell […]

Liquidating Trustee Companies

In a recent article published in the Insolvency Law Journal1, I discussed some of the difficulties encountered by liquidators and courts in trying to apply Chapter 5 of the Corporations Act to trustee companies. Liquidating a trustee company gives rise to an added layer of complexity in liquidations, with the liquidator obliged to follow not only […]

The WTO’s “decision” on plain packaging for cigarettes: will alcohol be next?

Pursuant to the Tobacco Plain Packaging Act 2011 (“the Act”), tobacco companies in Australia are required by law to sell their products using a generic drab dark brown packaging that features large, aesthetically-confrontational health warnings. The intention is to make cigarettes unattractive to smokers. There is also a requirement for the inclusion on packaging of […]

Kelloggs sues Australian tennis player over “Special K”

On 9 May 2017, American cereal manufacturer Kellogg Company commenced proceedings against a company owned by Australian professional tennis player Thanasi Kokkinakis, apparently in respect of Mr Kokkinakis’ use of the brand “Special K”. It seems that Mr Kokkinakis wishes to use the brand “Special K” in respect of tennis equipment and tennis attire, as […]

Whose House Is It? Universal City Studios LLC v Philip Gorecki [2017] ATMO 18

For readers of a certain, mature age, love them or hate them, the National Lampoon movies formed a significant part of the 1980’s movie heritage (dare I say ‘culture’?). The movies included performances by John Belushi, John Candy, Beverly D’Angelo and, of course, Chevy Chase. The 1978 movie, National Lampoon’s Animal House (Animal House), which the […]

The High Price of Flagrant Conduct

The High Price of Flagrant Conduct Most legal practitioners have the principles of damages drilled into them as law students – damages are compensatory in nature and designed to place the aggrieved party back into the position they would be in if the breach had not occurred. As with most rules, there are exceptions. Section […]