Trademarks – Page 26 – IP Law Watch

A Second Helping of Kebab

Aug 11 2014

Additional Damages for Past Trade Mark Infringements

In June 2014 the Federal Court made its first award of additional damages for trade mark infringement under the ‘Raising the Bar’ amendments to the Trade Marks Act 1995 (TM Act). We reported on the original judgment in our 23 June 2014 alert, which you can find here.

Today, the Federal Court of Australia handed down another judgment in that case. This second judgement suggests that additional damages may also be available for trade mark infringements that occurred before 15 April 2013.

Permitted Trade Mark Usage as Google AdText

Jul 21 2014

Google AdWords Policy Change for Australia

As reported in April 2013, Google amended its AdWords policy in Australia allowing a company to purchase a competitor’s trade mark as a keyword in order to trigger sponsored ads during Google searches.

Google has now gone one step further and allowed resellers and informational sites from 27 July 2014 to use trade marks in ad text in Australia and New Zealand under certain circumstances. Read More

IP Haiku: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (No 2) [2014] FCA 418

Jul 15 2014

Your IP Law Report in 17 Syllables

“Judgments are just getting longer and more complicated, I can’t keep up with all of them!”

A familiar refrain uttered by many a lawyer and law student alike, especially in the modern, digital age (although we expect the Courts might refer to the increasing volume of electronic evidence filed by parties in proceedings as a contributing factor!)

So, in that context, could the essence of a judgment be distilled into haiku (short form Japanese poetry consisting of three phrases of five, seven and five syllables)? Well, we are sure going to try! Read More

It’s Not Easy Being Green

Jul 07 2014

BP’s Application for Registration of the Colour Green as a Trade Mark Rejected by IP Australia

IP Australia has again made it clear that the assessment of a colour trade mark under section 41 of the Trade Marks Act 1995 (Cth) should be no different from the assessment of any other trade mark.

However in rejecting BP’s application for registration of the colour green, the Office noted that while most objects have to be some colour, the act of applying a colour to a product will not act as an identifier for that product. Read More

That’s “a Lot of Kebab”!

Jun 23 2014

Additional Damages Awarded for Trade Mark Infringement

Trade mark owners can take encouragement from the Federal Court of Australia’s readiness to award additional damages as a deterrent from further infringement. The Court made its first award of additional damages for trade mark infringement in a case about kebabs, where a claim for actual loss from an infringement could not be made. Additional damages are a useful weapon in a brand owner’s arsenal. Read More

Local Directories Wins in Telstra Dispute Over Yellow

Jun 20 2014

It is very difficult for companies to effectively own colour, as was enforced in Local Directories’ Federal Court victory in its long running dispute against Telstra. Telstra claimed that by its use of the colour yellow for phone directories, Local Directories had engaged in misleading and deceptive conduct and passing off. The Court dismissed these claims and upheld that Telstra’s advertisements published in certain Yellow Pages directories were in fact misleading. Read More

INTA Cocktail Party

May 13 2014

On the evening of Sunday 11 May 2014, representatives from various K&L Gates’ offices hosted approximately 250 clients and friends of the firm at a reception in Hong Kong during the International Trademark Association (INTA) annual conference. INTA’s annual conference is the most important intellectual property conference each year for IP professionals around the world. Read More

Dick Smith Loses OZEMITE Trade Mark – Appeal Pending!

May 01 2014

Australian entrepreneur Dick Smith is famous for supporting Australian businesses that grow and produce products. One of the products he is associated with is ‘OZEMITE’, which was supposed to be a yeast based product similar to the Australian icon ‘Vegemite‘ (for our U.S. based readers, it is said that no Australian will travel anywhere in the world without a jar of Vegemite in their luggage – it is a national icon, like the kangaroo). Read More

That’s My Name, Don’t Wear it Out!

Nov 26 2013

The recent announcement that leading Australian fashion designer Alannah Hill has separated from the label that bears her name (while seeking to continue to work in the fashion industry), is yet another recent example of a ‘name’ and a company parting ways. Another example of ‘brand separation’ that has received a lot of media attention in recent times is the dispute between former racing car driver and tyre salesman Bob Jane, and the company that bears his name, Bob Jane T-Marts. Read More

Category:Trademarks