Australian trade marks – IP Law Watch

Style is everything, but style names aren’t “trade marks”

Oct 18 2019

Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662

In a recent decision commenced by Pinnacle Runway against well-known swimwear brand Triangl, the Federal Court has chastised the parties involved for partaking in so called “ill-advised proceedings”. The Court also confirmed that use of a word as a style name to differentiate between product lines will not amount to use as a trade mark so as to constitute trade mark infringement.

A dog of a trade mark dispute

Sep 29 2016

A long running trade mark dispute between Black Dog Ride Pty Ltd (Ride) (http://www.blackdogride.com.au/) and the Black Dog Institute (Institute) has concluded almost four years after an acrimonious dispute arose between the two organisations ended what had been a mutually beneficial relationship. The Delegate of the Registrar of Trade Marks who heard the dispute ultimately dismissed each of the respective oppositions filed by the parties and confirmed the rights of Ride to register BLACK DOG RIDE (stylised) and the Institute to register BLACK DOG for various goods and services.

In 2002, the Institute was founded as a non-profit organisation specialising in the diagnosis, treatment and prevention of mood disorders. In 2008, Steve Andrews created Ride to organise charitable motorcycle rides to raise awareness of depression and suicide prevention. Importantly, the Delegate found that both Ride and the Institute adopted names including the words BLACK DOG as a result of Winston Churchill’s well known use of the phrase BLACK DOG when referring to his battles with the mood illness.

Bad-Faith Trademark Applications

Jan 07 2016

By Chris Round

In June IP Australia handed down a decision in favour of the pop star Madonna who faced an applicant seeking to register the trademark HARD CANDY which was the name of Madonna’s gym business. In Hard Candy Fitness, LLC v Hard Candy (Australia) Pty Ltd [2015] ATMO 61, IP Australia had no difficulty in finding that Hard Candy (Australia) Pty Ltd (AU Hard Candy) was acting in bad faith when it filed a trademark application for HARD CANDY in the week Madonna launched her new gym business under that name.

IP Australia found that the opponent (US Hard Candy) is a global luxury fitness brand and owner of a group of fitness, health and lifestyle centres around the world operating under the name HARD CANDY FITNESS. US Hard Candy was founded by American musician, entertainer, actress, author, cultural icon and entrepreneur Madonna in partnership with Madonna’s agent, Guy Oseary, and Mark Mastrov of New Evolution Ventures, LLC.

Additional Damages Under the Trade Marks Act

Jan 07 2016

By Chris Round

In a decision of the Federal Court in October 2015 concerning trademarks affixed to Chinese herbal teas, the Federal Court of Australia awarded additional damages to an applicant in circumstances where the evidence required to prove compensatory damages was not available.

In Truong Giang Corporation v Quach [2015] FCA 1097, the applicant Truong Giang Corporation (TG Corp) is a Californian company that produces a green leaf herbal tea product which it sells under the name “3 Ballerina Tea”. It has sold that product in the United States since 1991 and in Australia since 1994, in distinctive dark green packaging which, amongst other things, features a prominent device or mark. In this proceeding TG Corp claimed that the respondents Mr Quach, New Leaf and Mr Alexandrou were involved in selling relatively large quantities of a tea product packaged in a deceptively similar way to the genuine 3 Ballerina Tea. Since 2006, TG Corp through its agents sold substantial quantities of 3 Ballerina Tea throughout Australia, mainly through Asian supermarkets and health food stores.

Now Trending: #jesuischarlie Trade Marks

Jan 29 2015

Can you Register a Rallying cry or Trending Slogan as a Trade Mark in Australia?

Following the Charlie Hebdo massacre, supporters of free speech and freedom of expression rallied behind the phrase JE SUIS CHARLIE. Within two days, “#jesuischarlie” had been tweeted over five million times. Less than a week after the shooting, trade mark applications for both “Charlie Hebdo” and “jesuischarlie” were filed in Australia. This follows as many as 50 applications for the phrase in France and similar applications in the United States, European Union and Belgium. Read More

Apple Denied App Store Trade Mark in Australia

Dec 05 2014

It has been a bumper week for IP decisions in Australia. Earlier, we reported on the Coke v Pepsi and Cantarella decisions. Now, in a third major judgment, the Federal Court of Australia (Federal Court) has refused registration of Apple’s trade mark application for APP STORE in Australia.

Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 was an appeal from a decision by the Registrar of Trade Marks (Registrar). The Registrar found that the trade mark APP STORE was ‘purely’, ‘directly’ or ‘inherently’ descriptive, as it would be well understood by modern digital-savvy consumers to refer to a ‘store’ that sells or provides ‘apps’. Read More

Safe and Sound

Nov 25 2014

Sound Marks in Australia

In September, IP Australia accepted for registration a trade mark described as “the Trade Mark consists of the sound of a fictitious character saying the word “Simples!” followed by a squeaking sound such as might be expected to be made by a Meerkat or other small animal”. You can listen to this trade mark here. This application was filed for an array of goods and services by the UK company BGL Group Limited. Read More

Limping Trade Marks and Distinctiveness in Australia

Sep 24 2014

Oyster Bay’s Wine Bottle Trade Mark Application Rejected

In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:

Tag:Australian trade marks