Decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd Clarifies Test for Distinctiveness of Trade Marks in Australia
This week, the High Court of Australia (High Court) handed down only its third decision considering trade mark issues since the enactment of the Trade Marks Act 1995 (Cth). This decision could make it easier to register foreign language words as trade marks.
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
Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150
On 10 November 2014, the Australian Full Federal Court (Court) held that a method of creating an index of securities using a standard computer was a ‘scheme’, and, hence, not a patentable invention.
The Court applied the Australian High Court test from National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 that a patentable invention must produce an “artificially created state of affairs”. The Court said that this test is not satisfied by mechanistic application of artificiality or physical effect, but by understanding the claimed invention as a matter of substance not form. Read More
In a recent case, the Court of Justice of the European Union (Court of Justice) ruled that a simple drawing of sales premises for goods, without any indication of dimensions or proportions, can be registered as a trademark for services involving provisions related to those goods, but which do not constitute an integral part of admitting them to trade. One of the conditions making it possible to register such a depiction as a trademark is that the depiction makes it possible for the services concerned to be differentiated from those of other businesses. A second condition is that the registration does not meet any of the grounds for refusal of a registration specified in Directive 2008/95/EC. Read More
Oyster Bay’s Wine Bottle Trade Mark Application Rejected
In 2012, New Zealand winery Oyster Bay filed a trade mark application as follows:
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
In July 2013, the Hong Kong Government commenced a three month public consultation on three options to deal with parody under Hong Kong copyright law. One of the options was the introduction of a fair dealing exception for parody under Hong Kong copyright law, where the “distribution and communication of parody will not attract any civil or criminal liability if the qualifying conditions for exception are met.” Read More
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