Phillip Morris sues Australia!

Phillip Morris has announced that it plans to sue Australia under the Australia-Hong Kong (SA) Bilateral Investment Treaty over the planned plain packaging legislation. What the Government is proposing to do Under the proposed Tobacco Plain Packaging Bill 2011, tobacco companies would be required to adopt a prescribed form of packaging for tobacco products. In […]

DGTEK v Digiteck II

For DGTEK v Digiteck I, see here. Non-use Lander J considered that the goods covered by Hills’ registration should be limited as a result of non-use for the statutory period of 3 continuous years under s 92. One interesting point on this part of the case is that Bitek had sought removal of all goods […]

Wild Geese survive Wild Turkey attack

Anita Brown, over at IPanz, reports on Cowdroy J’s exercise of discretion to leave the Wild Geese trade mark for whiskey on the Registrar, even though non-use throughout the relevant statutory period was proved, on the basis of the perceived risk of public confusion. His Honour also addressed the standing requirement for a non-use action. […]

The Australian High Court on trade marks

Janice Luck and Peiwen Chen have published at the Fortnightly Review an analysis of the High Court’s recent rulings in the trade mark cases: Gallo v Lion Nathan (the Barefoot case) and Health World v Shin-Sun. As Janice was one of the members of the Working Party whose review led to the 1995 Act and […]

Satellite broadcast and trade mark use

In a further round of the Food Channel / Network war, Greenwood J has accepted that the inclusion of the trade mark on programming broadcast by ABC Asia Pacific is use of the trade mark in Australia. ABC Asia Pacific is primarily intended to transmit ABC programming into countries in the Asia Pacific region. Depending […]

High Court allows appeal in Barefoot case

E & J Gallo owns TM No 787765, BAREFOOT, for “wines” in class 33. It had acquired ownership of the trade mark by assignment in 2005 from a Mr Houlihan. Lion Nathan introduced a new beer into Australia under the trade mark BAREFOOT RADLER (with a barefoot device): The Full Federal Court found that Lion’s […]

High Court allows appeal in Health World

The High Court has unanimously allowed Health World’s appeal from the Federal Court’s ruling that it was not an “aggrieved person” and so had no standing to seek rectification of Shin Sun’s HEALTHPLUS trade mark. Shin Sun had registered HEALTH PLUS for pharmaceutical products including vitamins and dietary supplements in class 5; and Health World […]

Trade marks as security for costs

Lindgren J has ordered that the owners of the WILD TURKEY trade mark (which those of you who drink bourbon may be familiar with) provide security for costs before they can pursue their Federal Court application to have WILD GEESE removed from the Register of Trade Marks. Lindgren J accepted that the owners, members of […]

Beery barefeet on appeal

Curiouser and Curiouser! The Full Court has affirmed the trial judge’s finding that Gallo’s registration of the trade mark BAREFOOT for wine should be removed for non-use. However, the Full Court has overturned his Honour’s finding that Lion Nathan’s use of Barefoot Radler for beer did not infringe that registration (before it was removed). Consequently, […]

Not using (but keeping) Pioneer

Prof. Mark Davison reviews Bennett J’s recent decision allowing Pioneer, by an exercise of discretion, to keep its registration for , even though it had no use of, or intention to use, the trade mark in respect of those goods. Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135