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Andrew Sykes, a barrister and trade marks attorney, has started a new trade mark resource: Australian Trade Mark Opposition Law.

According to the website:

The purpose of this site is to provide quick, reliable answers to practitioners working with trade mark oppositions and appeals. Therefore the aim is to keep excessive academic discussion to a minimum and make good use of relevant and helpful citation to authorities. ….

The website is a work in progress with additional details and material dealing with further grounds and links to be added. Based on what is up already, however, Andrew has some interesting ideas.

Check it out!

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The Full Court has rejected another attempt by Paul’s Retail to invoke s 123 against allegations it was infringing LONSDALE trade marks.

Background

Lonsdale Sports Limited (Lonsdale UK) had a number of registered trade marks in Australia and elsewhere for LONSDALE.

In May 2008, it licensed Punch GmbH to use the LONSDALE trade marks in a number of countries, mostly in Europe. As part of the licence, Punch was permitted to get its LONSDALE goods made in China.

In June 2011, Lonsdale UK assigned its Australian trade marks to Lonsdale Australia. Both Londsdale Sports Limited and Lonsdale Australia were members of the same corporate group, having Sports Direct as their ultimate holding company.

Between December 2011 and April 2012, the appellants bought and imported into Australia 293,329 products bearing the LONSDALE trade marks. The way the goods were sourced plainly gave rise to considerable skepticism in the courts.

The goods were in fact made and marked by Punch in China. Punch sold them to Unicell. Punch invoiced Unicell and shipped them to Unicell in Sri Lanka, part of Punch’s territory, and bought them from Punch. . Unicell then engaged in ‘certain “pre-retailing” activities (such as splitting, tagging and pricing) and shipped them to the appellants via the intermediary of  TMS LLC (a US company).

Punch paid royalties to Lonsdale UK on the goods it shipped to Unicell. It appears from Gordon J’s reasons, however, that there were some differences between at least 2 of the trade marks registered in Australia and those licensed to Punch by Lonsdale UK. Although not licensed to it by Lonsdale UK, Punch nonetheless arranged to have those 2 trade marks put on the products the appellants imported and sold.

The Full Court (Keane CJ, Jagot and Yates JJ) has affirmed Gordon J’s ruling that the appellants infringed the registered trade marks in Australia for LONSDALE, but not for the reasons you, or the trial judge, might think.

The trial judge, Gordon J, held there were 3 reasons why Paul’s infringed:

32 There are three complete answers to this submission. First, for the reasons stated at [16]-[18] above, this construction of the Champagne Heidsieck principle should not be accepted. The reference to “registered owner” in the High Court’s statement of the principle should be understood to mean the registered owner of the Australian registered trade marks in question, consistently with the proper construction of the TM Act. Accordingly, the principle will only assist the respondents if they can show that Lonsdale Australia consented to the application of the Lonsdale Australia Trade Marks. Secondly, Lonsdale Australia (being the registered owner of the Lonsdale Australia Trade Marks) did not affix any mark to the Paul’s Goods. Thirdly, as stated at [27] above, it cannot be said that “a manufacturer [has put] a trade mark on his goods and [sent] them into the course of trade on the billowing ocean of trade … not telling any lies or misleading anyone in any way at all”: cf Atari 50 ALR 274 at 277. Here, the “manufacturer” of the goods (Punch) did not legitimately apply at least two of the three marks to the Paul’s Goods.

That is, Lonsdale Australia as the registered owner of the trade marks in Australia:

(1) did not apply the trade marks to the imported goods;

(2) did not consent to Punch applying the trade marks to the imported goods,

and Punch had no authority to apply at least two of the trade marks to any goods.

The Full Court – why s 123 did not apply

The Full Court, however, considered it was unnecessary to even address those questions. Instead, it said at [37]:

The consent given by [Lonsdale UK] to Punch on which the appellants rely was limited in its terms to “the non exclusive right to promote, distribute and sell Products bearing the Trade Marks in the Territory”. Whether one looks at the issue through a strict legal analysis of the Punch licence and the Punch-Unicell sales agreement, or from a broader commercial perspective, the use of the Lonsdale marks for the purposes of the sale by Punch to Unicell cannot be seen to be within the limited consent given by the Punch licence.

That is, as Punch had a licence limited only to selling LONSDALE products in Europe, s 123 was not even engaged. It was unnecessary to enquire whether the trade marks had been applied by or with the consent of the trade mark owner.

By dealing with the issue in this way, the Full Court avoided having to deal with the question (1) whether the common ownership of both Londsdale UK and Lonsdale Australia as members of the same corporate group was a sufficient basis to infer consent to the application of the LONSDALE trade marks to the goods imported by Paul’s.

Given (absent imputed consent through the corporate relationship) at least some of the trade marks applied by Punch to the Paul’s goods were not licensed to Punch by Lonsdale UK, one may wonder why the Full Court took its approach. If Punch’s licence had not been limited territorially, would the Full Court have imputed consent on the basis of the corporate relationship?

The Full Court’s approach to the scope of Punch’s consent is similar to the way the Courts deal with implied consent in the context of patents.[1] Accordingly, before one even considers whether the consent of the registered owner of the trade mark may be invoked under s 123, it will be necessary for a prospective parallel importer to ascertain the scope of the licence given to the licensee from whom the goods are sourced.

That this is a deliberate choice by the Full Court is reinforced by the Court’s express denial at [51] of any relevance to the interpretation of s 123 by reference to the doctrine of exhaustion. That rejection may be thought somewhat surprising as s 123 was enacted to implement the recommendation of the Working Party to give statutory force to the doctrine of exhaustion:

A majority of the comments received were in favour of the exhaustion of rights doctrine.. Questions were raised as to whether or not the mark was applied with or without the consent of the proprietor and whether the goods were materially different form the local goods. It was considered preferable that argument on these issues take place in the context of statutory recognisiton of the legality of parallel importation.

The Champagne Heidsieck principle

The Full Court also rejected the appellants’ attempted reliance on the so-called Champagne Heidsieck[2] principle. As re-formulated by the High Court in Gallo at [34]:

a trade mark is not infringed by a third party importing, offering for sale and selling, without the owner’s consent, goods to which the registered owner (or its licensee) has affixed the mark….

Gordon J’s reasoning at first instance avoided this principle since the registered owner, Lonsdale Australia, had never consented to anything Punch did or arranged.

Having noted there were difficulties in articulating how the Champagne Heidsieck[2] principle could apply in the context of the Act and particularly s 123, the Full Court at [64] considered that, if s 123 did not save the appellants, there was no other principle that could help them. However, the Full Court went on to reject the argument that:

the importation and sale of goods marked with the consent of the owner of the trade mark or its licensee does not involve a use of the trade mark by the importer or seller.

The Full Court rejected this argument at [65]:

If this argument were correct, an importer would not infringe the trade mark merely by acts of importation and sale even if the mark had been applied to the goods without the consent of the owner of the trade mark. This Court has previously expressed the view that “…absent s 123 the mere sale by an importer of goods already marked would be an infringing use of the mark by the importer”: See E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 at [58]; quoted in Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd (2012) 202 FCR 286 at [66]; see also Transport Tyre Sales at [94].[3]

Although the Full Court appears to treat this part of the appellants’ argument separately to the Champagne Heidsieck[2] principle, it is with respect difficult to see any difference between the two arguments.

It could be argued that the situation addressed by the Champagne Heidsieck principle is very different to that where the goods imported are not genuine. As the Full Court noted at [66], however, support for the view taken by, now, 3 Full Courts can be found in the observation of Aickin J in Pioneer,  which itself seems difficult to reconcile with s 7(3).

It therefore appears clear, failing intervention by the High Court, that the Champagne Heidsieck[2] principle is no longer applicable in Australian law.

One consequence of this appears to be that a provision intended to entrench the rights of parallel importers may well have made it much more difficult to engage in parallel importing.

More importantly, the Champagne Heidsieck[2] principle can be seen as an emanation of what US trade mark lawyers call “nominative use” or “nominative fair use”: one did not use a trade mark as a trade mark by using it to identify the goods or services marked with the trade mark by the trade mark owner. So, for example, under the old Act the Full Court held it was not use the trade mark ROLLING STONES as a trade mark to sell bootleg recordings of the Rolling Stones performing by reference to the name ROLLING STONES. Does the enactment of s 123 mean that principle is no longer applicable?

Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

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Mr Spagnuolo has been granted “special” leave to appeal to the Full Court from Reeves J’s dismissal of his opposition to Mantra registering Q1 for a range of accommodation, travel and holiday services.

Some background

Q1 is another one of those “iconic” high rise apartment buildings on the Gold Coast. Its 78 levels boast 526 residential apartments, a retail shopping plaza and a resort / conference complex.

In addition to operating the resort/conference part of the building under Q1 RESORT & SPA, Mantra also has arrangements for renting out 193 of the privately owned apartments.

Mr Spagnuolo owns two of the apartments himself and has arrangements to rent out a number of others’ apartments. He operates his rental business under the name Q1 Holidays Gold Coast and also holds the domain name q1holidaysgoldcoast.com.au.

Mantra’s predecessor applied to register 3 trade marks, Nos 1228706, 1228707 and 1228708 for a range of services in classes 36, 39, 35 and 43. (Not sure why they were in three different applications. has there been a change of practice about these things?)

The Registrar’s delegate had upheld Mr Spagnuolo’s opposition, but Reeves J overturned that decision on appeal.

Why?

While a party may appeal to the Court from the Registrar’s decision in an opposition proceedings as a matter of right, there is no automatic right of appeal from the Court’s decision at first instance. Leave is required: s 195(2).  It is fairly unusual for unsuccessful opponents to the registration of a trade mark to get leave to appeal to the Full Court.

One key factor in why Logan J granted leave was the legal point Mr Spagnuolo wants to run: he argues that Q1 is not inherently adapted to distinguish Mantra’s services as other people wanting to rent out their properties in the Q1 building will legitimately want to use Q1 too. That is, Mr Spagnuolo wishes to contend that Q1 is not inherently adapted to distinguish under s 41 because the Q1 building is not owned by one person. As a result of the disparate ownership of the properties comprising the Q1 building, therefore, Q1 may be the name of “a locality”.

According to Logan J and the parties, this question has not been the subject of judicial decision.

Another consideration was that there were conflicting decisions in the Office and at first instance, with the Registrar’s delegate allowing the opposition and Reeves J rejecting it.

After some rumblings about the potential for litigants with deep pockets to oppress those “not as well financially provided”, Logan J also pointed out that the parties had filed extensive evidence in the court proceedings, the benefit of which would be lost if Mr Spagnuolo was not permitted to appeal and was left to start revocation proceedings anew.

Finally, Logan J granted Mr Spagnuolo an extension of time in which to file his application for leave to appeal. Under the “old” Rules, an applicant for leave had 21 days to file the application. Under the new rules (in force since August 2011), however, applications for leave must be filed within 14 days. That wasn’t an obstacle in this case as Mr Spagnuolo’s advisers filed only 1 week late so there wasn’t really any special prejudice Mantra could point to.

Finally, Logan J granted a stay on Reeves J’s direction that the trade marks proceed to registration:

… Mantra IP has only briefly enjoyed the benefits of the judgment. Before then, its applications stood rejected. It was not greatly pressed, on its behalf, that there was any particular commercial harm that it would suffer beyond the obvious one of its position being unclear until there was a final judgment. It seems to me there would be much potential for mischief in the marketplace in the event that there were not a stay.

Spagnuolo v Mantra IP Pty Ltd [2012] FCA 1038

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It turns out that the Registrar does have power to undo an assignment of a registered trade mark that has been registered wrongly.

A Mr Brailsford was the registered owner of the Peel Away trade mark for paint stripping preparations, TM No. 741047. He died in 2008.

On 23 Setember 2010, trade mark attorney McInnes filed an application to register an assignment of the trade mark to Mediaquest.

On 8 October 2010, the Registrar registered the assignment and Mediaquest became the owner of TM No. 741047.

On 12 November 2010, trade mark attorney Wilson wrote to the Registrar complaining about the registration of the assignment without notification to him and challenging it. Mr Wilson was acting for Mr Brailsford’s heirs and had been the address for service entered in the Register when the application to register the assignment was lodged.[1]

On 22 November 2010, the Registrar wrote to Mr McInness stating that the documentation relied on to establish the assignment was inadequate and so the Registrar intended to cancel the registration of assignment pursuant to s 81. Mediaquest objected to this and pointed out, amongst other things, that it had withdrawn a pending non-use action once the assignement was registered.

Further correspondence took place and, in due course, a hearing at which the delegate concluded Mediaquest had not established its entitlement to be registered as the assignee. Mediaquest appealed.

On appeal, Emmett J held that:

1 Mediaquest was not entitled to an assignment; and
2 the Registrar did have power to cancel the registration of the assignment.

Ownership

Mediaquest claimed it had an assignment from CRT. Mr Brailsford was the president and a director of CRT. Mediaquest sought to argue that his registration of TM No 741047 in Australia was in breach of his duties to CRT as a director and consequently the trade mark belonged in equity to CRT and, as a result of an assignment from CRT to Mediaquest, to it.

It seems Mr Brailsford may well have coined the mark and used it in the USA. At one point, the US mark was owned by another of Mr Brailsford’s companies, Pilgrim. In November 1992, Pilgrim assigned all its rights to Mr Brailsford and, in August 1993, Mr Brailsford assigned all his (US)[2] rights to CRT. It was after this, in 1997, that Mr Brailsford applied to register what became TM No. 741047 in Australia in his own name. In 1998, CRT applied to register a patent in the UK, identifying Mr Brailsford as the inventor and claiming entitlement through agreement with him.[3]

Emmett J found Mr Brailsford was entitled to register TM No. 741047 in his own name:

• CRT was clearly the owner of the US trade marks;
• both Pilgrim and CRT were creatures of Mr Bailsford;
• while CRT was incorporated in Jersey in the Channel Islands, there was no evidence that it had ever traded anywhere other than in the USA or the UK.

At [34]:

The contention advanced on behalf of Mediaquest is that Mr Brailsford acquired the opportunity to register the Peel Away Mark in Australia by reason of his being a director of CRT. However, that can only be an inference. The circumstance that Mr Brailsford had dealings with the Peel Away mark before CRT was incorporated gives rise to a contrary inference. That is to say, it does not necessarily follow that the opportunity of registering the Peel Away mark in Australia was one that came to Mr Brailsford by reason of his being a director of CRT. Rather, an inference is at least available, and may perhaps be more easily drawn, that CRT acquired whatever opportunity it had to exploit the Peel Away Mark, and associated technology and knowhow, because Mr Brailsford chose to make it available to CRT. (emphasis supplied)

In these circumstances, his Honour concluded at [36] that the opportunity to register the trade mark in Australia did not come Mr Brailsford’s way because of his role in CRT and so CRT was not entitled to the trade mark in equity.

Power to cancel

Section [88(2)(e)] provides a power to rectify the Register on the basis that an entry in the Register “was made, or has previously been amended, as a result of fraud, false suggestion or misrepresentation.” This power, however, is conferred on the Court, not the Registrar.

Emmett J noted that under s 109 and s 110 the Registrar only had power to register an assignment of a trade mark. Whether there had been a valid assignment was a jurisdictional fact and, if there had not been a valid assignment, there was no power to register the assignment. In such a case, therefore, the Registrar had power to cancel the erroneous entry. As a result at [54]:

There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.

In answer to Mediaquest’s concerns about the uncertainty this would give rise, Emmett J pointed out at [56] that:

the scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership, as is provided by s 210. The registered owner is always susceptible to action being taken under Part 8 to revoke a trade mark that should never have been registered, or to substitute the true owner of the trade mark for that of a wrongful claimant. True ownership of a trade mark is a defence to infringement proceedings brought under the Act.

That is, registration was only prima facie evidence of ownership. Accordingly, all registrations were subject to an inherent level of uncertainty.

One interesting aspect of his Honour’s approach is that it does not appear to be based on the power conferred by s 81. Rather, it seems to have a much more fundamental underpinning in “jurisdictional error”.

No doubt, there is a sense here that the Court is not interested in technicalities that would force all of these types of disputes to be brought before it rather than knocked on the head in the Office. One might wonder, however, why the Registrar does not require documentation signed by the assignor as well as the assignee in the first place. This may well become more of an issue with the recordal of security interests as the Registrar’s practice is apparently to allow an interest to be recorded by the person claiming to have taken out a security interest alone.

Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768

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This is a bit behind as it happened over the break:

The “tobacco plain packaging” legislation became law last December and, as you will recall, Philip Morris Asia has initiated an arbitration proceeding under the Australia-Hong Kong Investment Treaty.

Australia filed its “defence” late in December, alleging that Philip Morris Asia bought the assets in question after the Government’s plans were known and so hasn’t lost any value:

Prof. Davison has a typically wry report

Philip Morris’ complaint and Australia’s “defence” are available via here.

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Dodds-Streeton J has handed down what appears to be the first detailed judicial consideration in Australia of what constitutes making an application for a trade mark in bad faith contrary to s 62A.

Sports Warehouse Inc. and Fry both sell tennis products online using trade marks based on TENNIS WAREHOUSE.

Sports Warehouse started first, in 1984 in California although in time its business expanded and in 1994 it went on line. Eventually, its sales expanded internationally including to Australia.

Fry had successfully opposed Sports Warehouse registering TENNIS WAREHOUSE.

Sports Warehouse successfully opposed Fry registering:

However, Dodds-Streeton J has now upheld Fry’s appeal.

The grounds of opposition included that the trade mark lacked capacity to distinguish, that it was confusingly similar to Sports Warehouse’s trade mark and also that the application was made in bad faith.

The s 62A ground was based on the fact that, before Fry adopted its trade mark, its principal, Mr Fry had done a Google search and come across Sports Warehouse’s website. He also used some photographs from Sports Warehouse’s website for his own site. However, he said that before he adopted the name his wife had done a trade mark search to confirm it was not an “international” trade mark. Further, he acknowledged at [21]:

there was potential that some people would confuse the websites (at least at the point of the domain name) and acknowledged that he chose the name partly for that reason, but denied that he hoped to use Sports Warehouse’s reputation in order to boost early sales.  He also denied that he believed the name TENNIS WAREHOUSE would cause customers aware of Sports Warehouse’s website to think that the Fry Consulting website was an arm or affiliate of Sports Warehouse.

• a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;
• a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and
• business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

(The last example may be contrasted to the “sharp”, but previously legitimate, practice of registering such a mark and operating a business in Australia – see [20] here.)

The concept in s 62A, however, was not limited to those examples. Her Honour drew substantial guidance from a number of English cases (and consideration of those decisions in the Office) on s 3(6) of the Trade Marks Act 1994 (UK) which adopted a “combined test” involving both subjective and objective elements:

dishonesty requires knowledge by the defendant that what he was doing would be regarded as dishonest by honest people, although he should not escape a finding of dishonesty because he sets his own standards of honesty and does not regard as dishonest what he knows would offend the normally accepted standards of honest conduct.

and

The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

Accordingly, her Honour considered:

164. Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
165. The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
166. Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

Dodds-Streeton J rejected the proposition that it was enough that Fry knew of Sports Warehouse’s trade mark and usage.

While her Honour regarded Fry’s conduct as exploitative, the factor which saved it in the end was an exchange of correspondence between the parties. After Sports Warehouse learnt of Fry’s use and demanded it stop on the basis of its international trade mark, Mr Fry had challenged it to provide proof of the international trade mark. Sports Warehouse said it would do so the next day but, her Honour found, never did so. At [174]:

174. In circumstances where:

(a) Mr Fry unequivocally indicated his willingness to cease using TENNIS WAREHOUSE if Sports Warehouse provided evidence of its entitlement, and sought a prompt response, so that if necessary he could change the name prior to significant business development and expenditure on advertising;

(b) Mr Fry did not acknowledge Sports Warehouse’s ownership or rights in Australia and Kenny J did not find that Mr Fry did not believe his assertions about the implications of a business name search, although they were misconceived;

(c) Sports Warehouse, despite undertaking to do so, did not provide any documentation or evidence of its entitlement or rights to the “TENNIS WAREHOUSE” mark, the subsequent application to register which in Australia was unsuccessful. It failed to make any further contact or objection until Fry Consulting again initiated contact two years later; and

(d) During that period, in the absence of any further objection or contact from Sports Warehouse, Mr Fry proceeded to develop his business using the words “TENNIS WAREHOUSE”, to which he added the word “AUSTRALIA”, and subsequently commissioned Mr Hughes to design a tennis ball logo, resulting in a composite mark,

it was difficult to accept that Fry’s conduct fell short of what would be acceptable commercial behaviour (especially, one might add, where Fry did not lodge its application until 2 years after Sports Warehouse said it would provide its proofs the next day).

Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81

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Back in July, the Government introduced the Tobacco Plain Packaging Bill and related legislation.

As you will recall it generated quite some controversy as it effectively bans the use of some types of trade marks and severely restricts the way others can be used. It has passed the House and, now that the Senate’s Legal and Constitutional Affairs committee has recommended the Trade Marks Amendment (Tobacco Plain Packaging) Bill be passed, is due to return to the Senate for passage, with the aim that all product on shelves on 1 July 2012 will comply with the new rules.

The Government has now released a second round of consultations on the form the packaging should take for cigars and other non-cigarette tobacco products.

Submissions should be received by 28 October 2011 with the resulting regulations expected to released in January 2012.

Consultation paper (pdf)

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The war between Coke and Pepsi over the shape of a bottle is alive and well.

Last week the parties were in court fighting over discovery.

By the tie of the hearing what was actually in dispute was quite narrow. In the end, Dodds-Streeton J ruled that Coca Cola should be allowed to get discovery amongst other things from Schweppes, Pepsi’s bottler in Australia, relating to whether or not Schweppes had sought any indemnities from Pepsi, either before or after the proceedings commenced. Schweppes et al. conceded discovery relating to any request before proceedings commenced.

It was argued that such discovery was potentially relevant to the respondents’ state of mind on the basis of the Australian Woollen Mills‘ principle that a defendant who tries to pass off is giving a sort of expert evidence that deception or confusion can be expected.

Given the concession that discovery directed to requests before proceedings commenced and there was no suggestion that the further discovery was oppressive, Dodds-Streeton J considered that discovery of any requests made after proceedings were commenced was appropriate as:

in passing off and s 52 actions, the applicant’s reputation is to be assessed at the date of the conduct complained of. As Gummow J explained in Thai World Import & Export Co Ltd & Anor v Shuey Shing Pty Ltd & Ors (1989) 17 IPR 289 at 302, that principle reflects that the reputation is not to be taken to be eroded by infringing activities which occurred before proceedings are instituted.

Other cases appeared to consider that the relevant time in (what used to be called) s 52 actions was still unresolved, but in passing off the relevant time was when the respondent commenced its conduct. (See e.g. Playcorp v bodum [54] to [62]).

Dodds-Streeton J’s reason provide a fair bit more detail about the nature of Coca-Cola’s claims; not so much about Pepsi’s defence, although apparently it had been using its “new” bottle shape since 2007 (that of course would still be well within the 6 year limitation periods).

The orders may also provide you with a useful starting point for discovery requests:

Coca-Cola Company v Pepsico Inc [2011] FCA 1069

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The Senate has referred the Trade Marks Amendment (Tobacco Plain Packaging) Bill 2011 to the Legal and Constitutional Affairs committee.

This bill would give the Government power to “fix” gaps in the Tobacco (Plain Packaging) Bill by simply making regulations. The House of Representatives Health and Ageing committee has recommended the bill be passed.

The Committee is due to report by 2 September with the Committee’s report due by 19 September.

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In a report tabled today (pdf), the House of Representatives’ Health and Ageing committee has recommended that the House pass the tobacco plain packaging legislation.

The Committee noted the submissions about possible breaches of TRIPS, the Paris Convention, the Constitution etc. and said at [1.63]:

While the Committee recognises that there are … complex legal issues relating intellectual property and trade marks, it considers these issues to be beyond the purview of a Committee formed to consider matters directly related to health and/or ageing. Therefore the Committee has decided to confine its comments to evidence relating to health implications of the legislation. ….

Link to html links

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