IPwars.com

Mainly intellectual property (IP) issues Down Under

A trade mark licence requires actual control

The Full Federal Court has held that the licensor must actually excercise control over the licensee for a trade mark licence to be a valid licence.

Now for the PLAYGO word mark

Moshinsky J has now extended the declarations and injunctions in the Playgro v Playgo proceedings to include the PLAYGO word mark, but refused orders to recall infringing products and for delivery up.

Keywords Are Not Trade Mark Use

Katzmann J has ruled that keywords are not trade mark use, but found some of the sponsored links themselves infringed.

Playgro v Playgo

PLAYGRO v PLAYGO Well, you’ll never guess what? It turns out that: is deceptively similar to: No April Fool’s. Now, maybe some of you (like me) are thinking, “Wait a minute, there must be ‘gazillions’ of trade marks for toys with PLAY in them. That’s true, but the second syllables of the verbal elements are just too close, both visually and aurally. As Moshinsky J explained: In my view, the.. Read More

Coke v Pepsi – “second” look

Last week, Besanko J dismissed Coca-Cola Co’s claims that PepsiCo’s “Carolina” bottle shape infringed Coke’s trade marks, and was passing off and misleading or deceptive conduct.

Trade mark excellence

When choosing a trade mark, choose something allusive or suggestive: The owner of Dental Excellence loses his trade mark registration in a fight against south perth dental excellence

Bugatchi gets Bugatti-ed

While I thought that Buagatti was a car brand, it turns out it is (also) since 1989 a registered trade mark in Australia for,amongst other things, men’s clothing. Originating in Canada, there is also a line of men’s clothing under the label BUGATCHI UOMO. Products bearing this brand have been coming into Australia since 1991. Shine Forever, however, has been importing the line since 2010. Tracey J has ruled that Shine Forever has been infringing the BUGATTI trade mark.

Affinage and A.S.P. 2

For completeness, I should note that IHC UK has appealed Logan J’s decision earlier this month finding that it infringed IHC Australia’s registered trade mark for AFFINAGE. Summary here. Interestingly, Logan J has granted a stay of his order to remove all references to A.S.P. from IHC UK’s Web site at www.affinage.com. You will recall that IHC UK owns AFFINAGE outside Australia and had adopted A.S.P. at least partly to deal.. Read More

Using a sign on the internet

Logan J has granted injunctions against International Hair Care UK’s  use of AFFINAGE (and other trade marks) on its global website for (in effect) infringing International Hair Care Australia’s trade marks registered in Australia. The facts throw up the interesting question of what happens when 2 different people own the same trade mark in different countries and try to use it on the internet. Facts IHC UK is the owner.. Read More

A case of (un) parallel imports

BTB holds a licence to make and sell “Greg Norman” branded clothing in India from Greg Norman Collection Inc (GNC). GNC is the “head licensor” of the “Greg Norman” trade marks registered in, amongst other places, India and Australia. By clause 2.4 of the licence agreement, BTB agreed not to sell the branded clothing it made outside India without GNC’s consent: LICENSEE acknowledges that this License is limited to the.. Read More