IPwars.com

Mainly intellectual property (IP) issues Down Under

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 on the satellite, however, Australia or large parts of mainland Australia fell within the transmission footprint and not.. Read More

The onus on appeal from a trade mark opposition

If there were any doubt about it, the Full Federal Court has confirmed that the person opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. (As a side note, I think this is the new Chief Justice’s first IP decision, at least since joining this Court.) The Food Channel Pty Ltd (Channel) had applied to register TM 967804: in class.. Read More

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 beer infringed Gallo’s trade mark as goods of the same description, but ordered the trade mark removed because.. Read More

Use of Software and those computer defences again

You’ll recall that SAG licensed its database software to RWWA. RWWA engaged KAZ to provide disaster recovery services and installed a copy of the software on KAZ’ off-site servers. Meckerracher J dismissed SAG’s claim that this was unlicensed and therefore infringement of its copyright. (link via my attempt to summarise here). The Full Court has substantially dismissed the appeal, but found the judge was wrong to the extent his Honour considered s 47F.. Read More

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, the Full Court has found that Lion Nathan did infringe the registration up until the date the registration.. Read More

Not using a trade mark

An Austrian company, Maselli, sells clothing under its brand WELLNESS.  It has the trade mark registered for clothing in class 25 and also in classes 16 (for printed matter) and class 32 (for alcohol free drinks).  It gave away bottles of a non-alcoholic drink bearing the WELLNESS brand, but never sold the drinks independently of the clothing. On application by Silberquelle, a producer of alcohol free drinks,  the ECJ has ruled that affixing the.. Read More

Madrid system and ‘foreign’ trade marks in the USA

So, you’re not a USA-based trade mark owner and you’ve got your “trademark” registered in the US through the Madrid system.  That means you don’t have to worry about all those annoying requirements actually to use the trade mark there, doesn’t it? Well, no. Saunders & Silverstein  lay out all the pitfalls that you are going to have to hurdle here. Lid dip to the Kat with the plummy accent.

A case on computer software licences and back ups in Australia

A rare and interesting decision on the scope of (mainframe) computer software licences and s 47C (computer program back-ups) and s 47F (security testing) of the Copyright Act: RWWA (which runs the West Australian TAB).  SAG granted it a non-transferable, non-exclusive licence to run the ADABAS database management software on its mainframe computer.  This was the software used for its its betting business.   In addition to installing the software on its mainframe computer, RWWA arranged.. Read More