Global Brands

tried and failed to get an injunction against shoes said to infringe its "shape" trade marks.  

The respondent tried and failed to get the trade marks removed on grounds of not being capable of distinguishing or lack of proprietorship ...

Keywords in meta tags 

The US courts seem to be hopelessly split on whether the inclusion of a competitor's trade mark in the metatags for your website infringes.

Professor Goldman reports on a recent US case which advances a theory why such use is not trade mark use and so does not infringe ...

Purple haze 

Following the reconvened trial on remitter from the Full Court which ruled that expert evidence had been impermissibly excluded at first instance, Heerey J has ruled that Darrell Lea was not misrepresenting itself or its products as Cadbury products between 2000 and 2004 when it used a dark shade of purple for Christmas promotions ... 

Metatags 

Prof. Goldman reports that the 11th Circuit has found the use of a competitor's trade marks in metatags is trade mark infringement.

Along the way, the 11th Circuit took some swipes at the 2nd Circuit's When-U ruling and, perhaps confusingly, sought to limit the scope of their own ruling ...

GIs for Food 

IPKat positively reviews Geographical Indications For Food Products: international, legal and regulatory perspectives by Marsha A. Echols ...

More international trade mark harmonisation 

Apparently, at the recent INTA trade mark conference in Sydney, the President of OHIM offered to host a roundtable between the 10 biggest trade mark organisations and the 10 biggest international filing companies in "a major effort to cut the red tape facing businesses attempting to protect their intellectual properties worldwide."

...

UK trade marks and keyword searching 

IPKat reports about a UK decision which appears to hold that matching a trade marked term to keywords did not infringe trade mark rights ...

Parallel imports in the UK 

An importer of Honda motorcycles into the UK has escaped liability for trade mark infringement on the grounds the motorcycles were bought from Honda Australia in circumstances where Honda Australia knew they were going to be resold outside Australia.

Honda Australia's knowledge implied Honda (corporate group's?) consent ...

Intent to use applications and the USA

In Australia, you may apply for a trade mark application on the basis either that it is already in use or you (the applicant) intend to use it. 

Intention to use can be a pretty nebulous concept and it is not uncommon for the statement of goods and services to be rather widely drawn.

Having filed your application, you can rely on it as a basis for a US application.

In the USA, however, traditionally trade mark applicants had to demonstrate actual use of the mark in trade and commerce in the States for all goods and services for which registration was sought to achieve registration.  US law has been amended to permit reliance on foreign 'intent to use' applications but ...

Unsuccessful opponent seeking leave to appeal to the Full Court 

SWA had unsuccessfully opposed de Witt's application to register GLENN OAKS as a trade mark in class 33 for a range of spirits.  It appealed to the Federal Court pursuant to s 56 and Sundberg J dismissed its appeal.  It sought to appeal that dismissal to the Full Court.

Pursuant to s 195(2), such an appeal does not lie except with leave.

Jessup J has now refused leave, in a decision with important ramifications for those considering whether or not to attempt such an application ...

New(ish) blog on the block 

Welcome to the Australian Trade Marks Law Blog which, as well as some very interesting posts, has some very well credentialled contributors ... 

GIs and China 

The IPDragon and the IPKat both took a look at GIs from an eastern perspective ... 

The scope of injunctions 

Tamberlin J found that Dynamic Supplies had infringed Brother's trade marks by importing and selling genuine Brother undbranded products in counterfeit packaging.  What  the scope of the injunction that should follow? 

Comparing Australia and New Zealand trade mark process 

IP Australia and IPONZ have published a short report on the outcome of stage 1 of their study into the potential for aligning trade marks examination practices in the 2 countries. ... 

Would you confuse searchmash with smashlab? 

Perhaps not as a trade mark, but what about copyright ...

Google's Law 

Greg Lastowka at Rutger's University assesses how the US courts have applied US trademark law to Google's search results and argues how it should be applied ...

Not parallel imports 

Brother makes DR-200 drum units for its printers, which it brands with its Brother trade mark.  

It also makes pretty much the same drum unit which it supplies to Company X, as OEM equipment - which seems to mean that Company X includes the drums in its own printer product.  These OEM products do not have the Brother trade mark embossed on them.

Dynamic Supplies imported into Australia and sold some drum units, which were apparently the OEM units,  in packaging which had the Brother trade mark on it.  The units inside the packaging did not have the Brother trade mark embossed on them.

At the time of the sales, Brother packaging for DR-200 units was in white cardboard.  Previously, it had been brown cardboard.  The packaging of the products imported by Dynamic Supplies used brown cardboard.

Tamberlin J has found that Dynamic Supplies infringed Brother's trade marks....

The use of nanotechnology to 'protect' brands 

The problem with many security measures, such as holograms, is that the better resourced counterfeiters have the technology to, er, counterfeit them.

Enter the emerging world of nanotechnology which may allow brand owners to hide authenticating information 'invisibly'.  Apart from providing an invisible fingerprint, the technology may help brand owners track which of their distributors are diverting product to pesky parallel importers and even become mandated by regulatory bodies to ensure that each pill or bottle comes with its own 'pedigree' ... 

When size matters 

The cost of using:

zero sugar cola

instead of "zero sugar cola" is the cancellation of a national product launch and, according to Mark Hawthorne writing in the Age today, lots of dollars ...

Using a trade mark as a company, trade or shop name 

does not infringe the trade mark in the EU even if the company/trade or shop is selling the products covered by the registration unless the company name, trade name or shop name is used as a trade mark indicating the origin of the products ...