Does use of a trade mark always infringe a registered mark?
The answer is no, although commercial use often infringes a registered trade mark, so a business needs to be careful to avoid trade mark infringement. Nonetheless, if you make commercial use of a trade mark that is similar to a registered trade mark, there are a number of reasons why you may not infringe the […]
The dangers of not doing trade mark searches
Last year I blogged about the necessity for conducting thorough trade mark searches before adopting a new trade mark or business name https://ipbymargaret.com.au/searches-a-must-before-adopting-a-new-trade-mark/. There has been another Federal Court decision that has shown the dangers of failing to conduct adequate trade mark searches. The facts The Practice Pty Ltd v The Practice Business Advisers & […]
Comparative advertising – the risks
Comparative advertising is a form of advertising where a supplier compares its product favourably against the product of a competitor. It is not that common as it can be risky because: The comparison has to be absolutely accurate – many examples of comparative advertising that come to Court fail to do this; and Your competitor […]
Are initial letters a good trade mark?
It is quite common today for businesses to abbreviate their name to its initial letters. The Trade Marks Office is willing to register combinations of three or more letters, provided that they are not a well known acronym for the goods or services to be protected by the trade mark application. However, from a trade […]
An oral agreement – is it worth the paper it isn’t written on? Commissioning copyright works.
Summary Binding legal agreements can be solely verbal or a combination of conversations and writing, such as emails. But, if the parties disagree on the terms, they can be difficult to enforce. When businesses commission copyright works, they normally do not receive ownership of the copyright unless this is in writing. The commissioning party will […]
Searches a must before using a new trade mark
What you need to do In the excitement of starting a new business, or launching a new product, you may overlook one important step – carrying out searches to see whether there are any similar trade marks out there in the same field that may prevent you using your chosen mark. Searches can be carried […]
$3 million penalty for Google ad campaign
In 2021 the Federal Court found that Employsure, in its Google ads, misrepresented that it had associations with various Government agencies. I reported on this case here. The Trial Judge imposed a fine of $1 million for these breaches of the Australian Consumer Law (ACL). The Australian Competition and Consumer Commission (ACCC) appealed this penalty […]
I own my business/domain/social media name – don’t I?
It depends on what you mean by “own” – but if you mean that you have exclusive rights to the name and can prevent competitors from using it – no, not really. A trade mark registration is the only way to own a name in this sense. Trade marks vs business and other names A […]
Use unlicensed software at your peril
Nowadays a business could not operate without software – accounting, CRM, project management, communications software etc. But what happens if the business is to be sold to another entity? Normally a business uses software under a copyright licence. It does not own the software outright. If a new entity is to take over the business, […]
The problem for users of Google’s dynamic keyword insertion
Is it a good idea to use someone else’s name as a Google keyword and Google headline? The Full Court of the Federal Court has recently said “no”. Google keywords on a website are not visible but they are used to attract consumers to the site when that keyword is typed into the Google search […]
Using a company’s logo to criticise the company
AGL v GreenpeaceAGL, an Australian energy company, used the logo: AGL claimed ownership of the copyright in this logo as well as having registered the logo as a trade mark. Copyright works can include artistic works, such as a logo, and literary works, including business documents. Greenpeace has a long history of environmental activism. It […]
Fearless Girl meets Australian Intellectual Property Law
Fearless Girl is the name of a bronze statue of a strong and confident girl created by Kristen Visbal and installed in New York City in 2017. The statue was funded by financial company State Street US and its unveiling was timed to coincide with a marketing campaign by State Street US that sought to […]
NSW disclosure requirements apply to suppliers outside NSW
Suppliers outside New South Wales New South Wales has introduced a new law that requires suppliers, before they supply goods or services, to take reasonable steps to ensure that the consumer is aware of the substance and effect of any term or condition relating to the supply that may substantially prejudice the interests of the […]
Is copying another’s product legal?
This question was answered “no” in the case of Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd [2018] FCA 1807but the answer may be different in other circumstances. The facts Lumen supplied Frontline with electronic automotive components for inclusion in towbar kits that were supplied by Frontline to Mitsubishi and Mazda. Frontline, for profit […]
Three Myths about Commercial Agreements
Having practised for 30 years, I know that there are certain misconceptions about drafting commercial agreements: All that a lawyer does to produce an agreement is just take a precedent off the shelf and insert the names and addresses of the parties. In the area of intellectual property (“IP”) agreements, it couldn’t be further from […]
Important changes to labelling of hand sanitiser
Since the start of the COVID-19 pandemic many companies have been making hand sanitiser. But issues have arisen about their effectiveness, alcohol content and the risk of ingestion. New rules commenced on 25 November 2020 to address these issues. The rules apply to hand sanitiser that is regulated under cosmetics regulations. From 25 May 2021 […]
High penalties for misrepresentations
Penalties for making false or misleading statements about goods and services can be substantial. Maximum penalties have dramatically increased from $1.1 million for companies to a maximum of the greater of: $10 million; or 3 times the value of the benefit received by the company from the breach; or if the value of the benefit […]
Is a descriptive trade mark the best mark for your business?
Businesses often choose a trade mark that exactly describes their business or product eg Smith & Co Plumbing, being the plumbing business run by Mr Smith. There is nothing wrong with this. The name is easy to remember and easily searchable. If the business is likely to remain a small, family owned business that will […]
The Curious Case of Pinnacle and the Bikinis – Part 3 – Costs
Intellectual property ownership Intellectual property is designed to provide a business with a commercial advantage. It builds a wall of exclusivity around a product so that competitors cannot sell products with the same trade mark or that are covered by the owner’s patent or registered design. IP enforcement But there may be some who wish […]
Appeal court flushes away ACCC claims on flushable wipes
The Full Court of the Federal Court has rejected the appeal by the Australian Competition and Consumer Commission (“ACCC”) in its unsuccessful case against Kimberly-Clark (“K C”), where the ACCC claimed that K-C had made misrepresentations about its “flushable” wipes. FactsK-C made wipes (moist towelettes) from fibres that were hydroentangled, or blasted by fine jets […]
The Internet is not the Wild West – (although it can seem to be)
Some people seem to think that no laws apply to the Internet – or that anything that appears on the Internet is free to be copied and used however they like. This is not true. Much of the material on the Internet is protected by copyright laws, both in Australia and around the world. Certain […]
The Curious Case of Pinnacle and the Bikinis – Part 2
Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019) is a curious case in more ways than one. I have previously blogged about the relevance of the case to trade marks law – here. The case is also a cautionary tale about the risks of litigation. FactsThe applicant, Pinnacle, sent Triangl […]
The Curious Case of Pinnacle and the Bikinis
FactsThe case of Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019) considered whether Pinnacle’s trade mark DELPHINE, which was registered in class 25 for clothing, headwear and swimwear, was infringed by use of the word DELPHINE as a style of one of Triangl’s bikinis. Triangl sold a range of approximately […]
I paid for it – why don’t I own it? – the copyright trap
If your business commissions a graphic artist to create a logo and brand collateral for the business, who owns the copyright in the artwork? Have you thought about this? It is important that businesses do think about copyright ownership when commissioning third parties to create artistic works and literary works. These works can include: logos; […]
Unity of purpose – new test for control of trade mark use
The Full Court of the Federal Court has overturned a finding that a trade mark owner did not control the use by its parent company of its marks: Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (20 June 2019). This decision is significant because it provides a more flexible, less legalistic, approach […]
Do you give warranties against defects about your services?
Do you say eg “All repairs are guaranteed for 12 months”? If so, are you ready for the change in the law that starts on 8 June 2019? This requires you to give consumers a document about your warranty that sets out detailed information including: How the warranty is to be claimed; Who bears […]
Is a descriptive trade mark the best for your business?
Businesses often choose a trade mark that exactly describes their business or product eg Smith & Co Plumbing, being the plumbing business run by Mr Smith. There is nothing wrong with this. The name is easy to remember and easily searchable. If the business is likely to remain a small, family owned business that will […]