Own name and place name defences to trade mark infringement
This blog is one of a series I am publishing about defences to infringement of another’s intellectual property. I have blogged about descriptive use of trade marks here and if a business is the first use a mark here. But what if you are using your own name or a geographic name? Own name and place of […]
What if I used my trade mark first?
This blog is one of a series about defences to infringing another person’s intellectual property. I have already blogged about cease and desist letters – here – and descriptive defences to trade mark infringement – here. First to use defence A trade mark dispute typically starts with a “cease and desist letter” (also called a […]
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 & […]
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 […]
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 […]
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 […]
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 […]
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
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 […]
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 […]