Trade Mark

A friend has just reminded me that today is the last day you can vote for your favourite Australian trade mark, here, to celebrate the centenary of the first registered trade mark in Australia.


The machinations over the Cadbury claim for the colour purple go on and on. Now that the costs order has been handed down, and the first instance decision is all done and dusted, we have news that Cadbury has appealed Justice Heerey’s decision that Darrell Lea did not do any ‘passing off’ when it used the colour purple (hat tip: Dale Clapperton). (more…)

A story I’ve meant to post about for a couple of weeks: we know pirates sometimes choose specific products to knock off, but these guys created their own entirely fictitious company, cloning NEC. Raids on 18 factories and warehouses in China and Taiwan revealed that the fake NEC clone had established links to more than 50 electronics factories in China, Hong Kong and Taiwan, and was controlled by entities in Japan and Taiwan. Remarkably, the crooks had not only chosen to clone about 50 of NEC’s existing products, but had gone so far as to design their own new ones, which were described in the article as “generally good quality”. (more…)

And when I write “Apple”, whom do you think of? The computer maker? Thought so. Today, Mr Justice Mann found for Apple Computer, Inc. in the lawsuit between it and Apple Corps Ltd (the Beatles). My intro is possibly a little misleading, however, as the case was not directly about the classical trade mark concerns of confusion between two particular marks.

Rather, it concerned the interpretation of a settlement agreement between the two parties executed in 1991 in order to avoid some of the sporadic conflicts the two had previously had in exploiting their similar marks. However, notions of applications and use of trade marks do surface in construing just what that agreement meant. (more…)

You might recall some comments I made, a couple of weeks ago, on Justice Heerey’s evidentiary rulings in the passing off litigation between Cadburys and Darrell Lea. Justice Heerey limited the presentation of certain survey and expert evidence. The judge’s ruling was informed by a policy against allowing infinite expansion of evidence in a case dealing with straightforward consumer products. The judge considered that:

‘Such evidence shouldn’t be admitted because of the rules of law above, which are based on sound policy: avoiding overcomplicated, expensive trials with lots and lots of evidence and cross-examination and warring experts. The judge is clearly concerned that admitting the evidence in this case will lead to it being expected in all of these types of cases.’

My clever RA Aaron Newell has pointed me to a case that perhaps indicates that Justice Heerey had a good point here: a recent Canadian decision concerned with trade mark issues – amongst them, dilution style harm. (more…)

Well, well, well – haven’t we all been painting the town purple this last couple of weeks! We’ve had the decisions of Justice Heerey on evidence in passing off/s 52 a little while ago, then last week his Honour’s final decision holding that Darrell Lea had not passed off its goods as Cadburys, nor confused nor misled consumers through use of the colour purple.

Now, IP Australia have put online their decision (watch it – 59 page pdf) in Darrell Lea’s opposition to Cadbury’s application to register a trade mark for the colour purple for chocolate. And while Darrell Lea have succeeded in opposing the registration, IP Australia have ruled that Cadbury can get a narrower registration for their colour purple for block chocolate and boxed chocolates. (more…)

Perhaps a glass less than half full? Perhaps empty?

The decision in the passing off/s 52 case brought by Cadbury against Darrell Lea, for DL’s use of the colour purple, has ended with (as a friend put it) Cadburys’ in something of a screaming heap. Cadbury was claiming that DL’s use of purple was misleading to consumers, or involved DL ‘passing off’ their goods as having some connection with Cadbury. It’s part of Cadbury’s general campaign to claim rights in the use of purple in selling chocolate: they also have trade mark applications on foot.

This battle in the general war has been lost. Nope, says Heerey J. No passing off. And some rather interesting comments about Cadbury’s use of the colour with potential salience in Cadbury’s trade mark application.

UPDATE: according to one of my commentators on Weatherall’s Law, the decision in the Trade Mark Office, where Cadbury’s application for a colour mark has been opposed, was handed down last Friday (hmmm, the day after the Judge’s decision was handed down…). I don’t, however, know the result and the decision isn’t yet online… If anyone does know, you can comment anonymously….

Rothnie and Starkoff have both already noted that the Full Court has finally – 11 months after hearing the issue granted leave to appeal in the Woolworths v BP case. Don’t get too excited – the appeal on the merits hasn’t been heard yet. Rothnie says it will likely be heard in August. As a decision on whether leave should have been granted, this case is an examplar of why you should get your procedure right and not just assume courts will fix any errors you make. But as a judgment which foreshadows what some of the issues in the appeal might be, this decision shows that some of the more fundamental issues currently in debate in trade mark law – in particular, just what rights you get as the owner of a ‘colour’ trade mark – could end up being canvassed. (more…)

Oh yes, little flurry in the blogosphere over a story about Telstra buying Ads on Google so that Telstra’s ads would appear when someone searched for their broadband rival AAPT. As usual, the story attracted attention (see the IPKat, the Trademark Blog, Warwick Rothnie, Search Engine Watch Blog, Young PR, and Joshua Gans).

Only Gans points out that this is common practice (with examples! Go have a look). But is it legal? (more…)

The great thing about being an IP professor is that you get to comment on the pressing information technology and information freedom issues of the day.

Like, oh, chefs copying other chefs’ creations. (blogpost here)

And, oh, the BIG issue: will elvis impersonators still have a livelihood in the future? Last night, if you watched closely, you might have seen me spouting forth on ABC news on the issue of whether transactions recently occurring over the Elvis Estate in the US would lead to Elvis impersonators losing their jobs (short version of the story here). Apparently, a new majority holder in Elvis Enterprises is threatening to crack down on ‘unauthorised’ Elvis impersonators. ABC News called me to comment (on my day off!!! Nothing like taking time out from a heavy shopping expedition to do a quick media interview. And nothing like taking a quick stop by the Myer make-up counters to get ready…).

Frankly, I can’t see that there will be a legal issue for the impersonators here. Far more important issues were being ventilated by Cory Doctorow last night in Melbourne (and tonight in Sydney – go if you can!) (more…)

Subtitled: Law and, or, versus the Marketers: Evidence in the Cadburys v Darrell Lea case

I’ve been hearing rumours for some time now about evidence issues/problems/disasters in the recently concluded hearing in the case of Cadburys versus Darrell Lea, before Justice Heerey down here in the Vic Federal Court. So imagine my excitement when I realised there were no less than three decisions up on AustLII. They’re really interesting decisions because they say a lot about how law interacts with marketing people, marketing experts in these cases that are all about how consumers behave. Yes, I am a sad IP law geek. Never mind, I’ve come to terms with that. The decisions are:

I was fascinated, partly because the Judge has chosen to exclude a whole lot of stuff (which must annoy the Cadburys lawyers), and partly because I’m currently teaching Trade Mark Law to undergraduate students. Of course, one thing you spend time talking about in such a course is matters of proof. Since I’ve had to dissect the reasoning for my students, I want to spend a little time in this post putting my thoughts out there. Comments welcome of course! (more…)

Let me say that again, counterfeiting is a serious problem. The OECD think so, the Australian government think so – plenty of people think so. I think so. Counterfeiting, at least as it occurs within Australia, has no social value that I’m aware of, and has costs including (a) losses to the trade mark owner (lost sales), (b) the costs entailed by the deception of consumers, (c) indirect losses to the trade mark owner (for example, loss of reputation for quality, loss of ‘prestige’ value), (d) the costs of enforcement incurred by trade mark owners and governments alike, and (e) the ‘social losses’ – lost jobs, lost tax revenue, and lost investment in research and development that may arise as a result of the lost revenue.

I have a great deal of sympathy for trade mark owners who reach levels of desperation, and use hardball tactics, against counterfeiters, particularly ‘repeat offenders’. It must be incredibly frustrating dealing with parties that have little or no respect for the law or the orders of the court. It is clear, from various judgments by the Federal Court judges, that they too have little sympathy, in general, with counterfeiters and importers/sellers of counterfeit goods.

In this context, however, this judgment is a timely reminder to lawyers that they cannot play too hardball in dealing with counterfeiters, particularly counterfeiters who are unrepresented by lawyers themselves – even where the counterfeiter has displayed contempt for the orders of the court. (more…)

Rothnie very usefully notes that the Cth has released its draft legislative agenda for the Autumn sittings. On the IP front, it includes a few pieces that I had predicted back when I was crystal ball-gazing in January, plus some other stuff of general interest.

It’s worth noting that none of the IP legislation is marked for introduction and passage in the Autumn sittings (ie, none are ‘starred bills’ on this list). Though, these things can always change… Comments on the particular Bills foreshadowed over the fold. (more…)

Has anyone noticed the recent anti-smoking advertisements showing on television – you know, the ones that talk about how no matter what colour the pack, and no matter whether called ‘mild’, or ‘light’, or ‘low tar’, cigarettes are still toxic? Probably you have – they’ve been around quite a lot lately.

So here’s the question: how many people, do you think, realise that this is corrective advertising, required as a result of some undertakings given to the ACCC by some of the leading cigarette manufacturers in Australia? And why isn’t that part of the advertisement? (more…)

It is far too hot and sticky this morning in Melbourne to spend vast amounts of time blogging. (hmmm, theory, how does weather affect blogging? More blogging if colder and stuck inside..?).

Four interesting stories today though, on the continuing Copyright and Politics saga in Canada, on the take-down of Wikipedia Germany, on Google Subpoenas and on the question of who owns the news in the US? More over the fold. (more…)

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