30 April 2010

Trade Mark Searching in Europe

This looks like a good resource for those wanting to do clearance and freedom-to-operate searches in Europe. In my experience, such searches have always been very expensive.

Delegate Finds LEAFGUARD not Capable of Distinguishing

Richard Jelacic v Leafguard Gutter Systems Inc [2010] ATMO 20

Leafguard applied to register the trade mark LEAFGUARD  on 12 Feb 2007 in respect of gutters, machines for producing gutters and installation of gutters. The application was advertised for opposition purposes on 13 March 2008. Jelacic filed a notice of opposition on 29 May 2008. Jelacic's grounds were based on s41 and s43.  I will just consider s41, because the opponent, representing himself, became a bit confused and there was nothing in the s43 ground.

25 April 2010

Good Faith Annulled by Deliberate Use of Secondary Meaning

CaseMantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291

This matter follows on from a previous judgement which I reported on in my post of 13 February 2010.

Both parties let properties in a precinct called "Circle on Cavill". The applicant is the owner of a number of registered trade marks. The registered trade marks include the term "Circle on Cavill" in respect of property management and the rental of short term accommodation.

Tailly used "Circle on Cavill" in a number of websites, domain names and meta tags to promote its business. 

Mantra contended that Tailly was infringing its registered trade marks. Tailly raised the defence that it was using the words in good faith to indicate the geographical origin of the services that it was offering. Tailly also filed a cross claim that Mantra's marks should be cancelled because they have become generally accepted in the trade as the sign that indicates the Circle on Cavill complex.

22 April 2010

IPAustralia Releases TRIPS Protocol Consultation Paper

IPAustralia has just released a discussion paper on implementing the TRIPS Protocol. It's available here: http://www.ipaustralia.gov.au/pdfs/news/TRIPS%20Protocol%20Public%20Consultation%20Paper.pdf

The Protocol permits WTO members to issue compulsory licences to manufacturers to produce patented products for export to address health needs in least-developed and developing countries.

The deadline for written submissions is 4 June 2010.

21 April 2010

High Court Defines "Aggrieved"

Case: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13.

This appeal to the High Court is connected with Section 88(1) of the Trade Marks Act 1995. Only a person "aggrieved" can make use of that section to rectify the register. Rectification can take the form of cancellation, removal or amendment or entering conditions or limitations.

The factual background is worth reading, but I will skip it in this post, but for a brief summation.

Three proceedings took place between the parties before a single judge in the Federal Court and were heard together.  In that court, two of the proceedings were dismissed on the ground that Health World was not a person "aggrieved". The remaining proceeding was dismissed on the ground that Shin-Sun was not a person "aggrieved".

15 April 2010

Gasp Dresses Infringe but Designs Invalid

Case: Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd FCA 228
Date: 16 March 2010

This case does not have any interpretative content. Rather, it is an interesting study of how our courts deal with evidence. For that reason, it's worth reading.

Rosemin is the registered owner of a number of design registrations covering various dresses. Rosemin claimed that sale of various dresses by Gasp infringed the registered designs. Gasp admitted that its
dresses are "identical to or substantially similar in overall impression" to the Rosemin designs. Gasp also admitted that it "sold or otherwise disposed of, or offered to sell or otherwise dispose of, the Gasp Dresses. It followed that Gasp would have infringed if the design registrations were validly issued.

14 April 2010

Patent Prosecution - A Report from the ABA IP Conference

My apologies for not providing a series of posts during the conference. Between jet lag, keeping my practice going and the hospitality suite, there was little time. But here is a report on the panel presentation in which I was privileged to participate.

13 April 2010

IPONZ Introduces Standardised Format for TM Specs

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The Intellectual Property Office of New Zealand will apply standardised formatting to trade mark specifications. This is an attempt to align with current international best practice.

01 April 2010

ABA Section of Intellectual Property Law | 25th Annual IPL Conference

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For those readers who may be interested, here is the schedule for the conference next week.

Section of Intellectual Property Law | 25th Annual IPL Conference | Schedule

I will attempt to post articles as the conference progresses. The operative word is "attempt".

It is both an honour and a privilege for me to be participating in this prestigious event. The international panel in which I represent Australia will be on at 13:45 on Thursday, April 8.