Foreign entities wishing to register an Australian trademark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trademark is the first user of that trademark. First to File In some jurisdictions, the entity that is the first to file an application to register a particular trademark is the … Continue Reading
One of the ways that a “Geographical Indication”, or a “GI” can be protected in Australia is by registration of a ‘certification trade mark’. Certification trade marks are a specific type of trade mark registration designed to identify goods or services that meet certain standards or hold certain characteristics, including (but not limited to) goods … Continue Reading
Just over five years after the California-based retail giant Deckers Outdoor Corp. (Deckers) filed a lawsuit against Sydney-based footwear company, Australian Leather Pty Ltd (Australian Leather) for trademark infringement, the U.S. Court of Appeals for the Federal Circuit has ruled in favour of Deckers. The Court of Appeals affirmed the previous decision of the district … Continue Reading
Foreign entities looking to register Australian domain names need to be aware that the eligibility requirements have changed and the threshold is now much higher. If a foreign entity is relying on a registered Australia trademark to meet the Australia presence requirement, they must ensure that their domain is an exact match to that trademark. … Continue Reading
Late last year, the High Court of Australia overturned more than 100 years of precedent when it handed down its decision in Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad v Seiko). Rather than following the existing principle of ‘implied licence’, in its decision, the High Court adopted a US common law … Continue Reading
Recent changes in consumer behaviour due to the COVID-19 pandemic mean that few businesses can afford to ignore the internet, and the opportunities for efficiencies and scale that it offers. Operating a business online presents tremendous opportunities for growth by opening up new geographical markets, however it also creates new challenges for businesses in ensuring … Continue Reading
Recent amendments to the PBR Act have strengthened PBR rights and have aligned aspects of PBR with other intellectual property laws in Australia. This article summarises the changes. The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Amending Act) received Royal Assent on 24 August 2018 and makes significant changes … Continue Reading
The Federal Court recently handed down its decision in Calico Global Pty Ltd v Calico LLC1. This decision highlights the potentially fatal consequences of not updating the IP Australia register to reflect a change in trade mark ownership. The decision also serves as a reminder of the fundamental importance of ensuring that the owner of … Continue Reading
Background The Copyright Amendment (Online Infringement) Act 2018 (Act) which passed both Houses of Parliament on 28 November 2018, and is due to commence the day after it receives Royal Assent, amends section 115A of the Copyright Act 1968 (Cth). Section 115A of the Copyright Act was introduced in 2015 and enables a copyright owner to apply to the … Continue Reading
Of the many hurdles in enforcing copyright online, one of the preliminary issues (and often one of the most complicated) is the problem of jurisdiction. With infringements potentially taking place all over the world, a rights holder may be faced with the dilemma of working out where infringements are occurring, and figuring out how to … Continue Reading
The recent Federal Court of Australia decision in Skyy Spririts LLC v Lodestar Anstalt [2015] FCA 509 serves as a reminder that Australian registered trade marks are vulnerable to removal on the basis of non-use if licensing and structuring arrangements are not adequate. Under the Australian Trade Marks Act 1995 (Cth) a trade mark may, … Continue Reading
A recent decision of the Full Federal Court of Australia (Bristol Myers Squibb Company v Apotex Pty Ltd [2015] FCAFC 2) has resolved uncertainty about the requirements for an exclusive licence of a patented invention. Legislation The Patents Act 1990 (Cth) provides that an exclusive licensee holds a licence from the patentee to exploit the … Continue Reading
All businesses have valuable intellectual property, not just “tech” focused businesses such as software developers or pharmaceutical companies. However advisers may need to translate for their clients what they mean in practical terms when they use the words “intellectual property”, in order for clients to appreciate its value and take steps to protect it. For … Continue Reading
There have been numerous recent developments in intellectual property (IP) law in Australia. Below is a summary of some key developments. As with any international jurisdiction, IP law in Australia is complex and requires the expertise of an experienced specialist to navigate it correctly. INTELLECTUAL PROPERTY LAWS AMENDMENT ACT 2015 Following on from the Intellectual … Continue Reading
