Tag: Australia

FIRST-TO-FILE OR FIRST-TO-USE? TRADEMARK PROTECTION IN AUSTRALIA

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

Parmesan or Parmigiano Reggiano? The answer is more complicated than just Geographical Indication

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

A DAVID AND GOLIATH STYLE UGG BOOT DISPUTE

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

AUSTRALIAN PATENT LAW UPDATE – THE HIGH COURT HAS OVERTURNED OVER 100 YEARS OF LAW, FAVOURING THE US DOCTRINE OF EXHAUSTION

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

Copyright law update – proposed amendments to website blocking laws

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

ISP Obligations and Copyright Reform – Injunctions under 115A Copyright Act 1968

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

IP licensing and structuring considerations for Australian registered trade mark owners

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

Management of IP in Commercial Contracts in Australia

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
LexBlog