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Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog has moved to so-called 'cloud computing' technology architecture with the adoption of the WebTMS browser-based trade mark management system. According to Nicholas Weston, this infrastructure purchase will significantly strengthen this practice area and prove a real asset to the firm.

WebTMS enables Nicholas Weston to offer clients browser-based trade marks portfolio management applications that utilise the same infrastructure powering major US and UK law firms, and US Fortune 500 corporate IP departments. A list of users can be found HERE.

Key Features of WebTMS

The following key features of WebTMS are set out in detail below and can be summarised as follows:

• the most secure, robust and advanced trade mark management and docketing system available and has been used by the world’s leading firms for over 5 years;
• real time access for Clients to the cases Nicholas Weston is handling for them with 24/7 worldwide secure access to a Client's trade mark portfolio details from any computer with an internet connection;
• foreign Agents can update the cases they are handing for Nicholas Weston;
• a repository for all trade mark and intellectual property data, with images and supporting documents;
• database links to the trade marks offices of 12 jurisdictions, for click throughs, data audits and automatic data loading;
• built in trade mark searching for the 12 online trade marks offices, with search results management;
• workflow wizards to maximize efficiency;
• designed by trade mark attorneys for trade mark attorneys, and supported by extensive user input.

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As of 1 June 2008, a new and more flexible registrant transfer policy comes into effect, allowing domain name registrants to transfer their domain name licence to another eligible entity for any reason. The new policy has been approved by the Australian domain name administrator .au Domain Administration Ltd (auDA) - the policy authority and industry self-regulatory body for the .au domain space.

Key Features of the New Policy

Exact details and wording of the new policy is not yet available. However, the following key features of the policy are available here and can be summarised as follows:

• .au domain names can not be registered for the sole purpose of resale;
• a 6 month holding period for newly registered .au domain names applies;
• after 6 months domain names may be offered for sale/transfer by any means;
• standard transfer forms will be used for processing transfers; and
• auDA will ask parties for voluntary and confidential disclosure of the sale method and price.

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Cadbury has lost the latest battle over the exclusive use of the colour purple on chocolate wrapping but, regrettably, the chocolate wars are probably still far from over. On Friday 11^th April, Justice Heerey in the Federal Court gave his judgment in respect of the ‘further trial’ of the action brought by Cadbury against Darrell Lea for having the temerity to use purple in some of its chocolate wrapping. (Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8) [2008] FCA 470). The action was based on passing off and an alleged breach of s52 of the Trade Practices Act which prohibits corporations from engaging in conduct that is misleading or deceptive or which is likely to mislead or deceive.

A little bit of background to this latest decision is probably necessary for those who, for reasons only known to them, have failed to follow the fate of purple in Australian litigation. At the original trial in 2006, Justice Heerey found for Darrell Lea and held certain expert evidence from Cadbury inadmissible. While there was a lot of evidence that consumers associated purple with Cadbury chocolate, there was also a lot of evidence of uses by other chocolate makers of purple and many factors which distinguished Darrell Lea from Cadbury chocolate. For example, the words Darrell Lea written prominently on Darrell Lea chocolate were subtle hints to consumers that the chocolate in question was not Cadbury. Some consumers actually picked up on the point.

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In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (31 March 2008) the success or otherwise of both the claim and the cross-claim turned on each party evidencing a sufficient reputation of its product amongst Australian customers by reference to the unregistered marks MONSTER and MONSTER ENERGY in the context of deciding whether there had been a passing off at common law or a contravention of s 52 of the Trade Practices Act 1974 (Cth) (TPA).

The applicant (Hansen) alleged that the adoption of the brand MONSTER ENERGY (the second biggest selling energy drink in the world, behind Red Bull), or its contraction MONSTER, for energy drinks by the respondents (Bickfords) conveyed a misrepresentation that the Bickfords product is the product of Hansen or is associated with Hansen. If not, then conversely the cross-claim required Bickfords to establish whether at the relevant time it had a sufficient reputation in Australia in the mark MONSTER ENERGY, or its contraction MONSTER to succeed in its own claim as against Hansen. The parties agreed that the similarities between the products could relevantly mislead or deceive for the purposes of the TPA and the tort of passing off.

Approach

The Court approached the question of the operation of s 52 of the TPA by requiring it to be established that a significant or substantial proportion of persons who would be potential customers within Australia would be likely to be misled.

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In Television Food Network, GP v Food Channel Network Pty Ltd [2008] FCA 378 (18 March 2008) counsel for the respondent, Food Channel Network Pty Ltd (FCN) sought leave of the Court to file two affidavits, one of which was only provided to counsel for the applicant, Television Food Network, GP (TFN) 10 minutes prior to Court resuming one morning during the trial. 

TFN objected to the admissibility of the affidavits in their entirety and made some of the following submissions:

• no explanation as to the lateness of the evidence had been provided;
• the proposed evidence sought to advance a new case for the respondent and contradicts earlier evidence; and
• admission of such evidence would seriously prejudice the applicant.

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As of 28 March 2008, the period in which a trade mark can be renewed after its expiry date will be reduced from 12 months to 6 months. This change to the renewal grace period is in accordance with the Trade Marks Amendment Act 2006 (No.114, 2006)

The initial expiry date of all Australian trade mark registrations, including marks claiming convention priority, is 10 years from the original filing date of the application for registration Trade Marks Act 1995 s.72(3)). Requests for renewal of registered trade marks may be made any time within the twelve months prior to the date of expiry (reg. 7.3). For trade marks due to expire on or after 28 March 2008 the grace period for payment of renewal fees is now 6 months, and is not extendible.  When renewing a trade mark during the 6 month grace period:

• a monthly late fee is payable (in addition to the renewal fee); and
• requests for renewal must be in an approved form (Trade Marks Act 1995 s.79).

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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm enters the list at Tier 5 for trade marks prosecution in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

"Even firms listed in the lower tiers have been recommended by a number of practitioners and deserve congratulation on their inclusion."

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. It is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is an unstuffy Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of fashion, technology, foreign law firms and businesses entering Australia.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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In Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2008] FCA 126 the applicants (Brother) sought an order for indemnity costs against the respondent (Dynamic Supplies) following successful trade marks infringement proceedings in Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; 73 IPR 507. See our earlier article on the Brother case HERE.

Order 23, rule 11(4) of the Federal Court Rules 1979 (Cth) provides that if an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment on the claim to which the offer relates which is not less favourable than the terms of the offer, then, unless the Court otherwise orders, the applicant is entitled to an order against the respondent for costs incurred in respect of the claim up to the day when the offer was made taxed on a party-party basis and after that day taxed on an indemnity basis. The exercise of the discretion requires the Court to see if the relevant offer of compromise is less favourable than the overall effect of the final relief ordered.

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A recently decided case in the Federal Court, Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100, amongst other things, highlighted that a recent amendment to the Trade Marks Act 1995 (the Act) removing the requirement that an applicant in a non-use application be an “aggrieved person”, has made it easier to succeed in a non-use application.

Background to the Case

Health World Limited (Health World) had registered in 1996 the words ‘Inner Health’ in respect of ‘pharmaceutical preparations included in this class, including such preparations for promoting the growth and adherence of beneficial intestinal bacteria in humans being goods in class 5’. It successfully marketed a probiotic powder called Inner Health Powder (the Powder). Health World subsequently commenced developing Inner Health Plus Capsules (the Capsules) and applied to register the word mark ‘Inner Health Plus’ on 12 September 2001. In the meantime, Shin-Sun Australia Pty Ltd (Shin-Sun) registered ‘HealthPlus’ in respect of ‘pharmaceutical products including vitamins and dietary supplements’ in class 5 with a priority date of 7 May 2001.