Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

• Email This
• Print
• Comments
• Trackbacks

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.

• Email This
• Print

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).

• Email This
• Print

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.

• Email This
• Print
• Comments
• Trackbacks

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.