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

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In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 (20 June 2008) , a decision covering a wide range of trade mark issues, Lion Nathan (Lion) has successfully resisted an infringement application and, at the same time, managed to have a competitor’s trade mark removed for non-use. The decision provides some interesting insights into infringement under s120(2), the defence in that provision, a discussion about goods of the same description and, finally, some interesting views on non-use and the exercise of the discretion to let a trade mark stay on the register despite non-use for three years being established.  

Apart from that smorgasbord of legal issues, the case provides a wonderful gem of insight into how Lion Nathan develops its trade marks. On this occasion, the Consumer Insight Manager was at the races and noticed ‘Barefootonbondi’ as the name of one of the horses. The moral of the story is that if you want a cool job with less stress than litigating trade mark law, you should go to the races more often. But I digress. 

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In Showtime Management Australia Pty Ltd v Showtime Presents Pty Ltd [2008] NSWSC 594 (13 June 2008), Austin J., granted an interlocutory application requiring the unsuccessful parties to bring the profits of a Queen tribute act concert tour in South Africa into Australia, to be held securely pending the outcome of proceedings to determine which of the parties to the litigation owns the name and other rights in a business comprising the relevant Queen tribute act and a further such act. The Court also made orders for the respondents to provide detailed sworn accounts and source documents.

The case illustrates the importance of Corporations Act, common law and equitable remedies where IP rights are disputed in consequence of the termination of a joint venture where a company structure (and, in this case, also a trust) is involved. A narrow skill set, or IP-centric approach, may not be appropriate to such cases.

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In Facebook, Inc. v. Callverse Pty Ltd, (Case No. DAU2008-0007) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 4 June 2008, the Complainant was U.S. company Facebook, Inc. (Facebook) which operates a popular online social networking website at www.facebook.com/ and has five registered trade marks for the word FACEBOOK in Australia, two of which were registered prior to the commencement of this proceeding.

The Respondent, Australian company Callverse Pty Ltd (Callverse), at the material time, operated “an established click-to-call service” that was “launching soon” at the website www.facebook.com.au/

An all Australian Panel comprising John Swinson (Presiding), Warwick Rothnie (the barrister behind the IPWars blog) and James Barker, found for the Complainant on the basis that the three elements enumerated in paragraph 4(a) of Schedule A of the .au Dispute Resolution Policy (auDRP), were satisfied, namely:

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In Colorado Group Limited & Anor v Strandbags Group Pty Limited [2008] HCATrans 200 (23 May 2008), the Colorado Group failed to obtain special leave from the High Court to appeal the Full Court of the Federal Court decision reported in the Australian Trade Marks Law Blog article: Colorado Group fails on appeal - Full court messes with the Fink.

As a result, neither party now has exclusive use of the mark "Colorado" in relation to handbags, wallets and purses, and the register will be rectified.

Per Crennan J:

"The applicants seek special leave to appeal in a claim for trademark infringement. The principal defence of the respondent is a counter-claim for rectification of the register in respect of the applicants’ registration of the trademark "Colorado", which is a geographical name. The grounds upon which rectification is sought which are relevant to the present application are that the applicant is not the proprietor of its registered trademark. Alternatively, if it is the proprietor, the mark is not capable of distinguishing certain of the applicants’ goods.

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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 is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious 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."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey 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 small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

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.