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The Honourable Justice Robert Shenton French has been appointed by the Federal Government as Chief Justice of the High Court of Australia. He will replace the Honourable Murray Gleeson, who retires on 29 August.

Announcing the appointment yesterday, the Attorney-General, Robert McClelland, said:

"He brings to bear an interest in the practical development of the law but in accordance with legal principles".

In a speech entitled "Making Your Own Fun In Intellectual Property Law" in September 2006, Justice French (then a Federal Court judge) provided some insight into his interest in the law, declaring:

"Those of us who practice law know that we do it because we can’t do other things. I cite my own case. I studied physics before I studied law and was told in my final year, after delivering a seminar on elementary particles and mathematical group theory:

‘You express yourself magnificently but I’m not sure you know what you are talking about.’

This encouraged and qualified me to enter the Law School. After graduating I became a lawyer, the kind of person who is the boring imaginary friend of some really interesting people. Some of the most interesting people in intellectual property law are the clients. They are scientists, artists, writers, musicians and dramatists – people of creative spirit and drive which we may assume vicariously and temporarily as our own."

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To those of you bent on interrupting the pope’s proselytising with a spot of ambush marketing at World Youth Day in Sydney this week, make sure that you apply for approval.

What approval?

You have to apply to the World Youth Day Co-ordination Authority [set up under the the World Youth Day Act 2006 (NSW) (WYD Act)] for approval to display or caused to be displayed an advertisement in an "advertising controlled airspace" during the relevant prescribed period. (Application form available HERE).

According to the official WYD website "for a week in July (14 - 21 July), Sydney-siders will see around them the faces of visitors from more than 170 nations as they participate in Youth Festival Events, welcome Pope Benedict XVI, watch the Stations of the Cross, take part in the Pilgrimage Walk and join the Vigil and Final Mass at Randwick Racecourse."

What they will not see is unauthorised advertising "within the unaided sight of Randwick Racecourse and the Barangaroo site", according to regulation 6(1) of the World Youth Day Regulations 2008 (NSW) (WYD Regs) or at the places prescribed in regulation 6(2) for the purposes of section 46C of the WYD Act (but only for the period (or periods) prescribed for each such venue or facility in Column 2 of the Table in that regulation). Or in other words, until Sunday.

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In an act guaranteed to pick a fight with two 800 pound gorillas, an attempt to register the mash-up name ‘GOOGLEBAY’ as a trade mark in Australia has failed. This follows a WIPO Panel decision that the same applicant transfer the domain name <googlebay.com.au> to Google Inc.

Trade Mark Opposition

In Google, Inc v Dmitri Rytsk [2008] ATMO 40 (28 May 2008), an Australian Trade Marks Office Decision published on 8 July 2008, an opposition under section 52 of the Trade Marks Act 1995 (Act) by Google, Inc to registration of trade mark application 1118972 for GOOGLEBAY in class 35 was upheld with both section 44 (deceptive similarity of the mark in respect of similar services or closely related goods) and section 60 (trade mark deceptively similar to a mark with a reputation in Australia in respect of both related and unrelated goods) grounds were established. Registration was therefore refused.

The Hearing Officer’s analysis was fairly conventional but there are two points of interest to note.

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In Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 (26 June 2008), Justice Gordon's preamble points out the excessive costs and consumption of Court resources that have been incurred in the case as a consequence of incorrect identification of legal issues. She emphasises that “parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper” because this can backfire. Here, the respondent sought a cheaper avenue for relief by bringing a non-use application before the Trade Marks Office as opposed to bringing a revocation action in the Federal Court. Justice Gordon ordered costs against the respondent for that part of the proceeding that had been misclassified.

Along similar lines, in the recently decided case of E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 (20 June 2008), discussed on the Australian Trade Marks Law Blog last week, Lion Nathan pleaded that their client had used ‘Barefoot Radler’ as its sign but wanted to argue at trial that the sign was ‘Barefoot Radler’ plus the device of a bare foot. The Court confined them to their defence as pleaded.

These cases highlight, in different ways, the importance of getting the pleadings right from the outset and show that the Court will hold parties responsible for such blunders.