Happy New Year 2009
May your costs be managed, may your revenue streams flow, may your problems be smoothly resolved. Best wishes in 2009 from all at Nicholas Weston. Also from our food experts, Midge and Beanie.
Parallel Importers welcome in Australia
In Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (18 December 2008) the Full Federal Court has dismissed an appeal by Polo/Lauren Company L.P. (Polo/Lauren) seeking to prevent the parallel importation of goods embroidered with their signature polo player logo.
Parallel importation occurs where genuine goods are sourced from overseas markets at a lower price than the authorised product for sale in Australia without the authority of the local licensee. This activity has continued to increase. The limitations against parallel importation imposed by the Trade Marks Act 1995 (Cth) means that brand owners have had to rely on other intellectual property rights to protect their brands. However, this decision confirms that successful claims based on copyright are similarly now limited, and that restricting trade of genuine products by local brand owners is becoming increasingly difficult.
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Weston named Panelist for World Intellectual Property Organization
Nick Weston, the name principal of Melbourne based powerhouse niche law firm Nicholas Weston, has been appointed to the Geneva, Switzerland-based World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center’s List of Arbitrators and Mediators and also the Center’s Domain Name Panel. WIPO is a United Nations organization. Mr Weston also serves as chairman of ASX listed biopharma, Agenix Limited [ASX:AGX; NASDAQ OTC: AGXLY] and charitable foundation Karma Currency.
Mr Weston will serve as a WIPO Domain Name Panelist to decide disputes under the “Uniform Domain Name Dispute Resolution Policy” (UDRP) and the “.au Dispute Resolution Policy” (auDRP) the mandatory arbitration procedures for deciding competing claims to domain names. As a domain name panelist, Nick Weston will review domain name disputes and decide whether a domain name registration should be transferred, cancelled or the status quo maintained.
The UDRP applies primarily to international domains such as .com, .net, .org, .info, .biz. and .mobi. In addition, 56 country code top-level domains (ccTLDs) have now appointed WIPO as service provider for their domain name disputes. Apart from UDRP cases, the Center has administered over 15,000 cases under Sunrise policies relating to registrations in the start-up phase of new domains. The auDRP is an Australian adaptation of the UDRP for com.au, net.au, asn.au, id.au, edu.au and org.au domain names.
Continue Reading...When is trade mark infringement not also misleading and deceptive conduct? Bing!
In Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760, Justice Collier in the Federal Court in Brisbane has just handed down a judgment in a case alleging trade mark infringement and a breach of s52 of the Trade Practices Act 1974 (Cth) (TPA).
The registered owner of the trade mark ‘Bing!’ won its trade mark infringement action but was unsuccessful in its claims of breaches of the TPA and passing off which, in itself, is an interesting statement about the usefulness of registration compared to relying on passing off principles.
Bing! is registered in Class 9 for ‘Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector’. I think this means software for the legal profession and software for anyone else but the legal profession. The statement reminds me of the way that we can divide the world into two types of people, namely, those who divide the world into two types of people and those who don’t.
The trade mark owner’s primary business is for a Family Court document automation software package. It also has software packages for conveyancing. It calls its software ‘Bing!’
Continue Reading...Big Tobacco looking to Government to cough up for trade mark restrictions
A recently concluded meeting of the World Health Organisation has considered guidelines for the implementation of the Framework Convention on Tobacco Control (FCTC). What’s that got to do with trade mark law in Australia? A fair bit if we are talking about trade marks for tobacco products.
The FCTC has 168 signatories, including Australia which ratified it in 2004, and it is the only treaty created under the auspices of the WHO. As its name implies, the Convention deals with a number of aspects of the control of the sale of tobacco throughout the world. The recent meeting in Durban considered recommended guidelines for the implementation of some provisions of the treaty and within those guidelines is a recommendation that members of the FCTC consider mandating plain packaging of cigarettes. See HERE. If adopted in the laws of member countries, this recommendation would involve the branding of cigarette packets being restricted to plain font and black and white statements of the name of the product eg ‘Dunhill’. No fancy font, no pretty pictures and, of course, the fancy font and pretty pictures are often registered trade marks.
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