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Facebook has announced that it will begin offering personalised username URLs to its users. On a first-come, first-served basis commencing 13 June, 2009 Facebook users are able to register personalised domain names such as www.facebook.com/yourname for their Facebook pages. Previously, a user’s Facebook URL was comprised of randomly assigned numbers.

Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog comments that offering such services is a new potential opportunity for trade marks infringers and cyber-squatters. These procedures may be abused by reserving your – or your client's - trade marks as their username and thereby hold themselves out as being affiliated with the genuine trade mark owner. For example, any particular user might register www.facebook.com/yourtrademark.

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The first annual Nicholas Weston "Tattooed Brands" Global Survey was conducted during May 2009 with 20 tattoo businesses in the suburbs of Melbourne, Australia surveyed using a telephone interview questionnaire. Conducted by Australian law firm and trade marks attorneys Nicholas Weston, the survey asked tattooists whether they had ever tattooed a registered trade marked brand or logo onto someone's body and if so, which ones are popular, what age groups get them and whether the recipient was drunk or affected by drugs at the time.

Surveys are typically conducted as an important tool to find out what is vital to the community, and where to prioritise spending or effort. In this case, the survey is motivated by an inordinate interest in the self-mutilation of others combined with a gratuitous exercise in self-promotion, sorry, law firm marketing. Nicholas Weston is pleased to share its findings in the annual survey with the global community.

The highlights from the 2009 Survey are summarised below.

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In Deckers Outdoor Corporation Inc. v Farley (No 2) [2009] FCA 256, Deckers Outdoor Corporation, responsible for the well known sheepskin boots sold under the ‘UGG’ brand, has been successful in its application for summary judgement for trade mark infringement of its composite trade mark No. 785466. The Court has postponed making an order with respect to compensatory damages until further supporting evidence is presented. 

As to its claims for declaratory and injunctive relief for copyright infringement, passing off and trade practices breaches Deckers was unsuccessful. Deckers has become renowned for aggressive enforcement of its intellectual property rights. In view of this positive finding of trade mark infringement, only time will tell whether it continues to pursue these other causes of action, particularly a damages claim for flagrant copyright infringement under Section 115(2) of the Copyright Act 1968 (Cth).

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Australia has become the 10^th State to ratify the Singapore Treaty on the Law of Trade Marks (the Singapore Treaty), allowing the Treaty to come into force on 16 March 2009.  The treaty establishes common standards for procedural aspects of trade mark registration and licensing between the contracting States.

According to the Federal Minister for Innovation, Industry, Science and Research, Senator The Hon. Kim Carr, signing on “offers a positive example for Australia’s trading partners, thereby increasing the capacity of regionally based trade”.  

The Treaty is also intended to encourage national trade mark offices to take advantage of modern communication technologies.  Most significantly, for the first time in any international instrument dealing with trade mark law, non-traditional marks are explicitely recognised.

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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.

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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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Australia has concluded negotiations for the region-wide ASEAN-Australia-New Zealand Free Trade Agreement (AANZFTA). The agreement marks a significant step towards the lifting of ASEAN trade barriers on Australian products and services, and the possible establishment of a regional trade marks filing system.

According to the Minister for Trade, the AANZFTA covers16 per cent of Australia's trade in goods and services, two-way trade worth $71 billion and a market of 570 million people with a combined GDP of US$1 trillion. AANZFTA is Australia’s first multi-country (plurilateral) FTA.

The final negotiations were concluded in Singapore on 28 August 2008 conducted by Ministers of the 10 ASEAN countries, Australia and New Zealand. The agreement became public when the Ministers were photographed trying to give the secret handshake at a press conference. The signing of the AANZFTA is scheduled for December this year.

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Brisbane based, publicly listed bio-tech, Agenix Limited (Agenix) [ASX: AGX, NASDAQ OTC: AGXLY] has appointed Nick Weston of Melbourne based law firm Nicholas Weston to its board of directors as Chairman. The ASX press release is available HERE.

Agenix was listed on the Australian Stock Exchange in October 1987 and has infrastructure in Brisbane, Singapore, Shanghai and the United States of America. Through its subsidiaries, Agen Biomedical and Agenix Biopharmaceutical (Shanghai), the company has a strategic goal of building and developing a pipeline of therapeutic and imaging products.

Agenix wholly foreign owned enterprise (WFOE), Agenix Biopharmaceutical (Shanghai) is presently resolving issues in relation to the April 2007 purchase of the businesses of two associated Chinese life sciences companies. One, Shanghai Rui Guang Bio-Pharma Development Co., Ltd, is a biopharmaceutical company which has a pipeline of anti-viral drugs in development. Its lead product candidate, a hepatitis B virus drug, has successfully completed Phase III clinical trials in China and received China State Food and Drug Administration new drug approval on 30 September 2007. Sales of You He Ding in China are estimated to grow to in excess of RMB320 million per annum. The company has a deep pipeline of potential anti-viral drugs in development. The second, Shanghai Yi Sheng Yuan Pharmaceutical Co., Ltd, has a GMP certified manufacturing facility which has the capacity to produce 150 million tablets per annum (based on a 5-day working week at 8 hours per day).

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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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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.

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INTA’s 130th Annual Meeting was held between 17 and 21 May 2008 at the ICC in Berlin, Germany. Attended by more than 8,000 trade marks practitioners from around the world, it provided an opportunity for buyers and sellers of trade mark related products and services to meet or catch-up with one another. And to sit in very, very large lecture theatres.

Australians have quietly taken over global IP affairs lately. Australian national, Dr Francis Gurry is the nominee for the position of Director General of WIPO - to be submitted to the General Assemblies of WIPO for final confirmation in September 2008. (Official press release HERE. Salacious gossip HERE and HERE ).

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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 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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Australian applicants for United States trademarks should note a recent decision in the US: Rosenruist-Gestao E Servicos LDA, v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007) which held that a foreign company that has no US employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia just because it filed a trademark application with the USPTO, which is located there.

As a result, a litigant in a US trademark dispute can compel an Australian witness (for example) to travel to the USA to give in-person deposition testimony "for use in any contested case" in the USPTO, such as an opposition proceeding to a trademark application.

A Memorandum by Fried Frank, who acted for the successful party in the Rosenruist case, summarises the position. It states:

"Non-U.S. business entities that file applications for United States registration of trademarks or service marks have long been required to “designate” a person “resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If no such designation is made, the Director of Patents and Trademarks, located in Alexandria, Virginia, U.S.A., is deemed by default to be the applicant’s designee for purposes of service of process." . . .

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There are a number of trade marks events coming up early in 2008. The following list is not exhaustive:

19-28 February 2008 IP Passport - Helping your business take off overseas, (Held in various States and centres, see here for dates). Seminars on intellectual property issues when exporting, presented by Australian Chamber of Commerce and Industry (ACCI), and State and Territory Chambers together with IP Australia

20-22 February, 2008 Thomson’s Intellectual Property Strategy Forum 2.0, Sydney. International and local speakers on protecting and leveraging brands.

26-28 February, 2008 IIR’s Branding and Marcomms for Financial Services, Sydney. Puff piece states “Analyse and develop your company's brand positioning, develop winning strategies and instigate future financial success”. Noteable for its lack of a speaker on trade marks issues.

11-12 March, 2008 INTA & IP Australia’s, Trade Mark Regatta - Asia Pacific Conference, Sydney. INTA’s first educational conference in Australia.

13-14 March, 2008 IP Australia’s Senior Trade Mark Officials’ Forum, Sydney. A conference for international trade marks officials and other ‘government stakeholders’.

2-5 April, 2008 IPTA / NZIPA 2008 Joint Annual Conference, Auckland. Includes sessions on harmonisation, U.S. litigation, domain names, trade marks, designs, IP update, oppositions, client relationships and tendering.

17-19 April, 2008 LESANZ Annual Conference - Entrepreneurship and Innovation – Not such risky business, Melbourne.

If there is a conference you think should be listed here, contact us.

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Impact and Virtually Blind blogs report  that “the Second Life Patent and Trademark Office (SLPTO) has opened its doors.” The SLPTO appears to have no connection with the owners of Second Life, Linden Lab.

The SLPTO website states: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights”. Section 157 of the Trade Marks Act 1995 (Cth) prohibits use of the words "Trade Marks Office" and "words of similar import" in this jurisdiction. It states:

“(1) A person:

(a) must not:

(i) place, or allow to be placed, on the building in which his or her office is situated; or

(ii) use when advertising his or her office or business; or

(iii) place on a document, as a description of his or her office or business;

the words "Trade Marks Office" or "Office for registering trade marks", or words of similar import (whether alone or together with other words); or

(b) must not use in any other way, in connection with his or her business, words that would reasonably lead other persons to believe that his or her office is, or is officially connected with, the Trade Marks Office.

Penalty: 30 penalty units.

(2) An offence under this section is an offence of strict liability.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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On 25 September, 2007, Nicholas Weston Principal Nick Weston was appointed to the International Trademark Association’s (INTA) Law Firm Outreach Sub-Committee of the Alternative Dispute Resolution Committee (ADR) for the 2008 – 2009 committee term.

This year, 2,300 volunteers applied to serve on INTA committees. The INTA Law Firm Outreach Sub-Committee promotes the use of ADR and the INTA Panel of Neutrals to law firms, including INTA Associate member law firms.

INTA describes itself as “a not-for-profit membership association founded in 1878 of more than 5,000 trade mark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trade marks and related intellectual property as elements of fair and effective national and international commerce.”