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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.

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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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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.

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The most recent development in a protracted legal battle between two chocolate heavy weights, Cadbury Schweppes and Darrell Lea, is a decision by the Trade Marks Office (copy available HERE) to suspend three pending opposition proceedings which relate to some trade mark applications made by Cadbury for certain shades of the colour purple.  The oppositions have been suspended pending final determination of a related passing-off proceeding in the Federal Court. 

Background (in Brief)

In February 2003, Cadbury commenced proceedings against Darrell Lea in the Federal Court of Australia claiming that Darrell Lea's use of a shade of purple in connection with its chocolate confectionary business amounted to conduct that was misleading and deceptive, and also constituted passing off ("the passing off proceeding").  For those who have, understandably, lost track of the course of these proceedings, a comprehensive summary of the numerous court decisions is provided by the Delegate at paragraph 50 of the present decision. The next stage in the passing off proceeding will be mediation likely to be followed by a further hearing before Heerey J., if it does not settle. 

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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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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.”

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On 29 October, 2007, Nicholas Weston, Lawyers & Trade Marks Attorneys celebrated the launch of the Australian Trade Marks Law Blog. The initiative is designed to complement the high-quality intellectual property services and high level of service the firm provides to its clients.

Since its inception in February, 2005, Nicholas Weston has focussed on trade marks as a core practice area. Nicholas Weston is an unstuffy Australian law firm delivering trade mark and other commercial legal services to clients worldwide in our core sectors of fashion, technology and U.S. law firms. Each member of the firm holds dual qualifications as a lawyer and also as a registered trade marks attorney. The firm claims practical implementation of thought leadership. In mid 2007, the firm re-located from its office in the Paris end of Collins Street, Melbourne to the historic Assembly Hall, in the heart of Collins Street, Melbourne. Details of the firm’s trade marks services can be found here. Details of the firm’s commercial services can be found here.

The Australian Trade Marks Law Blog is designed to communicate with U.S. law firms and others seeking a reliable source of information and commentary on Australian Trade Marks. The platypus is adopted as our masthead because the platypus -- like Australian Trade Marks Law (and the Australian version of English) -- can seem odd at first encounter. It is efficiently adapted to its environment. It looks like you could pat it. But it has a venomous spur on its hind legs that can cause excruciating pain. Nicholas Weston publishes the Australian Trade Marks Law Blog as a useful resource.