Buying a power boat for the wife – not necessarily an unreasonable director related transaction, but only in the right circumstances

In 2013 a WA Supreme Court decision may have caught the attention of small company directors; it seemed using the company’s funds to buy that shiny new boat for the wife might not be a voidable transaction or breach of directors’ duties after all… Unfortunately for some, that decision was quickly overturned by the Court […]

Developers and landlords can release their breath – performance bonds and guarantees remain enforceable

In a decision that would otherwise have had serious ramifications, not only in the construction industry but across other industry sectors such as commercial leasing, developers successfully enforced performance and maintenance bonds where the paying financier tried to dodge payment on the basis of an underlying dispute between the developers and contractor. In Swanhill Enterprises […]

INDEMNITY COSTS AS THE PRICE OF RELIEF AGAINST FORFEITURE – Reasonableness on the weighing scales

Icechest Corp Pty Ltd v Quan [2017] WASC 345 is probably the latest Australian iteration of the question of who should bear the legal costs of a successful application for relief against forfeiture of a commercial lease. The decision turned on whether the lessor had acted unreasonably in its initial refusal to allow the lessee […]

Sabacc Strikes Back: Disney’s Latest Star Wars Dispute

US entertainment monolith Disney is once again flexing its legal muscle in order to protect its evergreen Star Wars brand. This time, the dispute is over a concept that was introduced within the story of its Star Wars movies, called “Sabacc”. This obscure Star Wars indicia was first referenced in a draft screenplay for the […]

Are you at legal risk? Changes to the Privacy Act: 22 February 2018

From 22 February 2018 your business has a statutory obligation to report a data breach involving personal information to the Australian Information Commissioner.  If this is not handled correctly your business could be at serious risk. Who is subject to the Privacy Act? All businesses and not-for-profit organisations with an annual turnover of more than […]

“Made in…?”: Country of Origin Labelling Reforms in Australia

Recent changes to the Australian Country of Origin Food Labelling Information Standard 2016 (“CoOL”) was no doubt influenced by the notorious frozen berry scare in Australia in 2015, which allegedly linked a hepatitis A outbreak to imported frozen berries. This generated public interest in transparency in origin of food labelling. The changes will have a significant effect on businesses that market unpackaged goods, bringing these […]

The Core of the Pink Lady Trade Mark Dispute: High Court of Australia refuses to revisit Apple and Pear Australia Ltd v Pink Lady America LLC [2016] VSCA 280 (23 November 2016)

In April 2017, the High Court of Australia refused special leave to appeal the decision of the Court of Appeal of the Supreme Court of Victoria. This resolved the long running contractual dispute over the “Pink Lady” trade mark. (It effectively ensures that all use of the “Pink Lady” trade marks used in respect of Chilean-grown apples and fruit that are exported from Chile […]

Bye, Innovation Patents (and other news): Australian Productivity Commission – The Federal Government Response

The Australian Federal Government’s response to the controversial Productivity Commission’s Inquiry into Intellectual Property Arrangements was released on Friday. It deals with the many recommendations made by the Commission. Here are some of the highlights, in so far as they directly affect Australian businesses: Copyright In principle, the government supported the recommendation that restrictions on parallel importations of […]

Like a Boss: Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 (24 July 2017)

CrossFit, an entirely too vigorous regime of exercise as far as we are concerned, is an international fitness business with many adherents across the world and in Australia. As the evidence in this matter noted, “[The Opponent] licences the CrossFit mark to affiliates throughout the world, and there are now approximately 12,836 gyms providing specialised […]

Limitations on the Prior Use Defence: Cabcharge Australia Limited v E2 Interactive [2017] ATMO 76 (28 July 2017)

On 30 August 2011, e2Interactive Inc. (the Applicant) filed a trade mark registration application for the following logo (the Trade Mark), covering a wide variety of products and services under classes 9, 35, 36, 38, 40, and 41, but mostly in relation to cards, communication, entertainment, and marketing/advertising. The application was initially rejected after examination revealed possible grounds […]

Swiss Style Claims and Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129

On 18 August 2017, the Australian Full Federal Court has overturned a prior decision made by the Administrative Appeals Tribunal in 5 September 2016 over Re AbbvVie Biotechnology Ltd [2015] APO 45, with regard to several applications for an extension of term for Australian patents 2012261708, 2013203420 and 2013257402. Patent extensions of five years are permissible in Australia for pharmaceutical products. These patents […]

Fishing for Phishers: Recent UDRPs brought by the UK Commissioners for HM Revenue and Customs

Phishing, the fraudulent act of soliciting money from members of the public through emailed demands, is a scourge, in which phishers deceive especially the elderly or naive. On 22 February 2017, the Commissioners for Her Majesty’s Revenue and Customs of London (the Complainants) filed a complaint  at the WIPO Arbitration and Mediation Center over the domain name HMRCONLINEGOV.COM, which […]

Snakes and No Ladders: Hoser v Bunnings Group Ltd & Anor [2017] FCCA 1624 (13 July 2017)

Mr Raymond Hoser describes himself as a “globally recognised reptile expert” and is a government-licensed wildlife demonstrator. Mr Hoser owns registered Australian trade marks for the term “snake man” and “Snake man”. Mr Hoser initiated an interlocutory application with the Federal Circuit Court seeking to prevent Mr Michael Alexander from using, amongst other things, “Snake man” in the course of trade. Mr Alexander conducts business under the name […]

Trade marks and graphic design: the bear trap of industry themes

One consideration for graphic designers upon receipt of a brief to design a new brand identity is to mitigate the risk of confusion between a client’s brand and competitors’ brands. There is a tension between this, and rendering a logo so that it looks like it falls into a particular category of goods and services. […]

Who owns Neptune’s fork?: Trident Seafoods Corporation v Trident Foods Pty Limited [2017] ATMO 39 (3 May 2017)

A trident, the indicia of the Poseidon, Greek god of the sea (or Neptune for those of a preference for Roman mythology), is one of those valuable symbols which are highly suggestive of marine or maritime goods and services, but which is not descriptive. It is valuable real estate from a marketing perspective. It is entirely […]

The Concept of “Careful Purchasers” Strikes Again: Basler Electric Company v BOGE Elastmetall GmbH [2017] ATMO 64 (30 June 2017)

On 17 November 2014, motor and vehicle parts manufacturer BOGE Elastmetall GmbH (the Holder) applied for a trade mark in Australia, relying upon an extension of protection based upon international registration no. 1227675 (“the IRDA”). This was an image mark consisting of a stylised letter “B” (the company’s logo) inside a black rectangle. The mark’s […]

OECD/EUIPO Report Reveals Important Details About Most Common Counterfeit Trade Routes

The European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) has recently published a new report titled “Mapping the Real Routes of Trade in Fake Goods.” The report uses data collected from 10 different industries, notably ones that span a wide range of IP-intense, tradable goods such as foodstuffs, […]

Philip Morris Ordered to Pay Australia’s Legal Costs After Failing to Challenge Plain Packaging Laws

The Permanent Court of Arbitration has recently ordered tobacco company Philip Morris to pay the Australian government’s costs, after Philip Morris failed to get the Australian government’s plain packaging legislation overturned. For the uninitiated, the Tobacco Plain Packaging Act 2011 makes it mandatory for tobacco companies that wish to conduct business in Australia to sell […]