Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Thursday, April 17, 2014

Grounds for complaint? Section 59 of the Trade Marks Act

By Sandi Forman, Senior Associate

A ground of opposition that is sometimes overlooked in trade marks is the applicant's lack of intention to use the trade mark.

Section 59 of the Trade Marks Act 1995 provides that an application may be opposed on the ground that the applicant does not, at the time of filing the application, intend to use the mark in relation to the specified goods and/or services. This ground can be difficult to establish, but can be usefully employed given the right circumstances.

In a recent Australian Trade Mark Office decision concerning an opposition to registration of the trade mark '707 estate', the Hearing Officer found in favour of the opponent, Southcorp Brands Pty Limited, on the basis that the section 59 ground had been established.

Thursday, April 10, 2014

The countdown is on - changes to the Franchising Code are upon us

By Nadia Guadagno, Lawyer

Successive governments have been talking about reforms to the Franchising Code of Conduct (the Code) for over a year now. But the time has finally come to take action. Last week, Exposure Drafts of legislation to create a replacement Code and add to its enforcement armoury were released.

The Federal Government says it's done with talking – only submissions regarding 'technical aspects of implementing the law' will be accepted over the next few weeks. So that means that the changes appear to be certain and with the start date said to be 1 January 2015, businesses and advisers have 9 months to get ready.

Here's a snap shot of the more significant changes.

Tuesday, April 8, 2014

Decoding your patent licence

By Adrian Chang, Lawyer

A decision earlier this month has brought light into one of the darker corners of the Patents Act 1990 (Cth).

Despite having an statutory equivalent in Australian patent law since 1952, MPEG LA, LLC v Regency Media Pty Ltd provides the first judicial consideration of section 145(1) which provides:
a contract relating to … a licence to exploit, a patented invention may be terminated by either party, on giving 3 months' notice in writing to the other party, at any time after the patent, or all the patents by which the invention was protected at the time the contract was made, have ceased to be in force.
Section 145(2) expressly prohibits contracting out of s145(1).

Thursday, April 3, 2014

Finding Nappyland: does a registered trade mark trump all?

By Julia Kovarsky, Lawyer

In short, the answer is no.

The recent decision in CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited, which involved two family businesses trading in commercial quantities of nappies and other products, examined whether having a registered trade mark can be a defence to a claim for misleading or deceptive conduct, or passing off.

CI JI Family Pty Limited (CJF) (whose sole director was Mr Ngo) had traded as 'Nappyland' in New South Wales since 1999. The business name 'Nappy Land' was registered in New South Wales to Mr Ngo and his wife. CJF traded under the logo:
It was not registered as a trade mark.