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

Tuesday, April 26, 2016

School's out for descriptive marks

By Mark Williams, Managing Associate

A recent decision of the Australian Trade Marks Office again confirms the difficulty of securing registration of trade marks consisting of descriptive words.

The dispute centred around an application by the University of Wollongong ('UOW') for the trade mark SYDNEY BUSINESS SCHOOL in respect of goods and services in classes 16, 35, 41 and 42. UOW, which was established in 1975, commenced use of the name SYDNEY BUSINESS SCHOOL in connection with its Faculty of Commerce in 1999. Despite being initially rejected for a lack of distinctiveness, UOW had managed to secure acceptance of its application by means of evidence of use of the mark demonstrating that the mark had become distinctive of UOW's goods and services as at the filing date of the application. In 2011, the University of Sydney ('UOS'), Australia's oldest University (established in 1850) renamed its Faculty of Economics and Business as 'The University of Sydney Business School'. UOS then opposed UOW's trade mark application.

Wednesday, April 20, 2016

Petition DENIED: SCOTUS declines to hear Authors Guild copyright challenge to Google Books

By Suzy Roessel, Senior Associate

The United States Supreme Court has denied a petition for a writ of certiorari filed by the Authors Guild and other individual authors to challenge a decision of the Federal Circuit in Authors Guild v. Google, Inc., 804 F. 3d 202 - Court of Appeals, 2nd Circuit 2015.

The Supreme Court's refusal to hear the challenge marks the end of the Google Books saga, which began in 2005, and leaves in place the decision of the US Court of Appeals for the Second Circuit. In that case, a unanimous bench said that the case "tests the boundaries of fair use" under US copyright law.

Through Google Books, Google made digital copies of books without permission of rights holders, scanned those copies, and established a publicly available search function whereby an internet user can freely search for content and view snippets of text containing the searched-for terms. Google also allowed participating libraries to download and retain digital copies of books they submit under agreements which commit the libraries not to use their digital copies in violation of the copyright laws.

Monday, April 18, 2016

Court provides clarity on Google AdWords and use 'as a trade mark'

by James Gonczi, Associate

Justice Katzmann's recent decision in Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255 has provided clarification on whether use of a competitor's trade mark as a Google AdWords search term, and as text in a sponsored link, constitutes use 'as a trade mark' for the purposes of section 120 of the Trade Marks Act. This is an issue which has had scant judicial consideration in Australia, so her Honour's decision provides useful clarification on the rights of advertisers to use their competitor's trade marks in the course of their online advertising.

The applicant (Veda) is a supplier of credit reporting services. Veda owns several trade marks incorporating the word 'Veda', which were registered in, among other classes, class 36 for various financial services, including credit enquiries (the Veda Trade Marks). The respondent (Malouf) operates several businesses which target people with poor credit ratings and assists customers to dispute and apply to have negative listings removed from credit reports compiled and maintained by credit reporting bodies such as Veda.

In the course of advertising its various businesses via Google, Malouf used at least 86 keywords which consisted of, or incorporated, the word 'veda'. The keywords themselves were not visible to consumers who used the Google search engine and located Veda's sponsored links. However, the sponsored links did include the word 'Veda' in conjunction with various other words in the headings of the sponsored links.