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

Tuesday, April 18, 2017

Fizzy fight froths up again

By David Bennett, Law Graduate

The makers of V energy drink have improved their position a little bit by beating back a pre-trial application by nemesis Coca-Cola Company to block crucial evidence from being read in the appeal to register the colour mark.

Frucor Beverages now has the go-ahead to refer to affidavit evidence that describes two market surveys which may prove crucial in its de novo appeal against the Registrar's refusal in 2016 to register Pantone 376C green (which they called V green) in respect of energy drinks.

Thursday, April 13, 2017

Online advertisers beware: the Federal Court draws a distinction between using a competitor's trade mark in AdWords vs metatags

By Natasha Dixon, Lawyer

A curious Full Federal Court decision has left Australian trade mark law in the context of online advertising in a state of confusion. Last week, the court held that use of a competitor's trade mark in metatags does constitute use as a trade mark, and is therefore trade mark infringement. That conclusion is perhaps difficult to reconcile with a 2016 Federal Court decision that ruled that use of a mark in Google AdWords does not constitute trade mark use.

Wednesday, April 12, 2017

Social Innovation Startup Bootcamp – Register now!

Is your startup focussed on social innovation? Are you an Indigenous-owned startup?

If the answer to either of the above was yes, and you (or someone you know) would you like to learn more about the challenges facing social innovation enterprises and Indigenous  entrepreneurship, and how to overcome them, then Allens invites you to attend the Social Innovation Startup Bootcamp!

Monday, April 10, 2017

Clipso/Clipsal confusion causes cancellation

By David Hunt, Lawyer

It's lights out for Clipso Electrical after the Federal Court determined that registration of its CLIPSO trade mark should be cancelled.

The Court reached its decision on the basis that the CLIPSO mark was deceptively similar to Clipsal Australia's CLIPSAL mark and had been registered in bad faith. The Court also found that, through use of the CLIPSO mark, Clipso had infringed Clipsal's mark, engaged in misleading and deceptive conduct and was liable in passing off.

However, in a small victory for Clipso, it was found that it had not infringed Clipsal's 'famous' Dolly Switch shape mark; a decision that further illuminates the difficulties of successfully prosecuting infringements of shape marks.

Thursday, April 6, 2017

Justifying damages for unjustified threats

By Lauren John, Associate

The Full Federal Court recently overturned an award of damages for unjustified threats totalling $1.5 million, and, in doing so, has emphasised that the key question the court must ask itself in every unjustified threats claim is: what damage was sustained as a result of the threats?

Section 128(1) of the Patents Act provides that, where a person, by means of circulars, advertisements or otherwise, threatens a person with infringement proceedings, or other similar proceedings, a person aggrieved may apply to a court for a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, and the recovery of any damages sustained as a result of the threats.

We previously reported on two decisions which shed light on the sorts of communications that are likely to constitute threats. The recent Full Federal Court decision in Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44 will provide some comfort to patentees, as it makes clear that only damage sustained as a result of the threat of infringement proceedings is compensable, not damage sustained as a result of infringement proceedings themselves.