Trade marks – assignment and licence back – option to take assignment – whether variations agreed by conduct – implied terms – whether implied term that licence extends to replacement versions of licensed marks – whether implied term that marks be re-assigned if licence is breached – relevance of post-contractual conduct
Category: IP and Trade Practices
Patents – construction – whether literal interpretation warranted – indirect infringement – innovative step – appropriateness of orders “in aid of delivery up
Trade marks – inherent capacity to distinguish – whether YELLOW has any inherent capacity – deceptive similarity – use as a noun compared with use as an adjective
Trade marks – counterfeit goods – respondents manifestly unbelievable – compensatory damages – additional damages
Patents – innovation patent – unjustified threats
Geographical indications – “Champagne Jayne” – promotion on Internet and social media – misleading and deceptive conduct
Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd  FCA 1086 (9 October 2015) Trade marks – parallel importation – unpacking and repackaging due to tobacco labelling laws – whether...
Trade marks – objection to registration – deceptive similarity – likelihood of deception or confusion – MALTESERS vs MALTITOS
The Government has given industry one last chance to agree an industry code for a “graduated response” scheme for alleged online infringers before it will step in and impose its own scheme.
Dallas Buyers Club LLC is suing ISPs in Australia to identify subscribers alleged to have downloaded the film without permission
Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In the proceeding B. Braun Melsungen AG v Multigate Medical Devices Pty Ltd  FCA 1110, Pagone J held certain claims of two of B Braun’s patents for safety IV catheters valid and infringed by the conduct of Multigate. Both patents are for a safety needle protecting device for an intravenous catheter. Both claim the priority date of 12 June 1998 through the same chain of intermediate patents.
Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. Where confidential information about a plan for corporate recapitalisation was disclosed and there was a subsequent development by the recipient and completion of the transaction without further recourse to discloser, the issue at trial was whether elements of confidentiality made out and whether equitable compensation is payable.
Case note written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In Mastronardi Produce Ltd v Registrar of Trade Marks  FCA 1021 (19 September 2014) Justice Gordon has overturned a decision of the Registrar to reject the mark ZIMA in respect of tomatoes.
Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In Vertical Leisure Limited & Anor v Skyrunner Pty Ltd & Anor  FCCA 2033 (5 September 2014), the Federal Circuit Court has extended the record by awarding $300k in additional damages for infringement of Vertical Leisure’s X-POLE mark registered for pole-dancing poles. Vertical Leisure is the Australian and international market leader in respect of such products.