Repost from LAW À LA MODE, Issue 13 – April 2014

By Katie Withers (Dubai)

A new law aimed at combating counterfeit goods has just passed through the UAE’s Federal National Council and is expected to become law shortly. This measure is part of the UAE’s drive to adopt international standards when it comes to IP crime, which is a particular concern in the run-up to EXPO 2020.


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By Melinda Upton and Rohan Singh

On 6 December 2013, the Full Court of the Federal Court of Australia dismissed an appeal by Australian Postal Corporation (Australia Post) and upheld the primary judge’s decision that “DIGITAL POST AUSTRALIA” is not deceptively similar to “AUSTRALIA POST” and therefore would not infringe.

Australia Post, which owns the “AUSTRALIA POST” trade mark, commenced proceedings against Digital Post Australia (DPA) after DPA announced that it would launch a digital mail box service under the trade mark “DIGITAL POST AUSTRALIA”. Australia Post was unsuccessful before the primary judge and appealed to the Full Court.

While the Full Court briefly considered the relevant class of consumers and the essential element of DPA’s mark, in forming their view the judges primarily engaged in a discussion of the expert evidence (by a “branding expert”) and survey evidence led by Australia Post.


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By Melinda Upton and Rebecca Kay (Sydney) 

In recent months, the Australian federal Treasury has come under intense pressure from local retailers and state treasures to extend the Australian goods and services tax (GST) to overseas-purchased goods and services. On 27 November 2013, the Australian Federal Treasurer, Joe Hockey, met with state treasurers to discuss these controversial proposals for reform.

At present, goods and services purchased by Australian consumers from overseas are exempt from the 10 per cent GST, provided they are valued at less than $1000. National retailers argue that this gives foreign retailers a price advantage and encourages Australian consumers to shop extraterritorially. In an era where the profile of international retailers in Australia is spiraling as ever-increasing numbers flock to the region’s shopping malls and high streets, the threat looms large. Some national stores such as Myer believe the import loophole affects them so badly that they may even be forced to consider shipping products via New Zealand, so as to put themselves on a level-playing field with foreign competitors.


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By Max Wenger and Kai Tumbraegel

On 17 October the German Federal High Court (“BGH”) has submitted a request for a preliminary ruling to the European Court of Justice (“ECJ”) to clarify whether a bank may refuse to reveal the name and the address of a bank account holder with reference to the bank secrecy, if the payment for a purchase of counterfeiting goods has been settled via the respective bank account (BGH I ZR 51/12).


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Reposted from July 2013 issue of DLA Piper’s Sports, Media and Entertainment Intelligence

By Giulio Coraggio

The Court of Palermo (Italy) held that Google as an hosting provider is not obliged to monitor the AdWords keywords selected by its users. The court did find liability for a local rental company, Sicily by Car, for the usage of the trademark “maggiore” held by a major rental company, Maggiore Rent SpA. This was only when done in connection with the usage of AdWords “dynamic keyword insertion” tool allowing to show the selected keyword as ad text in the sponsored link when users were searching such term.


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By Melinda Upton and Danielle Selig

What you need to know

On 22 May 2013, Justice Bennett refused an application in the Federal Court of Australia, by Cheqout Pty Ltd (Cheqout), to register the trade mark “superman workout”. Adopting the test relied upon by Justice Dodds-Streeton in Fry Consulting v Sports Warehouse Inc (No 2) (2012) (Fry), her Honour held that Cheqout made the application in bad faith as its “conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.”


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By John Wilks and Charles Harvey

UK IP legislation is changing.

First, the Enterprise and Regulatory Reform Act 2013 (which received Royal Assent on 25 April 2013), has just been published, and modifies UK copyright law (though not as drastically as some would have liked).

Secondly, the Government announced in the Queen’s Speech that it will be introducing an Intellectual Property Bill to make changes to the law of design and patents.


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By Kathryn Purcell-Hennessy (Brisbane, Australia)

Introduction

Internet use in Australia is widespread, with the Australian Bureau of Statistics reporting that in 2010-11 (the latest figures available), more than 50% of Australians aged between 15 and 34 created online content and downloaded videos, movies or music. More than 68% of Australians in those age brackets listened to music or watched videos or movies online and over 75% used the Internet for social media and online gaming in the same period. The Internet hosts increasing volumes of user-generated content, and encourages use of copyright materials in emerging ways, which may infringe copyright.


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