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 Melinda Upton and Carly Roberts

The Federal Court recently handed down judgment in Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933.  Louis Vuitton Malletier (Louis Vuitton) alleged that Sonya Valentine Pty Ltd (Sonya Valentine) had infringed its trade marks and engaged in misleading and deceptive conduct and unfair practices under the Australian Consumer Law (ACL) by importing into Australia and selling sunglasses bearing the mark “LOUIS V” and this symbol:

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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 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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By Nicholas Cole, Special Counsel, DLA Piper Australia

On 14th September 2011, the Australian Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy announced an independent inquiry into the Australian media (Media Inquiry).
The Media Inquiry significantly expands the scope of the Government’s existing review of the policy and regulatory frameworks that apply to the converged media and communications landscape in Australia (Convergence Review).

On 14th September 2011, the Australian Minister for Broadband, Communications and the Digital Economy, Senator Stephen Conroy announced an independent inquiry into the Australian media (Media Inquiry).

The Media Inquiry significantly expands the scope of the Government’s existing review of the policy and regulatory frameworks that apply to the converged media and communications landscape in Australia (Convergence Review).


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Posted by Scott Buchanan, Partner DLA Piper Australia

In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:

  • National brand owners have to accept competition represented by emergence of home brands and furthermore, that home brands can often quite lawfully borrow from, and leverage off, the look and feel and get up of a national brand.  
  • The ability for a national brand owner to successfully enforce its intellectual property rights will typically turn on whether the company has taken positive steps of registering its trade mark rights and demonstrating ownership of other packaging rights – eg. trade dress, copyright.
  • Proof of ownership, particularly registered rights, will give a trade mark owner the necessary ‘cut through’ to force a meaningful conversation with private brand owners.
  • Any aspect of packaging which you regard as your valuable IP – eg colours, shapes, layout and design – should be registered as individual trade marks. The benefits of registration, when it comes to enforcement and protection of your patch, far outweigh relatively minor costs of registration.

During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don’t infringe upon third party rights. Target‘s in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand.  Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.


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