Burger Wars: The big Beef Between McDonald’s and Hungry Jack’s – McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412
K&L Gates | IP Law Watch
by Jasmine Jesty
2d ago
In McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412, fast-food giant McDonald’s and Australian dinner-time rival Hungry Jack’s faced off in the Federal Court of Australia over their burger names BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK. McDonald’s issued proceedings against Hungry Jack’s for trade mark infringement and, among other claims, alleged Hungry Jack’s engaged in misleading and deceptive conduct in breach of the Australian Consumer Law by misrepresenting to consumers that its BIG JACK burger contains 25% more Aussie beef than the BIG MAC. Justice Burley dismissed McDo ..read more
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Genuine Use Of a Trade Mark In Relation To Second-hand Parts: The Ferrari TESTAROSSA Case
K&L Gates | IP Law Watch
by Victoria Campbell
4d ago
In a recent decision, the EUIPO Board of Appeal provided further guidance on what constitutes genuine use of a trade mark in relation to sales of replacement parts in the EU. The Board of Appeal held that genuine use cannot be established if the proprietor of the mark is not actively involved in the sale of the second-hand goods or their spare parts. The decision follows the 2020 CJEU decision in the Ferrari Spa v Du case, where the CJEU held that use of a trade mark amounts to genuine use if the trade mark holder sells second-hand goods directly.  Background to the case Ferrari obtained ..read more
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Artificial Sweeter Decision Sours Halal Authority: Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175
K&L Gates | IP Law Watch
by Jasmine Jesty
5d ago
The Halal Certification Authority Pty Ltd (HCA) is a for-profit company that provides certification services to third parties. It is the owner of the following trade mark registered for, issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met: (HCA Badge). Flujo Sanguineo Holdings Pty Limited (Flujo) is a company responsible for natural sweetener brands “Natvia” and “Raw Earth”. Flujo’s products had been certified by the HCA as halal, and as such, it paid for the authorisation to use the HCA badge on its packaging. Howeve ..read more
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Upcoming UKIPO Representation Changes – The Effects of Brexit Continue
K&L Gates | IP Law Watch
by Jasmine Jesty
2w ago
One of the effects of Brexit was that the UK introduced a requirement for a UK based representative for all UK national trade marks, patents and designs and international registrations designating the UK in January 2021. However, there was a grace period for comparable trade marks or re-registered designs deriving from an EU national trade mark or international registration designating the EU. The UKIPO has issued guidance though confirming that the grace period will end on 1 January 2024 and from then: Any right holder who owns comparable trade marks or re-registered designs will be required ..read more
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WIPO Updates Deadlines for Responses to Provisional Refusals
K&L Gates | IP Law Watch
by Jasmine Jesty
3w ago
Businesses seeking registration of trade marks overseas will have greater clarity on deadlines for responding to provisional refusals, following an update by the World Intellectual Property Office (WIPO). As of 1 November 2023, local intellectual property offices are required to give the holders of Madrid System international trade mark registrations (IR Holders) a minimum period of 60 days or two months to respond to provisional refusals. International Trade Mark Registrations At a high level, the Madrid System provides a mechanism for filing trade mark applications in multiple countries in a ..read more
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In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications
K&L Gates | IP Law Watch
by Jasmine Jesty
2M ago
In the field of intellectual property, the interplay between trade marks and patent claims is very rarely discussed, given the distinct scope of protection provided by each. In Australia and New Zealand, patent examiners tend to raise an immediate clarity objection when a trade mark finds its way into a claim. This concern arises from the fact that a trade mark is an identifier of origin, and products bearing them can undergo variations across jurisdictions and time frames. This makes the intended scope of the claim unclear in many situations. Consequently, Australian and New Zealand examiners ..read more
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UK Trade Mark and Design Reform Consultation
K&L Gates | IP Law Watch
by Jasmine Jesty
2M ago
The UKIPO transformation programme The UKIPO launched a transformation programme to modernise their trade mark and design services by the end of 2025. The aim is to replace their existing processes with a fully digitalised system in line with increased volume of work and customer demand. The programme is currently going through a second consultation, which will run for ten weeks until 31 October 2023 (i.e. deadline for participants to file a response). A response to the UKIPO consultation can be filed by using a form on Citizen Space (see here), or by sending an email to TransformationConsulta ..read more
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Federal Circuit Vacates and Remands PTAB Decision for Vaguely and Ambiguously Weighing Secondary Considerations
K&L Gates | IP Law Watch
by Jasmine Jesty
3M ago
On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit reversed and remanded the Patent Trial and Appeal Board’s decision in Volvo Penta of the Americas, LLC v. Brunswick Corporation, finding the Board failed to adequately analyze and weigh the secondary considerations identified by Volvo. Volvo owns U.S. Patent No. 9,630,692 (“692 Patent”), a patent related to a boat motor configuration that increases the distance between the propeller and swimmers in the water.i In 2015, Volvo launched its commercial embodiment of the ’692 Patent, the Forward Drive.ii In August 2020, Brunswick ..read more
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IP Australia Releases Long-Awaited Trade Mark Classification Guidelines on Emerging Technologies
K&L Gates | IP Law Watch
by Jasmine Jesty
3M ago
The metaverse and related technologies like virtual goods, non-fungible tokens (NFTs) and blockchain, represent a fundamental shift in how we interact with the internet, as the distinction between our activity online and in real life begins to blur. These emerging technologies present enormous opportunities for businesses, but bring with them a number of difficult legal challenges. For some time, in Australia and many other jurisdictions, it was not clear whether current trade mark registrations for physical goods and services would sufficiently protect brands in the virtual world.  ..read more
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Batman Won Another (Trade Mark) Battle
K&L Gates | IP Law Watch
by Liz Bodey
4M ago
Batman may be a superhero but it is the General Court who has come to the rescue following an invalidation action bought against DC Comics, a Warner Bros subsidiary, by Commerciale Italiana Srl, a wholesale retailer of costumes. In 2019, the Italian company applied for the invalidation of the well-known Batman logo (EUTM 000038158) for some of the goods in classes 25 and 28 (including clothing, footwear, and costumes), based on lack of distinctive character. The Case The invalidation action was refused by the EUIPO and subsequently by the EUIPO board of appeal. The reasoning given by the EUIPO ..read more
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