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On 28 February 2018, the European Commission released its draft withdrawal agreement setting out a proposal on the arrangements for the withdrawal of the UK from the EU (Withdrawal Agreement). The full text of the Withdrawal Agreement can be viewed here: European Commission’s Draft Withdrawal Agreement dated 28 February 2018 (see Title IV on Intellectual Property).

This draft provides rights holders with some insight on the European Commission’s perspective on what the future might look like for EU trade marks in a post-Brexit UK. At the date of this article, the UK Government is yet to articulate its own proposal for the status of these rights post-Brexit.

The Withdrawal Agreement is proposed to take effect on 30 March 2019, being the date on which the UK will formally separate from the EU. However, the European Commission has acknowledged the UK Government’s request for a 2-year transition period.  If this request is granted, the transition period is expected to end on 31 December 2020. This date is significant because many of the protections for EU IP rights that are described in the draft Withdrawal Agreement will only apply to those rights which are registered before the end of the transitional period.

The European Commission proposes the following positions in relation to EU trade marks:

  • Continued protection in the UK of EU registered trade marks: EU trade marks registered before the end of the transition period (including international registrations designating the UK) will continue to be registered and enforceable in the UK without re-examination, through the grant of a UK trade mark for the same sign, goods and services for which the EU right was registered. The priority date for the EU trade mark will become the priority date of the UK trade marks, and the term of protection of the UK trade mark must be at least equal to the remaining term of the corresponding EU trade mark.
  • Registration procedure: The registration of EU trade marks as UK trade marks would be carried out by “the relevant UK entities” (presumably the UK Intellectual Property Office) using information on the EU Intellectual Property Office registers.  EU rights holders should take the opportunity to ensure their registrations are up to date in the EU now, to avoid the likely delay and disruption that will occur when the UK registration process commences. The UK registration will be completed at no cost to rights holders, the first fees payable will be upon renewal (which will be the corresponding renewal date under EU law).
  • Revocation and invalidity: If an EU trade mark is declared invalid or revoked pursuant to EU proceedings that were ongoing at the last day of the transition period, the corresponding UK trade mark will also be invalid or revoked. However for invalidity or revocation proceedings commenced following the end of the transition period, there is scope for inconsistent decisions to be made as between the UK and the EU. The Withdrawal Agreement protects rights holders from cancellation for non-use in the UK immediately following the transition period, providing that the new UK trade marks may not be revoked for non-use on the basis that they were not in use in the UK before the end of the transition period.  Rights holders would therefore have a grace period following the transition period to commence use of the mark in the UK before it becomes liable to revocation under UK trade mark law.
  • Exhaustion of rights: Unsurprisingly, the Withdrawal Agreement makes it clear that rights which were exhausted under EU law before the end of the transition period will remain exhausted in both the EU and the UK after the end of the transition period.
  • Continued protection in the UK of EU geographical indications and other similar rights: EU geographical indications, designations of origin or traditional specialities which are protected in the EU on the last day of the transition period will continue to be protected in the UK from the end of the transition period pursuant to a UK right that provides at least the same level of protection as was provided under EU law.

What happens now?

The draft Withdrawal Agreement will now be discussed amongst the European Council and the Brexit Steering Group of the European Parliament, before eventually being provided to the UK Government which will open formal negotiations. The European Commission hopes that negotiations will be concluded by October 2018, following which the agreed draft will be put to a vote of the European Parliament. The UK will also need to ratify the Withdrawal Agreement according to its own procedures before it can become binding.

Whilst the draft Withdrawal Agreement remains subject to vast uncertainties, it does at least represent a clear statement of intention from the European Commission. Rights holders will be comforted to see that the European Commission intends to protect established registered EU IP rights and that the current proposal does not impose procedural obstacles to maintaining those rights. Clearly the positions set out in the Withdrawal Agreement are only a starting point, but they do at least provide rights holders with a basis against which to consider their trade mark portfolios and start to form post-Brexit trade mark strategies.

We would like to acknowledge the contribution of Sage Nemra in preparing this article.

For more details on what Brexit will mean for your business, please visit our dedicated Brexit site.

The post The European Commission has its say: EU trade marks post-Brexit appeared first on The Brand Protection Blog.

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The internet is now the normal conduit for everyday personal, commercial and social transactions. It is more important than ever to ensure that your consumers know where to find your business online, and that no third parties are seeking to trade off your reputation in the online space.

Domain names are the primary form of online address. This creates potentially enormous value in domain names and makes them a tradable commodity. Domain names are particularly valuable if they wholly incorporate the trade mark (Google.com, Facebook.com, Amazon.com) of a business or if the domain name has the dual function of describing the activities of the business as well as comprising its trade mark (finder.com.au, carsales.com.au, comparethemarket.com.au). It has been long known that with this value comes risk for businesses. The pirates and kidnappers of old have been replaced by their equivalent in the digital age: cybersquatters.

Yet not all cybersquatters are the same;

  • The opportunistic cybersquatter – they simply see that a domain name containing a popular trade mark is available and register it;
  • The calculating cybersquatter – they actively troll domain name registries for domain names registrations that they can sell. Some even go so far as running algorithms to search domain name registers for lapsed domain name registrations, and re-register them the same day;
  • The business case cybersquatter – they see registering and selling domain names as a legitimate business. They often object to being called a cybersquatter, arguing they are entitled to register and sell domain names. Some literally hold thousands of domain names available for sale.

Regardless of the type of cybersquatter, there are a variety of options available to businesses to deal with these issues. In this article, we look at some of the pros and cons of the different options, and some recent domain disputes, to help you decide which option might be most appropriate for your business.

1) Bring a complaint under the Uniform Dispute Resolution Policy (UDRP)

This can be the best method if:

  • the problematic domain name is a generic top level domain or gTLD (such as .com, .net and the like);
  • you have registered trade mark rights in the subject of the domain name, or a reputation that would ground a claim to the domain;
  • the registrant of the domain name has used a privacy agent to keep its identity hidden;
  • the registrant is using the domain name in bad faith (perhaps offering counterfeit products through the website on the domain name); and
  • you are only interested in the recovery of the domain name and not additional remedies

Lego is a prolific user of this service, having lodged 19 domain name complaints in 2017. In one such instance, Lego lodged a complaint against the domain name legointernet.com. The UDRP Panel determined that the domain should be transferred to Lego given the domain name contained an element that was confusingly similar to the LEGO trade mark, likely confusion with Lego’s existing suite of domain names, and implicit bad faith, evidenced by the domain being used without authorisation.

2) Bring a complaint under the Uniform Rapid Suspension System (URS)

The URS is a newer, faster and cheaper process than the UDRP. However, it is more limited as it requires a higher standard of proof and complainants are required to have a registered trade mark. The URS is a good method if:

  • your brand is a registered trade mark (or an unregistered mark that a court has validated);
  • the infringing domain is on a newer (post 2012) gTLDs (eg, .clothing, .bike and the like);
  • you need a quick turn-around and do not want to file complex submissions;
  • you want a cheaper resolution than that provided for by the UDRP (URS complaint fees start at $375, compared to $1300 for the UDRP)

Virgin Group recently used this procedure to suspend the operation of a number of ‘Virgin’ themed gTLDs, such as virgingalactic.group, being operated out of China. Despite Virgin’s lack of presence in the commercial space industry in China, the Examiner ordered the suspension of the domains on the basis that Virgin’s extensive brand recognition and portfolio of registered marks implied bad faith registration.

3) Bring a complaint under the .au Dispute Resolution Policy (auDRP)

This can be the best method if:

  • the domain name is an .au domain;
  • the holder has no obvious rights in the domain name or does not fulfil the eligibility criteria for holding an .au domain; and
  • you do not necessarily have rights of your own in the domain name and do not wish to acquire the domain name itself, but merely want to prevent the current holder from having it.

A company called dkcb Pty Ltd opted to bring a auDRP complaint in 2017 (dkcb Pty Ltd v Eveready Pty Ltd). Eveready, a courier company, registered the domain name rushcouriers.com.au. dkcb complained to the auDA, stating the domain name clashed with their business name ‘Rush Express’, as well as their registered domain name rushexpress.com.au. dkcb had been trading for several years under the name ‘Rush Express’, and had incorporated the name into their emails and website, as well as on the side of their vans.

The auDA Panel found that Eveready’s domain name was confusingly similar to dkcb’s. The Panel also found that, as Eveready and dkcb operated within a short distance of each other in the same suburb of Sydney, Eveready must have been aware of dkcb’s business and considered this enough to deem that Eveready had used the domain name in bad faith. The Panel ordered that the domain name be transferred to dkcb.

4)  Pay for it!

Although it can feel immensely unsatisfying at times, paying a cybersquatter for a domain name may, in some cases, be the most practical outcome in terms of time and costs. This is particularly so if your business does not have the time to wait for complaint decisions or is unsure whether a panel decision would go in your favour. There are now companies and private investigators that can act and negotiate with cybersquatters on your behalf. Using intermediaries can be useful if you are concerned that a cybersquatter, on knowing your interest in the domain name, may mysteriously increase the purchase price.

5) Pick another domain name

This could be also be a more practical option if your business simply does not have the appetite or the capital to purchase the domain name, and if you believe that consumer confusion is unlikely.

For instance, BHP Billiton recently refused to pay an alleged $10 million to cybersquatters for south32.com, the name of its Perth-based metals and mining sister company. Instead the business opted for the domain name south32.net.

6) Commence legal proceedings for trade mark infringement, passing off, and/or for breach of the misleading or deceptive conduct provisions of the Australian Consumer Law.

Today, domain name disputes being brought before the courts are less common, given the expense and time required for an outcome that can usually be achieved more efficiently by other methods. However, if the offender is engaging in a suite of intellectual property infringements, of which domain name squatting is just one, this may be the most appropriate course of action.

Take away comment

Given the value of domains is unlikely to diminish, cybersquatters and domain name disputes are not going to go away. However, over time different mechanisms have developed to make it simpler, easier and cheaper for businesses to deal with cybersquatting. The system isn’t perfect, but if you are aware of the options open to you, a resolution can often be reached.

Businesses should also take proactive steps to ensure that they secure any domain names they actually want to use for their own businesses early, and then maintain those domains appropriately, to help avoid some of the potential cybersquatting issues arising.

The authors would like to thank summer clerk Alexander Field for his research in preparing this article.

The post Cybersquatters – How to protect your brand from unwanted ‘guests’ online appeared first on The Brand Protection Blog.

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Thanks to two recent rulings of the US Supreme Court and the Court of Appeals of the Federal Circuit Court, trade marks containing “disparaging”, “immoral” and “scandalous” matter are no longer barred from obtaining registration in the United States of America. In the past, the US Patent and Trade Mark Office (USPTO) had the power to refuse to register trade marks containing such matter under provisions that have now been struck down for violating the First Amendment right to free speech.

In this article, we consider the current position in the United States in the wake of these decisions, and compare this with the interpretation and application of the equivalent Australian provision dealing with “scandalous” trade marks.

The current position in the United States

Section 2(a) of the US Lanham (Trademark) Act provides that no trade mark shall be refused registration unless it, inter alia, “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage”.

In the case law, “immoral” or “scandalous” matter has been defined as:

“shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable…giving offense to the conscience or moral feelings…calling out for condemnation; vulgar.” [1]

The USPTO’s power to reject trade mark applications containing “disparaging” matter was challenged when an Asian-American rock-dance band applied to trade mark their band name THE SLANTS. The USPTO refused registration, on the basis that the word “slants” was “disparaging” to the Asian-American community (of which, it should be remembered, the members of the band were a part). Like true rock stars, the band took their case all the way to the Supreme Court, which ruled that a ban on the registration of “disparaging” trade marks violated the right to free speech under the First Amendment.

Hot off the heels of this ruling, in December 2017 the Court of Appeals for the Federal Circuit handed down the decision of In Re: Erik Brunetti (Brunetti). Brunetti concerned a trade mark application by the founder of an American lifestyle and clothing brand, cheekily named FUCT. Mr Brunetti’s application was refused on the basis that it is the phonetic equivalent of a “vulgar” word.

Mr Brunetti appealed the decision up to the Court of Appeals for the Federal Circuit Court, which ultimately found that the ban on “immoral” and “scandalous” marks was a restriction on free speech, and not narrowly tailored to the protection of a government interest. While the Court recognised that the word FUCT was in fact “vulgar”, it held that the First Amendment protects “even private expression which is offensive to a substantial composite of the general public” and the provision was struck down as unconstitutional.

Following Brunetti, commentators expect the USPTO will face a flood of applications for controversial, boundary-pushing trade marks that were previously unlikely to have been accepted.

Scandals down under

Section 42(a) of the Trade Marks Act 1995 (Cth) is the Australian equivalent of Section 2(a) providing, in even stronger terms than its US counterpart, that “an application for the registration of a trade mark must be rejected if the trade mark contains or consists of scandalous matter” (emphasis added).

But, of course, there is no Australian equivalent to the First Amendment. How, then, would a trade mark application for FUCT fare under Australian law?

Some guidance on the interpretation of “scandalous” is provided by the Trade Marks Office Manual of Practice & Procedure, which states that:

“While changes in society have resulted in fairly broad acceptance of many scatological and suggestive words, there are some words which are likely to cause offence across a wide section of the community. Whether a word considered by many as offensive language is acceptable as a trade mark will depend to some degree on the amount of invention and imagination used to present it.  Phonetic equivalents of strong but commonly used expressions…will generally be acceptable if the expression is sufficiently modified by way of humour, thoroughly idiosyncratic spelling…or other factors.”

This is no doubt how popular clothing brand French Connection has been able to obtain multiple registrations for FCUK (ostensibly an acronym for the name French Connection United Kingdom). Other inventively modified trade marks that have achieved registration include FAR KEW, FARKOFF and NUCKIN’ FUTS. However, the Manual is clear that more overt phonetic equivalents such as FUCT will still be rejected under section 42(a).

In deciding whether a mark is too “scandalous” for registration, the Registrar will consider the merits of each case, taking into account the words or images in the trade mark, the intended market for the goods and services and the level of acceptance of the term within the general population.

A number of cheeky variations on the “F word” seem to be registrable these days on the basis that the word is now commonly used in Australia and, consequently, is no longer offensive or shocking to a substantial proportion of the population. However, other words remain decidedly off limits.

Take an application to register the trade mark KUNT for clothing which was, for obvious reasons, rejected under section 42(a). On appeal, the hearing officer noted that:

“the denotations of some foreign language or slang obscenities may be found to be so obscure to Australians, or meaningful only within the sub-culture which uses and accepts them without shock, that they could be accepted for possible registration”.[2]

However, in this case (and despite the applicant’s argument that the trade mark was a reference to a Dutch word “kunnen” meaning “you can”), the hearing officer determined that the word was far more likely to be viewed as a crude variation on the English obscenity.

It will be interesting to see whether the recent developments in the United States have any impact on the way trade mark applications are determined in Australia. Ultimately, however, determining whether a trade mark is scandalous or just in bad taste is something of a subjective test, on which reasonable minds (particularly those of different generations or backgrounds) may disagree. Some might consider that Nuckin’ Futs!

The authors would like to thank summer clerk Siobhan Rooney for her contribution in researching this article.

[1] In re McGinley, 660 F.2d 481, 485 n.6 (CCPA 1981) AT.

[2] Kuntstreetwear Pty Ltd’s Trade Mark Application (2007) 73 IPR 438 at 449.

The post Shocking your clients just became passé: US Court takes away the edge from scandalous brands appeared first on The Brand Protection Blog.

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2018 marks the publication of the first Trademarks Law Review from the Law Review series.  The Law Review collates cross-border legal insights and analysis across a range of practice areas and is a useful resource for in-house counsel of global organisations. 

The Australian chapter of 2018 Trademarks Law Review was co-authored by Frances Drummond and Sophie Lees, both intellectual property lawyers based in Sydney.

The chapter provides a high level introduction Australian trade mark law and describes the process for registering and enforcing a trade marks in both a civil and a criminal context, which may be useful for in-house counsel who are managing brands and who do not have an intellectual property background.

Alongside an introduction to core trade mark law principles, the chapter provides insights into some of the key trade mark law cases of the last 12 months.  Significant cases in 2017 included a decision about trade mark infringement through metatag use and a judgement that explored the relevance of intention to the Australian Consumer Law civil action of misleading and deceptive conduct.

Finally, the chapter offers predictions as to the key developments that may impact the Australian trade mark system in 2018. This includes analysis of the positive, but cautious, approach that the Australian Government has taken to the sweeping reforms proposed by the Productivity Commission in its 2016 report on the Australian intellectual property system.

The full text of the article may be found here: https://thelawreviews.co.uk/edition/the-trademarks-law-review-edition-1/1152190/australia

The post Back to Basics – Australian Trade Mark Law 101 appeared first on The Brand Protection Blog.

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A Canadian trademark registered in association with goods must be used in “the normal course of trade”.

Riches, McKenzie & Herbert LLP v. Cosmetic Warriors Limited, 2018 FC 63, considered whether Cosmetic Warriors’ registered trademark, LUSH, was used in association with t-shirts in the normal course of trade.  Cosmetic Warriors sold the t-shirts to employees for promotional purposes.

On the evidence, Justice Manson concluded that promotional use intended to generate goodwill in a separate business does not constitute use in the normal course of trade:

Where items (here, t-shirts) are sold at cost for promotional purposes to employees only, to generate goodwill in a different business (here, cosmetics), it is difficult to find how that type of sale can be said to be in the normal course of trade … given the absence of profit, the promotional and de minimis nature of the sales to employees, and the fact that the Respondent is not normally in the business of selling clothing, the Registrar’s determination that the sales were “in the normal course of trade” is unreasonable.

A Canadian trademark that is registered for use in association with goods that are only distributed for promotional purposes and without profit is potentially vulnerable.  Trademark owners must carefully document evidence of use in the normal course of trade to repel such post-registration attacks.

The post Cosmetic Warriors Lose Trademark Battle – No Use in “the Normal Course of Trade” appeared first on The Brand Protection Blog.

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As many of you will know, the Nice Classification is the international system used to classify goods and services for trade mark purposes. The World Intellectual Property Office regularly updates and amends the Nice Classification in order to ensure that the lists remain current and include new products and services that come to market.

On 1 January 2018, the latest edition of the Nice Classification (the 11th Edition) came into force. There are a number of changes, including amendments to class headings. Significantly, however, no goods or services have changed classes in this edition. For the most part, changes include clarification of current wording and the addition of new goods and services.

Provided below is a brief snapshot of the modifications to the Nice Classification. The table details all changes to the class headings and selected examples of the amendments and additions to the classes. You will be relieved to know that ‘selfie lenses’ are now expressly listed in class 9.

Class Changes to class heading Examples of changes to goods/services in the class Examples of new items now expressly included in the class
Class 1


Chemicals used for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing and fire prevention compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; substances for tanning substances animal skins and hides; adhesives used for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.  
  • gypsum for use as a fertilizer
Class 2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; mordants; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.   ·          
Class 3


Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; Bleaching bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions; non-medicated dentifrices.
  • laundry wax


  • chemical cleaning preparations for household purposes·
  • cosmetics for children
  • breath freshening preparations for personal hygiene
Class 4 Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.   ·          
Class 5 No change
  • belts for sanitary napkins [towels]
  • menstruation bandages, sanitary pads
  • acai powder dietary supplements
  • vitamin supplement patches
Class 6 No change   ·          
Class 7 Machines and, machine tools, power-operated tools; motors and engines (, except for land vehicles); machine coupling and transmission components (, except for land vehicles); agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
  • garbage [waste] disposals disposal units
  • sidewalks [moving pavements]sidewalks
  • 3D printing pens
  • vegetable spiralizers, electric
Class 8 Hand tools and implements (, hand-operated); cutlery; side arms, except firearms; razors.  
  • fruit segmenters
  • hair braiders, electric
Class 9 No change
  • optical goods eyewear
  • reflecting discs reflective articles for wear, for the prevention of traffic accidents
  • teaching robots
  • computer software platforms, recorded or downloadable
  • security surveillance robots
  • selfie lenses
Class 10 No change
  • apparatus for DNA and RNA exams testing for medical purposes
  • surgical robots
  • air beds for medical purposes
  • hydrogen inhalers
Class 11 No change
  • lamps for directional signals of automobiles
  • head torche
  • ice-cream making machines
Class 12 No change
  • direction signals signal arms for vehicles
  • wagons mine cars
  • robotic cars
  • rubbish trucks
Class 13 No change      
Class 14 No change  
Class 15 No change  
  • robotic drums
Class 16 Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists’ and drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.
  • paper ribbons, other than haberdashery or hair decorations
  • Xuan paper papers for Chinese painting and calligraphy
  • bibs, sleeved, of paper
  • name badge holders [office requisites]
Class 17 No change     
Class 18 No change  
  • motorized suitcases
  • hiking sticks
Class 19 No change   ·          
Class 20 No change  
  • camping mattresses
  • air beds, not for medical purposes
Class 21 Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.  
  • inflatable bath tubs for babies
  • cake decorating tips and tubes
Class 22 No change
  • mesh bags for washing hosiery laundry
  • dust sheets
Class 23 No change   ·          
Class 24 No change   ·          
Class 25 No change   ·          
Class 26 No change
  • cords for rimming, for clothing trimming
  • hair curlers, electric and non-electric, other than hand implements
  • ribbons for the hair
  • ribbons and bows, not of paper, for gift wrapping
  • artificial Christmas wreaths
  • hatbands
Class 27 No change   ·          
Class 28 No change  
  • toy imitation cosmetics
  • swimming pool air floats
  • portable games and toys incorporating telecommunication functions
Class 29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats for food.   ·          
Class 30 Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).  
  • cranberry sauce [condiment]
  • chewing gum for breath freshening
Class 31 No change  
Class 32  No change
  • preparations for making mineral water 
  • energy drinks
  • barley wine [beer]
Class 33 No change   ·          
Class 34 No change   ·          
Class 35 No change  
  • promotion of goods and services through sponsorship of sports events
  • market intelligence services
  • online retail services for downloadable and pre-recorded music and movies
Class 36 No change
  • check [cheque] verification
    check verification
Class 37 No change
  • vehicle lubrication [greasing]
    vehicle greasing
Class 38 No change   ·          
Class 39 No change   ·          
Class 40 No change   ·          
Class 41 No change
  • providing films, not downloadable, via video-on-demand transmission services
  • conducting guided climbing tours
  • cultural, educational or entertainment services provided by art galleries
Class 42 No change
  • platform as a services [PaaS]
  • software development in the framework of software publishing
Class 43 No change
Class 44 No change
Class 45 No change
  • legal watching services
  • licensing [legal services] in the framework of software publishing

The post Trade mark update: 11th Edition of the Nice Classification came into force on 1 January 2018 appeared first on The Brand Protection Blog.

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It’s no surprise that many in the professional and legal services industries are putting increasing thought into what the post-Brexit world will, or should, look like. The Chartered Institute of Patent Attorneys (CIPA) in the UK has been the latest body to put its two cents (or pennies) into the mix. Brand owners from all over the world are watching what might unfold so they can ensure their valuable brands are protected appropriately.

CIPA has drafted a joint note with the Law Society, the IP Bar, the Chartered Institute of Trade Mark Attorneys and the IP Federation, which details their view on what the UK Government should be aiming for, with respect to intellectual property, pre- and post-Brexit. The note emphasises that the UK is a strong provider of IP services and that the UK industry and legal sector gains significant economic benefits from registering and using IP under the various EU laws and processes. The note focusses on the importance of ensuring “continuity and certainty of IP law”.

A full copy of the note can be found here http://www.cipa.org.uk/policy-and-news/brexit-updates/ip-and-brexit-key-requests-to-government//.  In summary, the note covers the following requests for action by the UK Government;

  • Continuation of EU-derived IP rights: The note advises that the UK Government should seek to negotiate a package of rights to secure the continuation of all existing substantive and procedural pan-European rights (such as EU trade marks, registered Community designs, unregistered Community design right and supplementary protection certificates) and defences to them. If this is not achievable, the note suggests that the Government should legislate for the automatic continuation in the UK of EU rights;
  • Unitary Patent / Unified Patent Court Agreement: The Unified Patent Court has been in the making for many years and could be ready to open this year. The note highlights that the UK Government should (i) confirm that the UK intents to stay in the UPC and that it intends to abide by the terms of the UPC agreement post Brexit; (ii) work towards opening the UPC as soon as possible; (iii) work with other UPC Member States to ensure there are no obstacles to the UK participation’s in the UPC following Brexit;
  • Exhaustion of rights: Currently members of the EU abide by the principles of the ‘exhaustion of rights’ with respect to IP rights. The note advises that the UK Government should consult widely, decide upon and publicise its position on the exhaustion of rights. In the meantime, the note also suggest that the Government should make it clear that the current regime will continue, and that the position would be reciprocated throughout the EEA;
  • Rights of representation: The note remarks that the Government should treat the continued rights of representation of UK IP professionals as a priority and should ensure that they continue in all relevant EU fora. It emphasises that relevant employees of UK companies should continue to have rights of representation before EU bodies including the CJEU, the EUIPO, as well as the UPC; and
  • Mutual recognition of judgments: The note stresses that the Government should urgently negotiate arrangements with the EU that continue in force the substance of the current arrangements under the Rome and Brussels regulations.

Let’s watch this space!

The post What Brexit means for IP: The UK Law Society, the IP Bar, CIPA and CITMA weigh in on Brexit strategy appeared first on The Brand Protection Blog.

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Businesses have until 1 July 2018 to transition to a new system of country of origin labelling for food products in Australia. The incoming Country of Origin Food Labelling Information Standard 2016 (Standard) imposes stricter labelling requirements on “priority”, as opposed to “non-priority”, foods and is intended to help consumers better understand where their food comes from.

Uncertainty comes as part and parcel of any regulatory overhaul and it’s too early to tell how some aspects of the new system will work in practice. Below, we summarise the key takeaways for those impacted to consider under the new regulations. Read the full update here for further analysis.

Key takeaways

  • Always bear in mind the overarching prohibition of conduct that is misleading or deceptive (or is likely to mislead or deceive), including when developing labelling to comply with the new system.
  • Non-priority foods (e.g., lollies, ice cream, biscuits, ready to drink coffee, wine etc.) are subject to less onerous labelling requirements than priority foods (priority foods being everything but for non-priority foods). However, if a business wants to use the green & gold Kangaroo symbol in relation to a non-priority food, it must comply with the stricter rules that apply to priority foods.
  • If a priority food claims to have been “made in Australia”, the specific nature of any minor overseas processing must also be declared on the label.
  • If your Australian ingredients are sent overseas for processing and re-imported into Australia, you may not be able to claim that your product is grown, produced or made in Australia.

If your business is in the process of updating its packaging to comply with the new Standard and has any questions, please get in touch with a member of our IP Team.

The post New country of origin food labelling requirements for Australia – is your packaging up to scratch? appeared first on The Brand Protection Blog.

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As all start-ups know, having a great idea is important, but it’s not enough to ensure your idea gets off the ground – and stays there! The sad reality is that the vast majority of start-ups are destined for failure: for every Facebook, Uber and Airbnb, there are many more whose names you’ve never heard and whose ideas (great as they might have been) will never see the light of day.

As Thomas Edison said over a century ago, genius is one per cent inspiration and ninety-nine per cent perspiration, and the old adage still rings true for start-ups today. So, once you’ve had that lightbulb moment, how can you take your inspiration and transform it into a viable business enterprise or successful commercial product? A government grant or access to private funding could make all the difference in providing the opportunity for you to commercialise your IP and take your idea to the next level.

In December 2015, the Australian Government launched the National Innovation and Science Agenda, which comprises 24 initiatives worth $1.1 billion over four years. This demonstrates the Government’s commitment to promoting innovation in our economy, and supporting start-ups and entrepreneurs who might be sitting on the next great Aussie invention. After all, this is the country that can claim credit for life-changing inventions including the Hills Hoist, the black box flight recorder, plastic banknotes, the bionic ear, Wi-Fi technology and the humble goon bag.

As part of this Agenda and other Government initiatives, there are a wide variety of grants and funding programs available to assist Australian start-ups and businesses who are eager to develop and commercialise their potentially valuable IP. Below are just a handful of the initiatives you may be eligible to take advantage of:

  • For entrepreneurs: You may be eligible to qualify for the Entrepreneurs’ Programme, through which you can apply for an Accelerating Commercialisation Grant or a Business Growth Grant, and get free expert advice on your venture.
  • For research and development entities: You can claim a tax offset against eligible research and development expenditure in your business during the previous tax year.
  • For Aussie start-ups making the leap overseas: The Austrade Landing Pad initiative could help you enter the global market, through a 90 day immersion in an innovation hub in Singapore, Berlin, Shanghai, Tel Aviv or San Francisco.
  • For deep tech founders: Main Sequence Ventures (which runs the CSIRO’s Innovation Fund) invests in companies translating research generated in the publicly funded research sector, to take them global. As well as access to government funding and additional private sector investment, you will also have access to the expert knowledge of CSIRO scientists in a wide range of fields. 
  • For businesses keen to develop new ideas: Get connected with an expert Innovation Facilitator, who will help you identify new technology, knowledge and expertise to help your business. You can then apply for an Innovation Connections Grant to work with a research organisation to develop new ideas.
  • For biomedical businesses: The Biomedical Translation Fund comprises $500 million, half provided by government funding which has been matched by private sector investors, to invest in commercialising promising medical discoveries.
  • For exporters: Exporters out of Australia can claim a reimbursement of part of your export promotion expenses. 
  • For incubators: The Incubator Support Initiative provides support for incubators and accelerators helping start-ups enter global markets. 
  • For investors: Venture Capital Limited Partnerships offer tax exemptions for those investing at the early stages of a start-up.

Eligibility and suitability for these and other grants and initiatives will depend on your unique situation, and the array of options, each with their own requirements and considerations, can seem daunting, even overwhelming at times.

As part of our new IP Essentials package for start-ups, we can help you navigate these options to determine which ones you might be able to use to advantage. We provide a comprehensive list of available grants and advice on how to access them, including eligibility requirements, application dates and other considerations.

So if you’ve come up with the greatest invention since sliced bread and want a grant to help it get off the ground, contact a member of our IP team about our IP Essentials package.

The post IP funding opportunities to take your start-up to the next level appeared first on The Brand Protection Blog.

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The Australian Government’s recently expressed interest in cracking down on misuses of market power may have left some patent holders with concerns about the proposed amendments to the Competition and Consumer Act 2010 (the Act). All the fuss relates to section 46 of the Act: the provision which prohibits a company with a substantial degree of market power from taking advantage of that power to eliminate or damage a competitor, prevent market entry or prevent or deter competition. The change proposed is to implement an “effects test” which will question whether conduct complained of under this provision has the purpose or likely effect of substantially lessening competition.

“Why are these changes concerning for patent holders” you ask. Well, as you know, patent holders enjoy a temporary monopoly over an invention, which lasts for up to 20 years from the filing date of their application (or up to 25 years for pharmaceutical substances). When their patent right expires, patent holders often see a multitude of competitors entering the market and eating away at their market share. With the introduction of an effects test, patent holders trying to preserve their market share after the expiry of their patent right may inadvertently be using their diminishing market power to lessen the competition, therefore exposing themselves to an ACCC claim.

Patent holders can however rely on their reputation and brand to preserve their market share once their patent right expires. This emphasises the need for an effective branding strategy for all businesses, including patent holders well in advance of any patent expiry date.

By definition a branding strategy is a long term plan for the development of a successful brand through brand awareness. Below are some of the key components of a comprehensive brand strategy.

  1. Communicate a clear vision of a company’s overall goals.  At the heart of every branding strategy sits the company’s overall goals and the communication of those goals to consumers. By way of an example, we considered Bayer’s ASPIRIN brand which has far outlived its patent period.

As you may know, ASPIRIN medicine was created more than 115 years ago and is commonly understood to be the most utilized pain reliever in history. So much so that ASPIRIN arguably became a generic term for pain relievers. So why has Bayer been so successful in maintaining its market share after the expiry of the ASPIRIN patent?  Part of the ongoing success of Bayer’s ASPIRIN brand is linked to their ‘Science for a better life’ moto and their various initiatives which embody the company’s long standing and ‘personal’ investment in the wellbeing and future of its customers. This clear commitment combined with the company’s reputation, and continued strong support for the ASPIRIN brand continues to distinguish it from competing generics, and is part of the explanation for ASPIRIN’s ongoing success.

  1. Be consistent in communicating the brand image. It is essential for consumers to be able to easily identify a brand and instantly associate it with the company’s product. By way of an example, we looked to Velcro. Velcro’s patent on its fastening technology expired in 1978, which allowed third parties to begin manufacturing goods with the “hook” and “loop” system conceived by Velcro.

Although the patent has expired, the VELCRO trade mark continues to be hugely valuable as it allows Velcro to distinguish its goods from those of its competitors in the marketplace. The increased value of the mark led Velcro to implement strategies to mitigate the risk of its trade mark becoming descriptive. These included the publication of strict guidelines on the proper use of the VELCRO trade mark, preventing competitors from using the mark to advertise products similar to theirs, preventing misuses of the mark by media, and educating the public. For example, on 25 September 2017 Velcro’s legal team published a humorous YouTube video which sought to educate consumers about both the VELCRO brand and proper trade mark use. The opening verse of Velcro’s video goes as follows:

We’re a company that’s so successful that everywhere you go You see a scratchy, hairy fastener and you say, “Hey, that’s Velcro!” But even though we invented this stuff, our patent lapsed 40 years ago Now, no matter who else makes it – you still wanna call it “Velcro”

  1. Be flexible enough to keep up with the new trends and new competitors. Indeed, while consistency aims to set the standard for your brand, flexibility enables you to make adjustments that build interest and distinguish your approach from that of your competition. By way of an example, there are few toys as recognisable as the LEGO brick, and although LEGO products have undergone extensive development since the launch of the traditional LEGO brick in 1958, the foundation has remained the same. Unsurprisingly, Lego’s US patents which were issued in the 1960s have now expired, thus opening the market to imitators and forcing Lego to adapt.

Before the 2000s, the organisation spent most of its time and effort marketing to children and parents, not focusing on their growing adult fan base; a fan base, which on average, spends significantly more on LEGO products per year than the average child. Upon becoming aware of this untapped fan base, the organisation began designing more complicated and expensive sets, such as the $500 Star Wars Millennium Falcon set that includes 5,000-pieces. In doing so, LEGO shifted the brand away from being ‘merely’ a toy business into an entertainment industry powerhouse, as evidenced by the successful string of Lego movies and character-related endorsement and licensing deals.

  1. Be aware of the competition, and use it as a challenge to improve your branding strategy. This may seem obvious but being in the same business and going after the same consumers requires some sort of awareness. By identifying your key competitors, you may be able to learn from them, and ultimately outperform them. In a crowded marketplace, differentiation is crucial.

If you are considering or are already involved in the development of a branding strategy, speak to a member of our IP team to discuss the products we could offer to support the protection of key aspects of your brand.

The author would like to acknowledge the contribution of Benjamin Sigal in preparing this blog.

The post Managing your products when a patent expires – how good brand management can maintain product and brand awareness, and build market share appeared first on The Brand Protection Blog.

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