Trade mark infringement: a “Malishus” use in domain names

What if someone registers a domain name outside of Australia for their business, where the domain name corresponds to someone else’s registered trade mark in Australia?  Will this constitute an infringement even where the domain name in question is not specifically directed at Australia but is accessible in Australia? The recent decision in Lamont v Malishus & Ors (No 4) [2019] FCCA 3206 found that this can still be a trade mark infringement and, in fact, can be considered “Malishus”. read more...
Subjects: Trade marks

Partner:

Overturned (in part) – Trident Seafoods Corporation v Trident Foods Pty Limited

This decision suggests a more flexible approach to the question of authorised use than that indicated by Lodestar, as well as to the exercise of the Registrar’s discretion to refuse removal despite non‑use. It also provides guidance as to the Court’s view on corporate entities who share the same directors acting with an agreed ‘unity of purpose’ despite being separate legal persons. read more...
Subjects: Trade marks

Partner:

Trouble in paradise! The ‘Bula’ debate and the importance of cultural sensitivity in registering trade marks

The word ‘Bula’ translates to ‘life’. When used as a greeting by the people of Fiji, bula signifies wishes for longevity and good health.  ‘Bula’ is commonly heard in Fiji, and is usually coupled with the beaming smiles of friendly Fijian people.  However, there were less smiles in September last year when news spread that read more...
Subjects: Trade marks

Partner:

Domain name disputes: Will the President play his trump card again?

The Trump Organisation owns a lot of domain names – around 3,000, for everything from <TrumpOnTheRocks.com> to <TrumpRussia.com>.  Unfortunately for the President, this impressive portfolio doesn’t include <TrumpHotels.org>. Golf enthusiasts, honeymooners and high-powered executives wanting to stay at one of Trump’s 11 hotels will not find what they are looking for at <TrumpHotels.org>.  The website read more...

Formula One and now the Australian Grand Prix Corporation look to cash in – the big Huey shoey bluey

Update: The Australian Grand Prix corporation assigned its Australian trade mark application to Formula One Licensing B.V. on 16 May 2018. You might have heard of the shadow boxing match between the Formula One’s licensing arm and The Mad Hueys – well, as of 2 May 2018, the Australian Grand Prix Corporation has decided to read more...
Subjects: Trade marks

Partner:

HOUSE HUNTERS – favourable treatment of TV show titles at the EUIPO Board of Appeal level

Ahhhh, I love the smell of a freshly printed EUIPO absolute grounds case in the morning! Often the most interesting decisions are those relatively rare beasts in which the initial examination objection is overturned by the Board. In a recent decision, the 4th Board of Appeal had to consider the registrability of HOUSE HUNTERS in read more...
Subjects: Trade marks

Partner: