Be careful if you wanna GUCCI GUCCI, ya ya, da da…

At IP Whiteboard, we love our brands – especially our luxury fashion brands (see our post on Louboutin here). Back in 2013, we reported on the battle of the brands, Guccio Gucci SpA (“Gucci”) and Guess Inc (“Guess”) (see our post here). To refresh your memory, Gucci and Guess have been battling it out over read more…

Google’s new branding – trade mark issues for giants

Well, what do you think? Don’t tell me you haven’t noticed. Looks pretty good to me. I particularly like the new G logo.                 It is interesting to consider the portfolio management issues the re-brand poses, in this case from an Australian perspective. Does Google’s fame help it or hinder it in terms of its read more…

Productivity Commission embarks on 12-month inquiry into Australia’s intellectual property regime

The Federal Government has given the green light to the Productivity Commission to undertake a comprehensive review of Australia’s IP regime (Inquiry).  The Commission must provide a report on the Inquiry by August 2016. The Inquiry was one of the three recommendations relating to IP in the Final Report of the Competition Policy Review (also read more…

Trade mark confidence signals big things to come for “The Hayne Plane”

Pre-season gridiron games aren’t usually on most Aussie’s sports radars in August – the run-up to the AFL and NRL finals usually take up most of our attention. But this year is a little different. This year, the former rugby league star Jarryd Hayne is attempting to do something that few Aussie footballers have been read more…

TARJAY or TARGET? The registration of parody trade marks

Many Australians colloquially refer to the department store Target as “Tar-Jay” (with a fake French accent), cheekily introducing an up-market French boutique association to Target’s affordable goods.   Such association apparently dates back at least to media references in 1983. The word “Tarjay” entered UrbanDictionary.com in 2008: “Target Store said with a fake french accent to read more…

Combination marks – the limits of Medion further defined by Arnold J in Jura Origin case

The European Court of Justice’s decision in Medion (Case C-120/04) is one that can provoke vitriol among even the calmest of practitioners. That case involved an infringement action taken against the use of the mark THOMSON LIFE by Thomson, in the face of Medion’s earlier registration for LIFE. The court ruled as follows: “ … read more…

Duelling Ukuleles and Sofa Workshops – recent cases highlight advantages of national protection alongside CTM registrations, and the continued importance of passing off

A few weeks ago the UK Supreme Court rejected an appeal by Starbucks HK (not the coffee company) in a passing off case. The UKSC confirmed the fundamental requirement of goodwill in the UK in order to bring such an action in the UK. Mere reputation is not enough. You can see the update from read more…

“Re-calculating … turn around when possible” – In TomTom decision, clear thinking on “wrong way round” confusion

We’ve devoted a bit of airspace to that hoary old chestnut, reverse (or “wrong way round”) confusion. See our earlier notes on the Glee and Europcar cases (here, here and here). It’s an interesting issue, and it’s also incredibly important in the context of a global economy in which fame can arrive overnight. Given the read more…