Best Trade Mark Cases 2016

Welcome to Shelston IP’s 2016 round up of key trade mark cases in Australia and New Zealand.   Non-use cases made a frequent appearance in 2016, including interesting decisions on the level of control required over a licensee to rely on the licensee’s use of the trade mark, and whether a foreign entity can be

Nakedbus stripped by Intercity

Intercity Group (NZ) Ltd v Nakedbus NZ Ltd [2014] HC 124   Key issue Did use of a competitor’s mark in Google AdWords infringe the trade mark? Was the mark used descriptively in advertising or as a trade mark? Facts I and N are the no. 1 and 2 long distance bus companies in NZ,

Rotten (Zima) Tomato for the Trade Marks Registrar

Mastronardi Produce Ltd v The Registrar of Trade Marks [2014] FC 1021 Key issue Use of product variety names as a trade mark – inherent distinctiveness. Facts M applied to register ZIMA as a brand name for tomatoes in class 31. The Registrar refused the application: it was not inherently adapted to distinguish (section 41(6),

Coke looking out of shape to Pepsi’s Carolina

Coca Cola Co v PepsiCo Inc (No 2) [2014] FCA 1287   Key issue Shape trade marks and use of a shape as a trade mark. Facts Coca Cola has sold its beverage in a distinctive contoured bottle (Contour Bottle) for over 75 years in Australia and holds 4 registered Australian trade marks relating to

Lift Shop – “going down”

Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75   Key issue Use of elements of a competitor’s trade mark on a website – trade mark use or descriptive use? Facts LS and ELHE were direct, aggressive competitors, each supplying disability platform elevators for home use. ELHE’s search engine optimisation

Best Australian trade mark cases of 2013-2014

In 2013 the Federal Court of Australia has provided useful guidance on some key aspects of trade mark infringement and protection including: how registrability of trade marks consisting of foreign language words should be assessed (but stay tuned because this case has now gone to the High Court) the Court’s attitude to survey evidence (don’t

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