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Leave to appeal refused in GLENN OAKS trade mark case - Scotch Whisky Association v De Witt [2008] FCA 73

Tim Golder, Partner, and Peter Ryan, Senior Associate report on Scotch Whisky Association v De Witt [2008] FCA 73 in which leave to appeal against an unsuccessful opposition to registration of GLENN OAKS as a trade mark for various alcoholic beverages, including bourbon and scotch whisky but excluding whisky not produced in Scotland, was refused. As to the first limb, Justice Jessup was of the view that the grounds on which the SWA was unsuccessful were arguable and might therefore be the subject of an appeal, including the issues of descriptiveness of the trade mark for bourbon and whether the trade mark would cause confusion because of the connotation the mark may have. Even though the first limb was established, there would not be substantial injustice to the SWA if leave were refused. This was because the SWA would have a right to apply for cancellation if leave were refused, and Justice Jessup was not convinced that the SWA would be in an inferior position in any such cancellation proceedings, merely because De Witt might be able to resist cancellation if deception or confusion arose through no fault of its own.

According to Tim Golder and Peter Ryan, applicants who have been unsuccessful on previous occasions who seek leave to appeal should be aware that a court may exercise its discretion to refuse such leave, unless refusal would give rise to a substantial injustice.

Leave to appeal refused in GLENN OAKS trade mark case


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Leave to appeal refused in GLENN OAKS trade mark case - Scotch Whisky Association v De Witt [2008] FCA 73

Tim Golder, Partner, and Peter Ryan, Senior Associate report on Scotch Whisky Association v De Witt [2008] FCA 73 in which leave to appeal against an unsuccessful opposition to registration of GLENN OAKS as a trade mark for various alcoholic beverages, including bourbon and scotch whisky but excluding whisky not produced in Scotland, was refused. As to the first limb, Justice Jessup was of the view that the grounds on which the SWA was unsuccessful were arguable and might therefore be the subject of an appeal, including the issues of descriptiveness of the trade mark for bourbon and whether the trade mark would cause confusion because of the connotation the mark may have. Even though the first limb was established, there would not be substantial injustice to the SWA if leave were refused. This was because the SWA would have a right to apply for cancellation if leave were refused, and Justice Jessup was not convinced that the SWA would be in an inferior position in any such cancellation proceedings, merely because De Witt might be able to resist cancellation if deception or confusion arose through no fault of its own.

According to Tim Golder and Peter Ryan, applicants who have been unsuccessful on previous occasions who seek leave to appeal should be aware that a court may exercise its discretion to refuse such leave, unless refusal would give rise to a substantial injustice.

Leave to appeal refused in GLENN OAKS trade mark case


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Changes to Geographical Indications coming

Andrew Butler, Partner, and Peter Ryan, Trade Marks Attorney of Allens Arthur Robinson reports that submissions to IP Australia on proposed new Geographical Indications for wines closed on 1 November 2007 and are currently being considered. Under the current laws, owners of existing trade mark registrations or pending applications were able to object to protection being granted to particular regional names and the like that are not currently protected under the 1994 Agreement with the European Union relating to Geographical Indications.

Link to Changes to Geographical Indications coming


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Sportsgirl wins against Sportsboy

Partner Chris Bird and Senior Associate Peter Ryan of Allens Arthur Robinson review the Australian Trade Marks Office decision of Sportsgirl Pty Ltd v Filip Sali [2007] ATMO 71 of 22 October 2007. Prior use of the unregistered trade mark SPORTSGIRL BOY on jewellery and prior use of the registered trade marks SPORTSGIRL and SPORTSKIDS for clothing were found to be an obstacle to registration of SPORTSBOY for clothing.

Link to Sportsgirl wins against Sportsboy


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Allens Arthur Robinson - Trade Marks Amendment Act 2006

Trade Marks Amendment Act 2006 - Philip Macken, Partner and Peter Ryan, Trade Marks Attorney outlines some of the key amendments to the Trade Marks Act 1995 (Cth):

  • provisions which came into force on Royal Assent (applications accepted after 23 October 2006)
    • trade mark ownership provisions
    • new opposition grounds and determinations
    • Registrar may apply to court for amendment or rectification if in public interest
    • non-use removal applicant no longer needs to be ‘aggrieved’
    • power of owner to deal with registered trade mark
  • provisions to commence next year
    • ’series’ trade mark applications
    • divisional applications

Link to Allens Arthur Robinson article


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