Tag: Currently browsing "Tim Golder"

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


Related Posts


About this entry


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


Related Posts


About this entry


Tim Golder - Allens Arthur Robinson

Tim Golder is a highly experienced adviser on copyright, designs, confidential information and trade marks, as well as trade practices issues dealing with misleading and deceptive conduct. Tim Golder is adept at drafting licensing, distribution and franchising agreements. Tim Golder also undertakes substantial work in registering and protecting trade marks and domain names. Major projects have included work on the continued use of technology, trade marks and other intellectual property following the sell-down of a leading chemical manufacturer.

Tim Golder’s vast experience includes advising Australia Post, Australian Grand Prix Corporation, Brown Brothers, Cadbury Schweppes, Cricket Australia, Christian Dior, Décor, Dun & Bradstreet, Ford Motor Company, Golf Australia, The Herald & Weekly Times, Kraft Foods Limited, Melbourne 2006 Commonwealth Games Corporation, Nike, Philip Morris, Sara Lee, Simplot (Leggo’s etc), TAG Heuer, Tommy Hilfiger, VAAM Management (Mark Webber) and Victoria Racing Club.

Tim Golder is admitted to legal practice in Victoria, New South Wales, Queensland and Western Australia and has worked in the intellectual property and information technology field at leading London law firm, Slaughter & May.


Related Posts



Allens Arthur Robinson IP

Allens Arthur Robinson’s IP Practice has received the following awards:

* Leading Australian IP Firm 2008 – Chambers Global: The World’s Leading Lawyers
* Leading Australian Patent Litigation Firm 2007 – Managing Intellectual Property
* Leading Australian Trademark and Copyright Litigation Firm 2007 – Managing Intellectual Property
* Leading Australian IP Firm 2007 – PLC Which Lawyer? Yearbook
* Leading Australian IP Firm 2007/08 – Asia Pacific Legal 500

Allens Arthur Robinson’s intellectual property practice gives you access to a streamlined service from some of the world’s top intellectual property practitioners. They are known for their pragmatic, commonsense approach. Allens Arthur Robinson combines the skills of our commercial and litigation intellectual property lawyers with those of their integrated Patent & Trade Marks Attorneys firm allowing them to offer a comprehensive intellectual property service. Allens Arthur Robinson has successfully acted for clients in major litigation proceedings relating to infringement of patents, trade marks, copyright and designs rights, as well as breaches of confidence and information technology rights. Their experience extends throughout the region, particularly in China, but also in Singapore, Thailand, Japan, Taiwan, Malaysia, India, the Philippines and South Korea. Clients include Pfizer, Sony and FOXTEL.

IP Partners in Allens Arthur Robinson

Justine Beaumont (Special Counsel)
Chris Bird
Andrew Butler
Fred Chilton
Dr Trevor Davies
John Dieckmann (Special Counsel)
Jim Dwyer
Tim Golder
Richard Hamer
Philip Kerr
Sarah Matheson
Jackie O’Brien
Miriam Stiel
Andrew Wiseman
David Yates


Related Posts