Tag: Currently browsing "Trade Marks Office"
Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive
Elizabeth Ireland and Lisa Ritson of Blake Dawson report on Scotch Whisky Association v De Witt [2007] FCA 1649, in which the Federal Court has upheld a decision of the Trade Marks Office that the use of the mark “Glenn Oaks” in relation to a bourbon product was not likely to confuse, deceive or mislead consumers to think the product was of Scottish origin, or was a whisky, not a bourbon. In reaching the decision, the Court examined market differentiation between bourbon and whisky products, and consumer habits in relation to both products. Whilst the mark was accepted for registration, the Court modified the class of goods for which the mark could be used to explicitly exclude products labelled as “whisky”.
Scotch Whiskey was refused leave to appeal the decision in Scotch Whiskey Association v De Witt [2008] FCA 73 on 14 February 2008.
Blake Dawson - “Glenn oaks” bourbon not likely to mislead or deceive
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- Published:
- 12 Mar 2008 / 09:38 PM
- Category:
- Trade Marks
Corrs Chambers Westgarth - End of the Line for Trade Mark Oppositions
Corrs Chambers Westgarth reviews a recent decision of the Federal Court of Australia of The Scotch Whisky Association v. Marlon de Witt [2008] FCA 73, which they consider raises a bar to avenues of appeal in unsuccessful trade mark oppositions.
According to Corrs Chambers Westgarth, this case sounds a note of caution for unsuccessful opponents in the Trade Marks Office considering appealing the decision to the Federal Court. This case demonstrates that subsequent appeals, even where there are good grounds for the matter to be reconsidered by the Full Court, may be stymied by an overly strict approach to other traditional requirements for leave. By contrast, an unsuccessful opponent who permits the mark to become registered and then commences cancellation proceedings in the Federal Court has an unfettered right of appeal to the Full Court against the decision at first instance. Accordingly, Corrs Chambers Westgarth notes that this may become the preferred avenue for an unsuccessful opponent before the Trade Marks Office to progress its case in the courts.
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- Published:
- 01 Mar 2008 / 01:38 AM
- Category:
- Trade Marks
Baker & McKenzie - Old stumbling block of the “person aggrieved” requirement for non-use removal actions
Baker & McKenzie reports that a recent Trade Marks Office decision demonstrates that the requirement for an applicant for removal of a trade mark for non use must be a “person aggrieved” can still be a stumbling block for applications filed before the requirement was abolished by the Trade Marks Amendment Act 2006 with effect from 23 October 2006.
According to Baker & McKenzie, the evidence that the trade mark in question (VOYAGER) was blocking the applicant’s application for a trade mark (VOYAGER CLUB), was insufficient to afford the applicant the status of a “person aggrieved”, without extra information that might establish that the applicant was “appreciably disadvantaged in a legal or practical sense”.
Baker & McKenzie notes that removal of the person aggrieved requirement now enables dead wood to be cleared from the Register much more easily.
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Decision on ‘THE LOCAL BLOKE’
Senior Associate Deborah Jackson of Allens Arthur Robinson looks at a recent decision of the Trade Marks Office that provides another cautionary lesson about choosing trade marks of a general character which are likely to be used by others for the sake of their ordinary significance.
Link to Decision on ‘THE LOCAL BLOKE’
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- Published:
- 18 Dec 2007 / 06:24 PM
- Category:
- Trade Marks
LOVEDALE - THE HEART OF THE HUNTER trade mark hearing
Sarah Hickey and Peter Chalk of Blake Dawson report on the Trade Marks Office decision of McWilliams Wines Pty Ltd v Lovedale Chamber of Commerce [2007] ATMO 8 (7 February 2007) in which the Trade Marks Office allowed the composite mark LOVEDALE� THE HEART OF THE HUNTER (the Mark) to be registered by the Lovedale Chamber of Commerce (LCC) for services in classes 35 (commercial, promotional and advertising services) and 41 (event management services). This decision of the Australian trade marks office highlights that putting forward a multitude of grounds for opposition does not necessarily guarantee success.
- Reasons why registration of the mark would (rather than could) result in the particular outcome (ie deception or confusion, or contravention of law) should be clear and cogently argued in order to enhance an opposing party�s prospects of success.
Link to LOVEDALE � THE HEART OF THE HUNTER trade mark hearing
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- Published:
- 05 Dec 2007 / 03:13 PM
- Category:
- Trade Marks