BURNS IP NEWS
The latest updates from the world of trade marks, patents, and intellectual property law.
Featured Posts
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Choosing a Trademark
How do you choose a great trademark for your business? What is best practice for using it? We’ve put together our top tips in this free Trademark Guide
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Protect Your Work
Do you know what your competitors are up to? Find out now with a Trademark Watch.
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What’s Your Beef? Hamburger giants battle it out in Australian Federal Court.
The Australian Federal Court found that Hungry Jack’s engaged in misleading and deceptive conduct for the statement that its BIG JACK burger contained 25% more beef than its well-known rival. However, the court denied McDonald’s trade mark infringement claim that BIG MAC was deceptively similar to BIG JACK.
Coffee Wars
In a long-standing trade mark war regarding the use of ORO for coffee, LAVAZZA successfully defended Cantarella’s trade mark infringement lawsuit by counter-claiming that Cantarella was not the owner of the trade mark ORO. LAVAZZA argued that Molinari was the true author of the trade mark ORO because Molinari has used ORO as a trade mark on coffee sold in Australia almost a year before Cantarella.
Use TM Headstart for Speedy Registrations
IP Australia offer a pre-application service called “TM HeadStart” where an Examiner from IP Australia will assess your “draft” trade mark application before you lodge the final version. By using TM Headstart to file your trade mark application, you will receive quick feedback from the Examiner as t whether there are any barriers to registration. You will also have an opportunity to amend your trade mark application before filing the final version.
USPTO Practice: Specimens
Many Australian businesses look to expand in overseas markets and as part of this expansion need to protect their trade marks in foreign countries. According to IP Australia’s Australian IP Report 2023, the United States is one of the top 5 markets for Australian business filing trade marks overseas. However, the procedure for filing trade marks in the United States is significantly different to Australia. One of those differences is the requirement to submit “specimens” during the prosecution of the trade mark application and as part of the ongoing maintenance of the trade mark registration.
How to make a settlement offer
A carefully prepared settlement offer can create an environment that puts both parties under pressure to settle a legal dispute. In particular, the rejection of certain types of settlement offers may mean that the offeree will be ordered to pay more of your legal costs if you are successful.
WeConnect Certification
Burns IP is certified by WEConnect International as a Women’s Business Enterprise. Businesses committed to gender diversity can be assured that by supporting Burns IP, you are supporting a women-controlled and women-run business and, more importantly, making a commitment to achieving gender diversity in the global market-place.
Trade mark infringement
In Australia, you will infringe a trade mark if your trade mark is substantially identical or deceptively similar to a registered trade mark. Recent developments in Australia’s law raises questions about the use of surrounding circumstances in assessing deceptively similar trade marks.
IP Australia releases guidelines on trade mark classification for emerging technologies
Many of our client’s are seeking protection for trade marks related to virtual goods, metaverse, NFTs, and blockchain technology. To assist in protecting the trade marks of these emerging technologies, IP Australia has released guidelines for acceptable classification and descriptions.
How businesses are leveraging their IP protection to drive ESG performance, development and innovation
Environmental, Social and Corporate Governance (ESG) is now a key performance indicator for businesses. We discuss the important role that IP protection plays in driving ESG outcomes and safeguarding our client’s assets as they pursue and integrate new innovations, technologies and products within their businesses.
How Zip Co leveraged its common law rights to usurp First Mac during their trademark dispute
The recent decision of J Markovic in Firstmac Limited v Zip Co Limited [2023] FCA 540 is an important reminder to pay careful attention to the strength of common law trade mark rights in Australia.
A Case Study - Canva’s IP Strategy to Success
Founded in Perth in 2013, the design and visual communication platform, Canva, is now a multinational company with over 125 million monthly users. Central to Canva’s success is its dedication to protecting its rapidly growing IP portfolio.
IP Australia’s recent upgrades are set to streamline the protection of your registered intellectual property rights
If you’re an IP (intellectual property) owner or interested in protecting your IP, you'll know that staying up to date with IP Australia’s service upgrades is hugely beneficial in protecting your business assets. IP Australia’s recent online service upgrade means business owners and lawyers can look forward to fast and efficient online lodging and filing, an improved national patent filing system, and more information regarding third-party fraud detection. Here’s how.
Useful Links
We help our clients navigate the complex world of IP across both Australia and internationally. We’ve put together some helpful resources for IP, copyright and Trademarks . Please note these are links to third party websites and their information is subject to review and change.
Significant increase in government fees for United States trademarks
Effective 2 January 2021, the United States is increasing its fees for filing trademark applications, maintaining trade mark registrations and filing oppositions and cancellation actions before the Trademark Trial and Appeal Board.
Limiting the remedies for patent owners
In a landmark change to Australian patent law, the High Court introduces the doctrine of exhaution. This decision will open the door for greater competition in the spare parts aftermarket. It is clear that the owner of a patented-product is entitled to modify or repair the product.
What does this mean for you?
Right to repair: intellectual property & additive manufacture of spare parts
Developments in 3D printing technology have improved the metal additive manufacturing of parts, and in particular the cost-effective manufacture of metal parts suitable for heavy industry and defence. However, there is still uncertainty for 3D printing in instances where the spare part itself is patent-protected.
Increase in IP Australia fees
IP Australia will increase their official fees for important trade mark, patent and design services effective as of 1 October 2020.
Coronavirus and your commercial lease
To protect SMEs in their commercial lease arrangements, the federal government has stepped in and created a National Cabinet Mandatory Code of Conduct “SME Commercial Leasing Principles During COVID-19”. The code will provide SMEs with payment relief in respect of their commercial leases during the COVID-19 pandemic. The principles in this code will be applied by each State government in regulations that should be in place shortly. What does this mean for you?
COVID-19 and your Australian legal contracts
COVID-19 is having an impact on all areas of the economy. As a result, businesses may be unable to perform their contractual obligations or may wish to terminate contracts. But when can a party legally terminate a contract due to COVID-19?
We have put together a short guide to help clarify the impact of COVID-19 for your Australian legal contracts. You can download it here
Patentable subject matter Australia
We are pleased to provide you with a summary of patentable subject matter in Australia. We hope this short guide will help you in patent filing in Australia.