Archive | Federal Court Decisions

Trademark Lawyers Australia – Federal Court – Beling

Beling v Sixty International S.A. [2015] FCA 250 (20 March 2015) This was a rather unusual case in that it involved an appeal solely on the issue of the failure to award costs by the Registrar of Trade Marks. Mr Beling successfully defended his trade mark application against an opposition by Sixty international SA of […]

Trademark Lawyers Australia – Federal Court – Chemist Warehouse

Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234 (17 March 2015) Unsuccessful application by Verrocchi and Gance seeking to restrain use by Direct Chemist Outlet of an allegedly similar get-up for their stores, catalogues and website. The Applicants established the Chemist Warehouse business and from 2002 to January 2014, there were over 250 […]

Trademark Lawyers Australia – Federal Court – Electrolux

Electrolux Home Products Pty Ltd v Delap Impex KFT [2015] FCA 62 (10 February 2015) Successful application by Electrolux to restrain Delap and others from advertising, promoting, selling or supplying electrical goods under the trade marks ELECTROLUX and AEG to consumers in Australia, and for Electrolux to file a notice of motion seeking default judgment. […]

Trademark Lawyers Australia – Federal Court – Hugo Boss

Hugo Boss Trade Mark Management GmbH & Co Kg v Sasalili Oxford Fia [2014] FCA 1328 (5 December 2014) This case contains a useful overview of issues relevant to the assessment of damages for trade mark infringement and the power of the court to award additional damages. Ordinary damages are compensatory and are to put […]

Trademark Lawyers Australia – Federal Court – App Store

Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (3 December 2014) The Federal Court has dismissed an appeal by Apple and upheld the Registrar’s decision finding the words APP STORE do not qualify for trade mark registration. The APP STORE trade mark application was filed on 18 July 2008 and claimed various retail […]

Trademark Lawyers Australia – Federal Court – Coca Cola v PepsiCo

Coca Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287 (28 November 2014) Besanko J dismissed an application by Coca Cola Company (CC) alleging PepsiCo infringed its registered trade marks and engaged in misleading and deceptive conduct and passing off by the use of a similar bottle shape for its cola beverage products. CC […]

Trademark Lawyers Australia – Federal Court – Zima

Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (19 September 2014) Successful appeal by Mastronardi setting aside the Registrar’s decision refusing registration (reported in October 2013). Gordon J held that ZIMA was registrable for tomatoes and, contrary to the hearing officer’s view, was not a name for a new variety of golden […]

Trademark Lawyers Australia – Full Federal Court – BlueScope Steel

BlueScope Steel Limited v Gram Engineering Pty Ltd [2014] FCAFC 107 (26 August 2014) The Full Court dismissed an appeal by Bluescope Steel and upheld the primary judge’s finding that it infringed Gram’s registered design. The primary judge was correct in his findings of fact and there was no material error in his application of […]

Trademark Lawyers Australia – Federal Court – Orlimar

King Par, LLC v Brosnan Golf Pty Ltd [2014] FCA 795 (30 July 2014) Unsuccessful interlocutory application by King Par under s31A of the Federal Court of Australia Act 1976 for a judgment against Brosnan Golf on the basis that it is not the owner of the ORLIMAR trade mark and its trade mark registration […]

Trademark Lawyers Australia – Full Federal Court – Thredbo

Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87 (21 July 2014) Unsuccessful appeal by Kosciuszko Thredbo highlighting the difficulties where a geographical place name is adopted as a brand. The appeal related to alleged misleading or deceptive conduct by ThredboNet in registering and using business, company and domain names containing the […]