Archive | Federal Court Decisions

Trademark Lawyers Australia – Federal Court – Telstra Yellow

Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 (11 April 2014) Murphy J has overturned Trade Marks Office decisions and held that Telstra’s application to register the word mark YELLOW should be refused because it is totally devoid of any inherent adaptation to distinguish and deceptively similar to earlier trade mark […]

Trademark Lawyers Australia – Full Federal Court – Madden v Seafolly

Madden v Seafolly Pty Ltd [2014] FCAFC 30 (24 March 2014) This case reinforces the need to take time to properly ascertain the facts before publishing an allegation and to not over react when responding to such an allegation. The swimwear designer, Leah Madden, had wrongly asserted in September 2010 that Seafolly had copied her […]

Trademark Lawyers Australia – Federal Court – Nappy Land

CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited [2014] FCA 79 (14 February 2014) Successful application by CI JI Family to restrain use of Nappy Land by NAN in New South Wales based on the Australian Consumer Law and passing off. The applicant was essentially controlled by Mr Ngo (referred to […]

Trademark Lawyers Australia – Full Federal Court – Digital Post

Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 (6 December 2013) The Full Federal Court dismissed an appeal by Australian Postal Corporation (APC) alleging trade mark infringement by Digital Post Australia (DPA) through its use of DIGITAL POST AUSTRALIA as a trade mark and domain name for a digital mail box service. This service […]

Trademark Lawyers Australia – Federal Court – Bob Jane

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 (26 November 2013) This is the latest judgment relating to the much publicised family dispute involving Bob Jane and his son, Rodney Jane. Bob Jane was a well known racing car driver who established a very successful tyre and automotive […]

Trademark Lawyers Australia – Federal Court – Bugatchi

Bugatti GmbH v Shine Forever Men Pty Ltd [2013] FCA 1116 (31 October 2013) Successful application by Bugatti for infringement of its registered BUGATTI trade mark arising from the conduct of Shine Forever Men by importing and selling clothing and accessories bearing BUGATCHI and BUGATCHI UOMO. It also operated a retail outlet in Melbourne named BUGATCHI […]

Trademark Lawyers Australia – Federal Court – Workwear

Workwear Industries Pty Ltd v Pacific Brands Workwear Group Pty Ltd [2013] FCA 1042 (15 October 2013) This is another case which reinforces the difficulty in protecting descriptive business names. It involved an unsuccessful application by Workwear Industries (WI) alleging Pacific Brands engaged in misleading or deceptive conduct by carrying on business under The Workwear […]

Trademark Lawyers Australia – Federal Court – Aristocrat

Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2013] FCA 986 (30 September 2013) In earlier proceedings, Allam v Aristocrat Technologies Australia Pty Ltd [2012] FCAFC 34, the Full Federal Court found two instances of copyright infringement through use of fake Aristocrat compliance plates and counterfeit software in second hand gaming machines […]

Trademark Lawyers Australia – Full Federal Court – Cantarella

Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 (30 September 2013) Successful appeal by Modena overturning decision of primary judge finding infringement of Cantarella’s trade mark registrations for ORO and CINQUE STELLE for coffee. The Full Court ordered these registrations to be cancelled. As reported previously, the trial judge, Emmett J […]

Trademark Lawyers Australia – Federal Court – Vendor Advocacy

Vendor Advocacy Australia Pty Ltd v Seitanidis [2013] FCA 971 (27 September 2013) This case reinforces the difficulty in protecting descriptive business names. It involved an unsuccessful application by Vendor Advocacy Australia (VAA) alleging Mr Seitanidis engaged in misleading or deceptive conduct by carrying on business in the real estate field by reference to the […]