The Wiggles have dozens of registered trademarks in Australia and notably many of these marks cover toys and board games.

Q: So how and why did Customs seize these goods?

A: The Wiggles have a Notice of Objection in place with Australian customs.

Customs Notices

Products bearing intellectual property rights are frequently manufactured overseas (without permission of the trade mark owner) and imported and sold in Australia or New Zealand.

One way to combat this is via a customs notice.   Customs notices for registered trademarks and works protected by copyright may be lodged with the Customs Services in Australia and New Zealand.

Lodgement of a customs notice will allow Customs Officers to look for and seize suspected counterfeit goods as they enter the country. Importantly, if there is no Notice in place, Customs cannot seize infringing goods.

The Wiggles are not alone, many trademark owners take adavantage of customs notices in Australia and New Zealand (A list for Australia and New Zealand can be found here and here).

Notice requirements:

Australia

A single notice can be lodged for all trade marks owned by you.
The notice lasts for four years.
No security bond required, although an undertaking is required.

New Zealand

A notice must be lodged for each trade mark (that you wish to be covered) owned by you.
Notices last for five years.
NZ$5,000 must be lodged as security deposit.

Typically an attorney firm would prepare and file the notices on your behalf, and act as your address for service.

Once notices are in place and when Customs seizes infringing goods, it notifies the nominated address for service. The importer then has 10 working days (unless extended) to consent to forfeiture of the goods.

If the importer does not consent to forfeit within the 10 days, the registered owner must commence legal proceedings to stop the goods being released by Customs to the importer.

For enquiries relating to Customs Notices contact marine.guillou@pof.com.au

About the Presenter:

Fiona Galbraith is a Patent Attorney and Lawyer with Phillips Ormonde Fitzpatrick Lawyers. Fiona works in the areas of patent, trade mark, copyright and design litigation. She also advises clients on obtaining registered intellectual property rights and provides intellectual property-related commercial agreements such as assignments and licences.

Details

Date             Thursday, 9 February 2012
Time           12.15pm for a 12.30pm start
Location   Phillips Ormonde Fitzpatrick, Level 23, 367 Collins Street, Melbourne
RSVP            Monday, 6 February 2012

A light lunch will be provided

Phillips Ormonde Fitzpatrick extends an open invitation to this seminar to all our clients and corporate IP practitioners. If you know of anyone else within your organisation who would be interested in attending this seminar, please feel free to forward this invitation to them.

We will stream this presentation via video link to our offices in Adelaide and Sydney. Please advise if you wish to attend the presentation at either of these offices.

Attendance at this seminar may be eligible to claim as points towards your professional development. Please refer to your relevant guidelines for more information.

To register your attendance please reply to marketing@pof.com.au with your details.

Key points:

Do you have Engineering talents and a passion for Law?
Undertake your Masters in IP with full study support provided
Strong career opportunity in a national IP firm

Location:

Melbourne

Job description:

Calling all Engineers and/or Trainee Patent Attorneys! Are you looking to put your Engineering qualification to work in a unique, challenging and innovative way? Phillips Ormonde Fitzpatrick has the perfect opportunity for you!

Here at POF, we are as excited by new ideas as our clients! Our highly specialist Patent Attorneys work with clients to make an invention registrable and have it protected by our specialised IP teams. Our expert practice teams span across our offices, located in Melbourne, Sydney and Adelaide.

Join us to take up the chance to turn inspiration into valuable property. Your ambitious nature will see you undertake extensive and varied on the job training, whilst you embark on obtaining your Patent Attorney registration. As your career grows, your development program will see you attain business acumen and management skills. A willingness to take on “presentation” and other business development opportunities is essential and your client handling skills will ensure your success.

Strong analytical ability and good communication skills are a must along with exceptional written and verbal capabilities. Your professional and assertive approach will ensure your success within the firm.

You will be degree qualified in Mechanical or Civil Engineering, perhaps at a higher degree level and preferably with a dual Law Degree. Or, you may be currently undertaking your Diploma of Intellectual Property or even recently qualified as a Patent Attorney. Full study support is available, within an environment which offers a true work-life balance.

For a challenging opportunity to kick start your career with one of Australia’s leading patent and trade mark attorney firms apply now!

How to apply:

Please forward your curriculum vitae and a covering letter in confidence, to:

or by e-mail to confidential@pof.com.au

Applications close Monday 30 January 2012

We prefer to deal with you directly. Please note applications put forward by agencies will not be considered at this time.

The PPH pilot program will initially be available for 1 year (from December 1, 2011 and November 1, 2011, for the USPTO and JPO respectively).

As has happened in Australia, the pilot program may be extended or terminated depending on the amount of PPH requests.

Like other PPH programs, provided there is a Chinese patent application and at least one corresponding USPTO/JPO application having one or more claims determined to be allowable by the USPTO/JPO, the applicant can request accelerated examination in China via the PPH.

Details on the SIPO/JPO Patent Prosecution Highway Requirements can be found here, while the SIPO/USPTO Patent Prosecution Highway requirements can be found here.

Wishing you a happy and prosperous New Year!

Twinpeaks Lesiure Pty Ltd applied for the following Australian Trade Mark Application in July 2006:

Australian Trademark Application 1125695

The mark was filed in class 28 respect of reels for fishing; rods for fishing and was accepted for registration in November 2006 by the Australian Trade Marks Office.

Hemingway, Inc (the estate of Ernest Hemingway) opposed the registration of the mark and have just recently suceeded in having the mark refused.  Presumably, Hemingway, Inc were concerned about possible confusion between Australian Trademark Application 1125695 and Ernest Hemingway’s signature:

Sample of Hemingway's signature (from www.hemingwaycollection.com)

Reasons for the decision are not yet published, but should be available here in the coming weeks.

Signature Trademarks

In Australia it is possible to trademark a signature where the signature is that of the applicant (or if not the applicant, provided that consent is given by the person concerned for their signature to be used).

A sample of Agnolotti is reproduced below:

IP Protection for Pasta

There are a vast number of patents which protect apparatus for making pasta, various improvements to dehydrated food compositions etc.   The geometry/shape of pasta may be protected via a design registration.

In Australia, it is possible to protect the geometry/shape of pasta though a design registration (provided that the shape is new and distinctive).

Kraft Foods have filed a number of design registrations, as has Australia’s own Ken Done:

Kraft Xmas Tree Pasta

Kraft Candy Cane Pasta

Ken Done Pasta

Dr Pepper was launched in Australia a number of years ago to much fanfare.  Unfortunately, Australians did not take to the drink very well.  It is now generally only available at specialty import stores.

Cadbury Enterprises Pte Ltd, the owner of Dr Pepper in Australia have a number of trademarks registered in Australia dating back to 1972:

AU Dr Pepper 1980

AU Dr Pepper 1997

AU Dr Pepper 1972

AU Dr Pepper 2009

Queensland’s Mischa Accessories Pty Ltd argued that Barton’s trade marks were deceptively similar to their own trade mark which is used for handbags and fashion accessories. It also argued that the reputation it had in its own trade mark meant that the use of Barton’s trade marks would be likely to deceive or cause confusion among consumers of handbags and fashion accessories. The company also attempted to rely on earlier UK court proceedings between the parties to argue that Barton was aware of the Mischa Accessories trade mark in Australia before her company tried to register the marks here and had made the trade mark applications in bad faith.

The Trade Marks Office found that the unusual combination of the first name MISCHA with the common surname BARTON was striking and memorable and that it would not be confused with the MISCHA ACCESSORIES trade mark. The Office found that Mischa Barton had not acted in bad faith by applying through her company to register her own name here.

More and more celebrities are putting their names to products. They register trade marks to protect the use of their name in connection with items such as perfume and sunglasses and can sign lucrative licensing agreements with product manufacturers for the use of their name.

The Trade Marks Office decision should be available at http://www.austlii.edu.au/au/cases/cth/ATMO/ in the next few weeks.

The Full Court of the Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 (15 December 2010) held that there was no copyright in either of Telstra’s White or Yellow Pages. The decision effectively reversed the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112.

The case stands for the proposition that, if there is no author, there is no copyright and that where a work is computer generated, it has no author and copyright does not subsist.

The case stands for the proposition that, if there is no author, there is no copyright and that where a work is computer generated, it has no author and copyright does not subsist.

The case details the production of the White and Yellow Pages. There were three phases to their production:

1. The Collection Phase – where the database which contained all names and addresses was maintained, updated and edited;

2. The Extraction Phase – where, by the use of software, the relevant details were extracted from the database for each directory and the sublimation of that information into an electronic form that constituted substantially the form of the directory;

3. The Production Phase – which involved the typesetting of the form of the directory and physical production of the directory.

The Collection Phase involved both automated processes and some human intervention. The Extraction Phase involved a Telstra employee opening a certain computer file, selecting “Modify” and entering relevant details of the directory to be printed and the computer would create the directory. All three judges considered that the Extraction Phase, where the directories took their form, was the relevant phase to consider from a copyright point of view and, because it was automated, no copyright subsisted.

All three judges considered that the Collection Phase should be disregarded for the purpose of determining whether copyright subsisted. Keane CJ held that “the mere collection of data cannot be sensibly regarded as compilation”. His Honour also thought that editorial correction of errors at the proofing stage was not authorship. Yates J took a subtly different approach, stating that “whilst activities such as gathering or organising the collection of material may be relevant authorial activities for copyright purposes, those activities are not of themselves, once engaged in, the subject matter of copyright protection”. This may deny copyright protection to many works where the collection and preparation are extensive but the reduction to writing may involve trifling effort. This result was foreshadowed in the High Court case of IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14. Interestingly, Perram J considered that if the work of the Extraction Phase had been done manually, rather than by computer, copyright would have subsisted.