Marquette IP in Melbourne, Victoria, Australia | Intellectual property solicitor

Marquette IP

Locality: Melbourne, Victoria, Australia

Phone: +61 3 8459 7624

Address: Level 2, 161 Collins Street 3000 Melbourne, VIC, Australia

Website: https://www.marquetteip.com/contact

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• Intellectual property solicitor

25.01.2022 Do Not Pass Go The game that starts family arguments has recently been in a dispute of its very own. Monopoly, owned by @Hasbro, recently had a re-filed trade mark rejected by European Union IP Office (EUIPO). EUIPO rejected the application on the basis that Hasbro re-filed in bad faith to circumvent use requirements. This is since Hasbro appears to have adopted a re-filing strategy often utilised by brand owners to avoid ongoing use being called into question, by re-filing... for a trade mark application covering goods/services which they had already been afforded legal rights to. What are Use Requirements? Use requirements provide that you have to demonstrate ongoing use of a trade mark, within set periods, to maintain your legal rights. Essentially, use it or lose it. The use will ordinarily only be valid to maintain a registration, where it is reflective of how the trade mark has been registered. In Australia, a trade mark will not be vulnerable to removal for the first 3 years following registration. This is to encourage the early filing of marks, whilst also enabling brand owners time to build up to launching the brand. However, beyond this initial 3 year period, consistent use of the trade mark (as registered) must be demonstrated to avoid your trade mark becoming vulnerable to removal from the Register. Such use has to be reflective of the registered rights granted, and in respect of all registered goods/services, to avoid the trade mark being considered fully or partially vulnerable. Similar use requirements exist for overseas trade marks. Given the 3 year grace period in which use of a trade mark will not be called into question, it has often been the case that brand owners have refiled their rights consistently, as a strategy to avoid their use of the brand, and entitlements which flow, being called into question. What is Bad Faith? The concept of bad faith looks to the intention behind a trade mark application. Bad faith grounds can generally be thought of as unacceptable commercial behaviour, relating to any activity in the course of seeking trade mark rights. The takeaway? When filing for a trade mark, ensure that it’s for genuine reasons and legitimate commercial purpose. Likewise, that the application is being prepared and filed in an appropriately genuine commercial fashion.

21.01.2022 Off Limits Flavours Limited edition flavours are a popular way for food and beverages producers to get consumers talking about and purchasing their brand. One of Pringles’ forays into limited-edition flavours ‘Prosecco and Pink Peppercorn’ has landed the brand in hot water in Italy. The prosecco flavoured pringles were seized by Italian authorities for the unauthorised use of the term prosecco.... In Europe, prosecco is classed as a protected ‘Designation of Origin,’ denoting that the term can only be used in reference to the sparkling wine and grape variety when produced in the Italian regions of Veneto and Friuli Venezia Giulia. Producers that don’t hail from particular geographical regions are restricted from labelling their products with particular category terms. The aim is to protect the quality and reputation of products from those regions. However, it’s possible that if the flavour included prosecco within the ingredients list then the snack would be above board. If you’re a food or drink brand, make sure you’re aware of the labelling requirements that exist. In Australia, all manufactured and labelled products must comply with strict mandatory standards and requirements designed to prevent any false, misleading or deceptive claims and maintain industry-specific regulations. IP law must also be considered to ensure product labelling is legally protectable and enforceable in Australia and internationally. Want to know more? Send us a DM or drop us an email at: [email protected] Photo by Lisanne van Elsen via Unsplash

20.01.2022 Calling all Sydney-based creative agencies: Marquette IP is hosting a Branding & IP workshop next Thursday in Surry Hills. This workshop will cover: - An explanation of the distinctiveness threshold for brands to be registered as trade marks for your clients, and therefore leveraged as commercial brand assets - Due diligence options, including on a local and international level, where your clients are seeking to export products and services under the same brand name into mult...iple markets - How to add value to your client projects through getting savvy about due diligence and only pitching viable alternatives This workshop will be perfect for agency owners, directors & account managers. Thursday 28 November 2019, 6pm 7pm SPACES Co-Working Surry Hills Ground Floor, 111 Flinders Street, Surry Hills NSW 2010 RSVP via Eventbrite: https://bit.ly/2O1ekZw

18.01.2022 We had the honour of attending the Lawyers Weekly Women in Law Awards on Friday night. While we didn’t walk away with the win, it was certainly humbling for our young firm to be nominated in the Innovator of the Year (Firm) category. A great night had by all and it was wonderful to see so many talented and hardworking women striving to progress the legal industry. Congratulations to all of the winners.

17.01.2022 Don’t Cry Over Spilt Milk Vitasoy, one of the leaders in the non-dairy milk category, recently applied to trade mark ‘Growing Milk Since 1940’. Their dairy rivals Fonterra opposed the trade mark claiming that the trade mark was misleading since consumers would believe that the products under the tagline would be for dairy products. However, the Trade Marks Office rejected the opposition, citing that the word milk is not limited to dairy products. In their decision, the trad...e marks officer stated that the opponent has failed to establish any of the grounds of opposition. Opposition proceedings rely on the evidence that is supplied to the Trade Marks Office. Both the trade mark applicant and the opponent of the mark are required to submit evidence in order to support their case. The opponent of a trade mark application is required to provide reasons why the trade mark should not be registered, known as grounds of opposition. The opponent of the trade mark bears the burden of proving at least one ground for opposition. This decision illustrates that strong evidence is critical when opposing another’s trade mark application. While the decision may not make dairy farmers happy, it’s certainly a win for plant-based milk producers. If you’d like to know more about our trade mark services, simply get in touch: [email protected] Photo by Crissy Jarvis via Unsplash

17.01.2022 Celebrating Women in Law Awards

16.01.2022 This design by @designbyjake_ speaks to an important rule of thumb in the IP world, revealing your idea too soon can impinge on your ability to gain IP rights. Particularly in the patents and designs world, public disclosure of your idea prior to filings will prohibit you from gaining IP protection. Revealing your ideas when the time is right is key to protecting them!

13.01.2022 The Art of Trade Marks Anonymous street artist Banksy has found himself in the middle of a trade mark dispute. Full Colour Black, a small greeting cards company that commercialises street art has filed a cancellation action against Banksy’s ‘flower bomber’, a street art piece that shows a rioter throwing a flower bouquet. In response, Banksy has set up a pop-up shop in London to prove use of his trade mark. However, the World Trademark Review reports that his opponents will a...rgue that the mark has been filed in bad faith in order to evade copyright law. Copyright and trade mark law are intended to protect different types of IP and therefore enforcing these rights operate differently. Copyright In order to enforce copyright of his works, Banksy would be required to prove authorship as creator, which would out his actual identity. Moreover, Banksy’s anti-consumerist message inherently opposes the enforcement of copyright. Trade Marks In the trade mark world, if you cannot show commercial use of your trade mark you could lose your trade mark rights. This goes to the heart of the pop-up shop in London; Banksy is trying to show that his trade mark is being used in the way intended under the goods claimed. If your trade mark is not being used for the class of goods or services claimed, that can clearly identify your brand to a greater public than it is possible for a trade mark to be invalidated for non-use. Or simply put, if you don’t use it you could lose it. The question is: are Banksy’s trade marks more akin to copyright as artistic works, rather than actually functioning as a brand identifier? Watch this space to see which way the EUIPO decides. Photo by Eric Ward via Unsplash

10.01.2022 We love this Q&A International Trademark Association (INTA) interview with Shelly Lazarus from Ogilvy, speaking about what it means to build value for brands. It reigns true - that brands are more important than ever. INTA indicates that research suggests today’s young consumers expect brands to stand for something. If this is the case, we query how does a brand work to this demand? We consider that a brand must contemplate a myriad of factors, including its company values, morals and ethos to then be able to communicate this to their audience. IP brings to life these messages, via tag-lines, campaigns or various other IP assets. While Lazarus notes that the value of brands has changed over time, one thing that hasn’t is the value of an ideaI think that will never change. We wholeheartedly agree. https://bit.ly/32RzAFL

04.01.2022 The Marquette IP team are excited to be attending the Lawyers Weekly Women in Law Awards tomorrow night. We’ve been nominated for the Innovator of the Year (Firm) award. We are thrilled to be recognised for the innovative approach we bring to IP and the legal industry. We are looking forward to a great night celebrating women in the legal industry. Good luck to all nominees across all award categories.... https://bit.ly/2OUHv1h

03.01.2022 First In, Best Dressed Waiting until the time is right to further your trade mark application? Be mindful that someone may beat you to the chase. Vitalis Healthcare applied to trade mark ‘Vitalis’ for a range of medical services. Similarly named company Vitalis Health & Home Care opposed the trade mark application. Vitalis Health & Home Care argued that they had been using an identical trade mark prior to Vitalis Healthcare, in relation to the same, or similar, services.... The opposition decision came down to the concept of first use. Australia is a first to use jurisdiction, which means that the rights to the trade mark are granted to whoever is first to use the trade mark in the course of trade. The Trade Marks Office considered that the Opponent first used the trade mark in September 2015 when they conducted a presentation to a retirement village which included a powerpoint presentation with the trade mark. Mere marketing and advertising that is, before any actual sales were realised. The Trade Marks Office held that Vitalist Health & Home Care offered its services to the public at this time, which was deemed enough to be considered the first use of the trade mark. Don’t sit on your hands, registering your trade mark early is the only way to secure the investment in your brand. Want to know more about registering a trade mark? Simply get in touch: [email protected] or send us a DM. Photo by marianne bos via Unsplash

02.01.2022 There is a long-held belief in the creative industry that engaging lawyers at certain stages of the design process will only ‘stifle creativity’. However, we consider that there's great value to be realised by IP considerations guiding the outcome of projects. It comes down to engaging with the right IP professionals that understand the agency space and taking a collaborative approach to advising on commercially secure creative outcomes. Learn more about our approach to brand clearance: https://bit.ly/2oUgOz3