OCTOBER 2008

IN THIS ISSUE

Please Select an Article to Read

• Information security
• The importance of good legal advice
• Intellectual property and Web 2.0
• Environmentally friendly, not misleading and deceptive
• Copying of software permitted for disaster recovery purposes
• Australian Law Reform Commission: Report on privacy
• NZ Patents Bill
• Trade mark office upholds foreign laws
• Chocolate war: Kit Kat shape refused trade mark registration

 

Trade mark office upholds foreign laws

August 2008

The Federal Court has rejected a trade mark application for being lodged in breach of article 5 of the Spanish Unfair Competition Act.  The application centred on the mark EL NINO which was used to market casual wear and clothing by the two parties jointly. 

Unsurprisingly, the applicant’s attempt to register the mark alone failed because he was only half of the true owner of the mark.  The Court went further though, noting that the same conduct was in breach of good faith obligations implied into all contracts governed by Spanish law.  Accordingly, the application was rejected.  

This case appears to expand the scope of the Trade Marks Act 1995 (Cth) to include a consideration of applicable foreign law.  Accordingly, trade mark owners should consider this when developing licence and distribution arrangements in foreign jurisdictions.

To read the case, see: Neumann v Sons of the Desert SL [2008] FCA 1183 (11 August 2008).

 

Written by John Graves, Partner and Kenneth Chan, Solicitor