Trade mark litigation in Australia is a complicated area of the law; overlapping passing off and the misleading and deceptive conduct provisions of the Competition and Consumer Act. We frequently appear as counsel, sometimes instructed by other law firms, in trade mark disputes because of Wrays industry-recognised expertise in the area.

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Trade mark litigation in Australia ordinarily takes place in the Federal Court.  The Federal Court Rules and practice notes include specific provisions for:

• trade mark disputes;
• survey evidence, which is often necessary to demonstrate a party’s goodwill and reputation in a brand or get-up.  See: http://www.fedcourt.gov.au/how/practice_notes_cm13.html

Wrays senior personnel are admitted in the Federal Court of Australia as barristers (specialist advocates) and frequently appear before Federal Court judges on interlocutory appearances and, when necessary, at trial.

David Stewart, one of our partners, was counsel in the leading case of Paramount Pictures v Hasluck (2006) 70 IPR 293, acting for a number of North American motion picture industry participants. This case determined whether exemplary damages were available for trade mark infringement in Australia.

Fast Track Proceedings

The Federal Court provides an alternative procedure for intellectual property disputes.  The Fast Track List is designed to cater for, amongst other types of litigation, disputes involving “intellectual property rights (other than patents)”.  The Fast Track regime is ideal for disputes which are less than 5 days in length at trial, and where the issues in dispute are relatively straightforward. Typically a Fast Track List dispute will be set down for trial and judgment delivered within 6 to 8 months.

Wrays were one of the first firms in Australia to use the Fast Track List in 2009 when the process was first introduced, for a dispute between two companies over the use of a domain name protected by a trade mark.

Mediation

The Federal Court actively encourages parties to mediate in an effort to resolve their disputes.   Having acted for a number of local and international clients in trade mark dispute mediations before mediation registrars of the Federal Court, with uniformly good results.

Trade Mark Registry Hearings

Trade mark registry hearings are part of our core business. There are two types:

1. Oppositions.  In Australia, these occur as adversarial proceedings before a delegate of the Trade Mark Registrar rather than as legal proceedings;
2. Hearings to have the decisions of examiners reviewed.

David Stewart is Partner, Wrays Lawyers and is responsible for trade mark hearings, and his track record of decisions is listed below:

1. A dispute over the trade mark for “PROSPER” registered by our client, a large property developer: www.ipaustralia.gov.au/pdfs/trademarks/hearings/1063698.pdf
2. A review of the decision of the registrar over the trade mark “MALD” for a global defence contractor, which re-assessed the way in which confidential military information is assessed by the registrar to show reputation: www.ipaustralia.gov.au/pdfs/trademarks/hearings/1284666.doc
3. A dispute over the word “ugh” in relation to sheep skin boots, which was extremely contentious in Australia and was the subject of a televised documentary: www.ipaustralia.gov.au/pdfs/trademarks/hearings/245662.pdf
4. The review of a decision by the trade mark examiner on the applicability of the Australian Wine and Brandy Corporation Act to trade mark applications incorporating a geographical indicator: www.ipaustralia.gov.au/pdfs/trademarks/hearings/989416.pdf
5. The review of a decision by the trade mark examiner on the use of prefixes such as “e-“ in trade mark applications made by a large forestry company: www.ipaustralia.gov.au/pdfs/trademarks/hearings/1012448.pdf
6. A dispute between two rival companies over the use of the brand “TOW-SAFE” : www.ipaustralia.gov.au/pdfs/trademarks/hearings/1233708.pdf
7. Successfully acting for Barwick Wines in a dispute with Fosters over whether the brand "crush" could function as a trade mark for "wines" notwithstanding its particular meaning within the wine industry.
8. Acting as counsel for Macy's Department Stores in a trade mark opposition hearing in Hong Kong.
9. Acting as counsel for Hugo Boss in a trade mark opposition hearing in Hong Kong over registration of the mark "WOSS".
10. Acting as counsel in a trade mark opposition hearing involving two entertainment venues, concerned with the use of the brand "Malt" (currently on appeal to the Federal Court).