Trade Marks

Intellectual Property

Intellectual Property » Trade Marks

Managing a large portfolio of trade marks internationally – as Corrs does for Foster’s, for example – requires the right strategic approach to maximise protection whilst containing costs.

Luxury brands, like Louis Vuitton, Hermes, Gucci, Cartier and Hugo Boss rely upon us to cost-effectively contain the ever-present problem of counterfeits, even when that involves extended protection for non-traditional marks such as colours or shapes.

Others, like BlackBerry and fashion name Lacoste entrust to us complex enforcement actions against competitors.

Right across the spectrum – whether it is routine enforcement of trade marks against rogue retailers or taking a complex question of trade mark law right up to the High Court of Australia as Corrs did for Gallo, Corrs’ trade mark practice focuses on getting the right results for our clients.

Our Experts

DIXIT Arvind website grey SIZED TH

Arvind Dixit

Special Counsel Location Melbourne Profile
Fixler David CMYK 90x130

David Fixler

Partner Location Melbourne Profile
WHEELAHAN Frances website grey SIZED TH

Frances Wheelahan

Partner Location Melbourne Profile
CAMERON James website grey SIZED TH

James Cameron

Special Counsel Location Brisbane Profile
Bebber Jurgen2 90x130

Jürgen Bebber

Partner Location Melbourne Profile
Hay Kate website grey SIZED TH

Kate Hay

Partner Location Melbourne Profile
Odette Gourley.jpg

Odette Gourley

Partner Location Sydney Profile
Stephen Stern.jpg

Stephen Stern

Partner Location Melbourne Profile

Our Experience

Barefoot win for Gallo

When the Californian E&J Gallo Winery, makers of Barefoot wine, moved to stop the use of the word Barefoot on a Lion Nathan beer, it took three tiers of court challenges before the High Court made a ruling that reaffirmed Gallo’s global trademark rights.

Corrs’ international experience and expertise meant the team could correctly advised Gallo that it could win the case even when they had never directly marketed Barefoot wines in Australia.

More

BAT

Corrs is acting for British American Tobacco (BAT) as part of a global team in the protection of BAT’s IP rights against Australia’s Tobacco Plain Packaging Act.

The Act mandated the removal of graphical trade marks, designs, and other intellectual property from tobacco products with effect from December 2012.

More

BlackBerry

Businesses often have to defend their trade marks on many fronts. Having an Australian team experienced in coordinating strategy with large international litigation teams was critical for BlackBerry.

Corrs acted for BlackBerry in the Federal Court and the Trade Marks Office, to stop Samsung adopting the name BLACKJACK for a smartphone. The resulting Australian settlement led the way for successful negotiations throughout RIM’s global market.

More

Botox says no to No-Tox

When a company sought to register the name No-Tox in relation to facial cosmetics, Allergan, the owner of one of the world’s leading global cosmetic brands, Botox, engaged Corrs Chambers Westgarth to oppose the registration.

Through Corrs’ diligent and determined efforts over a prolonged period, the strength of the of the global Botox brand was protected.

Despite the Trade Mark Office initially rejecting Botox’s opposition, Corrs’ managed a successful appeal, and the registration of the trademark No-Tox was refused.

More

Cadbury

It has been very difficult for companies to register a single colour as a trade mark but a seven-year case, involving the distinctive purple of Cadbury chocolate, has set a precedent in the steps needed to register a single colour in Australia.

The winning strategy relied on garnering carefully targeted evidence of use going back almost a century and of current consumer perceptions to build the most compelling case in these unchartered waters of trade mark law.

More

Corrs gets Winnebago back on the road in Australia

Winnebago Industries Inc., famous for its motor home and recreation vehicles since the 1960s, engaged Corrs’ IP team to protect its brand in Australia.

In 1982, an Australian RV manufacturer unconnected with the US company began manufacturing and selling motor homes bearing the Winnebago brand and logo interpretation.

When the US company developed an interested in selling their motor homes in Australia, they commenced proceedings against Knott Investments and its dealers in the Australian Federal Court to recover the Winnebago brand after more than 30 years.

More

Crocodiles in court

The word ‘crocodile’ and an image of it as a logo device, are the subject of an intense global dispute.

Corrs has been acting for the famous French clothing and apparel company Lacoste for many years in respect of a number of very heavily disputed trade mark opposition, and is currently playing a central role assisting Lacoste’s dispute in Australia, New Zealand and Fiji.

More

Our Thinking

Change in the air for IP laws in Australia: 5 key takeaways

The Government has responded to the Productivity Commission’s review of Australia’s IP system. Here are five key takeaways.

More

Brand Protection Online – Australia Chapter

Brand Protection Online is a go-to guide for any user or adviser in need of strategies to combat IP infringement in the digital world or to get up to speed with the latest developments affecting brand holders online.

More Download

Registered Designs: What is the appropriate form of order for injunctive relief?

Intellectual property lawyers will be familiar with the usual form of order for the injunctive relief awarded in trade mark infringement cases. But when it comes to registered design cases, the appropriate form of order is not so clear…

More

Breaking Brexit Down: Trade Marks (VIDEO)

In the final part of our video series, Corrs Partner Tim Allen takes a closer look at the implications of the UK’s decision to withdraw from the EU.

More

That Just Won’t Fly: Federal Court decision in Qantas v Edwards offers guidance on trade mark confusion

The Federal Court’s recent decision in Qantas v Edwards [2016] FCA 729 provides a useful exposition of the “prior conflicting mark” and “prior reputation” grounds of opposition under the Trade Marks Act.

More

Protecting major sporting events held in Australia - Legislating against ambush marketing

A Bill that increases protection against businesses that free load off major sporting events is timely and welcome.

More

Making your mark in Australia: A guide for Chinese companies

There are opportunities for Chinese companies wishing to build their brands and business in Australia.

More

Fighting to retain heritage beer brands - A CUB success story

In the largest set of opposition proceedings in Australian trade mark history, iconic Australian brewer CUB has emerged victorious from a dispute with a rival brewer intent on assuming control of a selection of CUB’s heritage brands.

More Download

adidas and PacBrands fight it out over 4 stripes, while OHIM’s 2nd Board takes a modern view of footwear marks

Position marks in the spotlight again in Australia and Europe.

More Download

Tips for Australian brand owners - Recent case law on maintaining your trade mark registrations in Europe

Australian brand owners that have registered trade marks in Europe must heed a recent decision on the continuing requirement of trade mark use.

More

IP for free? A ‘Quirky’ idea that reinvents innovation

Companies spend billions protecting their IP, but now one of the world’s largest is bucking the trend and giving free access to some of its patents.

More

Building names - A location, a brand or both?

This article considers how building developers and owners of building management rights can use trade mark protection to protect brands established for buildings such as hotels, residential complexes and shopping centres.

More

New National Business Names Register - Questions and answers

The new National Business Names Register which commenced on 28 May 2012 is administered by ASIC and allows a business name to be registered nationally via a single online registration and fee.

More Download

Copyright and the Digital Economy - ALRC inquiry needs broader scope

Australians need a copyright system that works. One they can respect. Our copyright laws need to provide certainty, encourage innovation, and enhance the free flow of information.

More

Do you have the tactical and strategic edge in litigation?

From time to time you will be faced with a step which is unusual and not generally taken by lawyers. But if followed in the appropriate way it can save the client considerable time and money.

More

Australia should lead in counterfeit crackdown

The new Anti-counterfeiting Trade Agreement (ACTA) is the latest international effort aimed at combating the more than US$200 billion dollar global trade in counterfeit and pirated goods.

More

Protect your brand on the internet

Who is in charge on the internet? Mostly, it seems it’s the consumer. So how do you protect your brand when it’s in the hands of the consumer and the consumer is everywhere?

More

Our Experience

Barefoot win for Gallo

When the Californian E&J Gallo Winery, makers of Barefoot wine, moved to stop the use of the word Barefoot on a Lion Nathan beer, it took three tiers of court challenges before the High Court made a ruling that reaffirmed Gallo’s global trademark rights.

Corrs’ international experience and expertise meant the team could correctly advised Gallo that it could win the case even when they had never directly marketed Barefoot wines in Australia.

BAT

Corrs is acting for British American Tobacco (BAT) as part of a global team in the protection of BAT’s IP rights against Australia’s Tobacco Plain Packaging Act.

The Act mandated the removal of graphical trade marks, designs, and other intellectual property from tobacco products with effect from December 2012.

BlackBerry

Businesses often have to defend their trade marks on many fronts. Having an Australian team experienced in coordinating strategy with large international litigation teams was critical for BlackBerry.

Corrs acted for BlackBerry in the Federal Court and the Trade Marks Office, to stop Samsung adopting the name BLACKJACK for a smartphone. The resulting Australian settlement led the way for successful negotiations throughout RIM’s global market.

Botox says no to No-Tox

When a company sought to register the name No-Tox in relation to facial cosmetics, Allergan, the owner of one of the world’s leading global cosmetic brands, Botox, engaged Corrs Chambers Westgarth to oppose the registration.

Through Corrs’ diligent and determined efforts over a prolonged period, the strength of the of the global Botox brand was protected.

Despite the Trade Mark Office initially rejecting Botox’s opposition, Corrs’ managed a successful appeal, and the registration of the trademark No-Tox was refused.

Cadbury

It has been very difficult for companies to register a single colour as a trade mark but a seven-year case, involving the distinctive purple of Cadbury chocolate, has set a precedent in the steps needed to register a single colour in Australia.

The winning strategy relied on garnering carefully targeted evidence of use going back almost a century and of current consumer perceptions to build the most compelling case in these unchartered waters of trade mark law.

Corrs gets Winnebago back on the road in Australia

Winnebago Industries Inc., famous for its motor home and recreation vehicles since the 1960s, engaged Corrs’ IP team to protect its brand in Australia.

In 1982, an Australian RV manufacturer unconnected with the US company began manufacturing and selling motor homes bearing the Winnebago brand and logo interpretation.

When the US company developed an interested in selling their motor homes in Australia, they commenced proceedings against Knott Investments and its dealers in the Australian Federal Court to recover the Winnebago brand after more than 30 years.

Crocodiles in court

The word ‘crocodile’ and an image of it as a logo device, are the subject of an intense global dispute.

Corrs has been acting for the famous French clothing and apparel company Lacoste for many years in respect of a number of very heavily disputed trade mark opposition, and is currently playing a central role assisting Lacoste’s dispute in Australia, New Zealand and Fiji.

Our Thinking

Change in the air for IP laws in Australia: 5 key takeaways

The Government has responded to the Productivity Commission’s review of Australia’s IP system. Here are five key takeaways.

Brand Protection Online – Australia Chapter

Brand Protection Online is a go-to guide for any user or adviser in need of strategies to combat IP infringement in the digital world or to get up to speed with the latest developments affecting brand holders online.

Registered Designs: What is the appropriate form of order for injunctive relief?

Intellectual property lawyers will be familiar with the usual form of order for the injunctive relief awarded in trade mark infringement cases. But when it comes to registered design cases, the appropriate form of order is not so clear…

Breaking Brexit Down: Trade Marks (VIDEO)

In the final part of our video series, Corrs Partner Tim Allen takes a closer look at the implications of the UK’s decision to withdraw from the EU.

That Just Won’t Fly: Federal Court decision in Qantas v Edwards offers guidance on trade mark confusion

The Federal Court’s recent decision in Qantas v Edwards [2016] FCA 729 provides a useful exposition of the “prior conflicting mark” and “prior reputation” grounds of opposition under the Trade Marks Act.

Protecting major sporting events held in Australia - Legislating against ambush marketing

A Bill that increases protection against businesses that free load off major sporting events is timely and welcome.

Making your mark in Australia: A guide for Chinese companies

There are opportunities for Chinese companies wishing to build their brands and business in Australia.

Fighting to retain heritage beer brands - A CUB success story

In the largest set of opposition proceedings in Australian trade mark history, iconic Australian brewer CUB has emerged victorious from a dispute with a rival brewer intent on assuming control of a selection of CUB’s heritage brands.

adidas and PacBrands fight it out over 4 stripes, while OHIM’s 2nd Board takes a modern view of footwear marks

Position marks in the spotlight again in Australia and Europe.

Tips for Australian brand owners - Recent case law on maintaining your trade mark registrations in Europe

Australian brand owners that have registered trade marks in Europe must heed a recent decision on the continuing requirement of trade mark use.

IP for free? A ‘Quirky’ idea that reinvents innovation

Companies spend billions protecting their IP, but now one of the world’s largest is bucking the trend and giving free access to some of its patents.

Building names - A location, a brand or both?

This article considers how building developers and owners of building management rights can use trade mark protection to protect brands established for buildings such as hotels, residential complexes and shopping centres.

New National Business Names Register - Questions and answers

The new National Business Names Register which commenced on 28 May 2012 is administered by ASIC and allows a business name to be registered nationally via a single online registration and fee.

Copyright and the Digital Economy - ALRC inquiry needs broader scope

Australians need a copyright system that works. One they can respect. Our copyright laws need to provide certainty, encourage innovation, and enhance the free flow of information.

Do you have the tactical and strategic edge in litigation?

From time to time you will be faced with a step which is unusual and not generally taken by lawyers. But if followed in the appropriate way it can save the client considerable time and money.

Australia should lead in counterfeit crackdown

The new Anti-counterfeiting Trade Agreement (ACTA) is the latest international effort aimed at combating the more than US$200 billion dollar global trade in counterfeit and pirated goods.

Protect your brand on the internet

Who is in charge on the internet? Mostly, it seems it’s the consumer. So how do you protect your brand when it’s in the hands of the consumer and the consumer is everywhere?

Our Experts

DIXIT Arvind website grey SIZED TH

Arvind Dixit

Special Counsel Melbourne +61 3 9672 3032
Fixler David CMYK 90x130

David Fixler

Partner Melbourne +61 3 9672 3173
WHEELAHAN Frances website grey SIZED TH

Frances Wheelahan

Partner Melbourne +61 3 9672 3380
CAMERON James website grey SIZED TH

James Cameron

Special Counsel Brisbane +61 7 3228 9752
Bebber Jurgen2 90x130

Jürgen Bebber

Partner Melbourne +61 3 9672 3260
Hay Kate website grey SIZED TH

Kate Hay

Partner Melbourne +61 3 9672 3155
Odette Gourley.jpg

Odette Gourley

Partner Sydney +61 2 9210 6066
Stephen Stern.jpg

Stephen Stern

Partner Melbourne +61 3 9672 3148