The “Big Jack” Verdict: No Trade Mark Infringement by Hungry Jack’s

The "Big Jack" Verdict: No Trade Mark Infringement by Hungry Jack's Following a 3 year Court battle brought by McDonald's against Hungry Jack's, the Australian Federal Court has ruled that Hungry Jack's did not engage in trade mark infringement. The fast-food industry is highly competitive, with companies constantly vying for the attention of consumers and innovating to stay ahead. The legal beef between the burger giants began when Hungry Jack's released burgers called the "Big Jack" and "Mega Jack". McDonald's alleged that this was an infringement of McDonalds' trade mark over "Big Mac". During the trial, Hungry Jack’s chief marketing officer, Scott Baird, admitted that there was an "element of cheekiness" in the burger name, but maintained that the name was not chosen because of its similarity with McDonalds' burgers. The Court emphasised that for a trade mark to be protected, it must possess a level of distinctiveness that sets it apart in the market. McDonald's asserted that the use of the term "Big" in Hungry Jack's Big Jack was an infringement. However, the Court clarified that trade mark protection is not absolute and does not extend to every use of a common term like "Big." The scope of protection must be reasonably defined. Another critical legal consideration was the examination of how consumers could perceive the products. The Court looked at whether the average consumer would likely be confused between the Big Jack and Big Mac. The Court held that the respective names were not deceptively similar and that consumers would not be confused between which restaurant sold the respective burgers. It wasn't however a total win for Hungry Jack's. McDonald's succeeded in a separate argument that Hungry Jack's had mislead consumers and breached consumer laws by advertising that its Big Jack burger contained "25% more Aussie beef" than the Big Mac burger. Tests conducted by a scientist during the trial showed Hungry Jacks' claim to be incorrect. This case shows that the argument of trade mark infringement can often be a fine line. Such disputes highlight the competitive nature of the market and the lengths companies are willing to go to protect their brand identity. If in doubt about whether your advertising (or that of a competitor) may constitute trade mark infringement, obtaining legal advice is key.  By Luke McKavanagh Luke is part of Salerno Law's commercial law team. His days involve providing advice on a wide variety of commercial issues that arise in operating small to medium businesses, where he assists clients who are growing their business or wanting to protect what they’ve established.

2023-11-20T17:04:23+10:00November 20th, 2023|Copyright & Trademark, Litigation|

Kanye West’s ‘YEWS’ Trademark Application Raises Concerns in Brisbane

Kanye West's 'YEWS' Trademark Application Raises Concerns in Brisbane Introduction Kanye West, the renowned musician and fashion icon, has recently filed a trademark application for the term 'YEWS' with the United States Patent and Trademark Office. The trademark application covers a range of ventures, including fashion and gambling. While this move represents a strategic expansion of West's brand, it has raised concerns for a Brisbane-based tech company, Your Easy Web Solutions (YEWS), which uses the acronym 'YEWS' for its business operations. This article explores the potential ramifications of West's trademark application on YEWS and the associated concerns regarding the controversial views expressed by the rapper. The Trademark Application Kanye West's trademark application for the term 'YEWS' signifies his intention to use this brand for various business activities, notably fashion and gambling. This development indicates West's expansion beyond the music industry into sectors that may overlap with the operations of other companies, such as YEWS. In this regard, various music artists (Beyonce, Taylor Swift, Dr Dre, Jay Z, etc) have enjoyed phenomenal success with business ventures outside their normal music endeavours. Concerns for Your Easy Web Solutions (YEWS) Brisbane's tech company, Your Easy Web Solutions, currently utilizes the acronym 'YEWS' as part of its brand identity. In recent media reports, YEWS’ Managing Director, Alexei Kouleshov, has expressed genuine concerns regarding the potential impact of West's trademark application on YEWS. These primary concerns being as follows: 1. Rebranding Requirement: Should Kanye West's trademark application be approved, it might necessitate that YEWS undergo a significant rebranding effort. This process can be costly and time-consuming, potentially affecting the company's pre-established identity. 2. Reputation and Controversy: A central concern lies in the potential association between the term 'YEWS' and the similarity to the word 'Jews.' Given Kanye West's history of making controversial and his recently reported anti-Semitic comments, this connection may result in reputational damage for the Brisbane-based company for Kanye West using the term ‘YEWS’. Such negative connotations could harm YEWS' image and standing in the market. 3. Neutral Business Orientation: Mr. Kouleshov emphasised that YEWS is a neutral entity when it comes to political and controversial matters. The company having operated for 16 years with a focus on web development and digital marketing. Any unintended association with controversy could adversely affect the company’s position and standing as a reliable and neutral service provider. 4. Legal Action to Protect Brand Identity To safeguard the company's brand identity and reputation, Mr. Kouleshov expressed his commitment to taking all necessary legal actions. This suggests that, if West's trademark application poses a substantial threat to YEWS, the Brisbane-based tech company may explore legal remedies to protect its interests and ensure its continued operation with minimal disruption. The obvious concern being the uphill battle that Mr. Kouleshov may face, as a business owner, taking on someone who has significant financial and legal resources such as Mr. West. Trademark/Copyright Law Do I need to register my trademark? Registering your trademark is not mandatory in Australia, but it is [...]

Australia Supports the Matildas (But just not on Instagram or Facebook)

Australia Supports the Matildas (But just not on Instagram or Facebook)In case you have been living under a rock, you would know that the Matildas and their world cup success are big news right now. You have probably seen it on TV and on news websites and live streaming services. However, you probably haven’t seen it on Instagram or Facebook though. Why is that? The likely reason is that it has been removed by the platform at the request of FIFA: FIFA owns the copyright and the broadcasting rights to every match played in the world cup series. It sells the rights in the copyright to live streaming services and television broadcasters, which is a key revenue stream for FIFA. If FIFA allowed people to attend the matches and film them with their camera phones and post them to Instagram and Facebook then it would not have the ability to sell the exclusive rights in their copyright to Seven Network and Optus Sport, so they enforce it stringently. The legal mechanism is a portfolio of trade marks, and conditions on match tickets purchased that prohibit personal broadcasting. FIFA employs a team of people to monitor social media for breaches of their copyright, which they report to the social media platform as soon as they are detected. The words “World Cup” are trademarked, so if a business in Australia used it, say, as part of a promotion, then it may be pursued for trade mark infringement. Trademarks are covered by Federal law in Australia and depending on the type of offence, may be caught by the Trademarks Act 1995 (Cth) and the Copyright Act 1968 (Cth). The legislation imposes criminal penalties including fines and imprisonment, however, the civil claims for compensation and costs could outweigh the fines imposed. Trademarks, Copyright, Halal Meat and Stripper Poles A clear example of this is the Federal Court case Vertical Leisure Limited & Anor v Skyrunner Pty Ltd & Anor [2014] FCCA 2033 in which it was not possible to assess the financial gain of the respondent, which was selling a X-Pole dancing pole and DVD set online into the Australian market that passed off as the applicant’s product. The Court acknowledged that the conduct of the respondent cannot give rise to separate and additional damages under the Trademarks Act 1995 (Cth) and the Copyright Act 1968 (Cth) and the Australian Consumer Laws, rather the offending must be considered in its totality, and considered in context. The award of damages to compensate for lost profit and reputational harm amounted to $94,800, but additional damages of $300,000 were also awarded to punish the respondent for its flagrant and continued breach, but also to deter others. An example where the fine was higher than the damages award is the case of Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614 which concerned a meat product wholesaler that sold the meat with the “Halal Certified” emblem despite not having the right to use it [...]

Barbie Pink | Tiffany Blue | Post it Note Yellow | Cadbury Purple – Trademarking Colours

What is a Trade Mark? The Barbie movie has dominated the recent 2023 Australian headlines. However, Barbie is making headlines in the UK for a different reason; trade mark infringement. The toy's maker Mattel has lodged Court proceedings not for infringement of their brand name, but for the "Barbie Pink" tone of colour used in its advertising. Can you register a trade mark over a colour in Australia? What is a trade mark? In this article we explore these questions. What is a Trade Mark? Trade marks provide that extra measure of protection over your brand, deterring other people from using it and increasing your rights against those who infringe upon it. A trade mark is a registered symbol or words that are used to distinguish your goods and services from those of others. A trade mark is essential to protect your brand and distinguishes the goods and services that you provide in the eyes of consumers. A successful business is usually intrinsically associated with a valuable trade mark. What can I Trade Mark? You can register a trade mark over the following individual or combination of items: Logo Word Letter Number Phrase Picture Shape Colour Sound Smell Aspect of Packaging The more original or unique a trade mark is, the easier it will be to register. Something that is commonly used or likely for a competitor to use will be more difficult to register, such as a location or a common phrase. It must therefore be sufficiently different from other registered trade marks. It goes without saying that once someone has registered a trade mark, you cannot register a trade mark over that same subject matter. Even if somebody has not registered a trade mark over their brand or logo, but has used that brand and gained a reputation in the market place, you may also be prevented from registering a trade mark over that brand or logo. There are also restrictions for trade marks over flags, emblems, official signs and armorial emblems. For example, there are restrictions on trade marks containing a representation of/or association with the Royal Family. The Selection of Goods or Services When applying for a trade mark, you must select the category or categories of goods and/or services which you want your mark to cover, and provide a specification of each category. There are 45 categories to choose from. A poor description in the specification will not give proper protection. You cannot amend a trade mark description once it is registered, so it is good practice to invest in a professional to get this right in the beginning. You also will not be refunded the application fee if IP Australia refuses to register your trade mark. What does Registration Provide? Registration of a trade mark means it becomes your personal and intellectual property. It gives the owner a legally enforceable right to use the trade mark, licence its use to others or sell it (in the country in which the trade mark is [...]

2023-08-11T14:13:31+10:00August 11th, 2023|Copyright & Trademark, Intellectual Property, Litigation|

Light plane crashes near Essendon airport

A pilot is lucky to be alive after his light plane crashed and flipped onto its roof in an emergency landing at Essendon Fields airport. Light plane fatalities were at an all time high in 2022, with a reported 23 deadly crashes across Australia. Salerno Law have extensive experience in acting and advising in relation to compensation claims for aircraft related matters. This includes acting for companies, individuals and families affected by helicopter crashes in New South Wales, Queensland, the Northern Territory and Western Australia. In addition, Cliff acted in the tragic plane crash which occurred at Hamilton Island in 2002 and is currently acting in one of Australia’s most significant and catastrophic helicopter accidents.Head of aviation, Cliff Savala, has over 25 years legal experience in aviation matters has included him dealing with the ATSB, CASA, the Coroners Court, Australian Federal Police and local police during the investigation and prosecution phase of an aircraft crash. Thereafter, instructing appropriate aviation experts and Kings Counsel during the civil litigation phase to ensure the best possible outcome for the affected companies, individuals and families.The laws surrounding aviation claims are complex and therefore it is essential that legal advice from an expert aviation lawyer is obtained. In this regard, international conventions apply and importantly the normal limitation period for bringing a personal injury claim is restricted to 2 years from the date of the incident.For the full article on the Essendon light plane crash, Nine News reports HERE 

Ed Sheeran’s Triumphant Lawsuit Victory: ‘Thinking Out Loud’ about Australian Copyright Laws

In a highly anticipated verdict, British singer-songwriter Ed Sheeran emerged victorious in a copyright trial, defending claims that his hit song "Thinking Out Loud" infringed upon the musical composition of Marvin Gaye's classic song "Let's Get It On." The verdict, delivered on May 4, 2023, by a federal jury in a United States District Court in New York, marked a significant moment in the ongoing debate surrounding music copyright infringement. The decision has far-reaching implications for the music industry worldwide and raises questions about the boundaries of creative inspiration and originality in song writing. The legal battle began in 2018 when Structured Asset Sales (SAS), which holds a part of the copyright for "Let's Get It On," filed a lawsuit claiming that Sheeran's song, copied the "melody, harmony, and rhythmic components" of Marvin Gaye's iconic track. The lawsuit sought damages and a portion of the royalties earned from Sheeran's song, which had achieved global success and widespread acclaim. The verdict sets an important precedent for future copyright cases in the music industry as well as reinforcing the notion that stylistic similarities or a similar feel between songs, does not provide sufficient grounds for a successful copyright infringement claim. Rather, the focus in these cases still remains on identifying the substantial similarity of the important elements of a song, such as the melody, lyrics and musical composition. As the music industry continues to evolve in this digital age, artists will be expected to continue to draw from the rich musical history that has come before them, meaning cases like this will undoubtedly arise again. This case highlights the importance of copyright laws, not only in the sense of artistic inspiration and music but also in the ever-changing modern world, which is why it is paramount to have an understanding of the way the law functions. The case serves as a reminder of the importance of fostering a robust dialogue about the intricacies of copyright law, artistic inspiration, and the ever-changing landscape of creative expression in the modern world. What is Copyrighting? Copyrighting is the legal term used for the mechanism that grants exclusive rights to the creators over their original works, which prevents others from being able to use, distribute or reproduce their creations without lawful permission. Copyright protection covers many forms, including many artistic forms such as music, film, art and literature. By obtaining copyright on original work, this allows for creators to gain control over the way their content is used and gives them the ability to seek legal relief if their rights are infringed upon. Copyright in Music and Song Lyrics: In the realm of music, copyright protects both the musical composition and the lyrics. The composer or songwriter holds the copyright to the musical composition, while the lyricist retains rights over the lyrics. This dual protection ensures that creators have control over the use and distribution of their content. APRA Music Copyright: In Australia, the Australasian Performing Right Association (APRA) plays a significant role in administering [...]

Rick Astley’s Intellectual Property Action a No Brainer

Rick Astley’s Intellectual Property Action a No Brainer Prominent 80’s and 90’s artist Rick Astley (Astley) has recently commenced legal action against rapper Yung Gravy (Gravy) over the use of Astley’s song ‘Never Gonna Give You Up’ in Gravy’s song ‘Betty (Get Money)’.  Gravy’s song was such a hit in Australia that it came in 97th in Triple J’s 2023 Hottest 100 countdown.  Astley had reportedly given permission for Gravy to borrow the melody for his song but did not give permission to use his voice.  A Gravy vocalist performing on the track had the ability to sing in a voice remarkably similar to Astley’s, giving the impression that it was in fact Astley who was performing in Gravy’s song. Astley sued Gravy in Los Angeles in late January, with the lawsuit stating that the use of the impersonator is illegal because the song violates Astley’s right to control the commercial exploitation of his identity and prevent unauthorised commercial appropriation by others. Although wealthy music stars fighting over lucrative music rights may not seem relevant, the core issue is intellectual property (IP) rights, which affect many everyday Australians. More specifically, unique issues like what IP rights are attached to a person’s voice, can pose significant legal problems.  Individuals and businesses can better understand IP issues to protect their interests, while on the other hand, refrain from infringing on others’ IP rights. What is Intellectual Property? IP is an area of law which can be misunderstood due to the mystique of something that is often not tangible.  IP is the property of a person’s mind or their exclusive idea, and there are laws to protect a person’s IP in the same way there are laws to protect a person’s house.  IP covers things like: Trade marks; Copyrights; Designs; Patents; Confidential information; and Reputation and goodwill. Some areas of IP are registerable in Australia, such as a trademark or a patent, while other areas, like copyright, are mostly not registerable but are an automatic benefit which is protected by legislation and the common law.  IP Australia is a government body that administers IP rights and legislation, and also grants rights in trademarks, designs, and patents.  Copyrights, and circuit layouts,[1] are managed by the Attorney General’s Department, while confidential information and goodwill are covered by contracts and confidentiality agreements.  There are several pieces of legislation that governs IP in Australia, including the; Trade Marks Act (Cth); Patents Act (Cth); Copyright Act (Cth); Designs Act (Cth); and Plant Breeder’s Rights Act (Cth). Applications of Different Types of IP? Trademark and copyright are perhaps the most widely known, or recognisable words, when it comes to IP.  A trademark is intended to be used to distinguish the goods or services from one person to another in the course of business.  A trademark will protect things such as: Words; Phrases; Logos; Letters; Numbers; Symbols; Sounds; Shapes; Images; and Scents. Once a trademark is registered, it is then the personal property of the registered owner.  To register [...]

2023-02-13T15:32:48+10:00February 13th, 2023|Intellectual Property, Litigation|

Pikachu caught up in Federal Court matter between Pokémon Company International and Australian gaming platform PokeWorld

Pikachu caught up in Federal Court matter between Pokémon Company International and Australian gaming platform PokeWorld The use of non-fungible tokens (NFTs) in the gaming industry has risen in popularity exponentially in recent years, as it allows for unique digital assets to be bought and sold on blockchain platforms. However, with this new technology comes potential risks, specifically in the areas of copyright and trademark infringement. One issue with launching a game using NFTs is that creators may unknowingly use copyrighted or trademarked content in their game, leading to legal issues. For example, if a game developer uses a popular character or logo in their game without permission, they could be facing a lawsuit for copyright or trademark infringement. The Pokémon Company International, Inc (The Pokémon Company), a subsidiary of gaming giant Nintendo, has obtained a successful interlocutory injunction against Australian crypto company, Pokémon Pty Ltd (PPL). The interlocutory injunction also was successfully obtained against PPL’s director Xiaoyan Liu. The interlocutory injunction came about when PPL and Mr Liu threatened to release a range of Pokémon-themed Non-Fungible Tokens (NFTs) without The Pokémon Company’s permission. Specifically, The Pokémon Company claimed they did not grant authorisation for PPL to use their intellectual property, including images in their gaming software. While the substantive issues in the proceedings are in progress, the interlocutory injunction provides an excellent example of how to act swiftly to protect your intellectual property effectively. The Interlocutory Injunction In Australia, an interlocutory injunction is an equitable remedy, a relief that sets out what someone must do or not do or to stop that person doing something. There are various reasons why an injunction would be available, whenever required by justice, and includes preventing the publication or transmission of information or the use or disclosure of confidential information. In short, an injunction can be interpreted as ‘pending the result of court proceedings’.  An interlocutory injunction needs an initial application to the court, called an 'interlocutory application'. As a result, a court might grant an injunction order before deciding the substantive issues in the court process. Generally, the court may award an interlocutory injunction when it believes it is ‘just or convenient’ to do so. In deciding this, the court will generally ascertain the following: • parties refusing to enter negotiations; and • Does the inconvenience or injury the applicant would suffer if an injunction were not granted outweigh the potential injury a defendant would suffer if the injunction were granted? (Called the “balance of convenience”). The Pokémon Company’s interlocutory application relied on section 234 of the Australian Consumer Law (ACL) to bring the application before the court. In support of its application, The Pokémon Company set out the reputation of the Pokémon franchise, noting its success since its launch. The Pokémon Company further declared that it was worried that a considerable number of consumers would be misled, deceived, or were likely to be misled or deceived into believing that PPL, "PokeWorld," and the NFTs were affiliated with The Pokémon Company [...]

2023-02-07T20:54:06+10:00February 7th, 2023|Cryptocurrency, Intellectual Property|

Australia’s Proposed Legislative Regime To Assist In Protecting Indigenous Culture and Art

We acknowledge the people united by the Yugambeh language who are the original custodians of the local land, rivers, mountains, and sea. We pay our respects to their past and current Elders and look to a positive future for their young people. We acknowledge their continued care of land, their wisdom, their laws and their passing on of knowledge. First Nations cultural expression is firmly connected to over 75,000 years of heritage and continuing practice in Australia. Their art has been recognised both within Australia and internationally. Despite the artistic recognition, current intellectual property (IP) laws in Australia only protect individual artists and do not recognise any communal rights. The inability of current IP laws to protect the creative and traditional ownership of indigenous art and property has been an ongoing problem within Australia. Currently, there are no specific laws that prevent the misuse, distortion or alteration of Indigenous and cultural IP that is communally owned or part of an Indigenous group’s heritage. The Productivity Commission (the Commission) has investigated this problem and released the Aboriginal and Torres Strait Visual Arts and Crafts report in response to the lack of legal and cultural protection offered to Indigenous Cultural and Intellectual Property (ICIP). Since the birth of Non-Fungible Tokens (NFT’s), there has been concern with copyright as the purchase of an NFT is not accompanied by a copyright transfer. Therefore, when an NFT is purchased, only the NFT itself is owned. This challenge stems from the lack of an authentication process and platforms not verifying the people who create (or mint) the NFTs in the first place. Subsequently, this impacts Indigenous artists who are now competing with fake Indigenous artwork or having their art sold as NFTs without their knowledge. Safeguarding Indigenous traditional knowledge and cultural expression is crucial to ensuring that cultural heritage is maintained and passed down from one generation to another. What is the Indigenous Cultural and Intellectual Property (ICIP)? The ICIP refers to the rights that Indigenous people have, and want to have, to protect their traditional arts and culture. Rights protected by the ICIP include the rights to protect traditional knowledge and sacred cultural material and the right to ensure that traditional laws and customary obligations are respected. The Australia Council for the Arts along with the national arts funding and advisory body to the Australian Government Office of the arts have released a set of protocols aimed at bridging the legal gap and providing IP protection by recognising and engendering respect for customary practice. The protocols aim to address key legal and ethical issues of Indigenous cultural material. Furthermore, ICIP covers many differed forms of traditional culture and expression. Who owns the IP of an NFT? NFT owners are not granted any rights under IP unless the creator takes certain measures to ensure that they are. Essentially, copyrighting is a proactive choice for artists whereby they can outline what others are able to do with their artwork. This information may be included in a [...]

2022-11-02T14:59:47+10:00November 2nd, 2022|Cryptocurrency, Intellectual Property|
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