Issue No. 10, December 2018

Issue No. 10, December 2018APAA e-Newsletter

Protecting colours as trade marks in Australia

Roseanne Mannion, Spruson & Ferguson (Australia)

A recent Federal Court decision in Frucor Beverages Ltd v The Coca-Cola Co, [2018] FCA 993, has provided useful guidance to brand owners and practitioners for registering a colour as a trade mark in Australia.

Differences in Acceptance Practice between Australia and New Zealand

Mike Biagio, Baxter IP (Australia)

Australia and New Zealand…there was a move to homogenizing the examination and prosecution processes…now seems to have been shelved, this has resulted in there being many similarities…However, there are important differences…that should make a big difference to how you should approach prosecution to get your application accepted.

PUMA’s challenging road against parody trademark registration

Megumi Saito, Fukami Patent Office, P.C. (Japan)

This review introduces one example of tough and ongoing efforts by PUMA against one trademark registration…apparently looks like a parody of the “PUMA” logo in commonality in the pose of animal devices and the word logo design.

The Patent Court Ruled For the First Time That A Selection Invention Having Inventiveness Can Still Lack Novelty

Keum Nang Park and Jung Hyun Uhm, Lee & Ko (Korea)

Patent Court denied the novelty of a selection invention…noting that the issue of novelty is reviewed independently from whether the patent is found to have inventiveness…

Distinctive or descriptive? Supreme Court ruling sets precedent for considerations of similarity

Young Ju Song and Somi Lim, Yoon & Yang (IP) LTD (Korea)

Supreme Court…said that the “OPTIS” portion can be excluded from considerations of similarity, because it would easily remind consumers of the word “OPTIC.”

Of bubble tea battles and the factors to be considered in the grant of injunctive relief. The Malaysian Court of Appeal decides in the case of La Kaffa International Co. Ltd v Loob Holding Sdn Bhd; Court of Appeal Civil Appeal No. W-02(IM)(IPCV)-1261-07/2017 & anor

Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)

[D]ispute arose…when La Kaffa [franchisor] alleged that Loob [franchisee]…failed to purchase all raw materials from La Kaffa, failed to allow La Kaffa to inspect and/or audit Loob’s accounts, books and records and had failed to pay for raw materials purchased from La Kaffa.

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