Battle Of The Sevens
This pivotal case, Seven Network (Operations) Ltd v 7-Eleven Inc [2024] FCAFC 65, highlights the importance of genuine and continuous use of a trade mark. Seven Network registered the “7NOW” mark in 2013 for on-demand streaming services. In 2019, 7-Eleven sought to remove the mark due to non-use for all the goods and services registered. Seven attempted to defend its use of the trade mark by claiming the mark was used in a domain name, and website banner that redirected users to its “7PLUS” platform and that this consisted sufficient use. The Full Federal Court upheld that use must function as a “badge of origin” to draw a connection between the goods and services and the trade mark owner. The Full Court upheld the primary judge’s decision that the trade mark was not used in relation to some goods and services, which were subsequently removed from the registration from non-use. This case underscores the risks of non-use and the importance of protecting trade mark rights.
Fintech Feud
This case, Firstmac Limited v Zip Co Limited [2025] FCAFC 30, clarified the limits of the “honest concurrent use” defence under Australian trade mark law. Firstmac, owner of a registered “ZIP” trade mark in financial services, alleged Zip Co infringed its mark by using “Zip” for its buy-now-pay-later services. Zip Co argued its use was honest and concurrent, as it had operated under the name since 2013. However, the Full Federal Court found Zip Co had prior knowledge of Firstmac’s mark, and had commenced use of the trade mark in the course of trade, meaning Zip Co could not rely on the defence. The Court also confirmed that Firstmac had used its mark sufficiently to avoid cancellation for non-use. This decision highlights the importance of conducting thorough trade mark searches and ensuring new brands do not infringe existing rights.
Katy Perry’s Legal Roar
The case Killer Queen, LLC v Taylor [2024] FCAFC 149 involved a trade mark dispute between Australian designer Katie Taylor, who registered “KATIE PERRY” for clothing in 2008, and pop star Katy Perry, who had used “KATY PERRY” professionally since 2002. Taylor alleged infringement after Perry’s branded merchandise was sold in Australia. While the Federal Court initially sided with Taylor, the Full Federal Court overturned the decision, ruling that Perry had an established reputation in Australia predating Taylor’s registration. The Court held that Taylor’s mark was likely to mislead consumers and should be cancelled. This controversial decision arguably undermines registered rights in favour of celebrity reputation, raising concerns about the certainty of trade mark protection when fame and prior reputation clash with valid local registrations.
Shape Marks Brewing
Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 relates to shape trade marks. Koninklijke Douwe Egberts (KDE), owner of the Moccona brand, alleged that Cantarella Bros infringed its registered shape trade mark by selling Vittoria instant coffee in jars resembling Moccona’s. KDE also claimed misleading conduct and passing off. Cantarella sought cancellation of KDE’s mark, arguing it was functional and lacked distinctiveness.The Federal Court dismissed all claims, finding that Cantarella’s jar was not deceptively similar and that KDE’s jar shape, while distinctive through use, was not inherently adapted to distinguish. The Court emphasized that granting broad protection over common packaging shapes could unfairly hinder competition. The shape itself must have some non-functional distinctive feature to be capable of distinguishing the goods/services, and any acquired distinctiveness must be in relation to the shape, and not the packaging alone. This case clarifies the limitations of shape marks in Australia, particularly concerning functional packaging elements and their role in consumer perception.
Gold Standard Battle Brews
In Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12, a long running dispute in the coffee space has continued. Cantarella, holding two registered “ORO” trade marks, alleged Lavazza’s use of the same term on coffee packaging infringed its marks. The term “ORO” means “gold” in Italian. Lavazza contended that “ORO” had been first used by Caffè Molinari in Australia. The Federal Court ruled in favour of Molinari’s prior use, invalidating Cantarella’s marks. The Full Federal Court upheld this decision, highlighting that trade mark ownership is determined by first and continuous use, not merely registration. This case reinforces the importance of proving genuine and continuous use to maintain trade mark ownership.
Homeware Heavyweights
In Global Retail Brands Australia Pty Ltd v Bed Bath ‘N’ Table Pty Ltd [2024] FCAFC 139, Global Retail Brands Australia (GRBA) used the mark “House Bed & Bath,” prompting Bed Bath ‘N’ Table (BBNT) to allege trade mark infringement, misleading or deceptive conduct, and passing off. While the primary judge found GRBA’s use misleading, the Full Federal Court overturned that decision. It held that “House” was the clear brand, while “Bed & Bath” was descriptive of the goods sold and therefore did not operate as a separate badge of origin. The Court found that the average consumer would not likely be misled or confuse GRBA’s branding with BBNT’s. This case is significant as it clarifies that using descriptive terms like “Bed & Bath” does not amount to infringement when the overall branding context avoids consumer confusion.
Honesty Is The Best Policy
In Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156, the Full Federal Court considered whether Caporaso acted in bad faith when registering trade marks related to the “Mercato Centrale” brand. The marks were filed after the collapse of a joint venture, during which the parties had collaborated on the branding. The Court found Caporaso’s conduct dishonest, as it sought to appropriate trade marks developed in a shared commercial context. This case affirms that trade mark applications made in bad faith—particularly in collaborative settings—are liable to be cancelled. It highlights the importance of clear agreements regarding brand ownership in joint ventures and partnerships. It also confirms the scope of trade mark monopoly, and that a stylised mark does not necessarily confer monopoly over the plain word itself. A stylised mark only has a monopoly over the representation of that word in the form registered. Therefore, when two marks are compared for deceptive similarity, the marks must be assessed as a whole.
Caffeinated Conflict
In this New Zealand High Court case, Luigi Lavazza S.p.A. v Cantarella Bros Pty Limited [2025] NZHC 175, Lavazza applied to register a new version of its “LAVAZZA QUALITÀ ORO” logo. Cantarella Bros, which owned earlier marks for “ORO” and “ORO NERO,” opposed the application, arguing that the prominent use of “ORO” in Lavazza’s revised mark would likely confuse consumers. The Court upheld the opposition, finding that despite longstanding market coexistence, the more prominent placement of “ORO” increased the risk of confusion. This case underscores the risks of altering composite marks and clarifies the limits of using “honest concurrent use” in opposition proceedings.
Use It Or Lose It
In Globeride, Inc. v Morris [2024] NZHC 2234, Globeride sought to revoke the “FEEL ALIVE” trade mark registered by Ms. Morris, arguing it had not been used in New Zealand for the statutory period. Ms. Morris provided evidence, including website traffic and sales records, but the Court ruled the evidence insufficient. The High Court upheld the Assistant Commissioner’s decision, emphasising that trade mark owners must prove genuine and continuous use. This case reinforces the importance of maintaining and documenting trade mark use to protect intellectual property.
All Blacks Legend
In Nadene Lomu v Stylez Limited [2024] NZIPOTM 33, Nadene Lomu, widow of All Blacks rugby legend Jonah Lomu, applied to register the “JONAH LOMU” trade mark following a 1997 agreement with Stylez Limited. Stylez contested the registration, arguing it breached a 2017 agreement. IPONZ ruled in favour of Stylez, invalidating Lomu’s trade mark. This case clarifies the enforceability of exclusive licensing agreements and the limitations on posthumous control over a deceased person’s intellectual property. It emphasises the importance of adhering to clear, legally binding agreements and protecting the rights of original licensees.
