DCC Insights (Issue 17) showcases the latest IP and legal articles, industry updates, and DCC news and events.
FEATURE ARTICLE
Advanz Fidelis integrates with DCC
DCC is excited to announce the integration of Malaysian firm Advanz
Fidelis with DCC to form DCC Advanz. Advanz Fidelis has been a
member of the QANTM group of companies since 2018 and is a leading
IP firm in Malaysia, offering a full suite of IP Services before
the IP Corporation of Malaysia. DCC Advanz will provide clients
with Patent, Trade Mark and Design prosecution and opposition
services directly in Malaysia. Read more here.
Articles
Patents
High Court powers down DABUS patent prospects in Australia
The High Court of Australia has permanently powered down the dispute over whether the AI machine known as DABUS can be named as an inventor on an Australian patent by refusing an application by Dr Thaler for special leave to appeal a decision of the Full Federal Court that an inventor must be a human under Australian law. While there are no further avenues available to Dr Thaler for appeal in Australia, this won't be last we hear on the issue with AI policy high on IP Australia's agenda and the DABUS dispute continuing in a number of jurisdictions around the world. Read more here.
Industry Updates
TMT Update Volume 48
Our latest update of key developments in the areas of telecommunications, media and technology law includes reports on the High Court's decision to allow Google to appeal against a finding that it was liable as a "publisher" for defamation accessible via its search engine, VCAT's recent finding that an IP address did not constitute "personal information", and the Treasury's progress on extending the Consumer Data Right Rules to the telecommunications sector. Read more here.
Competition and Consumer Law Update – May – August 2022 Edition
Our latest update of key developments in the areas of competition and consumer law in Australia includes our reports on the $60 million penalty ordered against Google for misrepresenting the extent to which it collected its users' personal location data, the $14 million penalty ordered against Samsung for misleading consumers regarding the water-resistance of its phones, and new proceedings commenced against Airbnb for representing that its prices were in AUD when they were in USD. Read more here.
New Zealand
Maori Language Week 2022: What you should consider from an IP perspective when engaging with indigenous languages
Te Wiki o Te Reo Maori (Maori Language Week), is an annual celebration of the Maori language (te reo Maori) held in the third week of September. The initiative aims to inspire New Zealanders to speak te reo Maori proudly as part of a larger effort to revitalise the language. This article explores various IP considerations to take into account when engaging with indigenous language. Read more here.
Can anyone "own" Barista for milk?
Bidfood Limited has successfully opposed Oatly AB's application to register the trade mark BARISTA in New Zealand in relation to milk substitutes including oat based drinks. Despite Oatly's attempt to lead evidence of "spillover" reputation in the mark from the UK, IPONZ ultimately found that the term was not sufficiently distinctive. The decision provides valuable guidance as to the rigorous application of the rules of evidence and pleadings in New Zealand. Read more here.
Bonobos, Inc v Beaumanoir Asia Holding Singapore Pte. Limited [2022] NZIPOTM 17 (22 August 2022)
A brand owner has successfully defeated a non-use revocation action by leading evidence of the sale of its product via an online platform into New Zealand. IPONZ found that as the seller had only targeted a few countries (including New Zealand), it could be deduced they had taken active steps to offer their goods to New Zealand consumers specifically and therefore used the mark in New Zealand. The decision serves as a useful example of genuine use of a trade mark within a particular territory where the relevant use was connected with a global, online sales platform. Read more here.
Singapore
Groundless threats: Singapore's High Court sets out the ground rules
Fanco Fan Marketing has succeeded in its counter-claim against infringement proceedings brought by Triple D Trading Pte Ltd, on the basis that Triple D's mark was registered in bad faith, while a second counter-claim of groundless threat of trade mark infringement failed. While the decision of the Singapore High Court sets out a clear framework on groundless threats of trade mark infringement, the application of these principles to the facts may be less clear. Read more here.
Does use of corporate names, domain names and social media handles count as trade mark use in Singapore?
In a recent decision by the Intellectual Property Office of Singapore, use of a corporate name, domain name and social media handle were all considered relevant to establishing distinctiveness in the word mark FLOOR XPERT. While a distinctiveness assessment is highly fact-specific, the decision potentially provides brand owners with greater scope to meet evidentiary requirements in trade mark proceedings in Singapore. Read more here.
No two ways: Nestlé blocks opposition by a2 Milk in Singapore
New Zealand based dairy producer The a2 Milk Company Limited recently opposed Nestlé's application to register a composite mark containing the phrase "Atwo". The Intellectual Property Office of Singapore ultimately found the marks to be more dissimilar than similar, finding that although some marks with a common element may be confusingly similar (despite the presence of additional elements), in this case, "Atwo" and "A2" did not constitute a common element. Read more here.
DCC News & Events
DCC recognised as an Inclusive Employer
DCC is pleased to be recognised as an 'Inclusive Employer' for 2022-2023 along with 30 other employers by the Diversity Council Australia (DCA). To be deemed eligible as an inclusive employer, DCA members must show they are active and committed to inclusion by achieving results that exceed the National Index Benchmark on at least give our of six measures. Read more here.
IP Stars recognises five Rising Stars from DCC for 2022
We are pleased to have five of our team members recognised as Rising Stars by Managing IP's IP Stars. Congratulations to Benita Lau, Fiona Galbraith, Jessica Sapountsis, Kian Hoe Khoo and Sally Davis for their well-deserved recognition. Read more here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
