3 min read

.au Domain Administration Limited (the administrator of .au domain names) is introducing a new set of rules for those who wish to hold, or continue to hold, a .au domain name. 

The new rules will come into effect on 12 April 2021.

The new rules introduce several changes to the previous eligibility rules applying to .au domain names. One of these changes may have implications in particular for foreign persons or entities wishing to hold a .com.au or .net.au domain name.

Under the previous rules, a person or entity must be “Australian” (as defined by certain criteria set out in the rules) to be eligible to hold a .au domain name. This requirement would be satisfied for .com.au and .net.au domain names if the domain name was an “exact match, abbreviation or acronym” of a registered or pending Australian trade mark held by that person or entity.

Reliance on an Australian trade mark to satisfy the eligibility requirements under the previous rules has been a useful option for foreign persons or entities that cannot meet other available criteria satisfying the “Australian” requirement.    

Under the new rules, a person or entity who wishes to rely on an Australian trade mark to support its eligibility to hold a .com.au or .net.au domain name can now only do so if the domain name is an exact match of its Australian trade mark. Essentially, the domain name must be “identical to the words which are the subject” of the Australian trade mark. This means that all the words that appear in the Australian trade mark must also appear in the domain name in the exact same order, with the exception of:

  • DNS identifiers such as com.au”;
  • punctuation marks such as an exclamation point or an apostrophe”;
  • articles such as ‘a’, ‘the’, ‘and ’or ‘of’”; and
  • ampersands”. 

It will no longer be possible to rely on an Australian trade mark to support eligibility for a .com.au or .net.au domain name if the domain name is an abbreviation or acronym of the trade mark.

The rule changes may be significant for any person relying on their Australian trade mark to support eligibility to hold their .com.au or .net .au domain name. This is especially the case for foreign persons or entities that may have no other option available to support their .com.au or .net.au domain name registrations. Importantly, domain name rights could be lost if the domain name is not an exact match of their Australian trade mark.

Although the new rules come into effect on 12 April 2021, current domain name registrants will have until renewal of their existing domain name to ensure compliance with the new rules.

If you intend to rely solely on an Australian trade mark to support eligibility for a .com.au or .net.au domain registration, you should ensure that your Australian trade mark meets the new requirements. Similarly, if you already hold a .com.au or .net.au domain name and may be affected by the changes, you should consider seeking advice on whether your existing Australian trade marks satisfy the new rules or whether any steps need to be taken to ensure you are not at risk of losing your domain name registration before it is renewed.

Feel free to contact us if you need any advice about your domain name eligibility or Australian trade marks.   

Authored by Felipe Pereira and Michael Deacon

Welcome to Shelston IP’s round up of Australian and New Zealand trade mark cases for 2020.

While there were plenty of cases in 2020, we have selected a few which we think are interesting and provide an indication of the types of issues dealt with by the Courts and Trade Marks Office throughout the year.

Please click here for a quick snapshot of each case followed by a more detailed discussion of the main issues that arose in each case.

Read our full report

Authored by Sean McManis and Michael Deacon

3 min read

Counterfeiting can be a significant problem for brand owners and legitimate rights holders. It directly undermines legitimate business through lost sales revenue and has the potential to strain relationships between IP owners and their licensees. The sale of counterfeit products can also damage the value of the associated brand in various ways. This could be where the counterfeit products are defective or of poor quality compared with the genuine article; or where unauthorised trade mark uses disrupt brand owners from effectively controlling the use of their brands, resulting in brands being presented to the market unfavourably or in a way that is inconsistent with the brand owner’s interests.

Even consumers seeking to do the right thing by purchasing legitimate products can be confused about whether a particular product is authentic or being traded through an authorised channel. This is especially the case in the context of online retail.

To help with combatting counterfeiters, IP Australia has begun trialling its “Smart Trade Mark” initiative with industry and government partners. The expectation is that the Smart Trade Mark will become an effective tool to identify and authenticate genuine products and sales channels, thereby resolving the potential for consumer confusion and allowing consumers to be confident that they are purchasing the genuine article from a legitimate source.

What is Smart Trade Mark?

The Smart Trade Mark is a digital platform that uses blockchain technology to enable businesses to verify that certain products, sales channels and trade mark uses are legitimate by linking them to their registered trade marks as published on the Australian Trade Marks Register.

How Smart Trade Mark works

The platform currently being trialled involves 3 main steps:

  1. The trade mark owner submits certain product information and/or domain addresses to IP Australia;
  2. IP Australia stores the details and authenticates the trade mark by linking the details provided by the trade mark owner to the Australian Trade Marks Register; and
  3. A Trust Badge is displayed on the relevant websites notified to IP Australia. Consumers can verify the Smart Trade Mark digitally by referring to the Trust Badge, which links through to details of the registered trade mark and information confirming that the website is verified.

NRL

The NRL (Australian Rugby League Commission Limited) is one of the key industry partners trialling the Smart Trade Mark. Shaun McMartin, NRL’s General Manager Consumer Business, sees the Smart Trade Mark as a potential “game changer” for similar businesses, stating that:

NRL members and fans are the lifeblood of our sport who want to buy the genuine article when supporting their club – the Trust Badge helps NRL fans identify authentic and licensed products online

The Smart Trade Mark is currently used by the NRL at www.nrlshop.com and by one of its authorised distributors at www.savvysupporter.com.au to indicate that both are legitimate sources of authentic NRL merchandise.

Shelston IP is proud to act for NRL in connection with protection and maintenance of its trade mark portfolio. Along with the NRL, we are excited by the prospects of Smart Trade Mark becoming an effective tool in the fight against counterfeiters.

Smart Trade Mark will be made available to all Australian trade mark owners if the trials are successful. IP Australia has not provided a specific timeframe for completion of the trials. However, trade mark owners can register their interest and subscribe to receive further updates at – https://smarttrademark.search.ipaustralia.gov.au/.

Authored by Felipe Pereira and Michael Deacon

Welcome to Shelston IP’s round up of Australian trade mark cases for 2019.

While there were plenty of cases in 2019, we have selected a few which we think are interesting and provide an indication of the types of issues dealt with by the Courts throughout the year. Please click here for a quick snapshot of each case followed by a more detailed discussion of the main issues that arose in each case.

READ FULL REPORT

Authored by Michael Deacon

Part IV of the Competition and Consumer Act 2010 (Cth) (the Act) prohibits certain anti-competitive conduct.

Following the repeal of s51(3) of the Act, which provided an exemption for some IP dealings, various prohibitions in Part IV will now apply to certain IP arrangements from 13 September 2019. Amongst other things, those prohibitions will apply to licences and assignments of patent, design, copyright and eligible circuit layout rights. The prohibitions will also apply to licences between registered trade mark owners and registered users that were previously exempted. Importantly, it will be an offence to continue to give effect to provisions of relevant IP licences, assignments and other arrangements that contravene Part IV even if those licences, assignments or other arrangements were entered into before 13 September 2019.

The ACCC recently released its final Guidelines on the repeal of s51(3), with the intention of providing further clarity on what conduct involving IP rights is likely or unlikely to contravene the prohibitions that now apply to IP arrangements, and on the ACCC’s approach to assessment and enforcement. The following is an overview of some of the key parts of the final ACCC Guidelines.

The final Guidelines can be accessed here.

So what is prohibited?

The following will now be prohibited in connection with arrangements/conduct involving relevant IP rights:

  1. making or giving effect to a contract, arrangement or understanding, or engaging in a concerted practice, for the purpose, or with the effect or likely effect, of substantially lessening competition;
  2. engaging in exclusive dealing for the purpose, or with the effect or likely effect, of substantially lessening competition – this would generally involve imposing conditions which restrict the other party’s freedom to choose how it engages with third parties (for example, by requiring the other party to obtain goods/services from or supply goods/services to a specified third party or refusing to supply goods/services to the other party unless they agree to deal with a specified third party); and
  3. cartel conduct – IP contracts/arrangements will generally constitute cartel conduct if they are between parties that are, or are likely to be, competitors and include a provision that has the: (a) purpose or likely effect of fixing the price of goods/services supplied or acquired by any of the parties (Price Fixing); (b) purpose of preventing, restricting or limiting the production, supply or availability of goods/services (Output Restriction); (c) purpose of allocating or dividing certain customers, suppliers or territories between any of the parties (Market Allocation); or (d) purpose of rigging a bid for tender (Bid Rigging).

Cartel conduct is prohibited even if the conduct does not have any effect on competition. However, the prohibition on making or giving effect to cartel provisions will not apply if the only parties to the arrangement are related companies or if the conduct is for the purposes of a joint venture relating to the production of goods or the supply or acquisition of goods/services, which is not carried on for the purposes of substantially lessening competition.

Following public consultation and submissions made by some industry bodies, including INTA and LESANZ, it appears that the ACCC is seeking to provide some comfort by suggesting that the repeal of s51(3) will not necessarily disrupt existing IP arrangements, hamper investment in innovation and IP commercialisation or necessarily put IP owners or licensees at broad risk of non-compliance. In particular, the ACCC has acknowledged the exclusive nature of IP rights; acknowledged that exclusivity is an important incentive for investment in and promotion of innovation and IP commercialisation; suggested that the exercise of exclusive IP rights will not have significant anti-competitive implications; and noted that the licensing/assignment of IP rights usually encourages competition by allowing IP to be accessed, exploited and commercialised to a greater extent than would otherwise be allowed if the IP is not made available via licence or assignment.

IP arrangements that substantially lessen competition

Engaging in concerted practices, giving effect to contracts/arrangements (including specific contractual terms) and engaging in exclusive dealing involving IP rights will only contravene the prohibitions on anti-competitive conduct if they have the purpose, effect or likely effect of substantially lessening competition.

The ACCC will usually apply a “with or without” test when assessing the effect or likely effect of certain conduct on competition – by comparing the likely state of competition “with” and “without” the relevant conduct. In the case of IP licences/assignments, the ACCC has indicated that the “without” scenario for the purposes of its assessment will be where there is no IP assignment/licence at all, rather than a scenario where there is an IP licence/assignment without the potentially prohibited provisions. If the position is accepted that IP licences/assignments generally encourage competition by making IP accessible in circumstances where it would not be accessible “without” the licence/assignment, then there is a good argument that IP licences/assignments generally should not substantially lessen competition.

The purpose, effect or likely effect of the relevant conduct is assessed at the time the conduct occurs. Given that the prohibitions applying to IP contracts/arrangements relate to both the “making” and “giving effect” to the IP contract/arrangement, the ACCC will assess the purpose, effect or likely effect of the relevant provisions of the contract both at the time the contract is made and at the time the relevant provisions are given effect. Significantly, the effect or likely effect of a contractual provision on competition within a particular market may vary over time if market conditions change. This could pose a challenge to IP owners and licensees, as it may become necessary to continue to monitor market conditions to ensure that existing compliant IP arrangements do not subsequently become prohibited anti-competitive arrangements because of changes in the relevant market.

Examples of some relatively common IP contract terms that may be at risk of contravening the prohibitions on anti-competitive conduct include those which: (a) impose restrictions beyond the statutory term of the relevant IP right; (b) automatically grant the licensor a licence to improvements made to the IP by the licensee; or (c) require a party not to challenge the validity of the other party’s IP rights. Again, these terms would only be prohibited if they have the purpose, effect or likely effect of substantially lessening competition. The ACCC has indicated that these types of terms will “only occasionally” have that purpose, effect or likely effect when applying the “with or without” test.

Cartel conduct

Cartel conduct can only occur if both of the following are satisfied:

  1. the parties to the conduct are, or are likely to be, competitors for the relevant goods/services; and
  2. the conduct, or contractual provision, has the purpose/effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging (as applicable).

Parties would generally be considered competitors for the purposes of the cartel provisions if one party’s goods/services being the subject of the cartel conduct are substitutable for similar goods/services of the other party. However, for the purposes of IP licences/assignments, the ACCC has pointed out that it is relevant to consider if both parties already had the capacity to supply substitutable goods/services before the IP licence/assignment – implying that the parties may not be considered competitors for the purposes of the prohibition on cartel conduct if they did not both have that capacity before the IP licence/assignment.

Generally, the ACCC will assess what the parties actually intended in determining whether the relevant conduct or contractual provision had the substantial purpose/effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging, but by reference to available evidence surrounding the nature and circumstances of the arrangements between the parties. It is therefore possible that the parties to an IP licence/assignment will not be liable for engaging in cartel conduct even if certain contractual provisions have the inadvertent effect of Price Fixing, Output Restriction, Market Allocation or Bid Rigging, provided it is clear that the parties did not agree or give effect to the relevant contractual provisions for the substantial purpose of Price Fixing, Output Restriction, Market Allocation or Bid Rigging (as applicable).

Penalties and next steps

A range of penalties may apply if conduct or contractual provisions relating to IP are found to contravene the prohibitions on anti-competitive conduct. Amongst other things, a party may be ordered to pay damages and/or be restrained from engaging in the relevant conduct or giving effect to the offending contractual provisions. Pecuniary penalties may also apply, with the potential for fines of up to $10 million per contravention for corporations and $500,000 per contravention for individuals. Significantly, certain cartel conduct may also constitute a criminal offence for which a sentence of up to 10 years imprisonment and/or a fine of up to $420,000 may be imposed.

Where specific IP licence/assignment terms are at risk of contravening the prohibitions on anti-competitive conduct, the most obvious way to mitigate risk would be to amend the IP licence/assignment to remove the relevant term and vary arrangements to ensure that the relevant term is not given any effect. Of course, this may not be ideal or simple to achieve in the context of certain IP arrangements and such terms should not necessarily be removed or varied without an appropriate assessment of whether they are likely to substantially lessen competition or comprise cartel conduct in the particular circumstances. As an alternative, parties to an IP licence, assignment or other arrangement can also seek the ACCC’s authorisation of the arrangement. The ACCC may authorise the IP licence, assignment or arrangement if it is likely to result in a net public benefit, which may be the case in the context of IP arrangements involving research, development, innovation and IP commercialisation with a public benefit. If the IP arrangements are authorised by the ACCC, neither the ACCC nor any other person may take legal action on the basis that the IP arrangements contravene the prohibitions on anti-competitive conduct.

The ACCC Guidelines do not cater for all scenarios. Whether or not specific conduct or contractual provisions relating to IP will contravene the prohibitions on anti-competitive conduct will depend on the specific context and circumstances of each case. At the very least, IP owners and licensees should familiarise themselves with the ACCC Guidelines and review their IP arrangements to identify and mitigate any apparent risks of non-compliance. While the ACCC Guidelines are not exhaustive or determinative, they at least provide some examples of the types of clauses in IP agreements that may be at risk of contravening the prohibitions on anti-competitive conduct; IP arrangements that are likely or unlikely to contravene the relevant prohibitions; and the ACCC’s approach to assessing each arrangement.

Authored by Michael Deacon

Congratulations to Allira Hudson-GofersDuncan Longstaff and Michael Deacon, Shelston IP’s newly appointed Principals. Congratulations also goes to Nathan SinclairSerena White, and Danielle Spath for their promotions. This is well deserved recognition for their hard work and dedication shown towards their IP practice  and clients each day.

Allira Hudson-Gofers
Principal
BE(Mechatronic) (Hons 1), MBiomedEng, MIP, BA(Technology)Allira specialises in the provision of commercially relevant advice regarding patents and registered designs. Her expertise includes medical devices and diagnostic technologies; robotics; building and construction; sustainable technologies; and manufacturing processes.

Duncan Longstaff
Principal
LLM(IP) LLB(Hons1st) BSc(Biol)With over a decade of experience and higher degree training specialising in IP topics, Duncan’s IP litigation practice focuses on patent disputes involving pharmaceuticals, biotechnology, medical devices, mining and information technology.

Michael Deacon
Principal
BA LLB (Hons) GradCert TMLPMichael is a Lawyer and Registered Trade Mark Attorney with a focus on IP commercialisation. He has broad experience providing legal advice and drafting agreements across various commercial transaction types and assisting with brand protection, enforcement and strategy.

Nathan Sinclair
Senior Associate
BSc (Hons) (Chem) MIP (UTS)Nathan manages all aspects of Australian and overseas trade mark filings and prosecutions, filing strategies and trade mark portfolio management.

Serena White, DPhil
Senior Associate
MChem (Hons) (Oxon), DPhil (Oxon)Serena is a European qualified patent attorney, a UK and trans-Tasman patent attorney. She has
a strong technical background in organic chemistry.

Danielle Spath
Associate
GradCert TMLPDanielle maintains client trade mark portfolios and deals with the registration and protection of trade marks in Australia and overseas.

April 26 is World IP Day for 2019, with the theme of “Reach for Gold – IP & Sports”. Shelston Intellectual Property and Shelston Lawyers, congratulate Australian Rugby League Commission Limited (ARLC) and its related entities including New South Wales Rugby League Limited and Queensland Rugby Football League Limited for their sustained and successful efforts in relation to the application of IP in the sporting arena.

ARLC

ARLC is the peak body responsible for the governance, growth and development of the sport of rugby league throughout Australia. ARLC and its related State entities operate and control all the major professional rugby league competitions in Australia including the renowned National Rugby League (NRL) competition and the annual State of Origin series.

Rugby league in Australia

Rugby league can trace its history back to as early as 8 August 1907, when New South Wales Rugby League (NSWRL) was founded. The first season of the Sydney rugby league premiership took place in 1908, and was contested by nine teams.

NSWRL ran the major rugby league competition of New South Wales, and subsequently Australia, from 1907 to 1994. In 1995, control of the Australian rugby league competition passed from NSWRL to ARLC. ARLC has controlled professional rugby league competitions in Australia since that time (together with News Limited during the period 1998 to 2012).

The NRL competition is a competition between professional rugby league clubs in Australia and New Zealand. It has been sponsored by Telstra Corporation Limited (Telstra) since 2001, and is called the NRL Telstra Premiership. It is contested by sixteen teams, fifteen of which are from clubs based in Australia, and one of which is from a club based in New Zealand.

The NRL competition is regarded as the world’s elite rugby league club competition. The NRL Grand Final is one of Australia’s most popular sporting events, and one of the largest attended club championship events in the world.

The State of Origin series is contested between rugby league teams representing Queensland and New South Wales and is comprised of elite players from the NRL competition. Accordingly, the State of Origin series is widely regarded as the pinnacle of the sport of rugby league worldwide as it comprises the best players from the most competitive and highest quality rugby league club competition in the world. The series is also widely considered to be one of Australia’s greatest sporting rivalries and premier sporting events, attracting extensive game attendance and high rating television viewing.

ARLC’s trade mark portfolio

ARLC and its predecessors have established a substantial portfolio of trade marks, some of which date back decades. The trade mark portfolio comprises the names, logos and official mascots of all participating league clubs along with the names and brands of ARLC and its associated entities including the names of the various competitions. Shelston Lawyers has had the privilege of assisting ARLC and related entities with their trade mark registration, prosecution, enforcement and defence work for more than 10 years.

ARLC’s trade mark portfolio serves various purposes. First, it protects the valuable intellectual property of ARLC and related entities in club and competition names and brands, many of which have been established for decades or longer. ARLC uses its registered trade marks to prevent other sporting codes from adopting club or competition names which are too similar to those associated with ARLC. ARLC has also successively opposed many trade mark applications by third parties wishing to unfairly capitalise on ARLC’s strong reputation in its names and brands.

Secondly, ARLC’s trade mark portfolio enables ARLC to commercialise its brands and reputation through licensing arrangements with authorised producers and distributors of official ARLC and NRL merchandise and through media rights deals. ARLC generates substantial revenues from its licensing and merchandising programs and media rights deals. A related purpose is to prevent unauthorised third-party merchandisers from seeking to pass off their rugby league merchandise as official merchandise sanctioned by ARLC.

ARLC makes very active use of its trade marks including in media promoting the competitions, on club jerseys and other official match paraphernalia, on ground signage and on commercial merchandise. Likewise, the trade marks are frequently referenced by television, print, radio and internet media.

A key victory for ARLC through its trade mark program

As indicated above, one of the purposes of ARLC’s trade mark registration program is to successfully establish and defend its title to its names and brands.

In recent years, ARLC (and its associated entities) have opposed various third-party applications for, and defended their own applications for, trade marks related to the State of Origin series. ARLC has been successful in every matter to date. In a decision confirming ARLC’s successful defence of one of its applications for STATE OF ORIGIN, the hearing officer stated that “In the present matter, the Applicant [ARLC] has provided overwhelming and continual evidence of use of the Trade Mark from well before the Relevant Date. This evidence is of such an extent that it establishes in fact that the Trade Mark distinguishes the Applicant’s Goods from the goods of other traders. An endorsement to this effect will be added to the Register.”

To assist the hearing officer in reaching this conclusion, ARLC submitted hundreds of pages of evidence of its use of the trade mark over an extended period together with evidence of substantial match attendance figures and media coverage involving ARLC’s use of State of Origin-related branding. ARLC has subsequently used the findings from this hearing to successfully oppose other third-party applications and support its own further applications for State of Origin related trade marks. ARLC’s clear title to those trade marks is now beyond doubt as a result of its vigorous prosecution of its own applications and vigorous opposition of third party applications. Shelston Lawyers is proud to have acted for ARLC in all of these matters.

ARLC Reaching for Gold

While ARLC’s primary goal will always be the promotion and ongoing development of rugby league, it can be justifiably proud of its long history of successfully using its trade mark portfolio to protect its reputation, and monetise its brands through merchandising and media rights licensing.

Authored by Chris Bevitt and Michael Deacon

Welcome to Shelston IP’s round up of key trade mark cases in Australia and New Zealand for 2017.

It was a little quiet on the trade mark scene in New Zealand in 2017 but there was plenty happening in Australia including some important Full Federal Court cases. In particular, the Full Federal Court has concluded that use of a competitor’s registered trade marks in website metatags can amount to trade mark infringement in certain circumstances. The Full Federal Court has also confirmed that a trade mark application and resulting registration will be invalid and cannot be rectified if the trade mark application was initially filed in the name of a person or company that was not entitled to claim ownership of the mark.

Please click here to access the report.

Authored by Michael Deacon