Henry Hughes IP represented Actron Industries Inc. (“Actron”) in its successful defence in both Australia and New Zealand of their "Whippit" trade marks opposed by United Brands Products Design, Development and Marketing, Inc. (“United Brands”).

This article compares the two parallel oppositions to the "Whippit" trade mark. One was decided by the Commissioner of Trade Marks in New Zealand, the other by a Delegate of the Registrar in Australia.

Karen Walker Limited successfully opposed the registration of the trade mark Runaway in Australia.  In this article, Elena Szentiványi explains why this case is a timely reminder of the risks of adopting trade marks without proper due diligence, and underscores the importance of conducting thorough clearance searches and seeking legal advice before adopting a brand.

IP Australia implemented a new fee schedule in October 2024. A key change was that, for any applications on which examination was requested after 1 October 2024, excess claims fees are now due one month after the issue of the first examination report. Charlene explains why patent applicants should be careful not to allow a lapse of this nature to occur in order to avoid the possibility of their rights being compromised by opportunistic third parties.

The NZ government is seeking feedback on the consultation draft of a Patents Amendment Bill by 1 April 2025 to require future 1953 Act divisional applications be subject to the higher standards of the Patents Act 2013.

The two most common grounds for an opposition are that the later filed trade mark is identical or similar to a prior registered trade mark for the same/similar goods/services; and that use of the later filed trade mark is likely to cause confusion due to the reputation that exists in a prior used trade mark.  

As 2024 draws to a close, we thank you, our clients, and wish you a festive holiday period and a very happy New Year.  Our office will also be closed from 25 December to 5 January (inclusive), although emails will be monitored and time sensitive matters dealt with.  Please take into account the New Zealand time zone if your matter requires attention prior to the holiday period.

Happy Christmas, Hanukkah, Kwanzaa and Holidays!

Unfortunately, it has become common for IP owners to receive unsolicited and ‘misleading invoices’ for office fees, services rendered or rights publication in various registers. More concerning fraudulent behaviour has come to light which deserves your urgent attention. 

The Trans-Tasman IP Attorneys Board (TTIPAB) has warned its members of a very concerning scam which has emerged involving the impersonation of registered IP attorneys to defraud IP rights owners. In this case, IP owners are receiving correspondence pressuring them into filing a trade mark via emails fraudulently purporting to be from a real attorney.

An opposition to the ANASTASIA MIARAY trade mark by the owner of the ANASTASIA BEVERLY HILLS trade mark was unsuccessful. Much of the decision hangs on the scope of the pleadings, and use of the single letter “a” instead of “b” in the notice of opposition.