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Archives for June 2025

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Maxim Forgets the Maxim, Chases Nuclear but Bombs

Maxim Media, the publishers behind the well-known men’s lifestyle magazine and brand MAXIM, had minimal success when in Maxim Media Inc. v Nuclear Enterprises Pty Ltd [2024] FCA 1443 they sought urgent Federal Court orders to shut down an Australian company allegedly riding on their name — through magazines, domain names, destination tours, and model management services.

Despite the explosive accusations, the Court delivered a much more subdued response.

Maxim had delayed for some time in coming to Court, but now applied for interlocutory relief, seeking immediate injunctions to restrain:

  • Use of the MAXIM name in any form in Australia;

  • Distribution of a competing Maxim Magazine;

  • Operation of maxim.com.au, destinationmaxim.com.au, and related social handles;

  • Any further unauthorised brand use.

The application relied on trade marks registered in 2020 and 2023 — and on allegations that the Australian respondents, including Nuclear Enterprises and Michael Downs, had no licence or authority to use the name.

Justice Rofe refused the injunction — not because the claim was doomed, but because:

  • Ownership and licensing rights hadn’t been clearly established yet;

  • There were substantial factual disputes that needed a full trial;

  • There was no persuasive case for irreparable harm that couldn’t be remedied later;

  • The balance of convenience didn’t justify urgent intervention — particularly given Maxim’s delay in seeking relief (ironically, Maxim had ignored the equitable maxim regarding laches).

The proceeding will now be allocated to a docket judge for a full hearing.

The main takeaways here are:

  • Interlocutory relief isn’t automatic, even with a registered trade mark — the applicant still needs clean title, urgency, and evidence of irreparable harm.

  • Delays hurt. The longer you wait to challenge a rival’s use of your mark, the harder it is to convince a court that urgent action is needed.

The case could still blow Maxim’s way at a final hearing — but for now, Nuclear gets to keep exploding – and the fallout will be huge.

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Series Killers: When IP Australia Oversteps the (Descriptive) Mark

So you’ve filed a series trade mark in Australia. The marks are visually identical except for a single word that tweaks the service type — say, “BURST PLUMBING”, “BURST CLEANING”, “BURST GARDENING”.

All good, right?

Not if you ask IP Australia. According to the Office Manual, if your differentiating word describes only some of the services listed — even if it’s a totally non-distinctive, snore-worthy adjective — your series could be headed for rejection.

The rationale? That descriptive differences must apply to all of the goods/services claimed. Not some. Not most. All.

But is that legally correct?

Let’s unpack this.

The Law (Actually – and Not the Manual)

Section 51(1) of the Trade Marks Act 1995 (Cth) says you can register a series if:

“…the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services  in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places; or
(c) the colour of any part of the trade mark.”

So there is a legal restriction — but it’s not about whether the descriptive term applies to all of the goods or services. It’s about whether the difference falls into one of the above three categories.

If your only point of difference is a generic descriptor like “PLUMBING” or “CLEANING” — that’s likely a “statement as to the services” under paragraph (a). ✅ Tick.

Whether that statement applies to all of the services? That’s not part of the statutory text. That’s IP Australia adding friction by policy — not by law.

The Practice (Not the Law)

IP Australia’s position is that if “CLEANING” only refers to a handful of the listed services — say, home cleaning and commercial premises — while your broader list also covers plumbing, garden maintenance, and pest control, then the marks in the series are no longer sufficiently aligned for a single registration.

Their concern: you’re using the series construct as a backdoor to bulk file a grab bag of marks that lack genuine commonality.

But here’s the catch: section 51(1) does not impose a requirement that the differing matter — like “CLEANING” — must describe all of the goods or services. The section simply requires that:

  1. The marks resemble each other in material particulars, and

  2. The differences fall only within one or more of the categories listed:

    • statements about the goods/services,

    • statements about number, price, quality or place, or

    • colour of part of the mark.

So, if “CLEANING” is a statement about services (and it is), and the marks still resemble each other in their key features (say, the word “BURST” in a bold red typeface with a splash logo), then the Act is satisfied.

The idea that every descriptive word must apply to all services is IP Australia policy, not law. It’s not in the Act. It’s not in the Explanatory Memorandum. It’s simply a convenient threshold applied to keep the register tidy — which may be operationally defensible, but not legally required.

What’s a Brand Owner To Do?

If you’re filing a series mark where the only difference is a descriptive word that applies to some — but not all — of the listed services, you’ve got two choices:

  1. Play nice: Redraft your specification to group services so that each descriptor applies across the board. That means breaking up the series and filing multiple applications.

  2. Push back: If the examiner raises an objection, go back to the legislation. Section 51(1) only requires that:

    • The marks resemble each other in material particulars, and

    • The differences fall only within the three specified categories.

You may not win every time, but you’ll be on solid legal ground — and might just push the boundaries of a policy that’s grown a little too rigid for its boots.

There’s no additional legal requirement that the differing statement about services must relate to all of them. That’s a policy position, not a statutory one.

So if “BURST PLUMBING” and “BURST CLEANING” share all core branding elements and differ only by a word that is a statement about services — you’ve met the test under the Act.

Bottom Line

IP Australia’s insistence on descriptive uniformity across the entire class spec is not supported by s 51(1) of the Act. The only legal requirement is that the marks:

  • Resemble each other in material particulars, and

  • Differ only in respect of statements as to goods/services, price, quality, place, or colour.

Everything else? That’s Office convenience, not legislative command.

So don’t be afraid to push back.

And if that fails… well, split the applications, swallow the extra fee, and tell your accountant it was a “protest expense” … the cost of resisting bureaucratic overreach.

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Paul Bender’s music has been sampled by Beyoncé and Kendrick. His band, Hiatus Kaiyote, has three Grammy nominations. His side project, The Sweet Enoughs, racks up millions of streams. So it came as a shock when fans started hearing tracks on his Spotify profile that he didn’t recognise — or approve.

Tracks that sounded like they’d been composed by an AI trapped in an elevator.

“It was probably the worst attempt at music I’ve ever heard,” Bender told Brisbane Times. “Just absolutely cooked.” His reaction soon gave way to a grim realisation: someone was uploading fake music — apparently AI-generated — directly to his artist profile. And it wasn’t just Spotify. Apple Music, Tidal, YouTube Music and Deezer all carried the same fakes.

No passwords were stolen. No logins compromised. Just a ticking time bomb in the music distribution supply chain.

The Loophole That Became a Business Model

The scam works like this: a grifter uploads garbage tracks via a digital music distributor, assigns them to a known artist name, and — voila — the platform “maps” it to the artist’s official profile. Instant legitimacy, with algorithmic discovery to match.

No ID check. No consent. No authentication.

This isn’t just a quirk of one platform’s back end. It’s systemic. And it’s being exploited on an industrial scale. One vlogger, TankTheTech, showed how anyone can assign AI music to an artist profile in under ten minutes.

And the numbers are staggering:

  • Deezer reports that 18% of its daily uploads in 2025 are AI-generated.

  • Mubert, an AI music tool, claims over 100 million tracks were made on its platform in just the first half of 2023.

  • The Music Fights Fraud Alliance estimates 10% of all global music streams are fraudulent, with some distributors seeing fraud rates as high as 50%.

That’s not fringe — it’s a revenue model. And it’s bleeding real artists.

Legal Implications: Between Passing Off and Platform Apathy

Let’s be clear: uploading fake music under someone else’s name looks a lot like impersonation, if not passing off, especially where artist reputation and income are at stake. There may also be:

  • Copyright infringement if elements of an artist’s work were used in training or replication.

  • Moral rights violations under the Copyright Act 1968 (Cth), especially the right of integrity where a fake work is falsely attributed.

  • Misleading or deceptive conduct under section 18 of the Australian Consumer Law.

Yet despite the legal exposure, platforms and distributors are playing hot potato with responsibility. Spotify calls it a “mapping issue.” Artists call it what it is: a scam that platforms are structurally enabling.

Why This Matters — Beyond Music

This isn’t just a niche concern for indie musicians. It’s a case study in what happens when:

  • AI-generated content floods creative ecosystems,

  • platforms prioritise volume over verification,

  • and IP rights become an afterthought to scale.

In short, it’s the algorithm’s world — and creatives are just living in it.

But not quietly. Artists like Bender and Michael League (of Snarky Puppy) are now speaking out and pushing for industry action. With growing numbers of testimonials and escalating complaints, the music world may be the canary in the coal mine for a broader wave of AI impersonation and platform indifference.

Until then, don’t be surprised if the next time you hit play on a favourite artist’s profile… what comes out is 100% algorithm, 0% soul.

Here’s a thought: 2FA authentication before allowing uploads? Verify before you amplify!

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For many years, privacy enforcement in Australia was a bit… polite. The OAIC could nudge, issue determinations, and make a bit of noise, but it often lacked the real teeth needed to drive compliance in the boardroom. That era is over.

11 December 2024 saw the commencement of amendments to the Privacy Act 1988 (Cth) which overhaul Australia’s enforcement toolkit — with bigger fines, broader court powers, faster penalties, and forensic-level investigative authority. It’s not quite the GDPR, but it’s getting close enough to make a lot of GCs uncomfortable.

In this 7th part of our Privacy 2.0 series, let’s start with the money. The maximum fine for a serious or repeated privacy breach by a company is now $50 million, or three times the benefit obtained, or 30% of adjusted turnover — whichever is greater. That’s serious deterrent territory, not just a regulatory slap. Even mid-tier breaches now carry $3.3 million maximums for corporates. Individuals? You’re looking at up to $2.5 million if you seriously mess it up. There’s a new hierarchy of penalties too — with lower thresholds and infringement notices for technical breaches like bad privacy policies or sloppy notifications.

But it’s not just about fines. The OAIC can now issue infringement notices, bypassing court for certain minor but clear-cut breaches. Think of it like a privacy speeding ticket — faster, cheaper, but still stings. And yes, you can fight it in court if you want. Just hope your documentation holds up.

Then there are the new powers of investigation and monitoring. The OAIC is now plugged into the Regulatory Powers (Standard Provisions) Act 2014 (Cth), meaning it can get warrants, enter premises, seize devices, and even apply reasonable force — all while preserving privilege. This puts the Privacy Commissioner on more equal footing with ASIC and the ACCC, especially when it comes to serious or systemic non-compliance. If your data handling is shady, half-baked or undocumented — now’s the time to clean it up.

And finally, court powers have been expanded. The Federal Court and the Federal Circuit and Family Court can now order not just fines, but anything else appropriate — including remediation, compensation, and public declarations. This opens the door for privacy class actions to get seriously strategic – not just possible, but powerful.

Here’s the bottom line: privacy compliance can no longer sit in the “legal” corner or be outsourced to the IT team. It’s now a cross-functional risk category — and it’s time businesses treated it that way. If you’re not audit-ready, breach-ready, or regulator-ready… you’re not ready.

Next week in our Privacy 2.0 series: how the law tackles automated decision-making — and why your pricing algorithm, hiring bot, or fraud engine might need to show its work.

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Before the amendments to the Privacy Act 1988 (Cth) on 11 December 2024, if your Australian business wanted to send personal data overseas — say, to a CRM hosted in the US or a support centre in Manila — you had to jump through a slightly vague hoop. Under APP 8.1, you were supposed to take “reasonable steps” to ensure the recipient wouldn’t do anything that would breach the Australian Privacy Principles. And if they did? Thanks to section 16C, you were still on the hook.

There were a couple of workarounds, one of which was found in APP 8.2(a) – this let you off the liability hook if you “reasonably believed” the recipient country had a law or binding scheme that was “substantially similar” to the APPs — and had real enforcement mechanisms. But what does “reasonable belief” mean in that context? And how similar is “substantially similar”? The vagueness of the whole thing often felt like a false sense of security.

The December amendments bring structure and at least some clarity. We now have APP 8.2(aa) and 8.3, which allow for the creation of a whitelist: a formal, government-endorsed list of countries and binding schemes deemed to have privacy protections and enforcement powers equivalent to ours. If your recipient is on the list, you don’t have to prove a thing — just document that the transfer aligns with the rules and you’re good to go.

This is huge. It streamlines compliance and brings us closer to the way other jurisdictions, like the UK and the EU under their respective GDPRs, handle cross-border data flows via “adequacy” decisions. It also gives businesses clarity about who’s in the safe zone, who’s not, and what conditions might apply. For instance, a country might only make the list for health data, or only for financial services entities. The flexibility is there — but so is the scrutiny.

One catch? At the time of publishing this post, the list doesn’t exist yet. It’ll be created via regulation, which means the real-world usefulness of this reform hinges on how quickly and smartly that list gets built. Until then, businesses still have to do the old assessment under APP 8.2(a), with all the murkiness that comes with it.

So if your infrastructure, vendors, or data processors are offshore, now’s the time to:

  • map your transfers,

  • review your contracts,

  • and prepare to align with the new safe-harbour system when it drops.

Because in the new privacy era, “we didn’t realise the US server was logging that” won’t fly anymore.

Next week in our Privacy 2.0 series: the enforcement overhaul — where civil penalties, infringement notices, and OAIC superpowers come roaring into view.

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Crunch Time for CRUNCHIEZ: Cadbury Blocks Rival Chocolate Mark

In a sweet victory for brand owners, Cadbury UK Limited has successfully opposed the registration of the trade mark CRUNCHIEZ SURPRIZE in Australia, convincing the Trade Marks Office that the name was too close for comfort to its iconic CRUNCHIE mark.

Greek confectionery importer Relkon Hellas applied to extend international protection for its mark CRUNCHIEZ SURPRIZE (featuring stylised graphics) for use in relation to chocolate and confectionery in Class 30. Cadbury, relying on decades of use of the CRUNCHIE mark in Australia, opposed the application on several grounds — but ultimately succeeded on one: section 60 of the Trade Marks Act 1995 (Cth).

Under s 60, a trade mark may be refused if another mark had acquired a reputation in Australia before the relevant date, and the use of the new mark would be likely to deceive or cause confusion.

Here’s how the Delegate broke it down:

Reputation:
Cadbury’s CRUNCHIE has been sold in Australia since the 1950s and enjoys widespread recognition. Sales figures, advertising spend, historical ads, and retail presence all pointed to a strong reputation in Australia, particularly for chocolate and confectionery.

Similarity of Marks:
While not identical, CRUNCHIE and CRUNCHIEZ SURPRIZE share key elements:

  • The word CRUNCHIEZ was viewed as a near-plural of CRUNCHIE, differing by just one letter.

  • The additional term SURPRIZE was considered descriptive and did little to distinguish the overall impression.

  • Stylisation differences weren’t enough to avoid confusion.

Likely Confusion:
The Delegate found that ordinary consumers could reasonably wonder whether CRUNCHIEZ SURPRIZE products were from the same source as Cadbury’s CRUNCHIE line — especially when both appeared in close proximity in stores like Kmart and The Reject Shop.

Interesting side note – the evidence of where the competing brands sat in places like K-mart and The Reject Shop was adduced not by Cadbury, but by Relkon Hallas, whose lawyers used that evidence to submit that because the brands were not literally side-by-side, this supported a conclusion that there would be no confusion.

That turned out to be a bit of a strategic fail as the Delegate thought this evidence supported a finding of confusion because it was clear evidence that the relatively new CRUNCHIEZ SURPRIZE mark was being advertised in close proximity to the long-standing and very famous CRUNCHIE mark.

Oops.

The Outcome
Protection for CRUNCHIEZ SURPRIZE was refused in full. Cadbury was awarded costs, and Relkon Hellas left with a lesson in brand proximity.

Key Takeaways for IP Owners

  • Reputation is a powerful shield. Long-standing brand presence, even on basic goods like chocolate bars, can stop later marks in their tracks.

  • Adding a “z” won’t save you. Minor spelling tweaks and descriptive add-ons (like “Surprize”) rarely neutralise the risk of confusion.

  • Stylisation matters — but not enough. Graphic flourishes won’t rescue a mark if the words dominate and invite association with a famous brand.

  • Proximate promotions can pummel you. If your goods end up shelved near a well-known competitor, that visual proximity will weigh heavily in the analysis.

IP Mojo Takeaway:
If you’re naming a new chocolate product and your trade mark sounds like a Cadbury classic… you’re probably skating on thin nougat.