IPMojo

BOOK AN APPOINTMENT

Archives for August 2025

by

No Proof, No Profit: The Perils of Chasing an Account in Trade Mark Cases

When you win a trade mark infringement case, the natural instinct is to go after the other side’s profits. After all, why should the infringer keep any benefit from piggybacking off your brand? But as Kretchmer Enterprises Pty Limited v AMR Manufacturing Pty Limited [2025] FedCFamC2G 1394 shows, that’s often easier said than done.

Background: “All Lift” confusion

Kretchmer Enterprises (KEPL) trades as All Lift Forklifts, with a suite of registered marks in Class 37 and others. Its competitor, AMR Manufacturing (run by director Michael La Greca), began using All Lift Material Handling and Construction and related names.

Liability was not in issue. The respondents consented to declarations of infringement and permanent injunctions. That left the big question: what remedy? KEPL pushed for an account of profits, seeking to strip out AMR’s gains from the infringing conduct.

The problem with profits

On paper, an account of profits sounds straightforward: the infringer must disgorge what they wrongfully earned from misusing the mark. In practice, it’s fraught.

Here, KEPL argued that “Sundry GST-Free Payments” appearing in AMR’s cashflow documents (produced under a notice to produce) represented profits. KEPL’s calculation put those figures at around $137,000.

Judge Manousaridis wasn’t convinced. Three strikes sank the claim:

  1. Implausible categorisation: The “Sundry GST-Free Payments” were more likely linked to equipment purchases or financing, not net profits.

  2. Failure to attribute: KEPL treated all of AMR’s income as if it was attributable to the “All Lift” brand, rather than identifying which sales were actually driven by the infringing use.

  3. Notice timing: There was no evidence AMR knew of KEPL’s marks before 30 October 2023. Any account could only run from that date — further cutting back the claim.

The director angle

KEPL also tried to rope in Mr La Greca personally, arguing he was jointly and severally liable for any profits. The Court flatly rejected this. Since no such declaration had been pleaded, and liability was admitted only in AMR’s corporate capacity, there was no personal exposure.

The takeaway

This case is a reminder that:

  • Evidence is everything. If you’re seeking an account of profits, you need invoices, ledgers, and clear links between infringing sales and the trade mark. Broad-brush assumptions won’t cut it.

  • Attribution matters. Not every dollar earned by an infringer is profit from the brand misuse. The court will only strip out the gain attributable to the wrongful use of the mark.

  • Timing counts. Accounts run only from when the infringer knew (or was put on notice) of the rights.

  • Directors aren’t automatically liable. Unless properly pleaded, personal exposure is off the table.

Final word

The sting in the tail for KEPL: despite a clean win on infringement, its claim for profits was dismissed entirely.

The lesson for brand owners and their lawyers? Sometimes it’s smarter to seek damages — or statutory additional damages under s 126(2) — rather than chasing an elusive account.

In trade mark litigation, victory on liability doesn’t always translate to money in the bank. As this case shows: no proof, no profit.

by

Revoking “Brown Nose Day”: Why the Federal Court Drew the Line on Section 84A

It was always going to be a cheeky choice — BROWN NOSE DAY for a bowel cancer fundraiser — but was it unlawfully close to RED NOSE DAY and its colourful cousins?

IP Australia thought so. The Federal Court? Not so much.

🧵 Background

In 2020, the National Cancer Foundation (NCF) registered BROWN NOSE DAY for charitable fundraising (Class 36). Red Nose Limited (RNL), owner of RED NOSE DAY and a series of colour+NOSE DAY marks, didn’t oppose at the time. But a year later, they persuaded the Registrar to revoke the registration under s 84A of the Trade Marks Act 1995 (Cth).

Section 84A allows the Registrar to revoke a registration within 12 months if:

  1. The mark should not have been registered, and

  2. It’s reasonable to revoke it — considering all circumstances.

Unhappy with the Registrar’s post-registration change of heart, NCF appealed — arguing that this wasn’t about oversight or error, but a mere difference of opinion between the original examiner and the Registrar … which is not what s 84A is for. It’s not a licence for bureaucratic regret.

🧠 The Court’s Take

Justice McEvoy handed down judgment on 30 June 2025 agreeing with NCF.  Why?

🟥 No Deceptive Similarity

  • BROWN clearly distinguished the mark.

  • The phrase “brown nose” has a well-known colloquial meaning (a sycophant), giving it a very different conceptual feel from RED NOSE DAY (which is culturally associated with clowns and SIDS fundraising).

  • Consumers are used to colour-coded charity events — they expect different colours to mean different causes.

🛠️ No Examiner Error

  • The examiner had considered RNL’s marks and approved the application.

  • A later disagreement within IP Australia wasn’t enough to show the mark should not have been registered.

  • Section 84A is for fixing genuine oversight — not second-guessing judgment calls.

⚖️ Revocation Not Reasonable

  • NCF had invested time and resources into launching the campaign.

  • Revoking the mark just because others in the Office saw things differently risks undermining confidence in the register.

  • Revocation, said the Court, is a “serious matter” — not to be exercised lightly or inconsistently.

📌 Key Takeaways

  • Deceptive similarity is more than visual resemblance — conceptual meaning and consumer behaviour matter.

  • Section 84A is a surgical tool, not a blunt instrument. It targets genuine administrative error — not internal disagreement.

  • Certainty matters. If IP Australia can revoke marks based on shifting views, the trade marks register becomes unstable ground.

💬 As McEvoy J put it:
“A difference of opinion within the Trade Marks Office should not ordinarily be sufficient for the power to revoke to be exercised.”

🧠 Bottom Line:
Want to challenge a registered mark after the opposition window closes? You’ll need more than a stronger opinion. Section 84A isn’t a second chance — it’s a narrow exception. This case draws a clear line: revocation ≠ backdoor opposition.

by

Copy That, Part 5 – Exceptions and Limitations: Fair Dealing in Australia

There’s a common misconception that “if I’m not making money from it, it’s fine.” Not so.

In Australia, there are only very specific circumstances where you can use someone else’s copyright material without permission—and they’re called fair dealing exceptions.

These are not catch-all “free use” rules. They’re targeted, purpose-driven carve-outs in the Copyright Act, and if you step outside them, you risk infringement.

The five main fair dealing purposes

You can use copyright material without permission if your use is fair and is for one of these legally recognised purposes:

  1. Research or study

    • This includes both academic and private study.

    • Factors like the amount used and the purpose matter—copying an entire textbook probably isn’t “fair.”

  2. Criticism or review

    • The material must genuinely be part of a critique or review, and you must provide sufficient acknowledgment of the source.

  3. Parody or satire

    • This can be humorous or biting, but must be a genuine parody or satire—not just borrowing the work for entertainment value.

  4. Reporting the news

    • Use must be connected to an actual news report, not just general commentary. Proper attribution is required.

  5. Giving professional legal advice

    • Lawyers can use works as part of providing legal advice to clients.

The fairness test

Even if you meet one of the above purposes, your use must also be “fair.”  Courts look at factors such as:

  • The purpose and character of your use

  • The nature of the work

  • The amount and substantiality of the portion used

  • Whether your use competes with or harms the market for the work

Not to be confused with US “fair use”

The US doctrine of “fair use” is broader and more flexible. Australia’s fair dealing is narrow—if your use doesn’t fit one of the listed purposes, there’s no exception, no matter how “reasonable” it seems.

IP Mojo tip: When in doubt, get permission

Fair dealing can be a powerful defence, but it’s not a free pass. If you’re outside the scope of the exceptions, or if “fairness” is debatable, permission (or a licence) is the safest route.

Next up in our Copy That series:
Part 6 – Copyright and the Digital Age: Online Use, Streaming, and AI
Because copyright law applies online too—and the rules can surprise you.

by

IMMIGPT Blocked: OpenAI’s GPT Reputation Stops Immigration Trade Mark

What happens when you take a world-famous tech acronym and bolt it onto your own business name?

An Australian migration services provider just found out — the hard way — that riding the coat-tails of GPT’s fame can sink your trade mark application, even outside the tech sector.

The Players

  • OpenAI OpCo LLC – creator of GPT, ChatGPT, and other AI products with global reach.

  • Realoz International Pty Ltd – provider of immigration and legal services, trading via a platform called “IMMIGPT”.

The Mark and the Fight

Realoz applied to register IMMIGPT in Class 45 for migration and immigration services.

OpenAI opposed on multiple grounds, but ran s 42(b) (contrary to law) and s 60 (reputation) at the hearing.

The Delegate focused on s 60 — whether OpenAI’s GPT marks had a reputation in Australia before 25 April 2023, and whether that reputation made confusion likely.

Reputation in Overdrive

OpenAI launched GPT in 2018, then GPT-2, GPT-3, GPT-4. In November 2022, ChatGPT arrived and “exploded in popularity”, becoming the fastest-growing consumer app in history — hitting 100 million monthly users in two months.

By the relevant date:

  • Australians were using ChatGPT in law, architecture, retail, beauty, marketing, accounting — and for everything from recipes to speechwriting.

  • The media coverage was intense; even those who hadn’t tried it had heard of it.

The Delegate found substantial reputation in both GPT and ChatGPT in Australia.

Why Confusion Was Likely

Realoz argued GPT was just a descriptive acronym (“generative pre-trained transformer”) and that it had a disclaimer on its site disavowing any link to OpenAI.

The Delegate disagreed because:

  • Most Australians wouldn’t know GPT’s technical meaning.

  • Even if they did, they’d still associate it with OpenAI.

  • “IMMIGPT” mirrored the ChatGPT construction — suggesting an “immigration” version of ChatGPT or immigration services powered by OpenAI’s GPT software.

  • The Applicant had agreed to OpenAI’s T&Cs — so it clearly knew about the marks.

The result? A significant number of consumers would be likely to wonder if IMMIGPT was connected to OpenAI.

The Decision

  • s 60 established — registration refused.

  • Costs awarded against the applicant.

IP Mojo Takeaways

  1. Fame Spreads Fast – A trade mark can acquire reputation in months if public uptake is explosive.

  2. Tech Acronyms Aren’t Neutral – If the public recognises an acronym as a brand, expect trouble using it — even for unrelated services.

  3. Construction Counts – Mimicking a famous brand’s naming pattern (“___GPT”) invites an association in consumers’ minds.

  4. Disclaimers Don’t Cure Confusion – If your name suggests a link, a footnote won’t save you.

Citation: OpenAI OpCo LLC v Realoz International Pty Ltd [2025] ATMO 141

by

Copy That, Part 4 – Copyright Duration and the Public Domain

Nothing lasts forever—not even copyright.

In Australia, copyright protection is generous, but it isn’t permanent. Once it expires, the work enters the public domain, where anyone can use it freely without permission or payment. For creators, this means a valuable asset eventually becomes a shared cultural resource. For users, it’s an open invitation to repurpose, remix, and reimagine.

How long does copyright last?

It depends on the type of work:

  • Literary, dramatic, musical, and artistic works: Life of the creator plus 70 years.

  • Films and sound recordings: Generally 70 years from the year of first publication.

  • Broadcasts: 50 years from the year of broadcast.

  • Published editions: 25 years from first publication (protects the typographical arrangement, not the content).

Why the long tail?

The “life + 70 years” rule aligns Australia with most of its major trading partners. The idea is that copyright rewards creators and their estates for decades after creation—often long enough to benefit children and grandchildren—while ensuring that, eventually, the work joins the public’s shared heritage.

The public domain: free, but not always simple

When a work falls into the public domain, you can:

  • Copy, adapt, and distribute it without permission

  • Use it in new creations (films, books, merchandise, etc.)

  • Monetise it without paying royalties

But be careful:

  • New editions, translations, or adaptations of a public domain work can have their own copyright.

  • Moral rights still apply—meaning you may still need to credit the original creator or avoid derogatory treatment.

  • Other rights (like trade marks or cultural heritage protections) can limit how you use older works.

IP Mojo tip: double-check before you dive in

Don’t assume a work is in the public domain just because it’s “old” or freely available online. Confirm the date of creation and publication, and check whether there have been later editions or modifications that might still be protected.

Please note images you find in Google Images or that pop up in your searches irrespective of the search engine you use, are generally not in the public domain and may well be protected by copyright.  That should be your assumption until proven otherwise – don’t assume it’s public domain … find out first!

Next up in our Copy That series:
Part 5 – Exceptions and Limitations: Fair Dealing in Australia
Because yes, there are times you can use someone else’s work without asking first—but they’re narrower than you might think.

by

Not So Fast, Wingman: Why the Federal Court Said No to a “Teaming Agreement”

Cirrus Real Time Processing Systems Pty Ltd v Jet Aviation Australia Pty Ltd (formerly Hawker Pacific Pty Ltd) [2025] FCAFC 85

When is a deal not a deal? When it’s a teaming arrangement built on a handshake, a hopeful email chain, and a quotation that looks more like a wishlist than a contract.

The Full Court has dismissed an appeal by software supplier Cirrus, who claimed that Jet Aviation (formerly Hawker Pacific) was contractually bound to subcontract Cirrus if it won a lucrative New Zealand Defence Force (NZDF) tender. It didn’t help that the “agreement” was cloaked in contingency, caveats, and future negotiation.

Here’s what happened — and what it means for anyone navigating teaming deals or tender arrangements in the tech or defence space.

🛩 The Backstory: Simulations, Sensors and Soft Promises

In 2016, Jet Aviation was preparing a tender response to the NZDF to provide airborne training systems. It needed software to simulate and display mission data — and turned to Cirrus, developer of a system called ACOTS.

Over several years, Cirrus and Jet Aviation had exchanged emails, draft scopes of work, and multiple versions of quotes. In the final stages of the bid, Cirrus provided a detailed “Version 4 Quotation” (V4Q) and authorised Jet to incorporate it into its tender — but only on condition that Jet would subcontract Cirrus if it won.

Cirrus later alleged this exchange created a binding “teaming agreement”, the breach of which led to it being left out of the deal when Jet secured the head contract and went with a different software supplier.

📜 The Legal Questions

The central issues were:

  1. Did the parties intend to create legal relations on 21 December 2016?

  2. Were the terms of the alleged agreement sufficiently certain?

  3. Did Jet Aviation breach the agreement by not subcontracting Cirrus?

🔍 The Full Court’s Answer: No Contract, No Breach

The Full Court upheld the trial judge’s decision. While acknowledging that the parties had clearly hoped to work together, that wasn’t enough.

Key takeaways from the reasoning:

🔹 No present intention to be bound

The language of the emails and the quotation made clear that:

  • A future subcontract was still subject to negotiation;

  • Critical commercial terms were open (including price and IP);

  • Even the “trigger” for the obligation to engage Cirrus was inconsistently worded across documents.

This was not a present commitment, but a proposal contingent on future events — and possibly further agreement.

🔹 The agreement lacked certainty

V4Q wasn’t an agreed contract. It was a complex, promotional-style document with open issues like milestones, warranties, and a caveat that Cirrus expected Jet to absorb risks of any “flowdown” from the prime contract. It was a bid document — not a signed deal.

🔹 Conduct didn’t show mutual commitment

Even after the December 2016 exchange, the parties continued negotiating the subcontract — including key terms like IP and pricing — without resolution. That showed they didn’t believe they were already contractually bound.

⚖️ Legal Takeaways

This decision is a case study in the limits of “pre-contract” deals:

  • Clear commitment is key: Courts will not infer binding intent from businesslike conduct alone — especially where documents are provisional or refer to future agreement.

  • Teaming agreements must be tight: If you want enforceability, avoid phrases like “we will negotiate a subcontract” and instead say “we agree to subcontract on the attached terms if X occurs”.

  • Beware of ‘version creep’: The Court noted inconsistencies in the key clause across iterations of the quote and correspondence. Even small changes can defeat claims of consensus.

  • No shortcut around uncertainty: Courts will not salvage an agreement just because it would be commercially desirable to do so.

💡 For IP and Tech Suppliers: What to Do Differently

If you’re contributing IP or proprietary software to a bid:

  • Use a properly drafted Teaming or Binding Cooperation Agreement, separate from the quotation.

  • Lock in key commercial terms and make them conditional only on defined trigger events (e.g. award of head contract).

  • Ensure your licensing and IP terms are clearly stated and agreed.

  • Avoid relying solely on emails or proposal documents with promotional or ambiguous language.

And crucially — don’t assume that authorising the use of your confidential material in a tender creates leverage. The law demands more than that.