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Archives for September 2025

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Copy That, Part 8 – Infringement and Enforcement: What Happens When It Goes Wrong

Copyright gives creators powerful rights. But those rights only matter if you can enforce them when someone crosses the line.

What counts as infringement?

Infringement happens when someone does any act reserved for the copyright owner—copying, distributing, adapting, performing—without permission or a valid exception.

Importantly, it doesn’t have to be deliberate. Even unintentional or “I didn’t know” copying can still be infringement.

The test isn’t whether the whole work was copied. Reproducing a “substantial part”—which can mean the heart or essence of the work—is enough.

It’s Not About Quantity

The test for infringement – that is, reproduction of a substantial part – is not about how much was copied.  That is, it is not a quantitative test.

It is actually a qualitative test – it is all about the quality of what was copied.  That is, how important to the whole copyright work is the part that was reproduced?

Indirect liability: authorisation

Australian law also recognises authorisation liability.

If you help or encourage infringement, or fail to take reasonable steps to prevent it (for example, running a platform that hosts pirated content without safeguards), you can be liable too.

Remedies: what can you do?

Rights holders can seek:

  • Injunctions (court orders to stop the infringement)

  • Damages (compensation for loss)

  • Account of profits (handing over profits earned from the infringement)

  • Additional damages (where the infringement is flagrant or in bad faith)

  • Delivery up or destruction of infringing copies

Practical enforcement

Litigation isn’t always the first step. Often, a cease-and-desist letter, a platform takedown request, or a negotiated licence can resolve disputes faster and cheaper.

Enforcement is as much about strategy as law.

Next up in our Copy That series:
Part 9 – International Protection: Does My Copyright Travel?

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You Can’t Corner “Better”: TRADIE BEER BUILT BETTER Survives Opposition

If your brand is built on praise, don’t be surprised when you can’t block others from using it.

That’s the message from a recent Trade Marks Office decision where Better Beer Holdings tried — and failed — to stop TRADIE BEER BUILT BETTER from registering.

The Players

  • Better Beer Holdings Pty Ltd – behind the BETTER BEER brand, co-founded by Nick Cogger and comedy duo The Inspired Unemployed (with a strong “tradie vibe” in its marketing).

  • TRADIE Holdings Pty Ltd – owner of the TRADIE brand, here applying for TRADIE BEER BUILT BETTER for beers and related beverages.

The Opposition

Better Beer ran three grounds:

  1. s 44 – Deceptively similar to their BETTER BEER marks.

  2. s 60 – Reputation in BETTER BEER would make confusion likely.

  3. s 42(b) – Use would be contrary to law (misleading under the ACL).

Why the Case Failed

1. Section 44 – Not deceptively similar

  • Both marks share “beer” and “better” but have different overall impressions.

  • TRADIE is a prominent lead element; “beer built better” flips the word order and creates its own alliteration.

  • “Better beer” is a laudatory/descriptive phrase — unlikely to be monopolised.

  • No “real tangible danger” of confusion when compared as wholes.

2. Section 60 – Reputation not enough

  • Sales and promotion were significant, but much use was with the ribbon device or in get-up, not the plain words alone.

  • Even assuming reputation in BETTER BEER, it lacked the “communicative freight” to make TRADIE BEER BUILT BETTER risky.

  • The “tradie” theme in marketing wasn’t unique enough to bridge the gap — plenty of beer is pitched to tradies.

3. Section 42(b) – ACL claims collapse

  • Once confusion wasn’t made out under s 60, misleading/deceptive conduct couldn’t be made out either.

Decision

  • All grounds failed — TRADIE BEER BUILT BETTER proceeds to registration.

  • Costs awarded against Better Beer.

IP Mojo Takeaways

  1. Descriptive marks are weak weapons – “Better Beer” is the kind of praise any brewer might use. Even with strong sales, it’s hard to exclude others.

  2. Whole-of-mark comparison matters – Prominent extra elements (like “TRADIE”) and re-ordered slogans can be enough to avoid deception.

  3. Reputation needs distinctiveness – It’s the mark’s pull as a badge of origin that counts, not just marketing volume.

  4. Costs risk is real – Lose on all grounds, and you’re paying the other side’s costs.

Citation: Better Beer Holdings Pty Ltd v TRADIE Holdings Pty Ltd [2025] ATMO 147

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Menus Won’t Save You: Merivale’s “est” Loses Class 16 in Non-Use Battle

When your brand is famous in one field, can it keep rights in goods you barely touch?

Merivale’s long-closed Sydney fine-dining institution est recently learned the hard way that incidental printed materials — like menus or event stationery — won’t necessarily save a trade mark registration for “printed matter” in Class 16.

The Players

  • Hemmes Trading Pty Ltd (Merivale) – Owner of the est restaurant brand since 2000.

  • Est Living Pty Ltd – A design publisher with an online magazine “Est” since 2011.

Est Living applied under s 92(4)(b) of the Trade Marks Act 1995 (Cth) to partially remove Merivale’s est registration for non-use in Class 16 (paper goods, printed matter, photographs, stationery).

The Evidence Game

Merivale’s “use” case relied on:

  • Wedding/event menus branded est

  • Mentions of est in Merivale’s “Weddings” book and on social media

  • Contracts and invitations naming est as a venue

  • An argument that menus were “goods in the course of trade” like in the Realtor decision

The problem?

The Delegate found:

  • Menus and invitations were ancillary to restaurant services — not sold or traded as Class 16 goods.

  • Branding on venue/event collateral was dominated by “Merivale”, with est appearing only as a location reference.

  • No convincing evidence of est-branded printed goods in the Relevant Period that actually functioned as a trade mark for Class 16 goods.

The “COVID Obstacle” Argument

Merivale claimed pandemic lockdowns were an “obstacle to use” under s 100(3)(c). The Delegate wasn’t persuaded:

  • The restaurant closed for renovations before COVID.

  • Private events still ran during the period, so use was possible.

  • Delay in reopening wasn’t justified by pandemic impacts alone.

Discretion? Declined.

The Registrar’s discretion under s 101(3) is a safety valve, but it’s not there to protect unused marks for sentimental reasons. Public interest tipped the scales:

  • est had a dining reputation, but not for Class 16 goods.

  • Keeping unused goods on the Register would “clog” the system and create unnecessary hazards for other traders.

The Result

Partial removal succeeded. The est registration now covers only:

Class 32: Beers, mineral and aerated waters, non-alcoholic drinks, fruit drinks/juices, syrups, and preparations for making beverages.

Costs were awarded against Merivale.

IP Mojo Takeaways

  1. Goods vs Services – Use for services doesn’t automatically translate to use for goods, even if the goods are part of the service experience.

  2. Menus ≠ Market Goods – If they’re free, incidental, and tied to the service, they probably won’t save your Class 16 claim.

  3. Obstacle Defence Is Narrow – COVID didn’t help here because the closure predated it and events continued.

  4. Discretion Won’t Fill the Gaps – If you can’t prove use or genuine intent, public interest will clear the Register.

Citation: Est Living Pty Ltd v Hemmes Trading Pty Ltd [2025] ATMO 142

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Copy That, Part 7: Licensing and Assignment: How to Use and Share Copyright

Owning copyright doesn’t mean you have to keep it locked away. In fact, some of the most powerful uses of copyright come from sharing it—on your terms. That’s where licensing and assignment come in.

Licensing: permission with strings attached

A licence is essentially permission for someone else to use your work in a certain way. You remain the owner, but you set the rules.

Licences can be:

  • Exclusive – only the licensee can use the work in that way (even you, the owner, may be excluded). Exclusive licences should always be in writing.

  • Non-exclusive – you can license the same rights to multiple people at the same time.

  • Implied – sometimes the circumstances imply a licence (e.g. sending your customer a graphical design they asked you to make for their business cards implies they can have it copied on to their business cards). But relying on implication is risky—always better to spell it out.

Creative industries often use open licences like Creative Commons to allow broad, standardised sharing. These licences can be very flexible, but once granted, they can’t easily be revoked.

Sidebar: Creative Commons vs Copyleft

These two often get confused, but they’re not the same thing.

  • Creative Commons (CC):
    A suite of standard licences that creators can choose from. Some are very open (like CC0, which waives rights), while others are more restrictive (like CC BY-NC, which bars commercial use).

  • Copyleft:
    A philosophy that says: you can use, modify, and share this work freely, but if you create something new from it, you must share that new work under the same terms.

  • Where they overlap:
    Some Creative Commons licences, like CC BY-SA, include a “ShareAlike” condition. That’s essentially a form of copyleft—any derivatives must be licensed the same way. But not all Creative Commons licences have this feature.

👉 In short: Creative Commons is a toolkit of licences. Copyleft is a principle. Some CC licences apply copyleft; others don’t.

Assignment: a permanent transfer

An assignment is different: it transfers ownership itself.

  • Assignments must be in writing and signed by the current owner.

  • They can cover all rights, or just some (e.g. assigning film rights but keeping publishing rights).

  • Once assigned, the new owner steps into your shoes and can enforce copyright as if they were the creator.

Assignments are common in publishing contracts, music catalogues, software acquisitions, and business sales.

Why the distinction matters

  • A licence gives someone permission; you still own the copyright.

  • An assignment gives someone ownership; you no longer do.

Mixing the two up in a contract can cause years of confusion—or even litigation.

IP Mojo tip: share smart, not loose

When letting others use your work, always be clear:

  • Who is allowed to use it

  • What they can do with it

  • Where and for how long they can use it

  • Whether the permission is exclusive or not

  • How much (if anything) they’ll pay for it

That clarity is what turns copyright from a legal safety net into a practical business tool.

Next up in our Copy That series:
Part 8 – Infringement and Enforcement: What Happens When It Goes Wrong
Because copyright only matters if you can enforce it when lines are crossed.

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What happens when your new brand smells a little too much like the towels next door? (High Court Edition)

The linen wars have gone all the way to the top.

Earlier this year, we wrote about Global Retail Brands Australia (GRBA) — the team behind House and its spin-off House Bed & Bath — squaring off against soft-homewares stalwart Bed Bath ‘N’ Table (BBNT). The Federal Court split the baby: no trade mark infringement (the marks weren’t deceptively similar), but misleading conduct and passing off were found at first instance. The Full Federal Court overturned those latter findings, giving GRBA a win.

Now, the High Court has heard the appeal, reserved its decision, and the case is poised to reshape the way Australian law balances trade mark rights, reputation, and consumer protection.

The clash of frameworks: trade mark vs consumer law

At the heart of the battle is the distinction sharpened by the High Court in Self Care v Allergan (2023).

  • Trade mark infringement under the Trade Marks Act 1995 (Cth) is an artificial “mark-on-mark” comparison, stripped of reputation, history, and context.

  • Misleading and deceptive conduct under the ACL (and passing off) is broader, taking in the real-world reputation of the trader, the marketplace, and consumer impressions.

BBNT argues the Full Federal Court collapsed the distinction by effectively treating the failure on the trade mark claim as the “starting point” for rejecting the ACL/passing off claims. In its view, that’s a methodological error: reputation and consumer context should drive the ACL analysis.

GRBA counters that there were “substantial and crucial differences” between House Bed & Bath and Bed Bath ‘N’ Table, and — critically — that BBNT had no independent reputation in Bed & Bath alone. Any risk of confusion, they say, was theoretical at best.

Inside the High Court hearing

The transcript gives a flavour of the tension. Counsel for BBNT pressed that the proper inquiry under the ACL was not whether the marks looked deceptively similar in the abstract, but what meaning a reasonable consumer would take in light of BBNT’s 40 years of unique use of Bed Bath ‘N’ Table in the soft-homewares market. Add GRBA’s adoption of a Hamptons-style fit-out, similar typography, and the deliberate choice of “Bed & Bath” over alternatives like House Bath & Bed or House Bedworks, and the picture (they say) becomes clear.

GRBA, in response, stressed that “House” dominates their brand and that consumers couldn’t miss it “save through exceptional carelessness or stupidity” (yes, that’s the phrase from the Full Court). They emphasised that BBNT’s reputation rested in the whole composite mark — Bed Bath ‘N’ Table — not the sliced-off “Bed & Bath” segment.

The bigger questions

The case raises issues far beyond duvets and towels:

  1. Can reputation in a composite mark give effective monopoly over common category words? BBNT says yes, at least where decades of unique use have entrenched association. GRBA says no — descriptive words like “bed” and “bath” can’t be locked up, even after 40 years.

  2. Does “wilful blindness” matter? The primary judge thought GRBA’s conduct (and evidence of strategic borrowing) was “fitted for the purpose” of diverting trade. The Full Court disagreed, saying sharp elbows in commerce don’t necessarily equal deception.

  3. Where do trade mark law and the ACL intersect? The High Court is being asked to clarify whether a finding of no trade mark infringement makes it harder — or irrelevant — to succeed under consumer law.

Why it matters

For retailers and brand advisors, this case could reset the boundaries between:

  • Protectable brand equity and the freedom to use descriptive terms;

  • Strategic mimicry and unlawful deception;

  • The narrow lens of statutory trade mark rights and the broader sweep of consumer expectations.

If the High Court restores the primary judge’s finding for BBNT, it could embolden established brands to take action even where marks aren’t deceptively similar, so long as the marketplace context points to deception. If it affirms the Full Court, it will signal that descriptive terms are fair game, and that reputation in a composite mark doesn’t easily fracture into enforceable monopolies over its parts.

Final thoughts

The towels are still fluffed, the pillows puffed, and the decision is pending.

Whichever way the High Court turns, this case will be cited in branding disputes for years. It’s a live stress test of how Australia draws the line between brand mimicry and market misconduct.

And for those keeping track of timing, yes — the Court has reserved. Whether judgment arrives by Towel Day next year remains to be seen.

👉 We’ll update when the High Court finally beds down its answer. Until then, trade mark lawyers and brand managers should keep one eye on Doncaster and Chadstone… and the other on the High Court bench.

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Copy That, Part 6 – Copyright and the Digital Age: Online Use, Streaming, and AI

If it’s online, it’s free to use… right? Wrong.

Copyright applies just as much to digital works as it does to a printed novel or a painting hanging in a gallery. The internet hasn’t erased the rules—it’s just made them easier to break (and harder to track).

Online sharing is still “publication”

Uploading a work—whether to YouTube, Instagram, or your company’s website—is a “communication to the public” under the Copyright Act. That means:

  • If it’s your work, you control whether and how it’s shared.

  • If it’s someone else’s, you need their permission unless an exception applies.

Tip: Even sharing a photo on your social media page can be infringement if you don’t have rights to it.

Embedding and linking: a grey zone

In Australia, simply linking to material usually isn’t infringement—unless you link to content you know (or should know) is infringing.

However, embedding (e.g. showing a YouTube video directly on your site) can raise trickier questions, especially if the embedded content bypasses restrictions or was uploaded without authorisation.

User-generated content and platforms

Social media and content-sharing platforms rely on a mix of:

  • User agreements (you often grant them a licence to your uploads)

  • “Safe harbour” provisions (protecting platforms if they remove infringing content when notified)

But these protections don’t extend to users—you’re still liable for what you upload.

Streaming and digital downloads

Streaming is also a “communication to the public.” Legitimate streaming services obtain licences for the works they make available. Watching or listening on a licensed platform is fine—streaming from pirate sources is not.

Downloading from an infringing source creates a copy and may compound the infringement.

AI and copyright: the hot debate

Training AI models on copyright-protected material is a live legal issue worldwide.

  • In Australia: There’s no explicit exception (at least, not yet – the Australian government is presently considering that very thing) for AI training. If training involves making reproductions of protected works, it could be infringement unless licensed or covered by an exception.

  • Courts haven’t ruled definitively here yet, but watch this space—policy reform is on the horizon.

Digital rights management (DRM)

Circumventing technological protection measures (like paywalls or anti-copying code) is generally illegal, even if your intended use might otherwise fall within an exception like fair dealing.

IP Mojo tip: Think “offline rules in an online world”

The digital age hasn’t changed the essence of copyright law—it’s just made the boundaries blurrier. If you wouldn’t photocopy and distribute it offline without permission, don’t assume you can do the online equivalent.

Next up in our Copy That series:
Part 7 – Licensing and Assignment: How to Use and Share Copyright
Because sometimes you want others to use your work—and you need the right tools to do it on your terms.