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Archives for September 2025

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The Rooh Afza Wars: Another Chapter in a Family Feud Over Syrupy Rights

If you thought brand disputes were just about logos and lawyers, think again. Sometimes, they carry the weight of history, partition, and family legacies.

Case in point: Hamdard National Foundation (India) v Hamdard Laboratories (WAQF) Pakistan [2025] ATMO 169 — the latest Australian skirmish in the century-long saga over the famous Rooh Afza drink.

A drink with history (and baggage)

Rooh Afza isn’t just a syrup. It was first concocted in Delhi in 1906 by the Hamdard Dawakhana Clinic. When Partition came in 1947, so did a business split: one son stayed in India (today’s opponent), another went to Pakistan (today’s applicant). Since then, both sides have sold Rooh Afza products in their respective home markets — and fought trademark battles across the globe.

Think Coca-Cola vs Pepsi, but with cousins at the helm.

The fight in Australia

The Pakistani arm applied in Australia for two marks:

  • ROOH AFZA in a fancy script (TM 2279408), and

  • a florid HAMDARD ROOH AFZA SUMMER DRINK OF THE EAST composite (TM 2279409).

Both were opposed by the Indian arm, which already owns the plain word mark ROOH AFZA (TM 1633931) here.

The delegate held:

  • The words ROOH AFZA are the “prominent and memorable” feature of both sides’ marks.

  • That makes the applied marks deceptively similar to the opponent’s word mark under s 44 of the Trade Marks Act 1995 (Cth).

  • The Pakistani applicant’s attempt to rely on prior use (s 44(4)) fell flat — their evidence showed Rooh Afza syrups had trickled into Australia since 2004, but the branding was inconsistent. Multiple trade mark variants were used, social media was directed at Pakistani consumers, and documentation was patchy.

Result: both marks refused, with costs awarded against the applicant.

Why it matters

This is more than a tale of two syrups. It’s a case study in evidence strategy:

  • Inconsistent branding kills your case. The delegate couldn’t be sure which “Rooh Afza” mark was really used in Australia, and when.

  • Records matter. Gaps in invoices and an absence of dated packaging images left the applicant vulnerable.

  • Family feuds spill into IP. The long-running India/Pakistan split over Hamdard’s legacy ensures we’ll see more of these fights around the world.

For Australian brand owners, the lesson is simple: if you’re trading here, make sure you keep consistent, dated, and local evidence of use. Courts and hearing officers won’t give you much sympathy if your story is clouded by multiple logos and poor record-keeping.

Final pour

The Rooh Afza wars are far from over. But in Australia, at least for now, the syrup tilts in favour of the Indian side. The Pakistani arm walks away empty-handed — and a little lighter in the pocket.

⚖️ Case reference: Hamdard National Foundation (India) v Hamdard Laboratories (WAQF) Pakistan [2025] ATMO 169 (Delegate Irgang, 28 August 2025).

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Copy That, Part 9 – International Protection: Does My Copyright Travel?

Copyright doesn’t stop at the border. Thanks to international treaties, Australian works enjoy protection in most countries around the world.

But while copyright travels, enforcing it can be another story.

The Berne Convention

Australia is a member of the Berne Convention for the Protection of Literary and Artistic Works, which has over 180 signatories. The convention requires each member country to give works from other member countries the same copyright protection they give their own.

In practice:

  • An Australian author’s novel is protected in France, the US, Japan, and most other places automatically.

  • No need to register abroad (though some countries, like the US, still require local registration before suing).

Enforcing overseas rights

While protection exists automatically, enforcement depends on local courts and procedures. That means:

  • You may need local lawyers and expertise.

  • Remedies differ country to country.

  • Cultural and practical considerations can affect how disputes play out.

Beyond Berne

Australia is also part of other agreements, including the WIPO Copyright Treaty and various free trade agreements, which extend and harmonise protections.

IP Mojo tip: plan internationally

If your work has export potential—books, software, films, brands—consider international contracts, licences, and partnerships to support enforcement, rather than relying on litigation in a distant jurisdiction.

Next up in our Copy That series:
Part 10 – Copyright Myths Busted: Top Misunderstandings

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When Copying Doesn’t Pay: Lift Shop v Next Level Goes All the Way Up

What happens when copyright infringement is admitted but the “big ticket” remedies fall away?

The recent battle between residential lift rivals Lift Shop and Next Level Elevators shows how hard it can be to turn technical wins into commercial victories.

The Backstory

Lift Shop and Next Level are fierce competitors in the Australian residential lift market. The dispute began when a Lift Shop quotation template found its way into Next Level’s hands in late 2019. Next Level adapted the template and used it for a few months until April 2020.

Lift Shop sued in the Federal Circuit and Family Court, claiming:

  • Copyright infringement of its quotation documents,

  • Breach of confidence over information allegedly supplied by a former employee, and

  • Misleading or deceptive conduct under the ACL in relation to marketing and compliance claims.

Next Level hit back with its own ACL allegations.

The Primary Judgment (June 2024)

Judge Baird found that Next Level (and two of its directors) had indeed infringed Lift Shop’s copyright by using the quotation template. But the win was thin:

  • Additional damages refused: Although infringement was established, the Court declined to award extra damages under s 115(4) of the Copyright Act. The use was brief, not particularly lucrative, and not deemed “flagrant.”

  • Breach of confidence dismissed: Lift Shop couldn’t prove its customer quotes were truly confidential. Some of the same material had even been accessible on its website due to a coding plug-in glitch.

  • ACL claims failed on both sides: The Court wasn’t persuaded that either company had misled consumers about their lifts. Importantly, the judge observed the Court was not an industry regulator.

In short, Lift Shop walked away with a declaration of infringement, but none of the additional relief it wanted.

The Appeal (August 2025)

Unhappy with the limited result, Lift Shop appealed to the Full Court. Its main targets were:

  1. Additional damages – arguing the primary judge was wrong to rule them out before quantum was assessed.

  2. Flagrancy – insisting Next Level’s copying was sufficiently egregious to attract extra damages.

  3. Confidential information – contending the judge erred in finding no breach of confidence and in admitting documents obtained from its website by Next Level’s solicitors.

The Full Court (Feutrill, Neskovcin and Moore JJ) dismissed the appeal:

  • Additional damages can be decided early: The Court confirmed that entitlement to additional damages can be determined at the liability stage, even before election or quantum. Entitlement and quantification are distinct steps. This follows the approach in Redbubble v Hells Angels and Motorola v Hytera.

  • Flagrancy is a matter of degree: The assessment under s 115(4) isn’t binary (“flagrant or not”). It involves weighing the degree of flagrancy along with other factors. The primary judge’s evaluative judgment disclosed no error under House v The King.

  • No confidentiality: A Lift Shop customer quote was not confidential, particularly when similar documents were accessible online. The Court also held that Next Level’s solicitors had not acted improperly in locating documents via the website.

Result: appeal dismissed with costs.

Key Takeaways

  • Copyright is not a lottery ticket. Even where infringement is admitted, additional damages are far from automatic. Courts look for truly egregious, flagrant conduct.

  • Two steps to additional damages. Entitlement and quantification are separate. Entitlement can be determined at the liability stage – and losing that fight early can dramatically weaken a case.

  • Confidentiality must be managed. If “confidential” material can be accessed on a public website, or is too widely circulated, courts are reluctant to protect it.

  • ACL claims cut both ways. Rival traders often throw ACL allegations at each other, but without strong evidence, the Court may simply dismiss both.

Why It Matters

For litigants, this case is a reminder that winning the infringement battle doesn’t always mean winning the war on remedies. Strategic choices about pleading confidentiality, securing websites, and framing additional damages arguments can decide whether a lawsuit delivers real value—or just a hollow declaration.

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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