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Scott Coulthart

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Sportsbet’s “More Places”: Distinct Enough to Register

Can a trade mark like MORE PLACES really distinguish betting apps and wagering services? The Registrar thought so in Sportsbet Pty Ltd [2025] ATMO 195.

The case was a test of s 41 of the Trade Marks Act 1995 (Cth), which stops marks that are too descriptive from being registered. Examiners had argued that MORE PLACES was purely descriptive — suggesting Sportsbet’s services were available from more venues, or that gamblers could win more “places” in a race. Either way, they said, other traders needed that phrase free for honest use.

But Sportsbet pushed back. The Delegate agreed that while the words had a meaning, they weren’t directly descriptive of the goods and services. Instead, the phrase was more of a “covert or skilful allusion” in the Cantarella sense — an allusive tagline, not a generic description.

👉 Outcome: application accepted for registration.

Why it matters

  • Allusion vs description: This case shows how fine the line is between a mark that merely hints and one that directly describes.

  • Taglines can stick: Even in a heavily regulated, crowded industry like wagering, a catchy phrase can clear the s 41 hurdle.

  • The presumption of registrability is real: unless the Registrar is satisfied the mark can’t distinguish, applicants get the benefit of the doubt.

The takeaway? You don’t need a completely fanciful word to succeed. Sometimes, a clever phrase like MORE PLACES will do the trick.

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First Use vs First File: Vmaisi Trade Mark Squatter Knocked Out

The name Vmaisi might not ring a bell — but in this opposition it was the difference between owning a brand and losing it.

Chengbo Wang, founder of Ningbo Vmaisi Import & Export Co Ltd, knocked out Xiang Chen’s attempt to register Vmaisi in class 20 (non-metal hardware, locks, baby seats).

👉 The battleground? Section 58 of the Trade Marks Act 1995 — ownership.

Wang came armed with real-world evidence: Shopify orders, Amazon listings, and Australian customers clicking “buy now.”

Chen, meanwhile, turned up empty-handed — and with a history of filing other people’s brands without doing much else.  The Delegate wasn’t impressed, calling it the classic playbook of a bad-faith filer.

🔑 Why it matters

  • First use beats first file — ownership flows from actual use, not just getting in line at the filing counter.

  • Global clicks count — Amazon, Shopify and website screenshots can prove Australian use.

  • Conduct matters — a pattern of opportunistic filings can tip the scales against you.

💡 IP Mojo Take

Trade mark squatting isn’t just an “overseas problem” — it’s alive and well here too.

And remember: Australia’s trade mark register is a register of ownership, not ownership by registration. Only the true owner can register a mark. Filing doesn’t magically make you one.

For brand owners:

  • Keep an eye on the register — if you snooze, you lose.

  • Move fast if someone else files your brand.

  • For e-commerce businesses: your digital receipts, analytics, and customer data are gold when proving ownership.

In today’s digital marketplace, your best defence may just be sitting in your Shopify dashboard.

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Reckitt’s Red Powerball Fizzles: Shape Marks for Dishwashing Tablets Refused

If you’ve ever stacked a dishwasher, you’ll know the iconic Finish red “powerball” capsule. Reckitt tried to lock down that look with two shape/colour trade mark applications — but Henkel (maker of rival dishwashing products) opposed.

In Henkel AG & Co. KGaA v Reckitt Benckiser Finish B.V. [2025] ATMO 198, the Delegate refused both marks under s 41 of the Trade Marks Act 1995 (Cth).

Reckitt argued its tablet shapes and colours (blue, white and red, with a central “ball”) had become distinctive through use. But Henkel countered that capsule-style tablets are industry standard: divided compartments, bright colours, and glossy “gel” effects all signal product function or quality.

Evidence showed competing brands used similar designs, making these visual features common to the trade.

The Delegate agreed. While Reckitt’s advertising highlighted the “powerball” as a badge of origin, the overall shapes and colour combinations weren’t inherently adapted to distinguish, and the use evidence wasn’t enough to carry the day.

👉 Result: registration refused.

Why it matters

  • Shape and colour marks are tough: Features that are functional or common in an industry rarely meet the distinctiveness threshold.

  • Marketing ≠ distinctiveness: Advertising a red ball as your “thing” doesn’t prove consumers see it as a trade mark, especially if competitors use similar visual cues.

  • Evidence must be targeted: Courts and registries want clear, dated, and widespread evidence showing the public perceives the design as a brand, not just decoration.

For brand owners, the message is clear: don’t rely on shape/colour marks to protect your product design.

Instead, combine registered trade marks, design rights, and trade dress enforcement for a stronger strategy.

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From Torque to Tension: When Distributorship Dreams Unwind

What happens when a long-standing distribution relationship morphs into a promise of “forever” — and then collapses under the weight of commercial reality?

That’s the story in Torc Solutions Pty Ltd v Unex Corporation d/b/a Hytorc [2025] FCA 1124, where the Federal Court had to untangle claims of perpetual agreements, economic duress, misleading conduct, and an alleged “termination strategy”.

The Background

Torc Solutions was the Australasian distributor of torque wrenches and industrial tools sold by US entities Torc LLC and Hytorc.

When Torc LLC shut down globally in 2020, Torc Solutions looked to keep its business alive through a home-branded (“private label”) supply deal with Hytorc.

A teleconference between the parties fuelled Torc’s belief that an ongoing “Hytorc Agreement” had been struck, giving them perpetual supply rights on the same terms as their earlier Distributor Agreement.

Later, a formal Branded Product Distribution Agreement (BPDA) was signed. When that deal fell apart over insurance requirements and Hytorc’s decision that the arrangement was no longer viable, Torc alleged that:

  • a binding agreement already existed from the teleconference,

  • the BPDA was signed under economic duress, and

  • Hytorc had engaged in misleading, deceptive, and unconscionable conduct.

The Court’s Findings

Justice Neskovcin dismissed all claims by Torc, finding:

  • No perpetual contract – Courts rarely find distributorships to be “forever agreements”. The Distributor Agreement ended when Torc LLC closed.

  • No binding teleconference deal – The discussions fell into Masters v Cameron’s third category: “we’ll get something in writing later”. No enforceable contract arose until the BPDA was executed.

  • No duress – Telling a counterparty “sign the agreement or we won’t supply” was not unlawful pressure, but part of hard commercial bargaining.

  • No misleading or unconscionable conduct – The evidence didn’t support that Hytorc had promised supply it never intended to provide.

Bottom line: application dismissed.

Why It Matters

For brand owners and distributors alike, the lessons are sharp:

  • Paper it, or risk it – A teleconference transcript doesn’t replace a signed agreement.

  • “Forever” is a fantasy – Unless clearly expressed, distributorships and licences will be terminable.

  • Economic duress is hard to prove – Commercial pressure, even bluntly applied, rarely crosses the line.

  • Don’t over-rely on private label promises – A failed transition can leave the distributor exposed.

This case is a reminder that distribution and licensing deals live and die by what’s actually written down.

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Deepfakes on Trial: First Civil Penalties Under the Online Safety Act

The Federal Court has handed down its first civil penalty judgment under the Online Safety Act 2021 (Cth), in eSafety Commissioner v Rotondo (No 4) [2025] FCA 1191.

Justice Longbottom ordered Anthony (aka Antonio) Rotondo to pay $343,500 in penalties for posting a series of non-consensual deepfake intimate images of six individuals, and for failing to comply with removal notices and remedial directions issued by the eSafety Commissioner.

Key Points

1. First penalties under the Online Safety Act

This is the first time civil penalties have been imposed under the Act, making it a landmark enforcement case.

The Commissioner sought both declarations and penalties, with the Court emphasising deterrence as its guiding principle.

2. Deepfakes squarely captured

The Court confirmed that non-consensual deepfake intimate images fall within the Act’s prohibition on posting “intimate images” without consent.

Importantly, it rejected Rotondo’s submission that only defamatory or “social media” posts should be captured.

3. Regulatory teeth and enforcement

Rotondo received notices under the Act but responded defiantly (“Get an arrest warrant if you think you are right”) before later being arrested by Queensland Police on related matters.

His lack of remorse and framing of deepfakes as “fun” aggravated the penalty.

4. Platform anonymity

Although the Commissioner did not object, the Court chose to anonymise the name of the website hosting the deepfakes — reflecting a policy judgment not to amplify harmful platforms.

That said, the various newspapers reporting on this story all revealed the website’s address, but noted it has now been taken down.

IP Mojo is choosing not to reveal that website.

5. Civil vs criminal overlap

Alongside the civil penalties, the Court noted criminal charges under Queensland’s Criminal Code.

This illustrates how civil, regulatory and criminal enforcement can run in parallel.

Why It Matters

  • For regulators: This case confirms the Act has teeth. Regulators can secure significant financial penalties even where offenders are self-represented.

  • For platforms: The Court’s approach signals that services hosting deepfakes are firmly in scope, even if located offshore.

  • For the public: The judgment highlights the law’s adaptability to AI-driven harms — and sends a clear deterrence message.

  • For practitioners: Expect more proceedings of this kind, particularly as the prevalence of AI-generated abuse grows.

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Puma v Tiger Woods: The Cat Fight Over a Leaping Logo

When Tiger Woods launched his new Sun Day Red brand with TaylorMade, it came with a sleek “leaping tiger” device mark. Puma — owner of the iconic leaping cat logo used since 1968 — wasn’t impressed.

In Puma SE v Sunday Red LLC [2025] ATMO 197, Puma opposed two applications for Sun Day Red’s logos under s 44 (deceptive similarity) and s 60 (reputation) of the Trade Marks Act 1995 (Cth).

Puma argued that its feline reputation was so strong that Tiger’s tiger would cause confusion. Evidence showed Puma’s long history in sportswear and golf sponsorships, and even social media chatter about the similarity between the marks.

But the Delegate wasn’t convinced. While Puma has huge global clout, the marks weren’t substantially identical, and the context — Tiger Woods’ golf-focused apparel — made confusion unlikely. On s 60, Puma’s reputation was undeniable, but not enough to block Sun Day Red given the clear differences in branding.

👉 Outcome: Sun Day Red’s trade marks proceed to registration.

Why it matters

  • Celebrity branding v legacy sportswear: Fame cuts both ways. Tiger Woods’ global profile helped counter Puma’s reputation argument.

  • Logos need more than a vibe: Even if two marks both feature “leaping animals,” registrability turns on overall impression, not loose thematic overlap.

  • Strategic lesson: Oppositions based on reputation need strong evidence of likely deception or confusion, not just brand prominence.

This is a textbook case of two power brands colliding — and a reminder that in trade mark law, even a Puma can’t always outrun a Tiger.