IPMojo

BOOK AN APPOINTMENT

IP

by

Brand Control: The IP Mojo Series on Trade Marks That Stick (Intro Post)

Launching a brand? Running a business? Advising one? Then you already know the power of a strong name, logo, or tagline. But what makes a brand not just memorable — but legally defensible?

Starting later this week, IP Mojo presents:

🎯 Brand Control: The IP Mojo Guide to Trade Marks That Stick
A 10-part deep dive into how to build, protect, and enforce brands that actually hold up — in the real world and in court.

Over the coming posts, we’ll walk through:

  • How to pick a name that’s not just clever but protectable

  • How to search before you spend

  • What to register (and where)

  • How to keep your rights alive and your competitors at bay

  • What to do when you’re going global, exiting, or facing infringement

Whether you’re:

  • a founder choosing your next brand name,

  • a marketer defending a rebrand,

  • an investor reviewing a startup’s IP stack,

  • or a lawyer tasked with sorting out who owns what…

…this series is for you.

We’ll keep it:

  • Sharp and practical

  • Grounded in real-world examples

  • Unafraid to name names (or court cases)

📌 First post drops soon: “What’s in a Brand? — The DNA of Distinctive Value”

Stick around.

by

ZIP Locked: Zip Co Fights on as Trade Mark Tug-of-War Heads to the High Court

Firstmac’s long-running dispute with Zip Co over the word “ZIP” has taken another sharp turn—this time with Zip Co applying for special leave to appeal to the High Court.

At stake? Whether “honest concurrent use” under s 44(3) of the Trade Marks Act 1995 (Cth)—as invoked via s 122(1)(f) to establish a defence to infringement—is to be assessed through the eyes of the actual user, or must pass muster under an “honest and reasonable person” standard.

In other words: is honesty in the eye of the beholder, or the court?

A Quick Zip Through the Facts

Firstmac, a large non-bank lender, has owned the registered trade mark for “ZIP” in connection with loans since 2004. Zip Co, meanwhile, entered the scene in 2013 with its now-ubiquitous “buy now, pay later” service—branded under names like Zip Pay and Zip Money.

Zip Co’s defence to Firstmac’s infringement claim leaned heavily on “honest concurrent use”—essentially arguing that even if the marks are deceptively similar, the use was honest, longstanding, and concurrent, and would have justified registration in its own right.

At first instance, Justice Markovic bought that argument. But the Full Federal Court didn’t.

The Appeal: A Matter of Perspective

In Firstmac Limited v Zip Co Limited [2025] FCAFC 30, the Full Federal Court (Perram, Katzmann and Bromwich JJ) reversed the primary decision and allowed Firstmac’s appeal. Critically, the Court held that the defences under section 122(1)(f) and (fa) had not been made out.

Why? Because Zip Co could not demonstrate that their use of the ZIP-formative marks (like “ZipMoney”) was honest—particularly after having received adverse examination reports in 2013 that expressly flagged Firstmac’s existing ZIP mark. Despite this, Zip Co forged ahead without legal advice, launching their branded services anyway.

The Full Court accepted that “honest concurrent use” involves a subjective inquiry—but with an objective overlay. As Perram J put it, “[T]he concept of honest use is in terms of a subjective inquiry, [but] this Court has accepted that it has an objective element.” Users must act as an “honest and reasonable person” would in assessing whether they can use a mark. The failure to do so may be fatal to the defence—even if there’s no affirmative finding of dishonesty.

The High Court Question: Honesty, Who Decides?

Zip Co’s special leave application to the High Court squarely challenges the Full Federal Court’s insistence on an objective overlay. They argue that “honest” in “honest concurrent use” should be determined subjectively—based on the user’s actual state of mind at the time of use—not by importing a “reasonable person” test.

To support this, Zip Co draws a comparison with a different high-profile case: the Katy Perry trade mark dispute with Australian fashion designer Katie Taylor. In that case, the issue of honest belief in non-infringement was similarly coloured by the subjective intention of the user—though not necessarily determinative.

Whether the High Court will grant leave and ultimately refine the contours of the “honest concurrent use” defence remains to be seen. But the outcome could reshape the risk calculus for trade mark users who proceed in the shadow of prior marks—particularly in an era of increasing brand overlap and digital ubiquity.

Why It Matters

The appeal goes to the heart of trade mark enforcement in Australia: Should a trader’s actual state of mind be enough to excuse an infringing use — or must they also act with the caution and diligence of a reasonable person?

For now, the “honest concurrent use” defence remains a high bar. But if Zip Co gets its leave — and succeeds — the standard might shift from “reasonable conduct” to “honest intentions.” That would make “honesty” not just a defence, but a question of perspective.

Stay tuned.

by

Energy Drinks, Trade Mark Battles and a Bunch of Bull

If there’s one thing Red Bull hates more than caffeine-free soft drinks, it’s brand drift. And the latest target of its energy-charged enforcement? A would-be beverage mark from China: SeaBull.

In a decision handed down on 5 June 2025, a delegate of the Registrar refused Shandong Fokun Investment Co’s SeaBull trade mark application — finding it deceptively similar to Red Bull’s registered trade marks under s 44 and reg 4.15A of the Trade Marks Act 1995.

The result? SeaBull joins the long list of Red Bull casualties. When it comes to any other “bull” in the beverage ring, Red Bull’s horns are always up.

The trade mark at issue was the simple word mark SeaBull applied for by Shandong Fokun Investment Co., Ltd on 10 November 2022 in class 32 for non-alcoholic drinks including energy drinks.

The applicant claimed “marine extract” inspiration for the name and tried to distance itself from any reference to Red Bull.

Nice try.

Red Bull’s opposition strategy was as charged as their drinks:

  • Reputation: Global market leader, sold in 174 countries, with a dominant presence in Australia since 1999.

  • Evidence: Brand Finance rankings, Aussie revenue and market share stats, and an empire of media assets — from Red Bull Racing to Red Bull Records.

  • Registrations: Relied primarily on IR 1566986 — a stylised BULL mark registered for Class 32 beverages.

The delegate found that, although the competing marks were not substantially identical:

“The suffix ‘Bull’ is identical in substance… aurally, it comprises one of only two syllables… visually, the word ‘Bull’ is emphasised.”

While the addition of the word Sea tried to add a salty twist, it didn’t do enough to dilute the central BULL impression. The delegate found:

  • Consumers are likely to read it as Sea + Bull (not a singular new word).

  • “Bull” remains the essential, memorable element.

  • Conceptually, SeaBull still evokes the idea of a bull — not something distinct enough to overcome the similarities.

The outcome: Real and tangible risk of confusion → Ground under s 44 established.

The applicant didn’t bother to show up to the hearing and didn’t provide evidence of honest concurrent use, prior use, or other extenuating circumstances. That made the path to refusal even smoother.

It’s difficult to win a case when you don’t adduce any evidence and don’t show up – just saying …

Red Bull won the case and, of course, received an order for its costs too.

🧠 IP Mojo Takeaways

  • Adding a prefix won’t save you if the remaining mark is dominant and matches a well-known trade mark.

  • Red Bull’s enforcement strategy isn’t just for copycats — even marginal similarities to the word BULL in Class 32 can trigger a full opposition.

  • For global brands, consistent evidence of market presence, brand diversification, and registered rights are still the gold standard in trade mark opposition proceedings.

In the end, the only thing SeaBull gave Red Bull was another notch on its IP enforcement belt. For smaller beverage players looking to carve out their own brand, the message is clear:

Don’t poke the bull.

by

DMCA Abuse, Deleted Evidence and Damaged Credibility

In C21 Pty Ltd (Trustee) v Hou (No 6) [2025] FedCFamC2G 927, Judge Manousaridis handed down a strongly worded decision marking the latest chapter in a copyright enforcement saga — and it’s not one Mr Hou will be pleased with.

The case delivers a clear warning about the misuse of takedown procedures, destruction of evidence, and strategic dishonesty in IP disputes.

The Story So Far

C21, a real estate agency and video producer, had previously succeeded in proving that Mr Hou had infringed copyright in a range of marketing videos and photographs. The current decision dealt with the consequences: what additional orders should flow from the infringements — and how Mr Hou’s subsequent conduct should influence those outcomes.

DMCA Misuse

One of the key issues was Mr Hou’s deliberate use of DMCA takedown notices to get C21’s legitimately owned videos removed from YouTube. Despite prior court findings that C21 owned the copyright in those materials, Mr Hou sent notices claiming infringement — knowingly and falsely asserting he was the rights holder.

Judge Manousaridis held that these takedown notices were issued:

  • With no lawful basis;

  • In a continuing effort to damage C21’s business;

  • And in knowing contradiction to the findings in earlier proceedings.

Deleted Evidence

Equally concerning was Mr Hou’s deletion of thousands of emails, including emails that may have contained information relevant to the proceedings. The Court accepted that this was done:

  • After the proceedings had commenced;

  • With knowledge of the likely relevance of those materials;

  • And without any acceptable explanation for their destruction.

This led to adverse inferences being drawn about the deleted material.

Additional Damages and Costs

Given the flagrancy of the infringement and the subsequent conduct:

  • The Court awarded additional damages under s 115(4) of the Copyright Act;

  • Compensatory damages were set at $4,200;

  • Additional damages were calculated at $17,000, taking into account Mr Hou’s conduct and the need for deterrence;

  • Full costs were awarded to C21 on a standard basis.

Main Takeaways

The decision is a powerful reminder that:

  • Copyright enforcement tools like DMCA notices must not be weaponised — false claims are not just unethical, they’re legally risky;

  • Deleting relevant evidence mid-litigation can be just as damaging to your case as the infringement itself;

  • Courts take reputational harm and procedural abuse seriously, and will respond with enhanced penalties.

by

Fair Use or Free Ride? The Case for an AI Blanket Licence

What if AI companies had to pay for the content they train on? Welcome to the next frontier in copyright law — where inspiration meets ingestion.

When AI companies train their models — whether for music, image generation, writing or video — they don’t do it in a vacuum. They train on us. Or more precisely: on our songs, our blogs, our art, our tweets, our books, our interviews.

They harvest it at scale, often scraped from the open web, with or without permission — and certainly without compensation.

This has prompted an increasingly vocal question from creators and content owners:

Shouldn’t we get paid when machines learn from our work?

The proposed answer from some corners: a blanket licensing regime.

What’s a Blanket Licence?

Nothing to do with bedding – a blanket licence is a pre-agreed system for legal reuse. It doesn’t ask for permission each time. Instead, it says:

You can use a defined pool of material for a defined purpose — if you pay.

We already see this in:

  • Music royalties (e.g. APRA, ASCAP, BMI)

  • Broadcast and public performance rights

  • Compulsory licensing of cover songs in the US

Could the same apply to AI?

What the Law Says (or Doesn’t)

AI companies argue that training their models on public material is “fair use” (US) or doesn’t involve “substantial reproduction” (Australia), since no exact copy of the work appears in the output.

However, copies are made during scraping, and substantial parts are almost certainly reproduced during the training process or embedded in derivative outputs — either of which could pose problems under both US and Australian copyright law.

But courts are still catching up.

Pending or recent litigation:

  • The New York Times v OpenAI: scraping articles to train GPT

  • Sarah Silverman v Meta: use of copyrighted books

  • Getty Images v Stability AI: image training and watermark copying

None of these cases have yet resolved the underlying issue:

Is training AI on copyrighted works a use that requires permission — or payment?

What a Blanket Licence Would Do

Under a blanket licence system:

  • Training (and copying or development of derivatives for that purpose) would be lawful, as long as the AI provider paid into a fund

  • Creators and rights holders would receive royalty payments, either directly or via a collecting society

  • A legal baseline would be established, reducing lawsuits and uncertainty

This would mirror systems used in broadcasting and streaming, where revenue is pooled and distributed based on usage data.

Challenges Ahead

1. Who Gets Paid?

Not all data is traceable or attributed. Unlike Spotify, which tracks each song streamed, AI models ingest billions of unlabeled tokens.

How do you determine who owns what — and which parts — of material abstracted, fragmented, and stored somewhere in the cloud?

2. How Much?

Rates would need to reflect:

  • The extent of use

  • The importance of the material to the training corpus

  • The impact on the original market for the work

This is tricky when a model is trained once and then used forever.

3. Which Countries?

Copyright laws vary. A licence in Australia might mean nothing in the US.

A global licence would require multilateral cooperation — and likely WIPO involvement.

Legal Precedent: Australia’s Safe Harbour and Statutory Licensing Models

Australia’s own statutory licensing schemes (e.g. educational copying under Part VB of the Copyright Act) show that:

  • Lawmakers can mandate payment for certain uses,

  • Even if individual rights holders never negotiated the terms,

  • Provided it’s reasonable, transparent, and compensatory.

But those systems also brought:

  • Bureaucratic collection processes

  • Contentious allocation models

  • Endless legal wrangling over definitions (What is “reasonable portion”? What qualifies as “educational purpose”?)

Expect the same for AI.

Creators and Innovation: A Balancing Act

For creators:

  • A blanket licence offers recognition and payment

  • It helps avoid the current “scrape now, settle later” model

  • It could fund new creative work rather than hollowing out industries

For innovators:

  • It provides legal certainty

  • Encourages investment in AI tools

  • Reduces the risk of devastating retroactive litigation

But if set up poorly, it could:

  • Be exclusionary (if licensing fees are too high for small players)

  • Be ineffective (if rights aren’t properly enforced or distributed)

  • Or be too slow to match AI’s pace

What’s Next?

Australia’s Copyright Act doesn’t currently recognise training as a specific form of use. But policy reviews are under way in multiple countries, including by:

  • The UK IPO

  • The European Commission

  • The US Copyright Office

  • And here in Australia, the Attorney-General’s Department is conducting consultations through 2024–25 on how copyright law should respond to AI

Creators, platforms, and governments are all watching the courts. But if consensus forms around the need for structured compensation, a statutory blanket licence might just be the solution.

Bottom Line

We’ve built AI on the backs of human creativity. The question isn’t whether to stop AI — it’s how to make it fair.

A blanket licence won’t solve every problem. But it could be the start of a system where creators aren’t left behind — and where AI learns with permission, not just ambition.

by

🟫 Cantarella Bros v Lavazza: The Espresso Shot Heard Around the IP World

There’s a certain irony in watching a decades-long trade mark fight over a word that literally means “gold” end up in ashes.

After a turbulent three-year legal grind, Cantarella Bros v Lavazza has finally run its course — with the Full Federal Court siding squarely with Lavazza and the High Court rejecting Cantarella’s special leave application in June 2025.

At stake? Ownership of the word ORO — Italian for “gold” — as a trade mark for coffee.

🧾 ORO, Take Two: The Sequel to Modena

You might recall Modena, the 2014 High Court showdown where Cantarella successfully defended ORO as being inherently adapted to distinguish Cantarella’s goods from those of others. That win secured their mark’s survival from a descriptiveness challenge under s 41 of the Trade Marks Act 1995.

But Modena never tested ownership. And that’s where things have now unravelled.

Enter Molinari — an Italian roaster whose Caffè Molinari Oro blends were apparently in Australia before Cantarella’s first use. Lavazza, whose own Qualità Oro has long glittered on shelves, used this to challenge Cantarella’s ownership under section 58 of the Act.

⚖️ The Trial Decision (2023): Ownership Is Everything

In October 2023, Justice Yates in the Federal Court found that Molinari used the mark ORO in a trade mark sense in Australia as early as 1995 — a full year before Cantarella. That meant Cantarella wasn’t the first user, and thus not the true owner of the ORO mark.

Even though Molinari hadn’t used it themselves for years, the court found no clear evidence of abandonment.

The result? The ORO registrations were invalidated. No valid mark, no infringement.

🧭 The Appeal (2025): Nice Try, But Still No Gold

Cantarella ran multiple grounds on appeal. They challenged the trial judge’s acceptance of evidence, the interpretation of what constituted trade mark use, and even suggested they had become an “honest concurrent user” (which might have had flow-on effects allowing them to keep it registered).

But the Full Federal Court wasn’t buying it. It affirmed the trial findings — particularly that:

  • Molinari’s use of ORO was use as a trade mark,

  • Molinari’s rights had not been abandoned,

  • and Cantarella’s own arguments about honest concurrent use were too little, too late (that did not raise that argument at trial so could not raise it as a new ground on appeal … the result in that regard might have been different if they had raised it at trial).

They also dismissed Lavazza’s own cross-appeal on costs and distinctiveness. No party walked away with an espresso shot of victory on that front.

🏛️ High Court: Application Denied

On 12 June 2025, the High Court rejected Cantarella’s special leave bid — making the Full Court’s decision final.

It’s the second time Cantarella’s ORO mark has come before the High Court. But this time, the door was firmly closed.

🥊 Why It Matters

This is the latest in a string of cases reminding IP owners that first use means first rights — even if you think you’ve been using a mark for decades.

Some takeaways:

  • Section 58 (ownership) is a potent weapon in cancellation proceedings.

  • Evidence of early use — even murky invoices and decades-old packaging — can carry surprising weight.

  • A prior foreign user who supplied products into Australia through distributors can claim ownership if the mark was used as a badge of origin here.

  • The High Court’s Modena decision still stands, but it doesn’t immunise a mark from being struck out on ownership grounds.

☕ Final Sip

Cantarella’s gold-standard run with ORO has come to an end. With the marks cancelled and infringement claims torpedoed, it’s back to the blend board.

Meanwhile, Lavazza walks away vindicated — perhaps with a slightly smug crema.