IPMojo

BOOK AN APPOINTMENT

IP

by

Series Killers: When IP Australia Oversteps the (Descriptive) Mark

So you’ve filed a series trade mark in Australia. The marks are visually identical except for a single word that tweaks the service type — say, “BURST PLUMBING”, “BURST CLEANING”, “BURST GARDENING”.

All good, right?

Not if you ask IP Australia. According to the Office Manual, if your differentiating word describes only some of the services listed — even if it’s a totally non-distinctive, snore-worthy adjective — your series could be headed for rejection.

The rationale? That descriptive differences must apply to all of the goods/services claimed. Not some. Not most. All.

But is that legally correct?

Let’s unpack this.

The Law (Actually – and Not the Manual)

Section 51(1) of the Trade Marks Act 1995 (Cth) says you can register a series if:

“…the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services  in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places; or
(c) the colour of any part of the trade mark.”

So there is a legal restriction — but it’s not about whether the descriptive term applies to all of the goods or services. It’s about whether the difference falls into one of the above three categories.

If your only point of difference is a generic descriptor like “PLUMBING” or “CLEANING” — that’s likely a “statement as to the services” under paragraph (a). ✅ Tick.

Whether that statement applies to all of the services? That’s not part of the statutory text. That’s IP Australia adding friction by policy — not by law.

The Practice (Not the Law)

IP Australia’s position is that if “CLEANING” only refers to a handful of the listed services — say, home cleaning and commercial premises — while your broader list also covers plumbing, garden maintenance, and pest control, then the marks in the series are no longer sufficiently aligned for a single registration.

Their concern: you’re using the series construct as a backdoor to bulk file a grab bag of marks that lack genuine commonality.

But here’s the catch: section 51(1) does not impose a requirement that the differing matter — like “CLEANING” — must describe all of the goods or services. The section simply requires that:

  1. The marks resemble each other in material particulars, and

  2. The differences fall only within one or more of the categories listed:

    • statements about the goods/services,

    • statements about number, price, quality or place, or

    • colour of part of the mark.

So, if “CLEANING” is a statement about services (and it is), and the marks still resemble each other in their key features (say, the word “BURST” in a bold red typeface with a splash logo), then the Act is satisfied.

The idea that every descriptive word must apply to all services is IP Australia policy, not law. It’s not in the Act. It’s not in the Explanatory Memorandum. It’s simply a convenient threshold applied to keep the register tidy — which may be operationally defensible, but not legally required.

What’s a Brand Owner To Do?

If you’re filing a series mark where the only difference is a descriptive word that applies to some — but not all — of the listed services, you’ve got two choices:

  1. Play nice: Redraft your specification to group services so that each descriptor applies across the board. That means breaking up the series and filing multiple applications.

  2. Push back: If the examiner raises an objection, go back to the legislation. Section 51(1) only requires that:

    • The marks resemble each other in material particulars, and

    • The differences fall only within the three specified categories.

You may not win every time, but you’ll be on solid legal ground — and might just push the boundaries of a policy that’s grown a little too rigid for its boots.

There’s no additional legal requirement that the differing statement about services must relate to all of them. That’s a policy position, not a statutory one.

So if “BURST PLUMBING” and “BURST CLEANING” share all core branding elements and differ only by a word that is a statement about services — you’ve met the test under the Act.

Bottom Line

IP Australia’s insistence on descriptive uniformity across the entire class spec is not supported by s 51(1) of the Act. The only legal requirement is that the marks:

  • Resemble each other in material particulars, and

  • Differ only in respect of statements as to goods/services, price, quality, place, or colour.

Everything else? That’s Office convenience, not legislative command.

So don’t be afraid to push back.

And if that fails… well, split the applications, swallow the extra fee, and tell your accountant it was a “protest expense” … the cost of resisting bureaucratic overreach.

by

Paul Bender’s music has been sampled by Beyoncé and Kendrick. His band, Hiatus Kaiyote, has three Grammy nominations. His side project, The Sweet Enoughs, racks up millions of streams. So it came as a shock when fans started hearing tracks on his Spotify profile that he didn’t recognise — or approve.

Tracks that sounded like they’d been composed by an AI trapped in an elevator.

“It was probably the worst attempt at music I’ve ever heard,” Bender told Brisbane Times. “Just absolutely cooked.” His reaction soon gave way to a grim realisation: someone was uploading fake music — apparently AI-generated — directly to his artist profile. And it wasn’t just Spotify. Apple Music, Tidal, YouTube Music and Deezer all carried the same fakes.

No passwords were stolen. No logins compromised. Just a ticking time bomb in the music distribution supply chain.

The Loophole That Became a Business Model

The scam works like this: a grifter uploads garbage tracks via a digital music distributor, assigns them to a known artist name, and — voila — the platform “maps” it to the artist’s official profile. Instant legitimacy, with algorithmic discovery to match.

No ID check. No consent. No authentication.

This isn’t just a quirk of one platform’s back end. It’s systemic. And it’s being exploited on an industrial scale. One vlogger, TankTheTech, showed how anyone can assign AI music to an artist profile in under ten minutes.

And the numbers are staggering:

  • Deezer reports that 18% of its daily uploads in 2025 are AI-generated.

  • Mubert, an AI music tool, claims over 100 million tracks were made on its platform in just the first half of 2023.

  • The Music Fights Fraud Alliance estimates 10% of all global music streams are fraudulent, with some distributors seeing fraud rates as high as 50%.

That’s not fringe — it’s a revenue model. And it’s bleeding real artists.

Legal Implications: Between Passing Off and Platform Apathy

Let’s be clear: uploading fake music under someone else’s name looks a lot like impersonation, if not passing off, especially where artist reputation and income are at stake. There may also be:

  • Copyright infringement if elements of an artist’s work were used in training or replication.

  • Moral rights violations under the Copyright Act 1968 (Cth), especially the right of integrity where a fake work is falsely attributed.

  • Misleading or deceptive conduct under section 18 of the Australian Consumer Law.

Yet despite the legal exposure, platforms and distributors are playing hot potato with responsibility. Spotify calls it a “mapping issue.” Artists call it what it is: a scam that platforms are structurally enabling.

Why This Matters — Beyond Music

This isn’t just a niche concern for indie musicians. It’s a case study in what happens when:

  • AI-generated content floods creative ecosystems,

  • platforms prioritise volume over verification,

  • and IP rights become an afterthought to scale.

In short, it’s the algorithm’s world — and creatives are just living in it.

But not quietly. Artists like Bender and Michael League (of Snarky Puppy) are now speaking out and pushing for industry action. With growing numbers of testimonials and escalating complaints, the music world may be the canary in the coal mine for a broader wave of AI impersonation and platform indifference.

Until then, don’t be surprised if the next time you hit play on a favourite artist’s profile… what comes out is 100% algorithm, 0% soul.

Here’s a thought: 2FA authentication before allowing uploads? Verify before you amplify!

by

Crunch Time for CRUNCHIEZ: Cadbury Blocks Rival Chocolate Mark

In a sweet victory for brand owners, Cadbury UK Limited has successfully opposed the registration of the trade mark CRUNCHIEZ SURPRIZE in Australia, convincing the Trade Marks Office that the name was too close for comfort to its iconic CRUNCHIE mark.

Greek confectionery importer Relkon Hellas applied to extend international protection for its mark CRUNCHIEZ SURPRIZE (featuring stylised graphics) for use in relation to chocolate and confectionery in Class 30. Cadbury, relying on decades of use of the CRUNCHIE mark in Australia, opposed the application on several grounds — but ultimately succeeded on one: section 60 of the Trade Marks Act 1995 (Cth).

Under s 60, a trade mark may be refused if another mark had acquired a reputation in Australia before the relevant date, and the use of the new mark would be likely to deceive or cause confusion.

Here’s how the Delegate broke it down:

Reputation:
Cadbury’s CRUNCHIE has been sold in Australia since the 1950s and enjoys widespread recognition. Sales figures, advertising spend, historical ads, and retail presence all pointed to a strong reputation in Australia, particularly for chocolate and confectionery.

Similarity of Marks:
While not identical, CRUNCHIE and CRUNCHIEZ SURPRIZE share key elements:

  • The word CRUNCHIEZ was viewed as a near-plural of CRUNCHIE, differing by just one letter.

  • The additional term SURPRIZE was considered descriptive and did little to distinguish the overall impression.

  • Stylisation differences weren’t enough to avoid confusion.

Likely Confusion:
The Delegate found that ordinary consumers could reasonably wonder whether CRUNCHIEZ SURPRIZE products were from the same source as Cadbury’s CRUNCHIE line — especially when both appeared in close proximity in stores like Kmart and The Reject Shop.

Interesting side note – the evidence of where the competing brands sat in places like K-mart and The Reject Shop was adduced not by Cadbury, but by Relkon Hallas, whose lawyers used that evidence to submit that because the brands were not literally side-by-side, this supported a conclusion that there would be no confusion.

That turned out to be a bit of a strategic fail as the Delegate thought this evidence supported a finding of confusion because it was clear evidence that the relatively new CRUNCHIEZ SURPRIZE mark was being advertised in close proximity to the long-standing and very famous CRUNCHIE mark.

Oops.

The Outcome
Protection for CRUNCHIEZ SURPRIZE was refused in full. Cadbury was awarded costs, and Relkon Hellas left with a lesson in brand proximity.

Key Takeaways for IP Owners

  • Reputation is a powerful shield. Long-standing brand presence, even on basic goods like chocolate bars, can stop later marks in their tracks.

  • Adding a “z” won’t save you. Minor spelling tweaks and descriptive add-ons (like “Surprize”) rarely neutralise the risk of confusion.

  • Stylisation matters — but not enough. Graphic flourishes won’t rescue a mark if the words dominate and invite association with a famous brand.

  • Proximate promotions can pummel you. If your goods end up shelved near a well-known competitor, that visual proximity will weigh heavily in the analysis.

IP Mojo Takeaway:
If you’re naming a new chocolate product and your trade mark sounds like a Cadbury classic… you’re probably skating on thin nougat.

by

Whose Work Is It Anyway? The Remix War, AI, Coffee Plungers and Swimsuits

From Elton John to anonymous meme-makers, a battle is raging over what it means to be “creative” — and whether it starts with permission.

Two stories made waves in copyright circles last week:

  • In the UK, Sir Elton John, Sir Paul McCartney and other musical heavyweights called for stronger rules to stop AI from “scraping” their songs without a licence.

  • In India, news agency ANI drew criticism for aggressively issuing YouTube copyright claims — even for sub-10 second clips — triggering takedown threats against creators.

At first glance, these might seem worlds apart. But they highlight the same question:

At what point does using someone else’s work become exploitation, not inspiration?

And who decides?

Creators vs Reusers: Two Sides of the Copyright Culture Clash

On one side: Creators — musicians, writers, filmmakers, photographers — frustrated by tech platforms and algorithms ingesting their work without permission. Whether it’s AI training data or news footage embedded in political commentary, their message is the same:
“You’re building on our backs. Pay up.”

On the other side: Remixers, meme-makers, educators, and critics argue that strict copyright regimes chill creativity. “How can we critique culture,” they ask, “if we’re not allowed to reference it?”

This isn’t new — hip hop, collage art, satire, and even pop music are full of samples and nods. But AI has industrialised the scale of reuse. It doesn’t borrow one beat or a single shot. It eats the entire catalogue — then spits out something “new.”

So what counts as originality anymore?

Australian Lens: Seafolly, Bodum, and the Meaning of “Original”

Seafolly v Madden [2012] FCA 1346

In this high-profile swimwear spat, designer Leah Madden accused Seafolly of copying her designs. She posted comparison images on social media implying that Seafolly had engaged in plagiarism. Seafolly sued for misleading and deceptive conduct under ss 52 and 53 of the Trade Practices Act 1974 (predecessors to s18 of the Australian Consumer Law – which had by then commenced but the relevant conduct being sued for took place before it had commenced).

The Federal Court found that Madden’s claims were not only misleading but also unsubstantiated, because the design similarities were not the result of actual copying. The case reinforced that:

  • Independent creation is a valid defence, even if the resulting works are similar

  • Superficial resemblance isn’t enough — there must be a causal connection

It’s a reminder that derivation must be substantial and material, not speculative or assumed.

Bodum v DKSH [2011] FCAFC 98

This case involved Bodum’s iconic French press coffee plunger — the Chambord — and whether a rival product sold by DKSH under the “Euroline” brand misled consumers or passed off Bodum’s get-up as its own.

Bodum alleged misleading or deceptive conduct and passing off, based not on name or logo, but on the visual appearance of the product: a clear glass beaker, metal band, and distinctive handles, which had come to be strongly associated with Bodum.

At trial, the Federal Court rejected Bodum’s claims. But on appeal, the Full Federal Court reversed that decision, holding that:

  • Bodum had a substantial reputation in the get-up alone;

  • The Euroline plunger was highly similar in appearance; and

  • DKSH’s failure to adequately differentiate its product through branding or design gave rise to a misleading impression.

Both passing off and misleading/deceptive conduct (also under the old s52) were found. The Court emphasised that reputation in shape and design can be enough — and differentiation must be meaningful, not tokenistic.

The AI Angle: Who Trains Whom?

AI tools like ChatGPT, Midjourney, and Suno don’t just copy works. They learn patterns from thousands of inputs. But in doing so, they arguably absorb creative expression — chord progressions, phrasing, brushstroke styles — and then make new outputs in that same vein.

AI developers claim this is fair use or transformative. Artists argue it’s a form of invisible appropriation — no different from copying and tweaking a painting, but with zero attribution or compensation.

It’s the Seafolly and Bodum problem, scaled up: if AI’s “original” work was trained on 10,000 human ones, is it really original? Or just a remix with plausible deniability?

The Bottom Line

Copyright law is meant to balance:

  • Encouraging creativity

  • Rewarding labour

  • Allowing critique and cultural dialogue

But that balance is breaking under the weight of machine learning models and automated copyright bots. As Seafolly and Bodum show, the law still values intention, process, and context — not just resemblance.

Yet in a world of remix and AI, intention is opaque, and process is synthetic.

So where do we draw the line?

by

IP Australia Knocks Canva to the Canvas

How many patents could a patent combatant patent if a patent combatant could patent patents?  It turns out possibly none, if they’re IT-based patents …

It’s not often that a legal decision about slide deck formatting gets a 230-page appendix and a judicial tone verging on exasperation. But that’s exactly what happened in April when IP Australia handed down the Delegate’s ruling on two Canva patent applications. And for tech lawyers, it’s a masterclass in where the edges of software patentability still lie in Australia.

What Canva Sought to Patent

Canva — Australia’s SaaS design darling — had sought patent protection for two computer-implemented inventions. One described how to take content from a document and reflow it into a deck format automatically. The other focused on the math behind mapping design “fills” into limited layout “frames.”

The applications were meticulous. Detailed. Full of flowcharts, hierarchy data, bounding boxes, fills, and pagination logic. They read like a design engineer’s epic poem – a love letter to structured templates.

But in the eyes of IP Australia, they weren’t inventions. Not in the legal sense, anyway.

The Legal Lesson: “Manner of Manufacture” Still Matters

Australia’s test for whether a computer-implemented invention is patentable remains the “manner of manufacture” test — essentially asking whether the claimed invention involves more than just abstract ideas, business rules, or well-known computer functions.

And here, the Delegate of the Commissioner of Patents said: nope.

Despite Canva’s argument that their invention transformed how users generate designs and templates, IP Australia saw it differently: the claims described a process for applying “rules” to content in order to lay it out aesthetically — something a human designer could do, and something that didn’t, in substance, solve a technical problem or enhance the functioning of a computer. It was more scheme than science.

More Than Just a Canva Problem

Why should the rest of us care?

Because this is yet another signal — after decisions like Research Affiliates and Rokt — that Australia continues to draw a relatively narrow line on software patents. If you’re advising a client on patent strategy in the digital design, AI, or UX tooling space, the key takeaway is this: just because something’s hard to code doesn’t mean it’s patentable.

The software has to do more than automate — it must yield a technical effect or improvement that isn’t just the automation itself.

So, What’s Next?

For Canva, it’s back to the drawing board — or perhaps, back to their formidable brand and copyright moat. And they still have six months to reframe the claims in a way that may survive scrutiny.

For the rest of us, it’s another sharp reminder that patenting in the tech sector remains as much an art as a science. Don’t just ask “Is it clever?” Ask, “Is it a manner of manufacture?”

Because in Australian patent law, not all clicks are created equal.

by

Bed Bath ‘N’ Table Not Throwing In the Towel

What happens when your new brand smells a little too much like the towels next door?

If you’re Global Retail Brands Australia (GRBA) — the team behind House and its spinoff House Bed & Bath — you might find yourself embroiled in a multi-front legal fight with long-standing soft homewares heavyweight Bed Bath ‘N’ Table (BBNT). And if you’re BBNT, you might soon be on your way to the High Court of Australia to argue that while a trade mark might not be confusing, a brand strategy can still mislead.

GRBA, long known for “hard homewares” like kitchenware, took a foray into “soft homewares” by launching a new store format under the brand House Bed & Bath. The problem? BBNT had been using Bed Bath ‘N’ Table for over four decades and held multiple trade mark registrations.

BBNT sued under both the Trade Marks Act 1995 and the Australian Consumer Law (ACL), alleging trade mark infringement and misleading and deceptive conduct. While the primary judge in the Federal Court agreed GRBA’s branding was misleading under the ACL (and upheld passing off), they did not find trade mark infringement. The marks weren’t deceptively similar, said the Court — but the Court found  GRBA’s conduct was misleading/deceptive and also constituted passing off.

GRBA appealed, and in a twist befitting a soap opera about linen stores (Doylies of Our Lives? Folded and the Beautiful?), they won. The Full Federal Court overturned the misleading conduct and passing off findings — not because BBNT didn’t have a reputation, but because that reputation didn’t extend far enough to make “Bed & Bath” independently distinctive. The court also pointed to widespread descriptive use of “bed” and “bath” by other retailers and found that GRBA’s actions, while perhaps careless or even opportunistic, didn’t cross the legal line into deception.

BBNT sought special leave to appeal to the High Court. And now the top court in the land will get to decide how much weight to give to brand reputation, wilful blindness, and near-miss branding in Australia’s consumer protection and passing off law.

For trade mark lawyers and marketing advisors, this case is shaping up to be the test of the limits of brand mimicry in retail. Can a well-established business with a household brand name claim monopoly over combinations of common words like “bed” and “bath”? And what level of consumer confusion — or intent to confuse — is enough?

The main takeaways seem to be:

  • Trade mark law and consumer law don’t always walk in lockstep. You can lose one claim and win the other, based on different thresholds and factual assumptions.

  • “Wilful blindness” is not enough by itself. The Federal Court was clear that being strategic (or even a bit cheeky) isn’t the same as being legally deceptive — though the High Court may weigh in differently.

  • Descriptive branding is always a high-risk game. If your mark relies on common category words (like “bed” and “bath”), even 40 years of use might not give you exclusive rights.

  • Appealing to the High Court is rare and consequential. This will be a must-watch for IP lawyers — and one that could reshape how consumer law operates alongside trade mark protection.

Stay tuned for when the High Court beds down the final answer. For now, the towels are fluffed, the pillows are puffed, and the soft homewares sector is on notice.

For the Hitchhiker’s Guide fans, hey, who knows, maybe the HC will make their decision next year on Towel Day?