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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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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.

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The Art of Disclaimers: Jacksons v Jackson’s Art Supplies (No 2)

When two businesses with nearly identical names lock horns, things usually come down to trade marks, passing off, and reputation.  But in Jacksons Drawing Supplies Pty Ltd v Jackson’s Art Supplies Ltd (No 2) [2025] FCA 1127, the real fight was over disclaimers, pop-ups, sticky banners, and user attention spans.

Yes, really. Welcome to the future of injunctive relief.

The Backdrop: Two Jacksons, One Internet

  • Jacksons Drawing Supplies (JDS) is the long-standing Australian art supply brand.

  • Jackson’s Art Supplies (JAS) is a UK giant with a strong online presence.

When JAS launched its Australia-specific subdomain (jacksonsart.com/en-au), it didn’t just sell paints and brushes — it displayed Australian flags, quoted in AUD, listed an Adelaide warehouse, and even had an Aussie phone number. To many customers, it looked like the local Jacksons.

The Court (in an earlier decision) held that this conduct contravened s 18 and s 29 of the ACL and amounted to passing off.

Round Two: The Relief Hearing

The question was: what form should the non-pecuniary relief take?

JDS wanted a sticky header disclaimer on every page (always visible). JAS wanted a one-off pop-up disclaimer (dismiss it once and never see it again).

The Federal Court, armed with expert evidence on digital attention, split the difference.

Attention Science Hits the Federal Court

This case is remarkable for its reliance on attention science experts:

  • Michael Simonetti (website developer & SEO expert)
    Warned about “banner blindness”: users ignore sticky headers and disclaimers that look like ads.

  • Dr Karen Nelson-Field (global expert on omnichannel attention science)
    Explained that pop-ups trigger active attention because they interrupt the browsing experience. Sticky headers, by contrast, fade into the background.

  • Professor Mingming Cheng (digital marketing & SEO)
    Highlighted that hyperlinking to JDS’s site could affect search engine algorithms and reinforce associations between the two brands.

The Court accepted that no disclaimer format guarantees it will be read, but opted for the solution most likely to cut through.

The Court’s Orders

Justice Jackson ordered that JAS can’t operate its Australia-specific site (or any site with Australian characteristics) unless it shows a disclaimer:

“Please note: this website is not affiliated with the Australian company Jacksons Drawing Supplies Pty Ltd or its website jacksons.com.au.”

The disclaimer must:

  • Pop up every time a user starts a new browser session, blocking the site until acknowledged.

  • Also appear at the bottom of each page (non-sticky, same size as body text).

  • Be clear, prominent, and legible.

  • Not include any hyperlink to JDS’s site (too much risk of SEO crossover and confusion).

No requirement for phone sales, social media, or ads — because the misrepresentation arose via the website itself.

No Sticky Business

JDS’s sticky header idea was rejected as:

  • Too intrusive, especially on mobile devices.

  • Likely to be ignored due to banner blindness.

  • Damaging to user experience with little benefit.

Pop-ups, despite being annoying, were judged the least-worst option.

Costs: Calderbank Offers Bite Back

The Court also tackled costs.

  • JDS was successful overall, but lost against the third and fourth respondents.

  • JAS had made Calderbank offers (including restricting sales into JDS’s “core markets” and paying a small sum).

  • The Court held JDS was not unreasonable to reject them — the offers didn’t resolve the cross-claim, lacked mutuality, and wouldn’t necessarily prevent consumer confusion.

The result?

  • JDS gets costs against the first and second respondents (with a 15% discount).

  • The third and fourth respondents get indemnity costs from a certain date.

Why This Case Matters

This decision is a practical playbook for how courts may deal with online misrepresentation and passing off in 2025 and beyond:

  1. Disclaimers must do more than exist — they must grab attention. Passive banners won’t cut it.

  2. User experience is relevant — remedies must be proportionate and fair, not ruin the site.

  3. Hyperlinks aren’t a free fix — they can create new risks of association in both consumers’ minds and search engine algorithms.

  4. Attention science is evidence — expert testimony on human behaviour online now shapes equitable relief.

  5. Calderbank strategy remains vital — but offers must be clear, mutual, and genuinely address the issues at stake.

Takeaways for Brand Owners

  • Global websites need local strategy. If you’re running an AU subdomain, check your disclaimers and branding.

  • Disclaimers aren’t window dressing. Courts will look at how they’re delivered, not just what they say.

  • Attention matters. Evidence from digital marketing and psychology can sway the outcome.

  • Settlement strategy is as important as trial strategy. Get your Calderbank offers right.

Bottom line: The Federal Court has signalled that in the age of pop-ups, banner blindness, and Google algorithms, effective remedies must be technologically and behaviourally savvy. For IP lawyers and brand managers, Jacksons v Jackson’s is a reminder that protecting reputation online requires more than just words — it requires understanding how consumers really pay attention.

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Whose Footage Is It Anyway? Game Meats v Farm Transparency Heads for the High Court

When animal rights collide with copyright law, sparks fly — and sometimes, whole new branches of doctrine get tested.

That’s exactly what’s happening in The Game Meats Company of Australia Pty Ltd v Farm Transparency International Ltd, a dispute that has already produced one significant Federal Court decision, a reversal on appeal, and now an application for special leave to the High Court.

Let’s unpack how a covert camera operation at a Victorian abattoir has turned into one of the most intriguing copyright–equity battles in years.

The Backstory: Covert Cameras at Eurobin

Game Meats Company (GMC) operates a halal abattoir in Eurobin, Victoria. Early in 2024, members of Farm Transparency International (FTI), an animal advocacy organisation, repeatedly trespassed onto the site. They crawled under fences at night, installed hidden cameras, and over several months captured more than 100 hours of footage of the abattoir floor.

From that material, FTI produced a 14-minute video highlighting what it claimed were instances of animal cruelty. The video was sent to government regulators, passed to Channel Seven (which reported but did not broadcast the footage), and later published by FTI online alongside a media release.

GMC responded immediately with proceedings in the Federal Court.

Round One: Damages but No Injunction

At trial, Justice Snaden held that FTI had committed trespass and was liable for damages — awarding GMC $30,000 in general damages and $100,000 in exemplary damages.

However, the judge refused GMC’s bid for a permanent injunction to restrain publication, and also rejected the argument that copyright in the footage should be held on constructive trust for GMC.

Why? The Court accepted that damages could compensate GMC for its losses, and held that the extraordinary remedy of imposing a trust over copyright was not justified. FTI remained the legal owner of the copyright — even though it was created through trespass.

Round Two: The Full Federal Court Steps In

GMC appealed, and in August 2025 the Full Federal Court (Burley, Jackman and Horan JJ) reversed key parts of the primary decision.

The Court:

  • Declared a constructive trust: copyright in the footage was to be held on trust for GMC.

  • Ordered assignment: FTI had to execute a written assignment of copyright, with the Registrar empowered to do so if FTI refused.

  • Granted a permanent injunction: restraining FTI from publishing the material, other than to regulators.

  • Ordered deletion: FTI was required to permanently delete its copies of the footage and swear affidavits confirming destruction.

In doing so, the Full Court leaned heavily on dicta from ABC v Lenah Game Meats (2001) 208 CLR 199, where the High Court floated — but did not apply — the idea that copyright created through unlawful conduct might be held on constructive trust.

Two decades later, that possibility became a reality.

The Key Legal Issue: Equity Meets Copyright

At the heart of this case is whether copyright — a statutory right conferred automatically on the maker of a film — can be stripped away by equity when the film was created through trespass or other unlawful means.

  • Statutory law: Under the Copyright Act 1968 (Cth), FTI owned copyright in the footage the moment the cameras recorded it.

  • Equity: The Full Court held it was “inequitable and against good conscience” for FTI to assert ownership against GMC, given the trespass. Equity could therefore declare FTI a constructive trustee and compel assignment.

It’s a bold move. Courts have long imposed constructive trusts over physical property obtained unconscionably. Applying the same logic to intangible IP rights is legally elegant — and potentially disruptive.

What’s at Stake in the High Court?

FTI has now applied for special leave to appeal to the High Court. No hearing date is set yet, but the case is primed for the nation’s top court.

The issues are weighty:

  • Limits of equity: Can equity truly override the statutory scheme of copyright ownership?

  • Freedom of communication: Does restraining publication of the footage unduly burden the implied freedom of political communication, given FTI’s advocacy role?

  • Activism vs. property rights: Should activists lose IP rights in their material because of unlawful methods, or does that chill legitimate public interest advocacy?

Why It Matters

For copyright lawyers, this case is a doctrinal turning point. For animal rights advocates and agribusiness, it’s a test of how far covert activism can go before the law snaps back.

If the Full Court’s reasoning stands, companies may be able to use IP and equity as powerful tools against activists: not only recovering damages for trespass, but also stripping activists of copyright and controlling the very footage they created.

If the High Court takes a different path, we may instead see limits on equity’s reach, preserving copyright ownership even where the work was created unlawfully — with important implications for journalism, whistleblowing, and advocacy.

IP Mojo Takeaway

This case is far more than a goat-abattoir dispute. It’s about whether copyright is truly absolute, or whether conscience can trump statute. With special leave now sought, the High Court will soon have the chance to answer.

Watch this space — the ghost of Lenah Game Meats is back in Canberra.

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Watson Webb v Comino: When Valves Burst Into a Multi-IP Flood

If you thought plumbing valves were boring, think again.

The Federal Court’s recent decision in Watson Webb Pty Ltd v Comino [2025] FCA 871 is a sprawling reminder that IP disputes can leak into every corner of the law — from designs and copyright to confidence, consumer law and patents.

The Case in a Nutshell

At the heart of the fight was who really owned the rights to a series of valve designs — All Valve Industries (AVI) and its Italian partner Cimberio, or Mr Comino and his company Strongcast. What started as a commercial relationship around importing and distributing valves became a flood of litigation once design drawings, product launches and patent filings entered the picture.

Designs: Entitlement, Validity and Infringement

  • Entitlement: The Court found that Cimberio was at least a co-designer of the registered designs. Mr Comino couldn’t claim sole credit.

  • Validity: The designs were new and distinctive enough over prior art.

  • Infringement: AVI’s products weren’t substantially similar, so no design infringement was made out.

  • Unjustified threats: A strongly worded solicitor’s letter wasn’t enough to count as a threat.

Copyright: Drawings Matter

The critical twist: design registration was based on drawings created by Cimberio. Using them without permission crossed into copyright infringement.

The Court found:

  • Cimberio’s copyright subsisted in the drawings.

  • Comino and Strongcast copied and authorised copying when they used those drawings to file design applications.

  • Cimberio is entitled to an account of profits plus additional damages.

Breach of Confidence and Constructive Trust

The same drawings carried obligations of confidence. Comino’s disclosure and use of them breached that duty.

The Court imposed a constructive trust — transferring Comino’s interest in the registered designs to Cimberio.

That’s a dramatic remedy, showing courts will reorder ownership when confidential information is misused.

Consumer Law: Silence Speaks

By not telling AVI and Cimberio that the drawings were being used to file design rights, Comino engaged in misleading conduct under s 18 ACL.

Silence can mislead — especially in a close commercial relationship.

Patents: Invalid and Ineffective

Strongcast also relied on an innovation patent for a pipe bracket.

The Court held claims 1–4 invalid for lack of clarity, support, sufficiency and novelty.

Even if valid, no infringement was established.

Why It Matters

This case is a reminder that:

  • Design entitlement must be nailed down early — who really created the design?

  • Copyright overlaps with designs are still powerful, especially when drawings are copied into applications.

  • Constructive trusts are on the table where confidential information is misused.

  • Consumer law can bite in IP disputes in many and varied ways — misleading silence can be enough.

  • Innovation patents (now extinct) often struggled on validity grounds.

What looks like a simple plumbing part turned into a judgment that touches almost every corner of IP law.

For brand owners, designers and manufacturers, the message is clear: guard your drawings, document your entitlement, and don’t assume silence will save you.