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Damages or Profits? The Federal Court Forces Patentees to Choose

How long can a successful patentee delay the choice between damages and an account of profits?

In VMS v SARB (No 13) [2025] FCA 1078, Justice Burley confronted that very question — and ordered the patentee to make its election within 21 days.

The dispute

  • Vehicle Monitoring Systems (VMS) had succeeded on parts of its patent infringement case against SARB and the City of Melbourne.

  • The trial judge retired; the case was remitted for pecuniary relief.

  • VMS wanted to delay electing between damages and profits until after more evidence was in.

The ruling

  • Justice Burley held that while patentees should make an “informed choice”, that doesn’t mean indefinite delay.

  • Guided by Island Records v Tring and Australian cases (LED Builders, Australian Mud Company), the Court balanced:

    • Patentee rights: not forced to gamble in the dark.

    • Court efficiency: s 37M Federal Court Act requires just, quick, inexpensive resolution.

  • Result: VMS ordered to elect within 21 days.

Why it matters

  • For patentees: Don’t expect to hold off forever — the Court wants efficiency.

  • For infringers: Push for early election to limit procedural drag.

  • For practitioners: Timing of election is now firmly part of litigation strategy, not just an end-of-trial formality.

Takeaway

This case sharpens the line between informed choice and delay tactics.

The Court’s message is clear: patentees must choose their remedy earlier than many may have hoped.

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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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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.