Shanahan’s Australian Law of Trade Marks and Passing Off Shanahan’s has recently been revised and updated by leading experts in the area of trade marks and passing off, authors Professor Mark Davison from Monash University and Victorian barrister, Ian Horak. To date, 14 chapters have been updated with the remaining 8 chapters expected to be online by the end of March 2016. The much anticipated drop-out book will follow and is expected to be available in September 2016.
The following is a sample of the chapters updated:
The chapter on Ownership demonstrates how the issue of first use may also be complicated by on-line use of a trade mark on an overseas website that nevertheless has some connection with Australian consumers. For example, sales to Australian consumers via such a website may constitute use of that trade mark in Australia and, it would seem, may therefore constitute first use in Australia of that trade mark for ownership purposes.
The author refers to the case of Mastronardi Produce Ltd v Registrar of Trade Marks  FCA 1021 in the chapter Signs that are Registrable. Here the critical issue for the Federal Court was whether Zima was a trade mark for the applicant’s brand of a variety of tomato or whether, according to its ordinary signification in Australia, Zima was the name of a variety of tomato with registration being permitted on the basis that the evidence demonstrated the former proposition rather than the latter.
In the chapter Grounds for Rejecting an Application, a skilful, covert or allusive reference to goods will not deprive the trade mark of inherent adaptability to distinguish. The key issue is the ordinary signification of the words (or signs) according to the case of Cantarella Bros Ltd v Modena Trading Pty Ltd  HCA 48.
In the chapter Concurrent User, the fact that another person may be a concurrent user does not alter the fact that the first user is the owner. The author notes that there does not appear to be a discretion to permit registration on that basis in the face of that claim to ownership and refers to Tosca TravelGoods (Aust) Pty Ltd v Samsonite IP Holdings Sarl  ATMO 39 where honest concurrent use was established but registration denied on the basis of the opponent’s ownership.
The author refers to the case of Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd  ATMO 54, in the chapter Grounds of Opposition. Opposition to the trade mark “Tar Jay’” by Target was successful on the basis that the trade mark “Target” was frequently pronounced “Tar Jay” and that use of the opposed trade mark would be likely to mislead or deceive consumers.
The chapter Removal for Non-Use discusses the case of Skyy Spirits LLC v Lodestar Anstalt  FCA 509. In this case, the issue of non-use turned in part on whether a trade mark for wine had been used between 2007 and 2010. Commercial sales just in excess of $10,000 for the period in question were sufficient to meet the requirement for use.
In the chapter Licensing of Trade Marks, the author refers to the cases of C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42;  AIPC 91-640;  FCA 1539 and Yau’s Entertainment Pty Ltd v Asian Television Ltd (2002) 54 IPR 1;  FCA 338 to point to various forms of relationship of the registered owner with either the products in question or with the authorised user that might be other than quality control or financial control, even if hard to define and quantify in exact terms. He discusses how the differing nature of those involvements in those two cases demonstrates the value of s 81(5) and its intentional lack of a precise and exhaustive definition of control.
In the chapter Infringement, the author notes that simply registering a business name does not in itself constitute use of that business name as a trade mark. Reference is made to the case of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  FCA 554.