University IP Law Case Study: Trademark, GI, and International Law

This case study, concerning intellectual property law, presents a scenario where Jack, an entrepreneur, seeks to register trademarks for his new DIY Champagne kit, 'BubbleUp', and his slogan, 'Let’s get popping'. The case explores two objections to Jack's trademark applications: one from Penny, a soft drink manufacturer with a product named 'BubbleCup', and another from Betty, a cordial manufacturer. The assignment delves into the complexities of trademark registration, including the assessment of similar product names, slogans, and the potential for confusion among consumers. Furthermore, the case study extends to the international dimensions of intellectual property, referencing the TRIPS agreement and the role of IP Australia. The analysis also touches upon the protection of geographical indications (GIs) and their relevance in international trade, using the Bollinger v. Costa Brava Wine case as a point of reference. The study addresses the challenges in enforcing IP laws on both national and international levels, while also highlighting the significance of international regimes in regulating these laws.

[Intellectual Property law]
Case Studies and questions related with the Intellectual property law.
2020
University
Student Credentials

IP Law 1
Introduction to Intellectual Property
There are various types of identifications that make a product memorable or help the
customer realise more about it as in the qualities and negative aspects as well. For instance,
when someone talks about ‘Just Do It!’ people instantly realise or at least make guesses such
that it will relate to the brand NIKE or some sportswear or shoes. This is known as an
Intellectual property. This kind of identification relating to the brand’s image or an
identification method through which one can maintain their product’s or services’ uniqueness
is known as an intellectual property. Intellectual property assists with the conduction of the
business and includes certain intangible assets such as the patent, trademark, formulae,
certain secret processes and also designs1. Intellectual property is something that helps public
to identify the brand and also assists the corporations or firms to establish their image. This
way it works as a mediator amongst the firm or the corporation and the customers.
Copyrights, trademarks, patents as well as other intellectual property provide a way through
which companies and firms can establish themselves in the minds of their customers and
establish their goodwill.
In the below mentioned case study, Jack an entrepreneur created a new product and wants to
get certain trademarks registered so that no one else can use the same phrases or identical
aspect related to his business. Here in this case, he is facing two major issues that shall be
discussed in the Question 1. While the Question 2 includes the affectivity of Intellectual
property laws on the national as well as international level, the challenges that are being faced
in the enforcement and regulation as such and also the role of International regimes in the
regulation of these laws.
1 Australian Government, "Australian Intellectual Property Laws - Austrade", Austrade.Gov.Au (Webpage, 2020)
<https://www.austrade.gov.au/International/Invest/Guide-to-investing/Running-a-business/Understanding-Australian-
business-regulation/Australian-Intellectual-Property-laws>.

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Question 1
Part A
The situation here is that the new product that has been developed by Jake. In order to
preserve the uniqueness that creativity had, Jake wanted to register the trademark related to
the same. In order to do so he has to register his application with IP Australia and if the
agency deems fit, the registration shall be done within four months after verifying all details
and the application’s alignment with the legislation and its provisions2.
Where the first aspect is concerned, the scenario is as such that the parties involved have a
similar name of the product. ASIC or the Australian Securities and Investment Commission is
the agency responsible for the registration of the business names as per a specific Act. This
act is widely known as the Business Names Registration Act 2011 or even known as the
Business Names Act3.
There are no specific laws stating that similar name cannot be registered in Australia, hence,
the claim made by the other entrepreneur, Penny cannot be entertained. Though there can be
on Jack’s end an effort made in order to find a name for his product that is not similar to any
other product in market as such. Though, if the ASIC does not find the name of the product
identical or near to identical as per their own standards, then the registration process for Jack
will not be of any issue and there will be no hindrances as such and the product will get
registered4. In order to be clearer regarding the rules as such relating to the registration of the
name, the rules of the Business Registration Determination, 2015 can be referred to for the
ease5.
2 IP Australia, "Trade Marks | IP Australia", Ipaustralia.Gov.Au (Webpage, 2020) <https://www.ipaustralia.gov.au/trade-
marks>.
3 Business Names Registration Act 2011
4 ASIC, "Disputes About Similar Company Names | ASIC - Australian Securities And Investments
Commission", Asic.Gov.Au (Webpage, 2020) <https://asic.gov.au/about-asic/contact-us/how-to-complain/disputes-about-
similar-company-names/>.
5 Business Names Registration (Availability of Names) Determination 2015

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Cases similar to the given situation have already been decided upon and taken into
consideration, these cases include the instance of Delta Airlines and Delta Faucets, there the
product provided by both the parties is different, then even the similar name can exist.
Similarly, Perth Martial Arts Centre was allowed to be registered with the same name that
other martial arts academy had, Perth Martial Arts Academy was an already registered
Academy, yet the registration procedure for the Martial Arts Centre was agreed upon. There
are various other instances as well where the same is evident, that the thorough verification
process goes on behind the registration of a trademark6.
In the second situation, the matter talks about a certain slogan that needs to be registered by
Jack. When in general registering a slogan, a thorough research needs to be done. Most
common areas that need to be rendered in order to decide whether it already exits or would
suit the requirement of the business are; Australian Trade Mark’s Online Search System as
well as, trade mark image viewer and in fact the trade mark classifications pick list can also
be checked out for that matter as well as the most common way, the Google search is
something that might be handy. Before the application for registering the slogan is sent for
the registration, all of these needs to be analysed and checked for any lacks. The difficulty
here is not that the person who wishes to register the slogan will have to go through all the
registered trademarks, but in fact, it is that he/she will also have to go through the identical
slogans that are quite similar to the ones that one wishes to register.
If one wishes to trademark a slogan for their business, one need to satisfy all the legalities
that slogan registration requires and also has to make sure that the rights of another individual
or the business that person has is infringed in any manner. The slogan here needs to be
distinct from any other slogan that has already been registered and for that matter it needs to
6 Darren Pereira and Georgia Milne, "Same, Same But Different – Why You Can’T Assume Copycat Names Won’T Be
Registered", Holding Redlich (Webpage, 2018) <https://www.holdingredlich.com/same-same-but-different-why-you-can-t-
assume?utm_source=Mondaq&utm_medium=syndication&utm_campaign=LinkedIn-integration>.

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meet all the requirements as such. There are so many search tools available online these days,
information regarding each name or slogan can be obtained without any much hassle. After
being researched properly, the slogan needs to be registered as well. For which the authorities
at ASIC need to be sure about and in fact, they also do a background check before approving
a request for registration in such cases. Any slogans, titles or anything for that matter that
denotes a company’s individual identity is covered under Intellectual property like this.
Such cases keep on taking place every now and then. The product here that Betty provides is
quite similar to the one that Jack wishes to provide, but again has certain differences. The
slogan that Betty has been using for a while is not the one that is registered though and as per
law can be claimed or registered. It also depends upon the goodwill this name holds in the
market and the business value it holds.
Part B
All the registered Intellectual property in Australia is authorised and registered by the
Australian Intellectual Property Law. The basic idea behind their working is to protect the
businesses as well as encourage innovation and creativity amongst the businesses and the
people as well. These Intellectual properties help certain company or the firm or even an
organization to gain a competitive advantage over another. When the International
Intellectual Property is concerned, Australia has been a part of most of the agreements that
have taken place internationally which help prevent the uniqueness of an organization in
other countries as well. The IP Australia is the agency that is governed by the government
itself which assists in administrating the legislation as well as rights related with the
Intellectual property7.
7 M Davison, "Reputation In Trade Mark Infringement: Why Some Courts Think It Matters And Why It Should
Not", Www5.Austlii.Edu.Au (Webpage, 2010) <http://www5.austlii.edu.au/au/journals/UMonashLRS/2010/15.html>.

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The situation as mentioned in the case study, can be compared with the case of Bollinger v.
Costa Brava Wine (1961) 1 W.L.R 2778. In this case, it was at the end held that the defendant
deliberately sold the wine with the name of ‘Champagne’ so as to gain the benefits of the
goodwill attached to the word as only high class people used to consume it.
Jake has been trying to sell his DIY Champagne where the name attached to the brand is the
one that provides an impression that the components it has are from France. In this case, the
people who manufacture the real champagne in France while trying to protect something that
is their identity and have trademark over their product, can file a suit against Jack even
though the name itself says that it is a DIY Champagne. However there are certain alternates
as well to avoid such whole fiasco that can be opted as well.
Question 2
Part A
TRIPS or the Agreement based upon the Trade –Related Aspects of the Intellectual Property
Rights includes various other countries that came in to be a part of an agreement that was
legal on international level. All the member nations are also the part of the WTO or the
World Trade Organizations. According to this, the nations have to abide by a certain level of
standards that this agreement has laid down in concern with the Intellectual Property as has
been applicable to the representatives of certain countries or governments that are members
of the WTO. This came into existence upon the conclusion of the General Agreement on
Tariffs and Trade or widely known as the GATT in the Uruguay Round from the years 1989
to 1990 as such and it is being regulated by the WTO now9.
8 Dev S. Gangjee, "Spanish Champagne: An Unfair Competition Approach To GI Protection" Intellectual Property at the
Edge.
9 ANTONY TAUBMAN, "AUSTRALIA’S INTERESTS UNDER TRIPS DISPUTE SETTLEMENT: TRADE
NEGOTIATIONS BY OTHER MEANS, MULTILATERAL DEFENCE OF DOMESTIC POLICY CHOICE, OR
SAFEGUARDING MARKET ACCESS?" (2008) 9 Melbourne Journal of International Law.

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Specifically this agreement needs the members of the WTO so as to help with the copyright
rights and also the covering authors as well as the several other copyright holders. And not
just these but the holders of quite the similar kind of rights as well, that includes, the sound
recording producers, performers for that matter as well as the broadcasting organizations,
these also include the new plant varieties, trade names, slogans, circuit –layout designs,
geographical indications as well as the other confidential information or certain undisclosed
information that is necessary for the organization or even trade secrets for that matter are
covered under this including the industrial designs. This agreement does not just specify the
kind of things or rights covered under this, but also talks about the punishments, remedies
and even enforcement procedures for that matter. This includes certain procedures that only
deal with the dispute resolution as well as it is a huge part of the trade industry.
Australia's initial situation in TRIPS arrangements focused on an arranging goal of 'sufficient'
gauges, recommending that the Negotiating Group 'was not really searching for the most
noteworthy potential norms or the broadest extent of assurance'.
Like most nations, Australia didn't enter the TRIPS exchanges having equitably inferred that
its financial prosperity unbiasedly required at any rate a multi year patent term and a three
stage test to administer patent exceptions;25 obligatory authorizing of licenses was
successfully torpid and not a need requirement for administrative survey or for the more
tightly procedural shields of TRIPS Agreement craftsmanship 31.26 But the genuine impacts
— the lawful extension and monetary expense of such limitations on household approach
decisions — may just be felt or quantifiable well after the arrangement has been shut. And
still, at the end of the day, their full impact might be dictated by the continually developing
global legitimate and world of politics, including realistic hazard appraisal of the probable

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result of any debate settlement activity that might be accelerated by marginal arrangement
decisions10.
Part B
The present protected innovation system Today's worldwide system for licensed innovation
has its causes in the nineteenth century when European states started to sign an ever
increasing number of reciprocal arrangements in the field of protected innovation. The heft of
these understandings identified with copyright and exchange marks. Two multilateral
mainstays of the present system were worked towards the finish of the nineteenth century: the
Paris Convention for the Protection of Industrial Property and the Berne Convention for the
Protection of Literary and Artistic Works. These two shows likewise observed the formation
of secretariats that were then converged to shape the United International Bureaux for the
Protection of Intellectual Property. The Bureaux was in the end superseded by another
association called the World Intellectual Property Organization (WIPO) that was built up in
196711.
Excursions is likely the most significant licensed innovation understanding of the twentieth
century. It has additionally become the most disputable understanding in the World Trade
Organization (WTO), one explanation being that its patent arrangements have been connected
to expanded human services costs, costs that couple of creating nations can manage. For
present purposes see that TRIPS is a piece of a developing structure that straightforwardly
impacts on the plan opportunity of all nations with regards to protected innovation rights. All
individuals from the WTO need to actualize the commitments of TRIPS. The understanding
considers the likelihood that a part may move to "progressively broad security" of licensed
innovation, yet it explicitly disallows individuals from types of assurance that contradict
10 Daniel De Vos, "Phage Therapy In Europe: Regulatory And Intellectual Property Protection Issues" [2019] Phage
Therapy: A Practical Approach.
11 Frederick M Abbott, Francis Gurry and Thomas Cottier, International Intellectual Property In An Integrated World
Economy (Aspen Publishers, 2019).

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TRIPS arrangements (see Article 1.1). The object of security, as the preface of TRIPS
clarifies, is licensed innovation rights, these rights being depicted as "private rights". This
arrangement alongside the most-supported country (MFN) rule in Article 4 sets up a
worldwide administrative wrench for protected innovation rights. Basically, states can just
move to better expectations of security for scholarly insurance, where better expectations are
being perused as importance a guarantee to more grounded private rights. Since the finish of
TRIPS, the US has arranged respective understandings, including unhindered commerce
understandings that contain better expectations of licensed innovation security than are
contained in TRIPS. Like TRIPS, these bilaterals permit the gatherings to move to better
expectations of security, however not bring down ones. This tightening procedure is utilizing
the productivity investment funds of the MFN standard.

IP Law 9
Bibliography
Statutes
Business Names Registration (Availability of Names) Determination 2015
Business Names Registration Act 2011
Books
Abbott, Frederick M, Francis Gurry and Thomas Cottier, International Intellectual Property
In An Integrated World Economy (Aspen Publishers, 2019)
Journals
De Vos, Daniel, "Phage Therapy In Europe: Regulatory And Intellectual Property Protection
Issues" [2019] Phage Therapy: A Practical Approach
Gangjee, Dev S., "Spanish Champagne: An Unfair Competition Approach To GI
Protection" Intellectual Property at the Edge
TAUBMAN, ANTONY, "AUSTRALIA’S INTERESTS UNDER TRIPS DISPUTE
SETTLEMENT: TRADE NEGOTIATIONS BY OTHER MEANS, MULTILATERAL
DEFENCE OF DOMESTIC POLICY CHOICE, OR SAFEGUARDING MARKET
ACCESS?" (2008) 9 Melbourne Journal of International Law

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Websites
ASIC, "Disputes About Similar Company Names | ASIC - Australian Securities And
Investments Commission", Asic.Gov.Au (Webpage, 2020)
https://asic.gov.au/about-asic/contact-us/how-to-complain/disputes-about-similar-company-
names/
Australian Government, "Australian Intellectual Property Laws -
Austrade", Austrade.Gov.Au (Webpage, 2020)
https://www.austrade.gov.au/International/Invest/Guide-to-investing/Running-a-business/
Understanding-Australian-business-regulation/Australian-Intellectual-Property-laws
Darren Pereira and Georgia Milne, "Same, Same But Different – Why You Can’T Assume
Copycat Names Won’T Be Registered", Holding Redlich (Webpage, 2018)
<https://www.holdingredlich.com/same-same-but-different-why-you-can-t-assume?
utm_source=Mondaq&utm_medium=syndication&utm_campaign=LinkedIn-integration>.
Davison, M, "Reputation In Trade Mark Infringement: Why Some Courts Think It Matters
And Why It Should Not", Www5.Austlii.Edu.Au (Webpage, 2010)
<http://www5.austlii.edu.au/au/journals/UMonashLRS/2010/15.html>
IP Australia, "Trade Marks | IP Australia", Ipaustralia.Gov.Au (Webpage, 2020)
https://www.ipaustralia.gov.au/trade-marks

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