Category Archives: Trademark Information

What the Free Trade with EU Means for Businesses in Australia

Category: Trademark Information

The impetus for the European Union and Australia to enter a free trade agreement (FTA) returns amidst Britain’s exit from the EU and the US’ pending negotiations with the EU on steel tariffs. The FTA is expected to boost both economies by $15 billion and will greatly benefit Australia’s service and agri-food industries.

From Prime Minister Malcolm Turnbull’s meeting with European Commission President Jean-Claude Juncker in April, it was announced that the EU leaders will soon vote whether to enter negotiations. To date, German Chancellor Angela Merkel and French President Emmanuel Macron have voiced their support for the EU-AU trade. EU Commission President Juncker has also committed to finalising the agreement within 18 months.

The Catch

European farmers, particularly farmers from France and Italy, are anxious about the import of Australian beef and Australian producers’ use of ‘geographical indicators’ such as ‘parmesan’ and ‘feta’ for their products.

Cecilia Malmstrom, The EU’s lead trade negotiator, warns that European farmers expect Australian producers to accede to discontinue using geographic identifiers in their food labels.

As for European farmer’s concern about the Australian beef import, Malmstrom believes that the unease is manageable as Australia’s trade with Asian countries greatly depletes the amount of Australian beef that will reach Europe.

This leaves Australian producers with the concern, however, that they might have to remove iconic terms in their hams, wines and cheese labels.

What Should Producers Do?

In the early 2000s, when the EU was introducing strict limitations on using the word ‘feta’, the award-winning family enterprise Meredith Dairy made a pre-emptive call and stopped labelling their goat cheese products as feta.

So as not to lose their brand’s level of popularity, they transitioned into completely removing the word ‘feta’ from their label. For a time, the company placed two names on their labels so that the consumers would still recognise their brand.

When interviewed by The Age regarding the company’s move, Meredith Dairy founder Julie Cameron stated they thought it was inevitable for the company to use the word feta so they chose to re-label their products to ensure brand longevity.

With the expected approval of the EU-AU FTA, dairy, ham and wine producers are likely to consider doing similar changes for their products to enter the European market.

How Pinnacle Can Help

Entering a free trade agreement has its pros and cons. Apart from the strong possibility that producers will be pressured to discontinue use of ‘geographic identifiers’, the increased number of competition also strengthens the need for protecting intellectual property rights.

With years of experience in all aspects of trademark registration, Pinnacle TMS can help. We’ve helped businesses protect their brands both locally and overseas with a range of trademark services.

Our owner Suzanne Harrington has worked with overseas trademark attorneys to help businesses secure global trademark registrations.

Providing our clients with an Initial Protection Review and Strategy Report – a report unique to Pinnacle TMS – we help businesses determine if their mark is not yet registered by other parties, saving significant time and money.

For unbiased and professional help from true Trademark Specialists, book a consultation today.

How Apple Protects Its New Products and Brands with Trademarking Tactics

Category: Trademark Information

Every time Apple announces a new product to its range, it becomes a massive hit that instantly goes viral on the web. Behind the scenes, there is more to the big announcement than a product release. Being one of the world’s most powerful tech giants, Apple understands that with great product comes great responsibility to protect against infringement.

Apple Trademarks Products Before Their Release

The Apple Park in Cupertino, California was opened to the public on November 17, 2017. Apple’s “spaceship” headquarters have a designated Visitor Center that offers limited edition Apple-branded merchandise not sold at Apple stores.

Many of the tote bags, shirts and other items feature the concentric circular architecture of the Apple Park, which Apple is currently working on trademarking in America.

According to online publication Patently Apple, the trademark application for the limited edition merchandise specifically sought to protect the concentric circular design of the Apple Park with the bitten apple and the word ‘Park’ beside it.

However, Apple listed broad usages of the design covered in the trademark:

  • for retail store services and product demonstrations provided inside the store; and for arrangements of commercial, trade and business affairs
  • for education services such as lectures, workshops and seminars in the field of information technology, web design, music, photography and other related subjects
  • for restaurant services

Leaving No Traces of Clues

Apple uses a trademark method to establish claim over its products prior to their public announcement. The tech giant files for a trademark in another country with a system that does not have access to an online database. This way, rivals would have a hard time searching trademark offices around the world for clues.

Applying for a trademark in other countries is taking advantage of a rule in the US Trademark Act. Section 44(d) allows businesses to register a trademark in one country prior to filing for the application in the US. Among the 177 countries that comply with the US trademark laws, 66 have no existing online trademark databases.

Apple filed for the trademark at The Jamaica Intellectual Property Office, which conducts manual searches. Their searches are free, but securing a physical copy of the trademark application costs 150 Jamaican Dollars (JMD) per page.

Protecting Upcoming Projects

Apple did a similar move when the company made updates to the Apple TV trademark. Both fans and competitors assume that the trademark update hints at Apple’s venture into gaming, seeing that the application exclusively covers video game consoles, controllers, video output game machines and other related products.

The tech company did the same thing with their Siri-powered speaker, but instead of enlisting the help of Jamaica, Apple headed to Liechtenstein. It was not until the product was unveiled — the HomePod – that the world heard of the product’s name.

What Apple did is just one of several tactics companies do to protect their brands from copyright infringement and other illegal activities.

Trademark Specialist in Australia


To learn more about trademark applications in Australia, Suzanne Harrington is an expert in the field. She is the owner of Pinnacle TMS Pty Limited, a company that provides high-quality trademark services to small to medium-sized businesses. With over 20 years of experience, Suzanne was able to compile her knowledge into a #1 Amazon best-selling book ‘Trademarking Your Business.’  Here is the link to the book if you want answers to your general trademark questions  http://www.amazon.com/dp/B00AMAN9WY


For more information and for any enquiries, feel free to contact +61 2 9529 4366 for a complimentary 10 minute phone consultation.

The Increasing Importance of Trademarks in the Digital Age

Category: Trademark Information

Establishing a strong brand is essential to business success, as is protecting that brand. However, many small business owners skip the first step to securing their brand: trademarks.

Virtually anything can be trademarked these days. Product names, logos, catchphrases, letters, sounds, smells, shapes, movements, even aspects of packaging. A registered trademark gives you exclusive rights to use, license and sell the mark. It discourages potential counterfeiters from using the same mark or something confusingly similar and keeps your brand’s integrity intact.

If you’re committed to safeguarding what you’ve created, registering a trademark is your next course of action. It’s better to act sooner rather than later.

The Increasing Role of Trademarks in the Digital Age

In the age of e-commerce and online sales, misappropriating brands and products has never been easier. This means that the need for trademarking your business to protect against intellectual property theft has also never been greater.

A trademark is your most valuable tool to secure your position in the online market. Not just today, but in the future.

Take it from online retail giant Amazon, which is exerting efforts to protect Amazon vendors with registered trademarks from property rights violations.

Earlier in 2017, Amazon announced Amazon Brand Registry, designed to restrict the ability to copy and sell products with other sellers’ registered trademarks. Without the registry, policing illegitimate sellers would be a herculean effort, considering that Amazon was selling more than 480 million products in America by 2016.

The Amazon Brand Registry helps brand owners protect their registered trademarks and gives them increased authority over products listings with their brand names. It aims to reduce the risk of intellectual property rights violations and create accurate representations of brands on Amazon.

With the Registry, a brand owner can take down infringing sales listings from the counterfeiter more quickly and more easily.

If Amazon’s reinforcement of brand security is any indication, it’s clear that protection against brand identity theft is a rapidly growing priority, which you, as a business owner, can’t afford to neglect.

Why Register a Trademark Now

No business, no matter how big or small, is exempt from brand identity theft. Registering a trademark is undoubtedly one of the most effective measures to prevent these violations and their potentially costly consequences.

Without the proper protection provided by a fully registered trademark, defending your business reputation or brand in court is extremely difficult and costly. There’s always a chance that you won’t get justice, and the counterfeiter trading off your brand will continue benefiting from what you’ve worked so hard to build.

The best way to evade such a devastating scenario is to register your trademark. By doing so, Australia’s Intellectual Property (IP) laws can protect you if another business starts using your brand name or something confusingly similar to it.   The same applies to each country where you are trading or considering trading – make sure you don’t go into a country without confirming you are not infringing the rights of a competitor there and then protect your brand by trade mark registration in each country.

The process of registering a trademark can be complex and seem like a maze when you don’t understand Trade Mark Law.  The good news is that you can always turn to professional trademark specialists and consultants to guide you through that trade mark registration maze . .

Ensuring your trademark registration is done correctly is a worthy investment. A registered trademark can make the difference between saving your business and losing it. There’s no time to wait – take action today.


Pinnacle TMS is ready to help. Contact us today at +61 2 9520 4366 for a 10 minute complimentary consultation about the trademark application in Australia. You can also reach us at info@pinnacletms.com.au for other enquiries.

Of course Suzanne’s Amazon #1 Best Selling Book ‘Trademarking Your Business’ answers 10 common trade mark questions.   It is a short easy to read book and at $3.99 won’t break the budget.

Trademark your business book

2017 Roundup: An Eventful Year in Trademarks

Category: Trademark Information

No business, big or small, is safe from identity theft. Registering a trademark gives ownership of a brand so action can be taken to protect the owner’s rights and prevent a competitor from trading on the good reputation that owner has in a  brand. It is an effective marketing strategy that upholds a brand’s name and sets it apart – legally – from its existing and potential competitors.

This year, we’ve covered some of the biggest news in trademark laws, legal cases and rulings. To welcome the year ahead, here is a roundup of the trademark industry’s events in 2017 just in case you missed an earlier newsletter:

February 2017

Harley-Davidson Sues Urban Outfitters for Trademark Infringement for the Second Time

Harley-Davidson, one of the most successful motor companies in the US, took matters to court against Urban Outfitters after the clothing brand released a line of ‘FPV HARLEY BODYSUITS’ in February.

This was not the first time Harley-Davidson filed charges against the clothing company. In 2014, Urban Outfitters sold shredded, cut-up and altered versions of Harley-Davidson’s apparel.

A statement from Harley-Davidson concluded that Urban Outfitters manufactured “Infringing Bodysuits” from ‘genuine Harley-Davidson products that [they] have altered and reconstructed into new products’, most of which bear the iconic Harley-Davidson trademarks. Other products in the line, on the other hand, appeared to be carrying the brand’s name without any genuine association to the motor company. This urged Harley-Davidson to accuse Urban Outfitters of ‘falsely [suggesting] that the Infringing Bodysuits are Harley-Davidson products’.

The fight ended in May after Urban Outfitters agreed to stop selling Harley-branded merchandise, genuine or otherwise.

March 2017

Louboutin Loses Case to Trademark its Famous Red Soles in Switzerland

The famous red sole is quintessentially Christian Louboutin. In fact, red soles in high-heeled pumps are trademarked in the United States, Russia, Australia and China. In Switzerland, however, a trademark battle on the red sole ensued earlier this year.

The Federal Supreme Court of Switzerland turned down Louboutin’s demand to trademark the red sole. They denied the appeal because the court ruled ‘an aesthetic element’ unworthy of a trademark.

Alex Brodie, a representative from Gowling WLG Law, said it is very important for brands to ‘frame [their] application for a trademark very carefully to avoid the colour being seen as simply aesthetic’.

April 2017

Trump’s Trademark Triumph

Apart from winning last year’s US Presidential Elections, Donald Trump was also awarded 38 new trademark registrations in China. Trump is both a politician and a real estate mogul, and he now carries over 100 trademarks in China.

Although Senator Ben Cardin claimed the ruling unfair and dubious, China’s foreign ministry spokesperson, Geng Shuang, said that all Trump trademarks were received ‘in accordance with the law and regulation’.

July 2017

IKEA’s Trademark Suit Loss against Aikya Global: What Really Happened?”

IKEA, the world’s largest home retailer, lost to Bengalaru-based consulting company Aikya Global after fighting for the case since 2013. The Swedish retailer filed a lawsuit against Aikya Global for creating a brand name with a heavy phonetic resemblance to their own.

Aikya Global initially accepted the charges and amended their name to Ajira Global. The New Delhi court, however, reversed the injunction and ruled in favour of the Indian consultancy.

August 2017

UK Courts Refuse to Trademark KitKat’s Shape

After a long-running trademark battle in the UK, Nestle KitKat failed to trademark its four-finger shape. Although ‘Have a Break’ and the brand’s packaging design are registered trademarks, UK’s Court of Appeal stated that the shape of a KitKat was not ‘distinctive enough to warrant a trademark’.

Toblerone and Coca-Cola have won trademark battles in the past, receiving approved registrations for their triangle-shaped chocolate pieces and signature contoured bottles, respectively. KitKat, however, has a design that is nearly identical to Kvikk Lunsj, a product owned by Mondelēz. Kvikk Lunsj has been on the market since 1937, providing further reason for the court to reject Nestle’s appeal.

September 2017

Logo Wars: How Under Armour Won against Uncle Martian

Famous American sportswear brand, Under Armour, recently won a legal battle against Tingfei Long Sporting Goods, Inc., a Fujian-based sports shoe manufacturer. The Chinese debuted a collection of athletic apparel and footwear called ‘Uncle Martian’ with a logo that resembled Under Armour’s, their biggest competitor in the country.

In August, the People’s Higher Court of Fujian Province ruled in favour of Under Armour.

October 2017

Why New Balance’s Trademark Infringement Victory in China is a Big Deal

Since 1995, New Balance has been a recognised sport brand in China. Since then, brands like New Barlun, New Bunrer and New Boom have been charged with trademark lawsuits after allegedly copying the slanted ‘N’ logo. The American brand charged them around 10 million Yuan in costs and damages – the biggest lawsuit sum awarded to a foreign company in China.

Chinese companies have dealt with and plead guilty for many trademark cases over the years. New Balance’s victory urged the Chinese government to revisit their laws and strategies regarding intellectual property.

November 2017

Fast Food Giant McDonald’s Wins Trademark Dispute Case with Singapore Rival

McDonald’s filed a lawsuit against their Singapore rival, Future Enterprises, after the latter named their instant coffee product ‘MacCoffee’. The General Court in Luxembourg, the second highest court of the European Union, sided with McDonald’s. The court stated that using the name ‘MacCoffee’ increases the probability that Future Enterprises was riding on the coat tails of McDonald’s.

Secure Your Trademark with Us

If you have questions or concerns regarding trademark laws and application processes in Australia, contact Pinnacle TMS for a complimentary 10 minute consultation which can be booked through our website, www.pinnacletms.com.au.  You can call us on +61 2 9520 4366 or email info@pinnacletms.com.au.

Fast Food Giant McDonald’s Wins Trademark Dispute Case with Singapore Rival

Category: Trademark Information

American fast food chain, McDonald’s, won a trademark dispute case with their Singapore rival, Future Enterprises. The dispute arose over the use of ‘Mac’ and ‘Mc’ as prefixes for branding beverages and food items – in particular, Future Enterprise’s use of ‘MacCoffee’, an instant coffee product under their Food Empire brand.

The Court’s Decision

The ruling came from the General Court in Luxembourg, the European Union’s second highest court. The court ruled in favour of McDonald’s, who was granted exclusivity to the McDonald’s name, as well as 12 other trademarks that included the prefixes of ‘Mc’ and ‘Mac’.

MacCoffee is Food Empire’s flagship product and is a top all-in-one instant coffee brand in Ukraine, Russia and Kazakhstan. The company also distributes its products across Central Asia, China, the Middle East and in the United States.

Food Empire’s executive chairman, Mr Tan Wang Cheow, maintained that their instant beverage brand has a unique packaging design and that the product has to be prepared by the consumer, causing no confusion with the McDonald’s brand, which serves ready-to-consume food and drinks.

The company applied to register “MacCoffee” back in 2008, and was actually granted approval after two years. However, pressure from McDonald’s lawyers caused the trademark to be invalidated, leading to the European Union Intellectual Property Office reversing their decision.

Future Enterprise made the move to challenge the Property Office in an effort to regain the trademark.

Despite the company’s claim, the General Court sided with McDonald’s in 2016. They ruled that MacCoffee and McDonald’s trademarks are too similar conceptually, and upheld the patent office’s decision to reject Future Enterprise’s trademark application.

Trademarks Protect Against Free Riders

As McDonald’s holds the trademarks for food items branded with ‘Mac’ and ‘Mc’, the reputation of their trademarks prevents the registration of other food and beverages using these prefixes.

Judges of the General Court ruled in favour of McDonalds because of the high probability that MacCoffee is merely riding on the coat tails of the fast food giant. The use of ‘Mac’ in the name makes it extremely similar to McDonald’s ‘McCafe’, which is the fast food giant’s coffee and dessert bar brand.

This case shows that a registered trademark is a powerful tool that prevents competitors benefitting from the reputation and prestige of popular brands without paying financial compensation. Companies like McDonald’s have far reaching marketing campaigns to promote and maintain their image, which other companies may seek to benefit from without bearing the same costs for their own marketing efforts.

However if you are a small business, the danger of not protecting your brand, which you have invested time, money and engery into are just as real and can be a major setback in your business.

Trademark Your Brand

A registered trademark prevents the identity theft of a company’s intellectual property and branding, preventing piracy and protecting a brand’s reputation. The McDonald’s case proves how a registered trademark protects a company’s valuable asset and marketing efforts.

A formal trademark registration should be a starting point of any branding effort to ensure the security and protection of a company’s intellectual property.   Why invest in a brand that has issues with use and ownership from the start?!

For questions regarding the trademark application in Australia, contact Pinnacle TMS today for a complementary 10 minute consultation. Email us at info@pinnacletms.com.au or call at +61 2 9520 4366. You can also visit our website at pinnacletms.com.au. to see our range of short videos answering trade mark questions.