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Leighton O’Brien

Janice Yew | October 21st, 2015

mdp helped Leighton O’Brien negotiate, structure, draft and implement its joint venture with Showa Kiki Kogio, and provides continued support in maintaining the relationship.

Background

Leighton O’Brien (LOB) is a global leader in specialist tank and fuel management services to the petroleum industry. They specialise in tank and line testing, tank cleaning and fuel restoration, and wetstock management.

Their expertise enables customers to achieve the tightest storage systems, the lowest fuel losses, the most accurate wetstock management, the highest compliance, the cleanest fuel and fewer meter calibration checks, overlaid on the best reporting platform available. Leighton O’Brien has operated for over two decades and grown to 43 service distributors globally operating in 19 countries.

The Challenge

LOB sought to expand into Japan, and deliver innovative technology to assist Japanese petroleum companies reduce risk and drive greater cost savings and operational efficiencies.

The Solution

Over the last 5 years, mdp’s director Michael McDonald flew to Japan on many occasions to meet with various executives and government officials to negotiate a joint venture agreement with Showa Kiki Kogio (SKK), a leading Japanese supplier and manufacturer of equipment for service stations. Four years ago, a heads of agreement was signed with SKK.

mdp assisted LOB with drafting various agreements, including the joint venture agreement and customer facing agreements for SKK’s use in Japan. This process involved considering Australian and Japanese law, ensuring the deal was structured in the most tax-effective manner, balancing commercial and legal practices in both countries, while being mindful of language and cultural nuances and sensitivities specific to Japan.

The team at mdp worked closely with the executive and engineers at LOB and SKK to navigate the regulatory environment for such technology in Japan. After a lengthy technical process, SKK obtained accreditation from the Japan Association for Safety of Hazardous Materials to use the Statistical Inventory Reconciliation Analysis (SIRA) solution developed by LOB as a continuous leak detection method for UST and underground piping in Japan.

The Results

The years of negotiation and support culminated in the signing of a final joint venture agreement on 11th May 2015. Since then, SKK has obtained a contract with Idemitsu, the second largest petroleum refiner in Japan, to roll out the SIRA system throughout the Idemitsu network.

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DTA Australia Pty Ltd – Design Registration & Trademark

Janice Yew | October 21st, 2015

mdp helped Australian tiling manufacturer and distributor DTA prevent a US-based multinational competitor from infringing its registered design and force a product recall of its competitor’s products.

Background

Established in 1976, DTA is an Australian family business, engaged in the manufacture, importation and distribution of tiling tools and trims. DTA is Australia’s leading distributor of quality tools and trims. DTA’s success has enabled it to expand its business Australia-wide and into China and the United States.

The Challenge

DTA had a registered design for its tiling trims, which had diamond shaped perforation holes. The holes were functional because the adhesive would penetrate the holes so that the tiling trim and the tile would adhere to the wall or floor. The diamond shaped holes were also DTA’s brand identity because the trims were sold in hardware stores without packaging. Accordingly, the perforations were the only way in which consumers could identify the brand of the product.

One of DTA’s main international competitors commenced importing into Australia its own tiling trims which contained diamond shaped perforations. Fortunately, our client was able to rely on its design registration in its claim against its competitor.

The Solution

We were promptly able to resolve this matter with the competitor before it proceeded to trial because the competitor realised that it was legally in the wrong.

The Results

We were able to achieve an outstanding outcome for our client. The competitor agreed to recall its products and pay our client an account of profits on its sales in Australia. The competitor was then forced change its product so that it had difference shaped perforations in order distinguish its tiling trims from those of our client.

We have also registered our client’s diamond shaped pattern as a trade mark. The benefit of this is that a trade mark is perpetually renewable, whereas a design registration will provide protection for a maximum period of 10 years.

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Zema Estate

Janice Yew | August 30th, 2015

mdp helped Australian winery Zema Estate protect its brand in China

Background

Established in 1982, Zema Estate is a small family owned and operated winery located in the heart of Australia’s Coonawarra wine region. With a history and heritage dating back to the 1800’s, the ZEMA name is a valuable asset. The Zema name is recognised throughout Australia and internationally, representing one of South Australia’s finest drops.

The Challenge

In 2014, Nick Zema sought mdp’s assistance to protect the Zema name in both English and Chinese characters, in China. Nick was prompted to take such action after learning of the Chinese Penfolds trade mark squatting saga. Unfortunately, the owners of the Penfolds brand failed to register the Chinese name, ‘Ben Fu’ for Penfolds in China, and the name was registered by a competitor who took advantage of China’s ‘first to file’ trade mark system.

Unlike Australia, common law trade mark rights are not recognised in China, so Penfolds’ pre-existing registrations in English did not prevent the squatter from registering ‘Ben Fu,’ and more worryingly Penfolds risked infringing the squatter’s trade mark registration if they were to use the Chinese name to sell its goods. As a consequence, major suppliers and sellers of Penfolds’ wine, such as Intercontinental Hotels removed Penfolds’ products amid fears that they could potentially be liable for damages.

The Solution

mdp regularly protects its client’s brands in China (and other Chinese speaking regions such as Hong Kong and Taiwan), using either the Madrid Protocol or directly through the Chinese Trade Mark Office (‘CTMO’). In the case of Chinese character trade marks it is necessary to file directly with the CTMO, not least because it is important to obtain the advice of a local trade mark agent to adopt the best translation of an English brand into Chinese, before filing.

The Results

Zema Estate now has pending applications in China for:

  • ZEMA; and
  • 哲马 ( translated as ‘zhe’ and meaning sage/wise man, commonly used for personal names and translated as ‘ma’ and meaning horse).

As with all trade marks, Zema Estate’s rights in the above trade marks extend back to the date the applications were filed in China.

In addition, mdp assisted Zema Estate to register the plain word mark ZEMA in Australia, to bolster protection in the Zema name. Previously, Zema Estate only had registered rights in its logos, historically Zema_Logo and more recently Zema_Logo2. Whilst protection for the logos protects the stylistic elements of the brand, it is only a registration for the plain word mark ZEMA that gives Zema Estate a monopoly in the name Zema alone (for its specific goods of interest). In the process of filing new trade mark applications in Australia and China, we advised Zema Estate on the best entity to own the trade marks from both asset protection and tax efficiency perspectives.

Zema Estate is now in the process of finalising its intellectual property structure, which offers its business and importantly its brands, the best possible protection.

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Capi Sparkling Mineral Water – Trade Marking & IP Advice

Janice Yew | August 30th, 2015

mdp helped Fresh Local Pty Ltd to expand its trade mark portfolio internationally for its award-winning CAPI mineral water.

Background

Our client is an Australian company with a big focus on producing high quality mineral waters and sodas. CAPI Mineral Water was awarded ‘World’s Best Water’ and CAPI Pink Grapefruit Soda was awarded ‘Gold’ in the Soda category in the 2015 World Beverage Competition.

The CAPI brand was launched in 2007, is becoming increasingly popular in Australia and is about to take on international markets.

The Challenge

Our client knows how to build a brand with a very strong reputation and fortunately they understand the importance of protecting that reputation. The challenge is ensuring that trade mark applications are in place before overseas trade commences, otherwise you run the risk of trade mark pirates taking advantage of the reputation you have already developed in the brand.

The Solution

mdp has prepared and filed a number of international CAPI trade marks in order to protect the CAPI brand as much as possible.

We have also trade marked the CAPI brand in Chinese characters in various jurisdictions to prevent trade mark pirates from taking advantage of the ‘first to file’ rule in other countries.

We have handled a Federal Court trade mark dispute between our client and one of its competitors, who adopted a very similar name to CAPI for its flavoured mineral water products. We were able to assist the client to resolve that matter before trial and succeeded in having the competitor rebrand its products and pay costs to our client.

The Results

The client now has an impressive international trade mark portfolio which significantly increases the value of its business. In future, if the client wishes to sell its business, it will have done everything it can to make it a very attractive business proposition to a purchaser.

Our client now has the ability to expand its trade internationally with the confidence that it can enforce its registered brand.

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