Elise Explains IPcast

elisesteegstra

Elise Explains IP provides simple, expert guidance on trade marks, design registrations, copyright, brand strategy, and intellectual property law in Australia. Whether you're building a business or creating new content, Elise helps you understand your rights, avoid risks, and protect the value of your work.

  1. 4 DAYS AGO

    Social Media IP Risks for Brands - Ep 16

    Episode: Social Media IP Risks for Brands Social media has become one of the most powerful tools for building a brand. But it also introduces a range of intellectual property risks that many businesses overlook. In this episode of Elise Explains IP, Elise discusses the most common IP and brand protection risks businesses face on social media — particularly when marketing teams, agencies, influencers and customers are all using the brand in different ways. From inconsistent use of trade marks to influencer behaviour that can damage brand reputation, this episode explores how quickly brand control can be lost online — and what businesses can do to manage those risks. Whether you're a business owner, marketer, or advisor, understanding these issues can help ensure your brand remains legally strong and commercially valuable as it grows online. In This Episode Elise explains: Why social media creates unique intellectual property risks for brands How inconsistent use of brand names and logos can weaken trade mark protection The risks associated with influencers using brand assets incorrectly How influencer behaviour can impact brand reputation Why user-generated content can create copyright issues How hashtags and social media trends can unintentionally reshape a brand Practical steps businesses can take to protect their IP online Key Topics Discussed 1. Inconsistent Brand Use on Social Media When marketing teams, agencies, and influencers all use the brand differently — abbreviations, altered logos, or modified taglines — it can weaken trade mark protection and create confusion about the brand itself. 2. Influencer Use of Brand Assets Influencers often create their own visual content, which can result in: altered logos modified brand colours cropped or stylised trade marks branding combined with other products Without clear guidelines, this can dilute the brand or create legal issues. 3. Influencer Behaviour Risks Influencers effectively act as public ambassadors for the brand. Controversial or inappropriate behaviour can quickly create reputational damage for the business associated with them. 4. Loss of Control Over Brand Content Once content is posted online, it can easily be: shared copied modified repurposed Businesses may lose control over how their IP appears across social platforms. 5. User-Generated Content Customer photos, videos and reviews are valuable marketing tools — but reposting them can raise copyright and permission issues if the business does not have clear rights to reuse that content. 6. Hashtags and Brand Identity Campaign hashtags can sometimes become more widely used than the trade mark itself, creating confusion about the brand and potentially weakening trade mark protection. Practical Steps for Businesses To reduce social media IP risks, businesses should consider: Creating clear social media brand guidelines Including IP and brand use terms in influencer agreements Monitoring online use of brand names, logos and hashtags Obtaining permission before reusing user-generated content Maintaining consistent use of registered trade marks Protecting a brand online requires ongoing management, not just registration of trade marks. Learn More For more insights on protecting your intellectual property and building legally strong brands, visit: https://www.elisesteegstra.com About the Podcast Elise Explains IP breaks down intellectual property issues in a clear and practical way for business owners, founders, advisors and professionals. Each episode focuses on real-world brand, trade mark and IP issues that affect growing businesses — and how to manage them strategically.

    12 min

  2. 12 MAR

    *Bonus Episode* Katy Perry Trademark Battle: Timing Matters - Ep 15

    The Katy Perry Trade Mark Case: What the High Court Actually Decided Episode: Taylor v Killer Queen LLC [2026] HCA 5 Episode Overview In this episode of Elise Explains IP, we unpack the High Court of Australia’s long-awaited decision in Taylor v Killer Queen LLC [2026] HCA 5 — widely known as the Katy Perry trade mark case. The dispute involved an Australian fashion designer who registered the trade mark “Katie Perry” for clothing, and the global pop star Katy Perry, whose companies sold merchandise under the same name. After years of litigation and conflicting outcomes in the Federal Court and the Full Federal Court, the High Court has now clarified how trade mark reputation and priority dates interact under Australian law. The key takeaway: trade mark rights are assessed based on the position at the priority date — not with hindsight after someone becomes famous. This decision reinforces the importance of early trade mark filings, evidence of reputation, and careful brand strategy. What You’ll Learn In this episode we discuss: The background to the Katy Perry trade mark dispute Why the Australian designer registered “Katie Perry” as a clothing trade mark How Katy Perry’s companies challenged the validity of that trade mark Why the Full Federal Court cancelled the registration How the High Court reversed that decision Why the 2008 priority date became the central issue in the case What businesses should learn about trade mark timing and reputation Key Legal Issues Explained 1. Priority Dates in Trade Mark Law The High Court emphasised that the validity of a trade mark must be assessed at the time the application is filed. In this case, that meant asking whether Katy Perry had sufficient reputation in Australia in September 2008 to make the “Katie Perry” clothing mark deceptive or confusing. The Court held that the respondents did not prove that level of reputation at that time. 2. Reputation as a Ground for Cancelling a Trade Mark Under the Trade Marks Act 1995 (Cth), a trade mark can be cancelled if its use would be likely to deceive or cause confusion because of an earlier reputation. However, reputation must be proven with clear evidence at the relevant date. Later fame cannot be used to retrospectively invalidate a trade mark. 3. Why the High Court Allowed the Appeal The High Court found that the Full Federal Court had incorrectly concluded that the trade mark should be cancelled. Instead, the evidence did not establish that the singer’s reputation in Australia at the relevant time was strong enough to invalidate the registration. As a result, the High Court allowed Taylor’s appeal and restored the validity of the “Katie Perry” trade mark. Practical Takeaways for Businesses Although this case involved a global celebrity, the lessons apply to any business building a brand. 1. File trade marks early The earlier you file, the earlier your priority date is locked in — and that can be critical in disputes. 2. Reputation must be proven If you want to challenge a trade mark based on reputation, you need clear evidence of that reputation at the relevant time. 3. Courts won’t apply hindsight Later success or fame doesn’t change the legal position that existed when a trade mark was filed. 4. Brand strategy is risk management Choosing a name isn’t just a creative decision — it’s also a legal and strategic one. Case Details Case: Taylor v Killer Queen LLC Citation: [2026] HCA 5 Court: High Court of Australia Decision Date: 11 March 2026 Key legislation discussed: Trade Marks Act 1995 (Cth) Section 60 – Reputation as a ground for opposing registration Section 88 – Rectification of the trade mark register Links and Resources High Court decision: https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/HCA/2026/5.html High Court judgment summary: www.elisesteegstra.com  About Elise Explains IP Elise Explains IP breaks down intellectual property law into clear, practical insights for: business owners founders and entrepreneurs financial advisors and professional advisers brand owners and creators The focus is on helping businesses understand risk, protect their brands, and build valuable intellectual property assets. Subscribe Follow Elise Explains IP on your favourite podcast platform and share the episode with someone building a brand or launching a business.

    10 min

  3. 11 MAR

    Protecting Slogans as Trademarks: Guidelines - Ep 14

    Protecting Slogans & Taglines: When Words Become Trade Marks Many of the world’s most memorable brands are built around short phrases. Think “Just Do It”, “Because You’re Worth It”, or “I’m Lovin’ It.” But can businesses actually protect slogans and taglines as trade marks? In this episode of Elise Explains IP, Elise unpacks how trade mark law treats slogans, why many applications fail, and what businesses should consider before investing heavily in a tagline. While slogans can become powerful brand assets, they are not automatically registrable. The key issue is whether the phrase functions as a distinctive brand identifier, rather than just advertising language. In This Episode We explore: Why slogans can become valuable intellectual property The legal test for distinctiveness under trade mark law Why many marketing phrases fail to qualify for protection The difference between advertising copy and trade mark use Examples of well-known slogans that function as trade marks Practical considerations for businesses developing taglines Key Takeaways Not all slogans can be protected. Trade mark law generally prevents businesses from monopolising common promotional language. Distinctiveness is critical. A slogan must identify the source of goods or services, not simply describe them. Descriptive phrases are difficult to register. Taglines such as “Best Quality” or “Simply Delicious” are usually considered marketing language rather than trade marks. Consistent use can build protection over time. If consumers come to associate a slogan with a particular business, it may acquire distinctiveness through use. Strategic branding helps. Businesses that create distinctive, memorable slogans from the outset often have a much easier path to trade mark protection. Examples Discussed Examples of slogans that function as trade marks include: Nike – “Just Do It” L’Oréal – “Because You’re Worth It” McDonald’s – “I’m Lovin’ It” Red Bull – “Red Bull Gives You Wings” These phrases work because they are memorable, distinctive, and strongly associated with a single brand. Why This Matters for Businesses A slogan can become one of the most recognisable elements of a brand. But if it isn’t capable of trade mark protection, competitors may be able to use similar phrases. Understanding how trade mark law treats slogans helps businesses: Invest in branding that can actually be protected Avoid adopting phrases that are too descriptive Build long-term brand value through distinctive messaging Related Resources IP Australia – Trade Marks Overview https://www.ipaustralia.gov.au/trade-marks Trade Marks Act 1995 (Cth) https://www.wipo.int/trademarks/en/ My website https://elisesteegstra.com  About the Podcast Elise Explains IP breaks down intellectual property in practical, plain-English terms for business owners, professionals, and advisors. Each episode explores how IP works in the real world — and how businesses can use it strategically to protect brand value.

    9 min

  4. 4 MAR

    Shape & Colour Trade Marks in Australia (Moccona Coffee Case) - Ep 13

    In this episode of Elise Explains IP, we explore how packaging shapes and colours can function as trade marks under Australian law. We break down the legal test for non-traditional marks, why distinctiveness matters, how functionality can undermine protection, and what evidence you need if you’re building these kinds of brand assets. We also unpack a major recent dispute over the Moccona coffee jar and what it tells business owners about enforcing shape trade marks in practice. Key Topics Covered 1. What Counts as a Trade Mark? A “sign” under Australian trade mark law can include words, shapes, colours and packaging, so long as it can function as a badge of origin — meaning consumers recognise it as identifying one trader’s goods or services over others. 2. Packaging and Shape Trade Marks A shape or container can be registered as a trade mark if it’s distinctive and non-functional. Functional features (e.g. those that improve handling, storage or manufacture) generally cannot be monopolised under trade mark law. 3. Moccona Coffee Jar Case (Australia) Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 Moccona’s glass instant coffee jar shape was registered as a trade mark (Class 30 for coffee and instant coffee). The Federal Court dismissed Moccona’s claim that Cantarella’s (Vittoria) similar jar infringed the shape mark, finding that use of that jar shape in advertisements did not amount to use as a trade mark and that key factors pointed away from consumer confusion. The court also rejected Cantarella’s cross-claim to cancel the mark, holding that Moccona’s extensive use of the shape before the priority date had given it acquired distinctiveness under the Trade Marks Act. Why this matters for business owners: Registration is only part of the battle — enforcement hinges on how the packaging is actually perceived in the market, not just how it’s registered. 4. Colour Trade Marks – Can a Colour Alone Be Protected? Colour can be registered if it functions as a trade mark and distinguishes your goods/services. A classic international example is Tiffany & Co’s Tiffany Blue (registered in the U.S. for jewellery and packaging), showing how colour can serve as a badge of origin when strongly associated with a brand. 5. The Cadbury Purple Example The disputes over Cadbury’s attempt to register a specific shade of purple illustrate key principles for colour marks: Colour must be precisely defined and shown to function as brand identifier, not mere decoration. Key Legal Concepts ✔ Distinctiveness A mark — whether shape or colour — must be recognised by consumers as identifying the source of goods or services. ✔ Functionality If a shape is dictated by technical or functional necessity, registration is unlikely. Trade marks protect brand signals, not engineering features. ✔ Use in Trade Registration gains force only when the mark is actually used in the marketplace in ways that signal origin. Cases & Resources Here are links and references to the legal decisions and authoritative sources we discussed: Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 – Moccona coffee jar shape trade mark dispute (Federal Court of Australia) AustLii Case Decision Australian Trade Marks Act 1995 (Cth) – Defines eligible trade marks, including non-traditional marks (shapes, colours, packaging). (See also IP Australia guidance on colour trade marks) Trade Marks Act Practical Takeaways Shape and colour can be trade marks, but they must do real work in the marketplace as badges of origin. Evidence matters: Consistent use over time builds distinctiveness. Registration ≠ enforcement: Winning in court often hinges on how consumers actually perceive and use the brand elements in everyday purchasing decisions. Resources for Further Learning IP Australia manuals and guidelines on trade mark registrability Case summaries from IP practice firms Trade mark search and monitoring tools Book a strategy call with me: www.elisesteegstra.com

    8 min

  5. 25 FEB

    How Burger King Lost Its Name in Australia — Trade Mark Lessons for Growing Businesses - Ep 12

    How Burger King Lost Its Name in Australia — Trade Mark Lessons for Growing Businesses What happens when a global brand expands into a new country… and discovers it doesn’t legally own its own name there? In this episode, Elise breaks down the famous Australian branding anomaly behind Burger King and Hungry Jack's, and explains why this story is more than just business trivia — it’s a powerful lesson in trade mark strategy. If you’re planning to grow your brand beyond your current market, this is essential listening. What You’ll Learn Why trade marks are territorial and don’t automatically travel with your business How filing timing can determine who legally owns a brand name The real commercial costs of rebranding in a new market Why trade mark planning should happen before expansion, not after How this case still affects branding in Australia today The Story in Brief When Burger King attempted to enter Australia in the 1970s, it discovered the name was already registered locally. Rather than abandon the expansion, franchise partner Jack Cowin launched the business under an alternative name: Hungry Jack’s. Same burgers. Same business model. Different legal identity. Decades later, Australians still don’t visit Burger King — they visit Hungry Jack’s. Why This Matters for Business Owners This case illustrates three core trade mark realities: 1. Your brand only exists legally where it’s protected Registration in one country doesn’t create rights elsewhere. 2. Delay can cost you your name In many jurisdictions, whoever files first usually wins. 3. Rebranding is expensive and disruptive Changing names affects marketing, recognition, customer trust, and growth momentum. Practical Takeaways Before expanding internationally: Identify target markets early Conduct proper clearance searches File trade marks proactively Align filings with your expansion timeline Trade marks aren’t just defensive tools — they’re infrastructure for growth. About Elise Explains IP A practical podcast helping business owners understand intellectual property in plain English — with real-world examples, legal insights, and strategies you can actually use.

    9 min

  6. 18 FEB

    International Trademark Strategy Essentials - Ep 11

    International Trade Marks & When You Need Them Trade marks don’t travel. In this episode of Elise Explains IP, Elise breaks down the practical realities of international trade mark protection — when you need it, how to approach it, and what can go wrong if you delay. From manufacturing risks to eCommerce expansion, this episode explains why global business requires a global brand strategy. Key Topics Covered Why trade marks are territorial Registering with IP Australia protects you in Australia only — not overseas. Every country has its own system and its own register. Manufacturing risks in first-to-file jurisdictions Countries like China operate on a strict first-to-file basis, meaning suppliers, distributors, or trade mark squatters can register your brand before you do — potentially blocking exports or forcing you to buy your own brand back. Real-world disputes Luxury brand Jimmy Choo faced lengthy litigation in China after a third party registered a Chinese version of its name. Australian wine icon Penfolds has also encountered ongoing disputes involving similar marks and branding in the Chinese market. These cases illustrate a key lesson: reputation does not equal ownership. Expansion risks Entering a new market where someone else owns your mark can result in: Marketplace takedowns Customs blocks Licensing demands Rebranding costs The eCommerce trap Global shipping, international pricing, and cross-border marketing can amount to overseas trade mark use — even for small online stores. Two international filing pathways explained • Convention applications — separate filings in each country within 6 months of your Australian filing, offering independence and flexibility. • Madrid Protocol applications through the World Intellectual Property Organization — streamlined international filing with central management, but exposure to “central attack” risk during the first five years. When You Probably Need International Trade Marks You should be considering overseas protection if: You manufacture offshore You plan to expand internationally within 12 months You operate borderless eCommerce Investors are reviewing your IP position Your brand is central to business value Key Takeaway International trade marks aren’t about prestige — they’re about risk management. Filing early in key jurisdictions can protect: Your supply chain Your market access Your brand value Your scalability Because reclaiming a brand once someone else owns it overseas is far more expensive than protecting it early. Disclaimer This podcast provides general information only and does not constitute legal advice. Book a strategy call with me via my website: elisesteegstra.com.

    9 min

  7. 12 FEB

    Choosing a Strong Trademark: A Practical Guide - Ep 10

    Choosing a business name is exciting. Choosing a protectable business name? That’s strategic. In this episode of Elise Explains IP, we break down what actually makes a trade mark strong — and why most trade mark issues start at the naming stage, not at registration. If you're launching a new business, rebranding, or advising clients on brand strategy, this episode walks through the practical legal considerations that can save time, money, and stress down the track. What We Cover 1. Not All Trade Marks Are Equal Trade marks sit on a spectrum — from highly distinctive (and easy to protect) to generic (and impossible to register). The strength of your trade mark affects: How easy it is to register How broad your protection will be How enforceable it is The long-term value of your brand 2. The Trade Mark Strength Spectrum We walk through the hierarchy of trade marks, from strongest to weakest: Fanciful / Invented Marks Completely made-up words (e.g. Kodak, Xerox). ✔ Strongest protection ✔ Easier registration ✖ Require marketing investment to build meaning Arbitrary Marks Real words used in an unrelated context (e.g. Apple for computers). ✔ Highly distinctive ✔ Excellent legal position Suggestive Marks Hint at what you do without directly describing it (e.g. Netflix). ✔ Registrable ✖ Sometimes face closer examination Descriptive Marks Directly describe goods or services (e.g. “Fast Tax Returns”). ✖ Difficult to register ✖ Narrow protection Generic Terms The name of the product or service itself (e.g. “Coffee Shop”). ✖ No protection available Common Mistakes We See Choosing a name that “sounds safe” but is legally weak Falling in love with a brand before conducting searches Designing logos and buying domains before checking availability Assuming registration automatically guarantees broad protection Practical Checklist: Choosing a Strong Trade Mark When naming your business, aim to: Choose invented, arbitrary, or suggestive names Avoid directly describing your goods or services Be cautious with geographic terms Think about future expansion Conduct clearance searches early Get advice before committing to brand rollout Key Takeaway If your name immediately tells people exactly what you do, it may be great for marketing — but weak for trade mark protection. Distinctiveness drives registrability. The strongest trade marks often feel slightly abstract at first — but that’s precisely what gives them power. Who This Episode Is For Start-ups choosing a business name Established businesses considering a rebrand Accountants, lawyers, and advisors guiding clients Marketing professionals collaborating with legal teams

    6 min

  8. 28 JAN

    Cantarella Bros Round 2 - Ep 9

    In this episode of Elise Explains IP, we dig deeper into the long-running ORO trade mark saga — this time through the lens of the Federal Court case Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258. Rather than overturn the earlier High Court decision, this judgment demonstrates another way the enforceability of a foreign-word trade mark can be defeated. 🔎 Key Issues Explored 1. Background of the Dispute Cantarella Bros owns two registered trade marks for the Italian word ORO for coffee products. It sued Lavazza Australia, alleging that Lavazza’s use of ORO on packaging and advertising infringed those rights. 2. Was Lavazza Using ORO as a Trade Mark? Justice Yates confirmed that Lavazza was using ORO as a trade mark — despite arguments that it was only descriptive — because of how the word appeared and operated on the packaging. The Court reiterated that even descriptive elements can function as trade marks depending on use and presentation. 3. The High Court’s Earlier Ruling In 2014, the High Court confirmed ORO was inherently adapted to distinguish in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (the 2014 High Court decision), meaning the mark was not merely descriptive. You can read the full High Court judgment here: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 — https://www.hcourt.gov.au/showCase/2014/HCA/48. 4. Ownership and First Use Are Fatal The turning point in the Federal Court case was the cross-claim on ownership. Lavazza introduced evidence that an Italian company, Caffè Molinari SpA, had used ORO as a trade mark in Australia before Cantarella’s first use, undermining Cantarella’s claim to be the first user and owner of the mark. Justice Yates found that Molinari had not abandoned its earlier use, and therefore Cantarella was not the true owner of the ORO trade marks. 5. Invalidity and Cancellation Because Cantarella was not the first user, the Court held its registered ORO marks were invalid and should be cancelled. Although Lavazza arguably infringed the marks on the facts, that finding could not stand because the registrations themselves were defective. 6. Broader Legal Themes This case highlights two critical trade mark risks: Ownership matters as much as distinctiveness — valid registration doesn’t guarantee enforceability if first use is challenged. Unregistered use can be decisive — evidence of earlier use by others may invalidate a registered mark. 🧠 What This Means for Your Brand Trade mark enforcement isn’t just about distinctiveness — ownership and priority can make or break a case. Comprehensive due-diligence and historical use research are essential before you register and before you litigate. Keeping systematic records of use from first commercial use strengthens your rights and helps preserve enforceability years later. 🔗 Relevant Cases Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 High Court decision confirming the inherent distinctiveness of ORO and Cinque Stelle in Australia. https://www.hcourt.gov.au/showCase/2014/HCA/48 Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 Federal Court decision finding Cantarella’s ORO registrations invalid due to prior use by Molinari.

    7 min
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About

Elise Explains IP provides simple, expert guidance on trade marks, design registrations, copyright, brand strategy, and intellectual property law in Australia. Whether you're building a business or creating new content, Elise helps you understand your rights, avoid risks, and protect the value of your work.

Information

  • Creator
    elisesteegstra
  • Years Active
    2025 - 2026
  • Episodes
    16
  • Rating
    Clean
  • Copyright
    © Copyright 2025 All rights reserved.
  • Show Website
    Elise Explains IPcast