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Seqirus Inc. v ModernaTX, Inc. [2025] APO 15

2025 IP Australia Annual Report Breakdown: What the Numbers Really Tell Us

<h3>Background</h3><figure id="figure-ku3s842a4mcgyced2" class=""><figure id="figure-au2pr3qwmmmck8pfur" class=""><iframe id="au2pr3qwmmmck8pfur" src="https://www.youtube.com/embed/aqaRXxNXveQ" class="w-full bg-gray-100 " style="aspect-ratio: 16/9;" allowfullscreen="" data-url="https://youtu.be/aqaRXxNXveQ" data-corners="default" data-fullwidth="false" data-mce-src="https://www.youtube.com/embed/aqaRXxNXveQ" data-mce-style="aspect-ratio: 16/9;"></iframe></figure></figure><h3>🎯 Precision in Trade Mark Specifications is Critical</h3><p>The court ruled that “clothes” did not include “footwear” or “headgear” 👟🧢 under trade mark law, as these are not commonly considered part of “clothes” in everyday or trade usage.</p><p>This narrow scope reflected the applicant’s choice to list only “clothes” rather than broader class terms.</p><p><strong>🔍 Lessons:</strong></p><p>✅ Ensure trade mark applications clearly cover all relevant goods/services, using both dictionary definitions and industry norms.<br>⚠️ Be cautious—too narrow a scope can create gaps in protection.</p><h3>🤝 Joint Tortfeasorship: Control and Involvement Matter</h3><p>To be liable as a joint tortfeasor, there must be proof of common design or active cooperation—not just licensing.</p><p>Katy Perry’s company (Kitty Purry) and Ms. Perry herself were both liable due to their active roles in promoting and approving infringing products.</p><p><strong>🔍 Lessons:</strong></p><p>📋 Document and monitor the extent of involvement by licensees or third parties in using your trade mark.<br>🚨 Direct involvement (e.g. promotion, approvals) can result in legal exposure for both companies and their officers.</p><h3>🆔 Defences: “Own Name” and “Good Faith” Use</h3><p>The “own name” defence is only available to individuals, not companies or joint tortfeasors.</p><p>Ms. Perry succeeded in using this defence because her use was in good faith and preceded the other party’s business.</p><p><strong>🔍 Lessons:</strong></p><p>✅ Any personal name use must be genuine and in good faith, backed by evidence like timing and lack of confusion.</p><h3>⚖️ Honest Concurrent Use and Trade Mark Strategy</h3><p>Ms. Perry’s claim for “honest concurrent use” failed because she knew about the conflicting mark and there was an active dispute when she applied.</p><p><strong>🔍 Lessons:</strong></p><p>🚫 Don’t rely solely on honest concurrent use—especially if you’re aware of existing rights.<br>🕰️ Early, clear, and documented use with minimal confusion strengthens your position.</p><h3>📉 Risk Management and Enforcement</h3><p>Ms. Perry’s team took a “calculated risk” by continuing to sell merchandise under her name despite knowing of the conflicting trade mark.</p><p><strong>🔍 Lessons:</strong></p><p>📊 Assess risks and document potential issues before launching products.<br>📢 Share clear legal advice and risk mitigation strategies across teams.</p><h3>🗂️ Rectification and Removal of Trade Marks</h3><p>The court cancelled Ms. Taylor’s mark, correcting the register based on a proper interpretation of scope and case merits.</p><p><strong>🔍 Lessons:</strong></p><p>🧾 Keep strong documentation to challenge or defend marks.<br>🧠 Make informed decisions on filing, opposition, or cancellation, with a clear view of the legal landscape.</p>

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Seqirus Inc. v ModernaTX, Inc. [2025] APO 15

2025 IP Australia Annual Report Breakdown: What the Numbe...

Australian Full Federal Court Decision - Killer Queen, LL...