When will a boast be misleading and deceptive? - Friday, June 27, 2008
The recent decision of Edmonds J in Bannerhey Pty Ltd v 1800 000 000 Pty Ltd [2008] FCA 53 considers whether the respondents engaged in misleading and deceptive conduct. The allegations were based upon representations made in relation to the sale of master licences to use, and to licence others the use, the telephone number ‘1800 000 000’ and relevant know-how. This case highlights the fact that findings on issues of credit will be critical when the majority of the alleged representations are oral. This is because whether conduct is misleading or deceptive is ultimately a question of fact, to be determined in the context of known facts and circumstances, and in situations where there is conflicting evidence a Judge’s findings on credibility will determine which evidence is to be preferred.
Government Review of Copyright Exceptions that Permit Format Shifting – Submissions Invited - Monday, February 25, 2008
The Government is currently reviewing the operation of two copyright exceptions which allow for "format-shifting", that is, they permit photographs and cinematograph films to be produced in a different format for private use, subject to certain conditions. These exceptions are found in sections 47J and 110AA of the Copyright Act 1968 (Cth).
To contuine reading please click on the attached pdf.
Submissions are required to be made by 29 February 2008.
MYTHBUSTED: No Misleading or Deceptive Conduct - Friday, February 22, 2008
The recent decision of the Full Federal Court in Knight v Beyond Properties Pty Ltd looks at whether the producers and distributors of the popular TV series, Mythbusters, engaged in misleading or deceptive conduct and passing off. The case highlights the importance of obtaining a trade mark registration to protect your rights in a trade name which is to some extent descriptive.
The Full Federal Court unanimously dismissed a claim that Beyond Productions, the Discovery Channel, SBS and Foxtel (“Beyond”) engaged in misleading and deceptive conduct (under section 52 of the Trade Practices Act) and passing off in producing and distributing a series of television programs entitled “MYTHBUSTERS” (“the Mythbusters TV Show”) and three spin-off books from the series.
The Importance of Taking Settlement Offers Seriously - Friday, February 22, 2008
Even though the Appellant in this case was partially successful in its appeal, it recovered less by way of damages and costs than it would have recovered if it had accepted a “Calderbank” settlement offer made over a year before the appeal was heard.
The Federal Court upheld the Appellant’s appeal and found that the Respondent had engaged in misleading and deceptive conduct by offering for sale and selling photo boxes in very similar packaging to Woodtree’s photo boxes. However, the Appellant failed in the claim that its labels, made up of a photograph and unstylised text describing the product, qualified for protection as “drawings” under the Copyright Act 1968 (Cth).
World Trademark Review - Key aspects of trademark enforcement in Australia - Thursday, March 29, 2007
Many countries have similar systems for the registration and enforcement of trademarks. However, there will inevitably be differences, often borne out of the different jurisprudential bases on which these systems are based.
This article looks at trademark enforcement in Australia and highlights some aspects of the Australian legislation which differ from the US system. It also examines the main border protection methods available in Australia to trademark owners.
To contuine reading please click on the attached pdf.
Filing Design Applications in Australia - Friday, March 09, 2007
There are no forms in Australia that require the applicant’s signature at the time of filing. No Power of Attorney is necessary, however a number of documents and particulars are required to process an application.
Changes to IP Australia’s Fees - Friday, March 09, 2007
Changes to IP Australia’s fees and costs under the Designs, Patents, Plant Breeder’s Rights and Trade Marks Acts came into effect on 1 March 2007.
Passing of New Copyright Laws - Tuesday, February 06, 2007
Amendments made to the Copyright Act 1968 (Cth) in Australia by the Copyright Amendment Act 2006 (Cth) are now in full force.
Injunction granted against PBS-listed generic - Friday, November 24, 2006
Merck & Co Inc v GenRx Pty Ltd [2006] FCA 1407 (31 October 2006, Moore J)
The Federal Court has granted an injunction restraining GenRx from importing into Australia a generic version of Merck’s FOSAMAX osteoporosis treatment (alendronate). Moore J granted the injunction in a judgment delivered two days after the hearing and on the day of the scheduled importation.
Serious questions headed for a High Paced Verdict - Monday, October 23, 2006
CSL Limited v GlaxoSmithKline Australia Pty Ltd [2006] FCA 1301 (3 October 2006, Weinberg J). Also discussed in this case note are the amendments to the Australian Patents Act 1990, to allow springboarding for purposes connected with obtaining regulatory approval.
The change is here - The Intellectual Property Laws Amendment Act 2006 (Cth) - Sunday, October 22, 2006
In our May IP Law Update we reported on the changes that the Intellectual Property Laws Amendment Bill 2006 proposed to make to several pieces of Australia’s intellectual property legislation. On 27 September, 2006, the Intellectual Property Laws Amendment Act 2006 received Royal Assent.
Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd - Monday, September 18, 2006
Often in the commercial world, parties rely on a common under-standing or the otherwise inadequate protection of a handshake (or even a “shrugging” of the shoulders) rather than take the time to formally document the terms of an agreement. The recent decision of the Full Court of the Federal Court of Australia in Kovan Engineering (Aust) Ltd v Gold Peg International Pty Ltd illustrates why this is not a good idea.
Are you aware of your new document retention obligations? - Monday, September 18, 2006
Both individuals and organisations should be aware of the new Victorian laws that create increased document retention obligations. As part of the Victorian government’s response to the legal and policy implications of the McCabe tobacco case, new Victorian legislation came into effect on 1 September 2006.
Legal Professional Privilege - Waiver Principles - Thursday, July 20, 2006
Commissioner of Taxation v Rio Tinto [2006] FCAFC 86 (2 June, 2006)
A recent Full Federal Court case has held that there has been an implied waiver of legal professional privilege (“LPP”).
Shifting the law on copyright infringement - Monday, June 19, 2006
The Federal Government has recently announced that it will be introducing some important reforms to the Copyright Act to legalise the (temporary) recording of a TV or radio program known as “time-shifting”) and the transfer of music from a CD to a portable MP3 player or a video tape to DVD (known as “format-shifting”).
Time for a change to Australian Intellectual Property Laws? - Tuesday, May 09, 2006
On 30 March, 2006 the Intellectual Property Laws Amendment Bill 2006 (Cth) (“the Bill”) was introduced into the House of Representatives. The Bill proposes to make some significant amendments to the Patents Act 1990 (including amendments to clarify the prior use defence, to add another ground upon which a compulsory licence may be sought, to allow the award of exemplary damages and which affect the ability to “springboard” on pharmaceutical patents), and to the Trade Marks Act 1995 (including amendments which affect the revocation of trade mark rights and access to trade mark documents filed with the Trade Marks Office).
King Gee licence rights Undermined? - Tuesday, May 09, 2006
In Pacific Brands Sport & Leisure Pty Ltd v Underworks Pty Ltd, the Full Court of the Federal Court found that a purchaser of a business did not acquire the right to terminate a trade mark sub-licence the vendor had granted to a competitor.
The decision provides some pertinent reminders for those involved in assigning contractual rights, especially in the context of acquiring businesses. In particular,
it would seem that a novation agreement rather than a standard assignment agreement is required in virtually every instance concerning intellectual property rights.
Fairly based but obvious - Wednesday, April 05, 2006
Following the High Court’s decision in late 2004 that the claims of the patent were fairly based, the remaining issues to be determined concerning infringement, obviousness and insufficiency were remitted to the Full Federal Court. In its recent decision, the Full Federal Court overturned the primary Judge’s decision and held that the patent is invalid on the ground of obviousness.
