It continues: Sirtex awarded over $2.5 million in UWA v Gray cross-claim - Monday, July 12, 2010
The Federal Court recently handed down the latest judgment (University of Western Australia v Gray (No 29) [2010] FCA 665) in the long-running matter of UWA v Gray, which we have covered in previous In Brief updates.
On 24 June 2010, Justice Barker ruled on the amount of damages payable in Sirtex Medical Limited’s cross-claim against Dr Bruce Gray for lost commercial opportunity and legal costs in the principal patent infringement proceeding. Even though Dr Gray successfully defended the University's claims, Dr Gray was ordered to pay Sirtex $1,762,224.33 in damages, a further $812,961.50 in interest, and legal costs, for failing to disclose certain correspondence to Sirtex which may have provided it with an opportunity to resolve the issue before litigation ensued. The Court had previously found that this amounted to misleading and deceptive conduct and a breach of the duties that Dr Gray owed to Sirtex, as a director of that company.
Author: Ally Akbarzadeh
Whiskas - Colour Purple found to be a registrable trade mark - Monday, July 12, 2010
Mars Australia Pty Ltd (“Mars”) filed Trade Mark Application no. 932937 on 4 November 2002 to register its trade mark for the Colour Purple in relation to: “Foodstuffs for domestic pets and additives for such foodstuffs” in class 31. The application was accepted following an ex parte hearing in relation to registrability. The application was successfully opposed by Societe des Produits Nestle SA (“Nestle”). Mars then instituted an appeal to the Federal Court.
The parties settled the dispute and proposed that the Court make Orders to the effect that the appeal be allowed, the decision of the Delegate be set aside and the trade mark proceed to registration in relation to the amended specification being “cat food and additives for cat food”.
The Court considered two grounds of opposition as set out below:
Firstly, the Court considered the ground of opposition that a registration may be opposed on the ground that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (Section 62(b) of the Trade Marks Act 1995).
It was found by Bennett J that statements made in the supporting evidence to the effect that no other manufacturers used Purple for pet food were false. However, there was other evidence before the Examiner referring to use of the Colour Purple on pet food products sold in supermarkets. On this basis, and perhaps surprisingly, the Court held that it cannot be concluded that the Examiner accepted the application “on the basis” of the false representations contained in the lead declaration filed in support of the application. In other words, there was no causal or connection between the suggested false statement and acceptance of the application according to the Court. Despite this finding, the case serves as a useful reminder to practitioners and declarants that great care should be taken to check the veracity of statements made under oath.
Secondly, the Court considered whether the trade mark was capable of distinguishing the applicant’s goods (Section 41 of the Trade Marks Act 1995).
In this regard, Mars relied upon substantial use and promotion of the Colour Purple in Australia from about April 2000. The Court found that the Colour Purple was the predominant colour used on the product packaging for all varieties of Whiskas cat food creating a stronger shelf-blocking effect when displayed on shelves.
It was noted that the colour was carefully chosen and that the precise Colour Purple was specifically developed to create a stronger brand identity for the Whiskas product.
Despite the fact that registrability is to be determined as at the filing date (4 November 2002), the Court found that a survey conducted on behalf of Mars in May 2009 supported the submission that Whiskas Colour Purple functioned as a badge of origin in relation to the goods.
Once again, this conclusion is rather surprising as it has been notoriously difficult to succeed in establishing distinctiveness of a mark on the basis of survey evidence (particularly if the survey was conducted subsequent to the filing date of the application).
While the Court found that other pet food traders used a similar Colour Purple on packaging, Bennett J found that such use on specific varieties within a product range did not amount to trade mark use. Therefore, the Judge found that Whiskas Colour Purple was capable of distinguishing Mars’ goods (as amended) as at the priority date.
Accordingly, Orders were made that the decision of the Delegate be set aside and the application proceed to registration with the amended specification of goods.
Author: Fiona Brittain, Associate
IN BRIEF UPDATE - 30 June 2010 - Wednesday, June 30, 2010
Patents for Abstract Ideas are out, but not Patents for Business Methods
The US Supreme Court in its long awaited decision, Bilski v Kappos, has rejected a patent application for a method of hedging risk on the basis that the claims were directed to an abstract idea. Yet, in doing so, the Court did not rule out patents for all business methods and reinforced only three exceptions to US patent eligibility: laws of nature, physical phenomena, and abstract ideas.
Justice Kennedy, in delivering the Opinion of the Court, said the US Patents Act indicated US Congress plainly contemplated that patent laws should be given a wide scope and that a permissive approach to patent eligibility ensured that "ingenuity should receive a liberal encouragement". The exclusion of laws of nature, physical phenomena, and abstract ideas was consistent with the notion that a patentable process must be new and useful. The Court made it clear that the "machine-or-transformation test", that had been adopted by the Court of Appeals for the Federal Circuit, was not the sole test for deciding whether a process is patent eligible and was only a useful and important clue, and an investigative tool. Kennedy J. accepted arguments that if the test was made the sole criteria it would create uncertainty as to the patentability of software, advanced diagnostic medical techniques, and inventions based on linear programming, data compression and manipulation of data signals, which would be unsatisfactory.
With regard to business methods, Kennedy J. said a business method is simply one kind of method that is, at least in some circumstances, eligible for patenting, and in searching for a limiting principle the Court's precedents on the unpatentability of abstract ideas provide a useful tool.
Four Justices joined Kennedy J.'s opinion, but Scalia J. did not concur with the opinion in relation to or comment on patents for business methods. Stevens J. delivered a concurring opinion with three other Justices who agreed the machine-or-transformation test was not the sole test, but held that business methods are not patentable.
In summary, the Court has opted to maintain a broad approach to patentable subject matter to allow inventors to obtain patents for a wide range of inventions. The shackles of the limiting machine-or-transformation test that has been used by the Patent Office have been removed and a positive approach can now be adopted. As mentioned by Kennedy J., the US patentable subject matter provisions are dynamic and designed to encompass new and unforseen inventions. Patent law can now continue its journey in the US.
Author: David Webber, Partner
IN BRIEF UPDATE - 30 June 2010 - Wednesday, June 30, 2010
Putting the (UGG) boot in - imprisonment for contempt
Deckers Outdoor Corporation Pty Ltd v Farley (No 8) [2010] FCA 657
The legal action brought by Deckers to try to restrain the infringement of its intellectual property rights in relation to its "UGG" branded footwear has culminated in the ordering by Justice Tracey of custodial sentences to punish contempt by three individuals who continued to make and distribute "UGG" branded footwear in breach of Court orders and undertakings given to the Court between 2003 and 2007.
As reported in the June 2010 edition of IP Update, the Court held that contempt charges were proven beyond reasonable doubt against Vladamir and Victoria Vaysman, two other individuals (one being Mr Vaysman's father) as well as two companies owned and operated by Mr Vaysman. On 24 June 2010 Justice Tracey handed down his decision on costs and penalties (other than for Mr Vaysman's father who successfully obtained an adjournment to prepare a plea).
In his decision, his Honour listed the considerations set out in Louis Vuitton Malletier SA v Design Elegance Pty Ltd (2006) 149 FCR 494 as relevant to the determination of an appropriate penalty for contempt and stated that the penalty was to serve both the interests of the Applicant and the administration of justice.
In relation to Vladimir Vaysman, his Honour noted that he had controlled the significant and highly profitable commercial operation that made, sold and distributed the counterfeit "UGG" boots. Mr Vaysman had acted with "contumelious disregard" of the Court orders and his undertakings and, rather than demonstrating any contrition, he had "continued to treat the curial processes with disdain". Justice Tracey found the conduct to be serious criminal contempt and one of the worst cases to come before the Court. In relation to Mr Vaysman's financial situation, he had entered voluntary bankruptcy after the substantial damages orders were made in September 2009. Although a sentence of imprisonment is a last resort for the Court, Justice Tracey found that nothing less would be appropriate. His Honour ordered concurrent terms of imprisonment for each of the 10 charges of contempt. The most serious offence was punished by a term of 3 years.
Victoria Vaysman had substantially admitted all charges against her but in May 2009 filed an affidavit which criticised her lawyers and suggested she resiled from some or all of those admissions. On the morning of the hearing, after receiving legal advice, Ms Vaysman filed another affidavit withdrawing the criticisms and offered apologies for her "wrongful behaviour". Both affidavits stressed the adverse impact that her imprisonment would have on her 4 year old daughter and set out her precarious financial situation. Justice Tracey weighed up the evidence and determined that a custodial sentence was appropriate, having regard to the conscious decision made by Ms Vaysman to participate in, and derive significant financial benefit from, her family's illegal conduct knowing that the conduct was in breach of Court orders. Notwithstanding her statements of remorse, Justice Tracey was also far from persuaded that Ms Vaysman appreciated the gravity of her misconduct. His Honour imposed concurrent terms of imprisonment for each charge, with a maximum term of six months. However Ms Vaysman was ordered to serve only two months with the remaining period suspended after taking into account her young daughter's circumstances.
Leonid Mykhalovski, who worked at the factory manufacturing the counterfeit boots, was found to have shown a "blatant disregard" of the Court orders and ordered to serve concurrent sentences of 1 month imprisonment for each of six charges.
Justice Tracey ordered the three individual Respondents to pay Deckers' costs on an indemnity basis.
Justice Tracey's decision, albeit in relation to unusually flagrant contemptuous conduct, reflects the seriousness with which the Court views contempt and the important role that penalties play in vindicating the authority of the Court. Imposing terms of imprisonment for contempt will undoubtedly act as a substantial deterrent to any infringer contemplating a continuation of infringing conduct in breach of a Court order or undertaking given to the Court.
Authors: Penny Smith, Associate and Ian Pascarl, Partner
Six Steps to Strategic Enforcement of IP Rights in Australia - Thursday, June 03, 2010
Proper assessment at the earliest stage of jurisdiction, forum, evidence and timing issues will go a long way towards protecting your intellectual property rights. Joy Atacador and Claire Ramsay share six steps to formulating a winning enforcement strategy.
This story first appeared in the April 2010 issue of Asia IP. More information about Asia IP is available at www.asiaiplaw.com.
IN BRIEF UPDATE - 24 May 2010 - Monday, May 24, 2010
Removing State Boundaries in New Australian Business Name Registration
From 4 April 2011, subject to legislation being passed by each state and territory, a new National Business Names Registration system will commence in Australia. Under the new system business names will be registered nationally. Currently, business name registrations in Australia are state and territory based, which means that business names must be registered in compliance with the laws and fees of each state and territory that a business seeks to operate in.
Under the proposed new system, business names will be registered provided they are not identical to an existing company or business name, do not contain offensive, prohibited or restricted words, and are not likely to mislead or deceive consumers and traders. Identical business names which have been registered under the current state and territory registration systems will be allowed to co-exist on the Register. A geographic designation will be added to distinguish these businesses on the Register; however the geographic designation will not become part of the business name. Additionally, the new system will allow registration of a business name that differs from another business name only by geographical indicator, regardless of whether or not there is a relationship between the businesses. Examples of this are: Jane's Plumbing and Jane's Plumbing Ringwood, and Kraven Newsagency and Warley Newsagency.
Importantly for franchised businesses, the system does not require the franchisee to supply the written permission of the franchisor to the Australian Securities and Investment Commission to obtain registration of a franchise name.
Under the proposed new system, the expansion across state and territory borders of formerly state and territory based businesses can be achieved without applying for new business name registrations. Importantly, this means that from 2011 trade mark owners will need to be more vigilant in monitoring the marketplace activities of other businesses, because relying upon the Australian Securities and Investments Commission Register will not be as useful in indicating the expansion of business.
Authors: Rodney De Boos, Partner and Danielle Roberts, Law Graduate
SUSTAINABLE SYNERGY - Maryam Khajeh radio interview on Eastside FM - Thursday, May 20, 2010
DCC's Maryam Khajeh speaks to Eastside FM's Frederick Malouf about IP rights, and in particular some of the obstacles faced by Australian businesses, and how they can be overcome. Please click here to listen to the full interview.
Please click here.
IN BRIEF UPDATE - 20 May 2010 - Thursday, May 20, 2010
Re: Last Drinks for Lion Nathan; the High Court Judgement in E. & J. Gallo Winery v Lion Nathan Australia Pty Ltd
In response to a claim by E. & J. Gallo Winery (Gallo) that Lion Nathan Australia Pty Ltd's (Lion Nathan) use of the words BAREFOOT RADLER infringed Gallo's registration of the trade mark BAREFOOT for wine, Lion Nathan applied to cancel Gallo's trade mark registration on the grounds of non-use. In proceedings before the Full Federal Court, the Court concluded that whilst Lion Nathan had infringed the registered trade mark, Gallo was not able to satisfy the Court that the trade mark BAREFOOT had been in use in Australia. On that basis the Court ruled that the trade mark registration should be removed from the trade marks register. Gallo successfully obtained High Court leave to appeal specific issues related to whether or not the trade mark BAREFOOT had been effectively used in Australia.
On 19 May 2010 the High Court delivered its judgement. In response to a key question put to the High Court, the Court ruled that an overseas manufacturer who has registered a trade mark in Australia and who himself (or through an authorised user) places the trade mark on goods which are then sold to a trader overseas can be said to be a user of the trade mark when those same goods, to which the trade mark is affixed, are in the course of trade, that is, are offered for sale and sold in Australia. This is because the trade mark remains the trade mark of the registered owner (through an authorised user if there is one) whilst the goods are in the course of trade before they are bought for consumption. During the trading period, said the Court, the trade mark functions as an indicator of the origin of the goods, irrespective of the location of the first sale. It followed that use of the trade mark BAREFOOT in Australia by Gallo was genuine and sufficient to establish use in good faith. Furthermore, the High Court found that Gallo's wine under the BAREFOOT label was properly in the course of trade when imported into Australia.
The result of the High Court judgement is that Lion Nathan's application to cancel the registered trade mark BAREFOOT has been rejected. Furthermore, Lion Nathan's advertising, offer for sale and selling beer under the name BAREFOOT RADLER infringed Gallo's registration for the trade mark BAREFOOT. Lion Nathan was ordered to pay Gallo's costs of the proceedings at first instance, the costs of the appeals to the Full Court of the Federal Court of Australia and the costs of the appeal and the application for special leave to cross appeal to the High Court.
Author: Trevor Stevens, Partner
IN BRIEF UPDATE - 14 May 2010 - Friday, May 14, 2010
THE UGG-LINESS CONTINUES
Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391
Background and summary
Since 2003, Deckers Outdoor Corporation Pty Ltd (Deckers) in a series of proceedings sought to restrain Vladamir and Victoria Vaysman and other individuals (including their parents) and companies associated with them from making or distributing footwear branded with the "UGG" trade mark. Deckers claimed that the use of the "UGG" mark by the respondents infringed Deckers' trade marks and copyright, passed off the respondents' products as those of Deckers and breached sections 52, 53 and 75B of the Trade Practices Act.
As we reported in December 2009, Deckers' claims were upheld against Hepbourne Pty Ltd (of which Vladamir Vaysman was sole director and shareholder). The claims against the other 21 respondents to that proceeding had been settled or disposed of by way of summary judgment.
Between 2003 and 2007 the Court ordered interlocutory and permanent injunctions and received undertakings restraining the respondents from making or distributing "UGG" branded footwear. Deckers discovered multiple breaches of these orders and commenced proceedings for contempt, seeking the imposition of fines and imprisonment. On 23 April 2010, Justice Tracey handed down his decision upholding substantially all of the charges of contempt. The matter will next proceed to a hearing on penalty. The decision is significant given that contempt proceedings are not common in intellectual property cases, most of the respondents denied the allegations, and the applicant is seeking custodial sentences.
Please see full text in our June edition of IP Update.
Authors: Penny Smith, Lawyer and Ian Pascarl, Partner
IN BRIEF UPDATE - 14 May 2010 - Friday, May 14, 2010
AUSTRALIA HIGH COURT DECISION REGARDING "AGGRIEVED PERSON" STATUS
Australasian Law Awards – IP Specialist Firm of the Year 2010 - Friday, May 14, 2010
Davies Collison Cave, is a Australasian Law Awards – IP Specialist Firm of the Year 2010 winner. The Australasian Law Awards are the premier awards event for the Australian and New Zealand legal industry. This is the fourth time the firm has taken out this prestigious award.
IN BRIEF UPDATE - 30 April 2010 - Friday, April 30, 2010
APRA to make direct music licensing easier.
On 16 April 2010, the Australian Competition and Consumer Commission (ACCC) re-authorised the Australasian Performing Right Association's (APRA) music licensing arrangements which provide a centralised means for businesses or individuals to obtain music licences rather than dealing directly with individual artists.
In the context of its review, the ACCC expressed concern that some of APRA's arrangements were unnecessarily onerous, discouraged direct dealing between its members and music users and reduced price competition between artists. In light of the ACCC's concerns, APRA has agreed to simplify its arrangements to make it easier for members to negotiate music licences directly with music users.
While artists or their record companies are currently able to negotiate directly with music users under APRA's "opt-out" or "licence back" arrangements, APRA has agreed to limit some of the requirements of its licence back arrangements to make it easier for members to grant licences directly. Specifically, APRA will now require less information from its members about the proposed licence with music users and has reduced its notification period for those arrangements. Currently, ARPA requires members to notify it of a direct licensing arrangement not less than one month before a user proposes to use that music.
As a result of these changes, businesses will now have more choice in how they source music which may have the effect of reducing the costs of licensing music. APRA's new arrangements will be more beneficial to businesses which wish to license only a targeted selection of music from a small number of artists (eg, businesses wishing to use only one artist's song for an advertising campaign). Businesses wanting to acquire a licence to use a wide variety of music from APRA's repertoire (eg, fitness centres, retail stores and supermarkets) will still benefit from the current cost saving arrangements by dealing directly with APRA.
APRA has announced that it will implement these changes in the near future.
Author: Tim Creek, Lawyer
IN BRIEF UPDATE - 30 April 2010 - Friday, April 30, 2010
AUSTRALIA AND NEW ZEALAND TO REVIEW
FOOD LABELLING LAWS AND POLICY
The Australia and New Zealand Food Regulation Ministerial Council has been charged with the task of undertaking a comprehensive review of food labelling law and policy in Australia and New Zealand. The scope of the review is broad given that "food labelling" for the purposes of the review is taken to include representations and claims about food that are, or could be regulated, under the Australia and New Zealand Food Standards Code or the consumer protection laws of either country. Thus, the review will cover all aspects of the labelling of food including, country of origin labelling and the intersection between food labelling and the labelling of complementary medicines under the therapeutic goods legislation. As all packaged foods, with very few exceptions, have labelling requirements, the results of the review are likely to have a wide impact on the way food is presented for sale in Australia and New Zealand.
The Ministerial Council has released an issues consultation paper and is conducting public meetings. Submissions have been called for and the deadline for the making of submissions is 14 May, 2010. Further information regarding the review is available at www.foodlabellingreview.gov.au.
Davies Collison Cave regularly reviews labels, packaging and advertising for products and services generally and would be pleased to assist in raising issues with the Ministerial Council through the submission process.
Author: Rodney DeBoos, Partner
IN BRIEF UPDATE - 15 April 2010 - Thursday, April 15, 2010
RESALE ROYALTY RIGHT FOR VISUAL ARTISTS SCHEME
On 9 December 2009, the Federal Government fulfilled its 2007 election promise to implement a scheme providing for visual artists to receive a royalty on resales of their works by passing the Resale Royalty Right for Visual Artists Act 2009 (Act). From 9 June 2010, visual artists will have a right to receive a five per cent royalty payment on secondary sales of their works over $1,000.
The Federal Government has appointed Copyright Agency Limited (CAL) to set up and administer the scheme. CAL will take a 10 per cent administration fee from all royalties collected under the scheme.
Importantly, sellers, buyers and art market professionals will need to ensure that they agree who will be responsible for paying the royalty in any particular transaction as the Act provides that they will all be jointly and severally liable to the artist for the relevant amount. Sellers will also need to ensure that they notify CAL of all commercial resales of an artwork within 90 days of a sale. Sellers who fail to comply with their obligations under the Act face civil penalties of up to $110,000 for a corporation and $22,000 for an individual.
While the scheme commences in a few months, there is still some way to go before benefits under the scheme start flowing to visual artists. More details of the scheme will be contained in the June edition of the Davies Collison Cave eMag.
Author: Tim Creek, Lawyer
March 29, 2010 - US HEALTHCARE REFORM: BIOTECH DATA EXCLUSIVITY AND BIOGENERICS - Wednesday, March 31, 2010
When the US House of Representatives passed the landmark healthcare reform earlier this
month the legislation provided the biotechnology industry with a 12 year period of exclusivity
for data relating to new biologics and provided the US Food and Drug Administration (FDA) with
the flexibility to create a pathway to enable the approval of biogenerics (or biosimilars).
Changes to New Zealand trade mark practice - Thursday, March 25, 2010
The Intellectual Property Office of New Zealand (IPONZ) has recently implemented a number of changes to trade mark practice, which benefit Australian IP lawyers or trade mark attorneys practicing trade mark law in NZ.
IN BRIEF UPDATE - 24 March 2010 - Wednesday, March 24, 2010
When is a Director likely to be found personally liable for infringement?
Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108
Summary
In Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 Justice Bennett concluded that a director and shareholder of the respondent MDS companies was personally liable for patent infringement because his involvement in the companies went beyond being simply a shareholder and director, and contributed to MDS infringing Inverness' patents. Her Honour's findings with respect to the relevant principles are applicable to all intellectual property cases where personal liability is in issue.
Full article can be viewed in IP Update March 2010 edition.
IN BRIEF UPDATE - 24 March 2010 - Wednesday, March 24, 2010
Nature’s Blend Pty Ltd & Ors– v- Nestle Australia Ltd [2010] FCA 198
LUSCIOUS LIPS LOLLIES
This case highlights the need for adequate sceeening of all wording used on product packaging and associated materials.
BRW Client Choice Awards 2010 - Best Patent and Trade mark Attorney Firm - Friday, March 19, 2010
Davies Collison Cave, is a BRW Client Choice Awards winner for 2010. The BRW Client Choice Awards are based on quantitative research into buyers of professional services, conducted independently by Beaton Consulting.
IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Kookaburra and iiNet copyright decisions to be appealed
Two recent Federal Court decisions on copyright law, which were both handed down on 4 February 2010, will be appealed to the Full Federal Court.
EMI Songs Australia Pty Ltd has lodged an appeal against Justice Jacobson's decision that a flute riff in the song "Down Under" made famous by Australian band Men At Work, infringed copyright in the children's song "Kookaburra Sits in the Old Gum Tree".
Thirty-four film and music studio companies have also appealed against the ruling of Justice Cowdroy that internet service provider iiNet did not authorise copyright infringement by its users. The Court found that iiNet was aware that some of its users were downloading pirated films and music using the BitTorrent protocol, but its failure to take action to terminate those users' accounts did not constitute authorisation of copyright infringement.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 01 March 2010 - Monday, March 01, 2010
Nothing eases for Maltesers on appeal
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
Mars Australia Pty Ltd ("Mars") took action against Sweet Rewards Pty Ltd ("Sweet Rewards") in the Federal Court of Australia alleging that Sweet Rewards had infringed Mars' trade marks and had engaged in passing off and misleading conduct by distributing a "Malt Balls" product in red and orange jars with a get-up said to be similar to Mars' "Maltesers" chocolate confectionary.
In December 2009, the Full Court of the Federal Court upheld the trial judge's ruling that Sweet Rewards had not infringed the Maltesers trade marks because:
• Sweet Rewards uses the mark "Delfi" as a trade mark to distinguish the "Malt Balls" as goods of Sweet Rewards, not the other elements of the red jar "Malt Balls" label; and
• The distinguishing feature of the Maltesers trade marks is the word "Maltesers" and the "Delfi" trade mark used on Sweet Rewards' red jar "Malt Balls" label is not likely to deceive or cause confusion.
The Full Court also agreed with the trial judge's conclusion that the "Malt Balls" red and orange jar labels did not pass off Sweet Rewards' products as "Maltesers" and no misleading or deceptive representation had been made.
In considering whether a competing mark is deceptively similar to a registered trade mark, it is important to identify the mark that has been used by the competitor as a trade mark, that is, those aspects of packaging or labelling that identify the origin of the competitor's product. Further, the fact that a registered trade mark has attained notoriety may be taken into account in the assessment of deceptive similarity.
This case serves to highlight that to succeed in a passing off and misleading conduct action, it is necessary to establish that the features of a product get-up:
• are distinctive to a particular trader;
• are not commonly used in the trade or merely descriptive or functional; and
• are used as a badge of origin
notwithstanding the presence of other distinguishing product name branding to identify the trade source of the product.
For a full report on this decision, please refer to the March 2010 edition of the Davies Collison Cave eMag.
Author: Joy Atacador, Partner
IN BRIEF UPDATE - 23 February 2010 - Tuesday, February 23, 2010
Life after IceTV: The Federal Court revisits copyright in compilations
Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44
In the wake of the IceTV copyright decision handed down by the High Court last year, a Federal Court judge has considered the copyright in Telstra's White Pages and Yellow Pages telephone directories.
Justice Gordon ruled in the PDC case that Telstra had not established that copyright subsisted in the White Pages and Yellow Pages telephone directories, for three main reasons.
First, the Court held that although many people had contributed to the creation of the telephone directories, many of the "authors" of the directories (within the meaning of the Copyright Act 1968 (Cth)), had not been, or were not able to be, identified.
Second, the Court held that even if the authors could have been identified, much of the work done in creating the telephone directories:
(a) did not constitute "independent intellectual effort" or was not "sufficient effort of a literary nature" by the contributors such that they could be considered to be "authors" of the directories for copyright purposes;
(b) was done prior to the telephone directories taking their "material form", and therefore was not work that could be taken into consideration when determining originality; or
(c) was computer generated, rather than the result of human effort.
Third, the Court held that the creation of the White Pages and Yellow Pages telephone directories did not involve "independent intellectual effort" or the exercise of "sufficient effort of a literary nature", as discussed by the High Court in the IceTV decision. The Judge held that the telephone directories therefore did not constitute "original" works capable of protection under the Copyright Act.
The Judge also distinguished the PDC case from an earlier decision of the Full Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491, which had held that copyright did subsist in various telephone directories. The Judge held that the earlier case differed from the PDC case, as the authorship of the telephone directories had not been challenged by Desktop Marketing Systems.
Author: Miriam Zanker, Associate
IN BRIEF UPDATE - 15 February 2010 - Monday, February 15, 2010
UWA v Gray
The High Court today (Friday 12 February, 2010) dismissed an application for special leave to appeal by the University of Western Australia (UWA) in a matter against former UWA academic Dr Bruce Gray, relating to ownership of patent rights covering the production and use of microspheres for targeted treatment of human tumours. At the heart of matter was the issue of ownership of patent rights by employees not bound by a specific duty to invent within their employment contracts. The facts of the case were not contested and the High Court justices hearing the application considered that there was no error in the judgement at first instance by Justice French (who is now the Chief Justice of the High Court) and whose decision was affirmed by the Full Federal Court 9[2009] FCAFC 116 (3 September 2009). This decision may have consequences not just for other universities but also for companies and organisations involved in research and development where the employment or research contracts in place do not specifically outline that a researcher is employed to invent, rather than simply to conduct research.
CHANGES TO AUSTRALIAN GRANTS SCHEMES - Wednesday, February 10, 2010
The grants available under the COMET Grant Scheme ended on 31 December, 2009 and were superseded by "Proof of Concept Grants" from 4 January, 2010. The new scheme is said to be a simpler form of assistance to companies seeking to take their ideas to market.
A Proof of Concept Grant provides funding of between $50,000 and $250,000 over a 12 months period to fund expenditure incurred to establish the commercial viability of a new product, process or service. The applicant is required to match the funding provided by the Grant on a 50:50 basis.
The types of expenditure which are eligible are labour expenditure, contract expenditure, plant expenditure, prototype expenditure and intellectual property protection expenditure. Applications for the Grant are made to Commercialisation Australia and further information is available from the website at www.commercialisationaustralia.gov.au.
Importantly, projects which predominantly consist of early stage investigation and conceptual development will not be eligible for the Grant.
Interview on ABC Radio - Trevor Stevens - Monday, February 08, 2010
ABC Radio aired an interview with Trevor Stevens, Partner of Davies Collison Cave regarding trade mark issues and recent developments during 2009, particularly with respect to colours, shapes and design trade marks. Please click here to read/listen to the full interview.
Please click here.
IN BRIEF UPDATE - 4 February 2010 - ISP Wins against Motion Picture Studios - Thursday, February 04, 2010
Roadshow Films Pty Ltd –v- iiNet Limited (No. 3) [2010] FCA 24
In a landmark decision, which has been closely watched around the world, Australia's third largest ISP, iiNet, has succeeded against the major motion picture studios in the US and Australia. The studios argued that by not acting on infringement notifications and allowing the ISP's users to continue to use BitTorrent to download the studios' copyright works, the ISP was authorising infringement by the users and therefore liable under the Australian Copyright Act.
The Court found that the users did infringe the studios' copyright using BitTorrent, and iiNet did not act to stop them. Yet, under the law of authorisation, the Court felt that there was a clear distinction between infringers, such as in the Court's Kazaa decision, who provided the "means" of infringement, as opposed to establishing some precondition for the infringement to occur. In this instance, the ISP had not provided the "means" of infringement, which was the BitTorrent system, and all it provided was access to the Internet which can be used for a wide variety of purposes. The ISP had no control over the BitTorrent system and was not responsible for the operation of it. It was also felt that adopting a notification, suspension and termination of customer accounts scheme would not give the ISP power to prevent copyright infringement itself or that it would be a reasonable step to pursue. The rationale for this conclusion derives from the technical complexities associated with determining infringement and the contractual relationship between the ISP and its users.
The ISP was found not to sanction, approve or countenance copyright infringement because it had done no more than provide an Internet service to its users.
In view of the Court's findings on authorisation it was not necessary for it to consider whether iiNet could rely on the "safe harbour" provisions to avoid infringement. Yet it found iiNet did have a repeat infringement policy, which would have allowed it to rely on the provisions to limit the orders the Court could make.
The Court said the law precludes authorisation of infringement, but does not impose a positive obligation on any person to protect the copyright of another.
The decision is a significant blow for the studios who are trying to bring about a change in the behaviour of Internet users. It is impractical for the studios to take action against all of the infringing users, and BitTorrent was developed for distributing large software files, not media files. The studios may appeal the decision to continue a campaign to make ISPs responsible for the actions of their customers.
The decision is available at: http://www.austlii.edu.au/au/cases/cth/FCA/2010/24.html
Author: David Webber, Partner
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228 23 October 2009
The Federal Court recently made an Order for Security for payment of costs against Austin, Nichols & Co Inc (“Austin Nichols”), which is ordinarily resident outside the jurisdiction. Austin Nichols attempted to defend the Application for Security for Costs by relying upon a valuable portfolio of several Australian trade mark registrations for WILD TURKEY in relation to whiskey products.
However, it was held by the Court that such assets did not constitute readily realisable assets. The Judge commented that while a receiver may eventually be able to sell the trade marks, the course of doing so might well be fraught with considerable difficulty and delay. On this basis, an Order for Security for Costs was made.
Author: Fiona Brittain, Associate
IN BRIEF UPDATE - 11 January 2010 - Monday, January 11, 2010
Food Channel Network Pty Ltd – v- Television Food Network, G.P [2009] FCA 1445
In a recent Federal Court decision the Court had to consider the circumstances in which leave to appeal to the Full Federal Court would be granted to Food Channel Network Pty Ltd.
The Court applied a two step test in relation to the issue of whether leave to appeal should be granted, as follows:
a) Whether there is sufficient doubt to warrant reconsideration of the matter by a Full Court; and
b) Whether the denial of an opportunity to appeal would involve a substantial injustice supposing the decision of the primary Judge to have been wrong.
The sufficiency of the doubt and the extent of potential injustice involved must be balanced against each other.
In relation to paragraph (a), the Judge found that there was sufficient doubt in relation to the primary Judge’s decision to disallow the Applicant’s reliance at the hearing upon additional affidavit material, which related to ownership and use of the opposed FOOD CHANNEL trade mark. The additional affidavit had been prepared very shortly before the trial after Food Channel appointed lawyers to represent it at the hearing.
The Judge stated:
“Finally, I have doubts whether a sufficient (or any) allowance was made to accommodate the fact that, until the last minute before the trial, Channel was, in effect, a self-represented litigant.”
In addition, there was sufficient doubt in relation to the primary Judge’s assessment of whether the opposed FOOD CHANNEL trade mark was deceptively similar to earlier FOOD NETWORK trade marks owned by the Respondent Television Food Network, G.P.
In relation to paragraph (b), if leave was not granted, the trade mark application would be at an end as the opposition would be upheld. Therefore, the substantive rights would have been finally determined.
It was held that a small amount of doubt about the primary Judge’s decision would be sufficient given the substantial injustice that Food Channel would suffer if leave was refused.
On the basis of the foregoing, the Federal Court granted leave to Food Channel Network Pty Ltd to appeal the primary Judge’s decision delivered on 27 March 2009.
Author: Fiona Brittain, Associate
Commercialisation Australia – are you eligible for funding? - Wednesday, December 23, 2009
Commercialisation Australia is a new initiative designed to take “a radically different approach to commercialising Australian research and ideas”. The initiative is delivered by the Department of Innovation, Industry, Science and Research and is now the primary source of Australian Government assistance for commercialisation.
The scheme is a merit based, competitive program that provides assistance in four different areas. Successful applicants are assigned a Case Manager and have access to Volunteer Business Mentors.
IN BRIEF UPDATE - 21 December 2009 - Monday, December 21, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
Cont...
Serengeti E-Billing Certification - Friday, December 18, 2009
Davies Collison Cave is a Serengeti certified e-billing enabled law firm. Davies Collison Cave has successfully submitted electronic invoices through Serengeti e-billing. The certification label communicates the following:
The certified firm has configured their time and billing software to produce electronic invoices. The additional LEDES 1998B certification indicates that the firm is able to produce LEDES compliant invoices.
The certified firm is actively submitting electronic invoices to one or more clients through the Serengeti system.
IN BRIEF UPDATE - 15 December 2009 - Tuesday, December 15, 2009
A Pensive Woman – Novel Claims Brought in the Supreme Court of Victoria over Claims of "Fake Art"
Blackman & Dickerson v Gant Supreme Court of Victoria Action No. 9785 of 2008
Novel claims
Three artworks are at the centre of Supreme Court proceedings that raise questions of whether the Fair Trading Act 1999 (Vic) will extend to claims that valuations and sales of "fake artworks" constitute misleading or deceptive conduct in the course of trade or commerce.
Background
In late 2008 the artists Charles Blackman and Robert Dickerson commenced proceedings for permanent injunctions preventing the owners of two Melbourne art galleries, Gretz Gallery and Peter Gant Fine Art, from selling what the artists claim are fake artworks attributed to them. The works are signed with the names of the artists and, it is claimed, were held out by the gallery owners (impliedly or otherwise) as authentic works. The artists claim the works are "fakes" and seek orders for the delivery up of the works for destruction and damages.
The artists contend that Peter Gant (the owner of Peter Gant Fine Art in Carlton) valued and sold an art work named Street Scene with Schoolgirl as a work of Blackman, although it was not created or signed by the artist. The buyer of that work returned it to Gant who refunded its purchase price after an expert viewed the work and suggested that it was not authentic. It is claimed that Gant subsequently supplied and valued the same work together with a second contentious work named Three Schoolgirls as works of Blackman to Gretz Gallery in Albert Park, owned by Helen Stewart. The Gretz Gallery then sold the two "Blackmans" on to Robert Blanche on behalf of Baymanta Pty Ltd ("Baymanta").
Gant allegedly sold another work named Pensive Woman directly to Mr Blanche on behalf of Baymanta. Valuations of the work were also provided by Gant as part of this transaction. The artists claim this work was held out to that of Robert Dickerson, when it was not made or signed by the artist. In 2008 Mr Blanche showed the works to the expert who had first questioned the provenance of Street Scene with Schoolgirl. He gave an opinion that the two "Blackmans" were not by the artist, and referred Blanche to Stephen Nall, an expert on the works of Dickerson, concerning the authenticity of Pensive Woman. The expert opinion was that Pensive Woman was not a work of Dickerson.
Status of proceedings and legal issues
Proceedings were commenced in November 2008. Since then the artists have settled out of court with the First Defendant, Helen Stewart of Gretz Gallery, on undisclosed terms. The matter remains on foot against Gant after the parties attempted, unsuccessfully, to resolve the dispute by mediation earlier this year.
Two categories of representations made by Gant are claimed to be "misleading or deceptive" for the purposes of s 9 of the Fair Trading 1999 (Vic). Firstly, the provision of the valuations of the artworks by Gant which the artists claim impliedly represented that each of the artworks were authentic and not fake works. This raises questions of whether the valuations in particular were "misleading" or made in the "course of trade or commerce" for the purposes of the consumer protection provisions. There are property valuation cases that may be useful comparative authorities on this point.
Secondly, that Gant made an implied representation that the "fake Dickerson" was authentic by selling the Pensive Woman to Mr Blanche on behalf of Baymanta. For this claim to be successful the artists will need to demonstrate that the sale of Pensive Woman carries the implied representation that the work was in fact authentic. The artists will place reliance upon expert opinion evidence to establish the works as "fake".
A similar situation was considered by the Federal Court in The Saints Gallery Pty Ltd v Plummer (1988) 80 ALR 525 in a claim run under s 52 of the Trade Practices Act 1974 (Cth). In that case Saints Gallery sold work works on consignment to Plummer, who had previously valued and authenticated works on occasion for the Gallery. The Saints Gallery relayed to Plummer anecdotal provenances for the four paintings before purchase, as told to the Gallery by the consignor. On appeal it was determined that the Saints Gallery had not engaged in misleading or deceptive conduct. Important to this finding was that the Court found (1) there was no basis to conclude that the Saints Gallery had any positive knowledge of the provenance of the works other than that related to Plummer; (2) it was apparent that the Saints Gallery was not the source of the information on provenance; (3) it disclaimed any belief in the truth or falsity of the works' "histories", merely passing it on for what it was worth; (4) Plummer placed no reliance on the Gallery owner's ability to judge the authenticity of the paintings.
A trial date for Blackman & Dickerson v Gant has been scheduled for late March, 2010.
For further information please contact:
Rodney De Boos (Partner) or Sally Wilson (Lawyer) on +61 3 9254 2777
IN BRIEF UPDATE - 10 December 2009 - Thursday, December 10, 2009
Internet Industry Association refused leave to participate in the iiNet copyright case.
Roadshow Films Pty Ltd v iiNet Limited (No. 2) [2009] FCA 1391
The Internet Industry Association ("the IIA") was recently unsuccessful in its application to participate in the copyright infringement case brought against internet service provider iiNet by Roadshow Films and various other members of the film industry.
The IIA is not a named party in the court proceedings, but sought leave to intervene because this was the first Australian case to consider the internet safe harbour provisions in the Copyright Act. Those provisions are designed to protect carriage service providers in circumstances where their customers have engaged in copyright infringement, such as by downloading illegal copies of films or music.
The IIA told the Federal Court that, as Australia's national representative of the internet industry, it could provide "unique assistance" to the Court, and could offer a broader perspective on the various policy issues surrounding the application of the safe harbour provisions.
In refusing the IIA's application, Justice Cowdroy noted that iiNet had already raised the issues that the IIA intended to raise in the case. Accordingly, His Honour held that there was no new material that IIA could bring to the Court's attention which would assist in the determination of the issues.
The case has now been adjourned after almost five weeks of hearings, and Justice Cowdroy has reserved his decision.
Miriam Zanker, Associate
IN BRIEF UPDATE - 9 December 2009 - Wednesday, December 09, 2009
THE GOOD, THE BAD AND THE UGG-LY
Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298
The dispute over liability for the sale of sheepskin boots featuring the "UGG" brand reached its final conclusion on 13 November 2009 when Justice Tracey handed down his decision on the last-remaining issues of copyright infringement, passing off and misleading and deceptive conduct in Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298. There had been a total of 23 respondents to the proceeding but a series of settlements and summary judgments had left Deckers Outdoor Corporation Inc to advance its claims only against Hepbourne Pty Ltd.
Justice Tracey held that copyright subsisted in Deckers' "UGG Logo" and its "sun device" and held that Hepbourne had both infringed and authorised the infringement of those copyright works on its "UGG" branded boots. His Honour also found that, based on Deckers' well-established reputation in the UGG brand, Hepbourne had engaged in passing off and misleading and deceptive conduct under ss52 and 53 of the Trade Practice Act 1974 (Cth) (the TPA). Compensatory damages were assessed at $3,000,000 and Justice Tracey ordered Hepbourne to pay $3,500,000 in additional damages for infringing conduct described as "one of the worst of its kind to come before the Court".
For a full report on this decision, please refer to the next edition of the Davies Collison Cave eMag.
Authors: Penny Smith, Lawyer and Ian Pascarl, Partner
World Trademark Review Daily: Application for cancellation of platypus mark dismissed - Wednesday, December 02, 2009
In Wilkshire v The Registrar of Trademarks ([2009] FCA 1222, October 30 2009), the Federal Court of Australia has dismissed an application for the cancellation of a trademark owned by Bombala Council.
The serenity of the scenic Platypus Country in the New South Wales shire of Bombala and adjacent Victorian shire of Delegate has been disturbed by the long-running battle between Bombala Council and Peter Wilkshire in relation to a trademark containing the image of a platypus and the words 'Platypus Country'.
Marion Heathcote wins the award for the Advancement of Trademark Law - Monday, November 09, 2009
The International Trademark Association (INTA) today announces its annual President’s and Volunteer Service Awards winners. These awards honor the individual achievements of trademark owners and practitioners during the past year.
Please see attachment for full details.
Intellectual Property Law Bulletin Vol. 22 No. 5 - Thursday, November 05, 2009
New Zealand Trade Mark Law—the same as Australia?
Nick Holmes DAVIES COLLISON CAVE
Many Australian IP lawyers and trade mark attorneys also practice directly in New Zealand —especially in relation to filing and prosecuting trade mark applications there. It does not take long before Australian practitioners realise that, although NZ trade mark law is similar to Australia, there are numerous subtle differences which can catch out the unwary.
IN BRIEF UPDATE - 27 October 2009 - Tuesday, October 27, 2009
Commercialisation Australia Initiative.
On 21 October 2009 the Government unveiled details of the $196 million Commercialisation Australia initiative designed to fill the gap left from the axing of the Commercial Ready Scheme in 2008. Commercialisation Australia will begin operating in 2010 and involves a multi-tiered approach to assist inventors, innovative firms, researchers and entrepreneurs to rework their ideas into successful commercial projects. Participants will receive specialist advice and services from CEOs and industry mentors and successful applicants will be awarded up to $250,000 for proof of concept activities and repayable funding of up to $2 million for early stage development and commercialisation activities.
Senator Kim Carr, Minister for Innovation, Industry, Science and research said:
“The radical new program for commercialising research will take a completely new approach to innovation assistance. It will tailor assistance to applicants’ needs, not fit the applicant to the program”
“Commercialisation Australia is specifically designed to boost early stage commercialisation by leveraging private sector capital and expertise”
Senator Carr also called for expressions of interest for board membership of CA, volunteer mentors and case managers.
The CA program affords some relief to struggling inventors, innovative firms, researchers and entrepreneurs but the $196.1 million over four years and $86 million each year thereafter falls well short of the funding allocated for the program’s predecessor Commercial Ready with its budget of $1 billion.
Author: Kimberley Trainor, Associate
IN BRIEF UPDATE - 25 August 2009 - Tuesday, August 25, 2009
E & J Gallo Winery v Lion Nathan Australia Pty Limited
In the long-running dispute between E & J GALLO WINERY and LION NATHAN AUSTRALIA PTY LIMITED regarding the trade mark BAREFOOT, GALLO has been successful in obtaining special leave to appeal the judgment of the Full Federal Court. In its judgment the Full Federal Court concluded that GALLO's non-use of its trade mark in Australia within the prescribed period of three years had the consequence that the trade mark should be removed from the Australian Trade Marks register. The leave to appeal application raised two specific issues.
The first issue is whether there is use of a registered trade mark in Australia by the registered owner of the trade mark in circumstances where the trade mark is applied to goods outside Australia and the registered owner of the mark is not aware that those goods are being offered for sale or sold in Australia. The second issue to be considered by the Court is whether, in the circumstances envisaged by the first question, the only use of the registered trade mark in Australia is the use made by the wholesaler or retailer in Australia who offers the goods for sale rather than the registered owner of the trade mark.
These issues have implications for all overseas owners of trade marks registered in Australia in circumstances where goods bearing the registered trade mark are offered for sale in this country by unrelated third parties. The issues raised by Gallo are likely to be considered by the High Court before the end of this year.
Author: Trevor Stevens, Partner
IN BRIEF UPDATE - 7 August 2009 - Friday, August 07, 2009
Verse 1 wine hits wrong note by breaching Jane Rutter's copyright.
Rutter v Brookland Valley Estate Pty Ltd [2009] FCA 702.
Australian flautist Jane Rutter recently won a copyright infringement case against a Western Australian winery, Brookland Valley Estate. In 1999 Ms Rutter licensed Brookland Valley to print part of her musical composition, "Blo", on the labels of bottles in its new "Verse 1" wine range, for a $35,000 fee. Brookland Valley's use of "Blo" was limited to 90,000 bottles of two varieties of wine only.
Despite the 90,000 bottle limit being exceeded within the first 12 months, Brookland Valley continued to use labels featuring 12 bars of Ms Rutter's musical work until August 2007, by which time it had been used on more than 5 million bottles of five different varieties of Verse 1 wine. A revised version of the labels was used from January 2006 which featured only 4 bars of Ms Rutter's music, but did not attribute Ms Rutter as composer. Ms Rutter sued Brookland Valley for copyright infringement in April 2007.
Justice Buchanan held that Brookland Valley had infringed Ms Rutter's copyright by continuing to use Ms Rutter's composition on Verse 1 labels for at least 7 years after the copyright licence had expired. The music printed on the labels was held to be a "substantial part" of Ms Rutter's musical work as those bars contained "the crux of the melody". Justice Buchanan also held that Ms Rutter's moral rights had been infringed as Brookland Valley failed to attribute her as the composer from January 2006 onwards.
Justice Buchanan ordered Brookland Valley to pay $208,684 in compensatory damages (based on a royalty of 2 cents for each bottle exceeding the initial 90,000 bottle limit), plus interest of $84,693. Bottles that had been produced and sold outside the 6-year limitation period were excluded from the damages amount. Brookland Valley was also ordered to pay $150,000 in additional damages given its "unsatisfactory and flagrant disregard" of Ms Rutter's rights for approximately 8 years.
The decision serves as an important warning to copyright licensees to be vigilant in ensuring that copyright licences are adhered to. If circumstances change or if a copyright work is used beyond the expiry of a licence, the licence terms should be re-negotiated or renewed.
Author: Miriam Zanker, Associate
Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair to ACIP - Tuesday, December 23, 2008
On 22 December, Senator Kim Carr, Minister for Innovation, Industry, Science and Research announced a new Chair and four new appointments to the Advisory Council on Intellectual Property (ACIP). The new council chair, Mr Leon Allen is a partner of the patent and trade mark firm Davies Collison Cave, and vice president of The Institute of Patent and Trade Mark Attorneys of Australia.
Repeal of the Safeguard Clause - Friday, September 12, 2008
In relation to an International Registration, the so called ‘safeguard clause’ in the Madrid Protocol provides that where the holder’s country of origin is party to both the Madrid Protocol and Madrid Agreement, the provisions of the Agreement will govern the treatment of designations against that International Registration of member states which are also party to both treaties. With effect from 1 September 2008, the safeguard clause will be repealed and the Protocol will now govern the affected designations.
Developments in Australian Trade Mark Law - Friday, May 30, 2008
The Trade Marks Amendments Act 2006 (Cth) and Intellectual Property Laws Amendment Act 2006 (Cth) have introduced significant changes to the Trade Marks Act 1995 (Cth).
Please click on the article to read more.
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.
Changes to the Australian Trade Marks Act 1995 - Friday, November 24, 2006
The Trade Marks Amendment Act 2006 (“the Amendment Act”) received Royal Assent on 23 October 2006. The Amendment Act results from a review undertaken by IP Australia to ensure the Act was meeting the needs of Australian businesses and users of the Australian trade mark system.
Protection for Colour Purple by Cadbury - Monday, July 31, 2006
What do you think of when you see chocolate in a Purple wrapper? Recent decisions of the Australian Trade Marks Office and the Federal Court issued on the same date throw light on this question.
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).
