Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Tuesday, May 16, 2017

The Dating Game: Divisional Patents

By David Hunt, Lawyer

The Full Court of the Federal Court has clarified the date from which infringements of a divisional innovation patent will give rise to a right to recover compensation.

In Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 the Full Court decided that owners of divisional innovation patents will only be entitled to compensation in respect of acts of infringement occurring from the date the patent is granted. This overturns an earlier Federal Court decision that identified the relevant date as the date the standard patent on which the divisional application is based was filed.

The innovation patent provides Australia's 'second tier' of patent protection, being quicker and easier to obtain than a standard patent but offering a shorter period of protection. Such patents may be applied for independently or as divisional applications based on an existing standard patent application.

The Full Court's decision has the potential to significantly reduce the amount of compensation that may be recovered in respect of the infringement of a divisional innovation patent. As a result, the decision limits the advantages of strategically filing divisional patents to directly target infringers.

Monday, May 15, 2017

Pharmaceuticals and the budget – An interesting compromise, particularly for biosimilars

by Ric Morgan, Special Counsel

As part of the budget deluge, the agreement between Medicines Australia and the Commonwealth was released.  It seems designed to strike a balance between the commercial interests of pharmaceutical manufacturers who will or have brought new medicines to Australia, the Commonwealth's concerns about the cost of the pharmaceutical benefits scheme, and the other players in the sector.

Pharmaceutical manufacturers are agreeing to significant price cuts.  The agreement explicitly limits the increased price cuts to the period of the agreement. Theoretically, this means that the system could revert to the current price cut regime from 1 July 2022.  However, this seems unlikely in practice. The fact that a new agreement must be negotiated in the last year of the current agreement provides significant leverage for the Commonwealth to maintain the accelerated price cuts in this agreement.  The legislation necessary to implement these might provide clarification by including time limited changes or sunset clauses.  However, even if it does the Commonwealth can always amend that legislation later..

Wednesday, May 10, 2017

ACCC goes in for a slice of the pie – Domino's first to pay penalties under Franchising Code of Conduct

By Julia Kovarsky, Associate

The Australian Competition and Consumer Commission (ACCC) has published a media release announcing that Domino’s Pizza Enterprises Ltd (Domino’s) is the first franchisor to have faced and paid penalties for an alleged contravention of the Franchising Code of Conduct (the Code). This reaffirms the ACCC's focus, as stated in its Compliance and Enforcement Policy for 2017, on ensuring small businesses receive the full scope of protection of the Code.

Tuesday, April 18, 2017

Fizzy fight froths up again

By David Bennett, Law Graduate

The makers of V energy drink have improved their position a little bit by beating back a pre-trial application by nemesis Coca-Cola Company to block crucial evidence from being read in the appeal to register the colour mark.

Frucor Beverages now has the go-ahead to refer to affidavit evidence that describes two market surveys which may prove crucial in its de novo appeal against the Registrar's refusal in 2016 to register Pantone 376C green (which they called V green) in respect of energy drinks.

Thursday, April 13, 2017

Online advertisers beware: the Federal Court draws a distinction between using a competitor's trade mark in AdWords vs metatags

By Natasha Dixon, Lawyer

A curious Full Federal Court decision has left Australian trade mark law in the context of online advertising in a state of confusion. Last week, the court held that use of a competitor's trade mark in metatags does constitute use as a trade mark, and is therefore trade mark infringement. That conclusion is perhaps difficult to reconcile with a 2016 Federal Court decision that ruled that use of a mark in Google AdWords does not constitute trade mark use.

Wednesday, April 12, 2017

Social Innovation Startup Bootcamp – Register now!

Is your startup focussed on social innovation? Are you an Indigenous-owned startup?

If the answer to either of the above was yes, and you (or someone you know) would you like to learn more about the challenges facing social innovation enterprises and Indigenous  entrepreneurship, and how to overcome them, then Allens invites you to attend the Social Innovation Startup Bootcamp!

Monday, April 10, 2017

Clipso/Clipsal confusion causes cancellation

By David Hunt, Lawyer

It's lights out for Clipso Electrical after the Federal Court determined that registration of its CLIPSO trade mark should be cancelled.

The Court reached its decision on the basis that the CLIPSO mark was deceptively similar to Clipsal Australia's CLIPSAL mark and had been registered in bad faith. The Court also found that, through use of the CLIPSO mark, Clipso had infringed Clipsal's mark, engaged in misleading and deceptive conduct and was liable in passing off.

However, in a small victory for Clipso, it was found that it had not infringed Clipsal's 'famous' Dolly Switch shape mark; a decision that further illuminates the difficulties of successfully prosecuting infringements of shape marks.