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

Wednesday, March 20, 2013

When a strong case is not enough

By Senior Associate Tom Reid

Justice Foster's recent decision in Snack Foods Limited v Premier 1st Pty Ltd illustrates that when seeking an interlocutory injunction, a strong prima facie infringement case alone may not be enough.

Snack Foods Limited owned a registered trade mark for the words POPPED CORNERS in classes covering various snack foods. The mark was registered in June 2011. At the time of the hearing, the applicants had not yet launched any snack product under the mark. The launch was due in March 2013. In the meantime, Premier 1st had entered into an agreement with Medora (a US company) to distribute Medora's US range of snack products in Australia under the mark POPCORNERS. Premier 1st began marketing in October 2011 ahead of an anticipated November 2012 launch.

Snack Foods and its licensee sued for infringement. Premier 1st and Medora denied infringement and cross-claimed for cancellation of the registration. The Snack Foods companies sought an interlocutory injunction, and when Premier 1st withdrew a previous voluntary undertaking not to launch the POPCORNERS products, an urgent interim injunction. The hearing of the interim application was ultimately enough to dispense with the issue.

The three traditional elements of the test for obtaining an interlocutory injunction, set out in Castlemaine Tooheys Ltd v South Australia, are that the applicant show (i) that it has a prima facie case, (ii) that it will suffer irreparable harm if the injunction is not granted, and (iii) that the balance of convenience favours the granting of the injunction. While those three elements are commonly separately articulated, courts such as that in the Samsung v Apple appeal have tended to emphasise their interdependence.

In this case, Premier 1st conceded that the Snack Foods companies had a strong prima facie infringement case. However, balance of convenience factors were, in Justice Foster's view, more than sufficient to outweigh that concession. The Snack Foods companies failed to provide more than speculative evidence of the harm they might suffer through dilution and consumer confusion (in part because they had not themselves yet launched any product). By contrast, Premier 1st led evidence that an injunction would likely cost it a critical supply contract with Woolworths and potentially put it into liquidation. Justice Foster also took the view that Premier 1st and Medora had a 'real prospect' of success on their cross-claim for cancellation.
An interesting complication in the case was that from January 2012, a third party, Dainty, had sold a product under the mark POPCORNERS, including in Coles and Woolworths. It had stopped doing so in November 2012 after receiving a demand from the Snack Foods companies. Noting that timing, Justice Foster was also critical of the Snack Foods companies' delay in taking action against Premier 1st and Medora, and their decision to seek interlocutory relief instead of opting to press for an early final hearing.

The case is a stark reminder that for IP owners, a successful enforcement strategy involves more than a strong substantive claim.

Tuesday, March 19, 2013

Allens partners good design

Allens has formed a partnership with the Australian International Design Awards, supporting design excellence in far-reaching areas of business and daily life.

New events

The Australian International Design Awards, Australia's longest-standing and most prestigious awards for design and innovation, is now aligned with the Vivid Festival, the annual festival of light, music and ideas. And so the inaugural Australian International Design Festival is born!

Events during the Design Festival include the Awards Presentation Ceremony at the Overseas Passenger Terminal, the Australian International Design Forum at the Museum of Contemporary Art, and a Design Showcase for finalists' entries in Westfield Bondi Junction.

New categories

This year the Awards' categories have been revamped, covering a wide range of areas including Domestic Appliances, Commercial and Industrial, Medical and Scientific, Services, Sport and Leisure, Fashion and Accessories, Digital and Online, Packaging and Graphics.

New partners

Allens Senior Associate Lester Miller, an Engineer and Registered Patent Attorney, has been selected to be one of the judges for the Awards. Lester has followed the Awards with keen interest since his engineering design roles in locomotive, fan, and steel manufacture.

Allens will host a VIP event for the judges at its Sydney offices in Deutsche Bank Place, designed by Norman Foster. Philip Kerr, Allens' Head of IP, said: 'Allens is very proud that we can be involved with the design community in this new way, rewarding creative teams with the recognition of their peers and the public.'

New entries

Entries close Thursday, 28 March. For more details, go to


Monday, March 18, 2013

Will originator pharma be held responsible for harm caused by taking a generic version of their drug in Australia?

By Senior Associate Ric Morgan

From recent news reports relating to a decision of the Supreme Court of Alabama in the USA, it would seem that innovator pharmaceutical companies can be held responsible for product liability even where the person harmed by the drug only took generic versions of the drug.

The person injured took a generic version of the Wyeth product Reglan, which contains the drug metoclopramide. It is a heartburn medicine and there is a risk associated with metoclopramide of tardive dyskinesia, a movement disorder. Reading the US decision, it seems clear that the generic manufacturer was aware of the particular risk and certainly did nothing to warn.

The decision of the Alabama Supreme Court in early January 2013 (Wyeth v Weeks) results in Mr Weeks being able to sue Wyeth even though Mr Weeks never took the Wyeth version of the drug. In late February 2013, Pfizer (which now owns Wyeth) requested the Alabama Supreme Court to rehear its decision, described it as creating 'tort hell'.

It is unlikely that a court would make the same decision in Australia.

Critically, the Alabama decision relied on the clear allocation of responsibility for the labeling of medicines by the FDA. In the US, brand-name manufacturers and generic manufacturers have different drug-labeling responsibilities, with only the brand-name manufacturer responsible for the accuracy and adequacy of its warnings. Manufacturers seeking generic drug approval in the US are only responsible for ensuring that their warning label is the same as the brand name's label.

The decision in Alabama seems to have turned on the fact that:

…it would have been impossible for the generic-drug manufacturers to change their warning labels without violating the federal requirement that the warning on a generic drug match the warning on its brand-name counterpart.
In Australia, the TGA does not require that a generic manufacturer slavishly copy product information and warnings (see Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846). The TGA's guidance on this issue is that where the information is 'different in content to … the already registered brand, safety and/or efficacy data may be needed' and also that 'safety-related changes that only reduce the patient population, remove and indication or add a warning, precaution, contraindication or adverse event may be made without approval of the TGA but subject to a notification process'.

Because of this, it seems quite unlikely that a generic manufacturer in Australia would be able to hide behind the innovator's failure to warn.

Wednesday, March 13, 2013

Designs Delegate for a Day

By Lester Miller, Senior Associate

We again invite you to be a Registrar's Delegate – this time for the Registrar of Designs.

Step 1: Convert your eyes to those of an informed user.
Step 2: Ask yourself whether the designs in the surveys below are substantially similar in overall impression.  Look at the features and ascribe more weight to any similarities than to the differences.
Step 3: Decide whether you would allow (if the designs are not substantially similar) or revoke (if the designs are substantially similar) the new design in light of the closest prior art provided.
Step 4: Enter your decision into the response and read our brief commentary on these real-life cases.

Take the test - Part one

Take the test - Part two

Wednesday, March 6, 2013

Social media marketing – are your risks covered?

By Lawyer Tracy Lu and Trade Marks Attorney Daniel Wilson

Social media marketing and other forms of e-marketing have proven to be greatly successful models in helping businesses to reach a large body of potential customers quickly. But are your business practices up to scratch in terms of covering the risks of social media marketing?  In this first instalment, we open up discussion with some pitfalls to avoid.

Social media policies

The first issue to consider is whether your social media marketing campaign will breach the policies of a platform you are using.

For example, Facebook's Statement of Rights and Responsibilities requires that users not post unauthorised commercial communications (such as spam) on Facebook. Some examples which Facebook gives as indications of spam (and which therefore its systems will pick up) include where a user sends the same message to 50 people not on their 'friend' list in a span of an hour.

Similarly, the Twitter Rules state that users may not use the Twitter service for the purpose of spamming.

Both of these platforms also have mechanisms which allow users to report spam.

Spam Act

Under the Spam Act 2003 (Cth), unsolicited commercial electronic messages must not be sent unless certain requirements are met, including that the receiver has given express or implied consent and that the message contains certain information about the sender and a functioning unsubscribe facility. 

An example of how this may affect your social media marketing campaign is the recent response by the Australian Communications and Media Authority (ACMA) in relation to the McDonald's 'friend get friend' campaign. The campaign involved a 'send to friends' facility on the company's Happy Meal website. Users were sending emails through that facility to their friends who had not given consent and which did not include an unsubscribe facility. ACMA issued a formal warning under the Spam Act (which it is entitled to do under section 41 if a person contravenes a civil penalty provision). The 'send to friend' facility has since been removed.


It is also important to consider the requirements of the Privacy Act 1988 (Cth) with respect to the collection, use and disclosure of personal information. Personal information is information about an identified, or reasonably identifiable, individual.

A collecting organisation must, at the time of collection of personal information, ensure that the person is aware of the identity of the collecting organisation, the purpose for which the personal information is collected and the fact that the person about whom the personal information is collected is able to access that information.

Where third party agents collect personal information on your behalf, or in relation to 'friend get friend' campaigns where your customer provides you with personal information of third parties, you should bear in mind that:

(a) where it is reasonable and practicable to do so, you must collect personal information about an individual directly from that individual; and

(b) you must take reasonable steps to make sure the individual is or has been made aware that it is in fact you and not the third party, who is ultimately collecting that individual's personal information.

You should also have a privacy policy which clearly sets out how your business manages personal information, such as what uses and disclosures may be made of that personal information.

Trade marks in social media

When promoting your business through social media marketing, you must be mindful when using a trade mark (either your own, or someone else's).  Here are some tips to using trade marks successfully in social media:
  • capitalise your BRAND when Tweeting;
  • use the ™ symbol when posting your Brand™ updates on Facebook;
  • use the ® symbol to identify that Brand® is a registered trade mark. Of course, you can only lawfully use ® if it is actually a registered trade mark; and
  • never use your trade mark as a generic term. For example, in a promotion, don't 'give a brand to the next person to re-Tweet'. Instead, give 'a BRAND product to the next person to re-Tweet'.
If using someone else's trade mark, make sure that you aren't using it in a manner that may be deceptive, misleading, or confusing to the market place. Don't risk making any false associations with someone else's Brand®, BRAND, or Brand™ and refrain from making any potentially damaging claims about someone else's BRAND.

Not only should you be careful about your own Facebook posts, but also those of your fans, in case they fall foul of consumer laws relating to misleading and deceptive conduct.  

With the advent of social media marketing, businesses have been exposed to new and exciting opportunities and also new risks, which should be properly considered and addressed by clear and adequate internal measures.