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

Friday, December 12, 2014

APP STORE not capable of distinguishing

By Kimberley Evans, Associate

Justice Yates of the Federal Court has declared that the words APP STORE are not to any extent capable of distinguishing Apple Inc.'s retail, telecommunications and computer-related services from those of other traders. This decision demonstrates the difficulty of registering a mark with descriptive connotations.


In 2008, Apple filed an application to register the trade mark APP STORE in Classes 35, 38 and 42, which claimed a Convention priority date from a corresponding application made in Trinidad and Tobago on 7 March 2008.

Friday, December 5, 2014

Delegate for a day

by James Gonczi, Associate

A recent decision of a delegate of the Registrar of Trade Marks has piqued some interest around our office. The issue arose in the context of an opposition involving the following trade marks: 

The NISON application covered a variety of goods and services such as shop fittings, refrigerator compressors, refrigerators and refrigerator installations, kitchen furniture and kitchen units, and the installation of kitchens and catering equipment. The NIKON mark is registered for an extensive range of goods and services such as  machines and machine tools, cooking, refrigerating and ventilating apparatus, installation services and repair or maintenance services for cooking apparatus for industrial purposes.

Before we tell you what the delegate thought, we wanted to know what you think. Click on the link below and, in the new page, select 'Yes' if you think the trade marks are deceptively similar or 'No' if you don't. Try to keep the following questions in mind:

  • Would you be potentially confused if confronted with both trade marks on similar goods or services?

  • Do you think both trade marks look alike?

  • Do you think that both trade marks may belong to the same owner?

  • Do you think that only someone being exceptionally careless or stupid would confuse the two trade marks?

We'll let you know what the delegate's answer after the jump.

Delegate for a day survey link

Wednesday, December 3, 2014

Are CINQUE STELLE and ORO inherently distinctive? High Court says YES

By Kimberley Evans, Associate

In a 4:1 judgement handed down this morning in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court of Australia has confirmed that the trade marks ORO and CINQUE STELLE (respectively, 'gold' and 'five stars' in Italian) are inherently adapted to distinguish coffee goods in Australia.


Earlier this year, trade mark owner Cantarella took its battle

with Modena over its registered trade marks CINQUE STELLE and ORO (in relation to coffee) to the High Court. CINQUE STELLE means 'five stars' in Italian, and ORO means 'gold'. Cantarella had sued for trade mark infringement. Modena had denied liability, saying that its use of CINQUE STELLE and ORO was in good faith to indicate the characteristics of the coffee products, and cross-claimed to cancel the marks. Cantarella won at first instance, but on appeal the Full Federal Court reversed the decision and ordered Cantarella's trade marks to be cancelled. Cantarella then sought leave to appeal the decision before the High Court, asking the court to consider the inherent distinctiveness of trade marks consisting of foreign words with laudatory qualities.

Thursday, November 27, 2014

Inaugural Scintilla film review: Dallas Buyers Club, LLC v iiNet

By Annie Zheng, Lawyer

Online copyright infringement is back in the spotlight again – this time under scrutiny from the bright lights of Hollywood.

In this post, we provide a brief synopsis and commentary on the Dallas Buyers Club v iiNet Ltd proceeding, ahead of its highly-anticipated premiere (ie hearing) in the Federal Court on 17 February 2015.


The plot goes a little like this: Dallas Buyers Club, LLC is a company that owns the rights to the film of the same name, which earned an Oscar for actor Matthew McConaughey (surprisingly, he had not previously been nominated for performances in other classic cinematic masterpieces such as Magic Mike and The Wedding Planner). The film's success, which can no doubt be attributed to the effect of the 'McConaissance', has meant that the film has been ripe for illegal downloading via peer-to-peer file sharing websites.

Act I

In mid-October, Dallas Buyers Club, LLC initiated proceedings in the Federal Court. The company filed evidence seeking to show that it has identified the IP addresses of persons who have illegally shared the film, and applied for preliminary discovery of documents belonging to various internet service providers including iiNet (together, the ISPs), for the purpose of obtaining information contained in those documents about the identity of the ISPs' customers.

Act II

On 17 November, Justice Perram of the Federal Court refused four applications by various interested parties in the media for access to the restricted evidence filed to date. The basis for this refusal was that the interests of the parties would be at risk of being adversely affected by the release of 'filed but as-yet-unused evidence', as the material had not been made available in open court yet,  and may be subject to confidentiality regimes or objections down the track.

Friday, November 21, 2014

Boosting commercial returns from research

By Clare Young, Managing Associate

In late October, the Ministers for Industry and Education released a consultation paper entitled Boosting commercial returns from research. At this stage the proposals are fairly vague, which suggests that the industry consultation process will be a key part of shaping those proposals into more concrete policy. Clearly, universities and research organisations will be affected by these proposals, but there will also be benefits – by way of additional project funding – to business in those industries which are identified as being relevant to Australia's research priorities.

Wednesday, November 19, 2014

Is a trade mark for the flavour of pizza a taste of things to come?

By Mark Williams, Senior Associate

It was with great interest that we noted the recent reporting of the decision of the Fifth Circuit Court of the US District Court in New York Pizzeria, Inc. v Syal et al.
The case centred around a claim of trade mark infringement after NYPI's former President allegedly conspired to create a copycat restaurant using the recipes, suppliers and internal documents of NYPI. NYPI claimed that its pizza flavour was distinctive, arguing that 'the flavour of its Italian food and the way in which it plates its baked ziti and chicken and eggplant parmesan dishes are entitled to trademark protection'.

Friday, November 14, 2014

Trade mark infringer skewered by additional damages claim

By Julia Kovarsky, Associate

The 'Raising the Bar' amendments to the Trade Marks Act 1995 (Cth) (the TM Act) introduced the power of the court to award additional damages for trade mark infringement. Section 126(2) of the TM Act came into force on 15 April 2013, allowing the court to include an additional amount in an assessment of damages for an infringement of a registered trade mark, if appropriate. The provision is similar to section 115(4) of the Copyright Act 1968 (Cth) which has been in operation for quite some time and applied by the court on many occasions (from Autodesk v Cheung in 1990 to Vertical Leisure v Skyrunner in 2014). The power to award additional damages under the TM Act raises the stakes for infringers of registered trade marks. Where only a nominal amount may have been payable before, the court can now set a hefty price for infringement by awarding additional damages.

Paying the wholesale price

This lesson was learned the hard way by a kebab wholesaler, Quality Kebabs, when it forged halal certification papers using the registered trade mark of the 'Rolls-Royce' of halal certifiers – the Halal Certification Authority Pty Limited (the HCA). When two kebab shops, customers of Quality Kebabs, asked for certificates that the meat sold to them was halal, Quality Kebabs provided them with HCA-branded certificates. The only problem was, HCA had not issued those certificates. According to the director of Quality Kebabs, a rogue employee decided to forge the certificates of his own accord, complete with HCA's seal (a registered trade mark), and then absconded to Germany with the hard drive which contained the only remaining copy of the forgery. Justice Perram found this series of events to be highly improbable. Instead, his Honour held that Quality Kebabs had deliberately used HCA's seal on the forged certificates and infringed HCA's registered trade mark rights.

Tuesday, November 11, 2014

Financial scheme again held not to be patentable subject matter

By Anthony Selleck, Senior Associate

We have been closely following developments in Australia and elsewhere concerning the important question of whether, and the extent to which, computer-implemented inventions can be protected by patents. The latest chapter is yesterday's decision of the Full Court of the Federal Court of Australia, to unanimously dismiss Research Affiliate's appeal against an unfavourable first-instance decision. We reported the first-instance decision of the Federal Court in an earlier post.

In a nutshell, the Full Court decided that while the claimed method of creating an index of securities could well have been an inventive idea, it was nevertheless an un-patentable 'abstract idea' or 'mere intellectual information'. The use of the term 'abstract idea' strongly echoes the recent decision of the United States Supreme Court in Alice Corporation v CLS Bank that was also concerned (see our earlier posts about the Alice Corporation decision here and here) with the patentability of a financial scheme.

Friday, November 7, 2014

Brothers in Arms, copyright in photographs

By Joel Barrett, Senior Associate

On Father's Day 1984, residents of the Sydney suburb of Milperra witnessed a short but violent skirmish between bitter rivals, the Comancheros and Bandidos bikie gangs. By the time police arrived, seven people were dead from gunshot wounds, including an innocent 14-year-old bystander named Leanne Walters. The incident became known as the Milperra Massacre.

The Milperra Massacre was not just a tragic event, but also a watershed in New South Wales legal history, leading to radical new gun control laws, one of the largest and longest joint criminal trials in Australia, and controversial appeals. Thirty years later, only one legal controversy remains: an unlikely claim of copyright and moral rights infringement.

Thursday, November 6, 2014

Just in time: High Court confirms time for applying to extend term of pharmaceutical patent is capable of extension

By Linda Govenlock, Managing Associate

In a 3:2 majority decision handed down yesterday, the High Court of Australia has found that the remedial provisions available under section 223(2) of the Patents Act 1990 (Cth), which extend the time for completing a relevant act, are available in relation to applications for patent term extension (PTE), provided that the PTE application is filed before the expiration of the patent. This decision will bring a sigh of relief to patent owners and brings an end to this chapter of a nine-year, hard-fought battle between the Danish patentee, Lundbeck A-S, and its generic competitors, spearheaded by Alphapharm Pty Ltd.

Wednesday, October 29, 2014

China to establish specialised IP Court

By Tracy Lu, Associate

The PRC National People's Congress Standing Committee passed a Decision on 31 August to establish specialised intellectual property courts in Beijing, Shanghai and Guangzhou. This post takes a look at the Decision and its implications.

What will an IP Court do?

According to the Decision, an IP Court will be the court of first instance for 'technically complex' civil and administrative IP matters,  examples of which are listed as patents, new plant varieties,  circuit layout designs and trade secrets matters. An IP Court's decision in these matters can in turn be appealed to the high court of the province or city in which the IP Court is located.

Tuesday, October 28, 2014

Agribusiness innovation catches rival going over the wall

By Lester Miller, Senior Associate and Patent Attorney

There is a misconception that a patent can be circumvented by a modification of a product by 10 per cent or 20 per cent. In reality, if the wording defining a part in a patent claim covers a functionally equivalent variation of that part in a different product, there is infringement of the patent (if all other parts are the same). In last month's Full Federal Court decision on an Australian innovation patent for a grain bin, the main difference between the patented bin and a rival bin was a deep open V-cut in a side wall instead of a hole for access to a grain outlet gate on the other side of the wall.

Tuesday, September 30, 2014

IP issues in the Harper Review

Last week saw the release of the draft report of the Harper Review, a significant review of Australia's competition laws and policy.

The draft report contains many recommendations that could have significant ramifications on competition law enforcement in Australia.

One area in which the Review is looking at is intellectual property rights.

In a video interview, Allens Partner Carolyn Oddie analyses the recommendations about IP rights and how to balance the tension between the desirability of IP rights and the need to encourage innovation in a fast-changing digital environment.

To view the video, go to our website.

Please get in touch with an Allens lawyer or attorney if you would like our assistance with preparing a submission to the Review. Submissions are due on 17 November 2014. A final report is due to be released March 2015 for consideration by the Federal Government.

Wednesday, September 24, 2014

Green on both sides of the fence: design protection then and now

By Julia Kovarsky, Lawyer

Although the Designs Act 2003 (Cth) (the New Act) has just passed its 10th birthday, there remain approximately 7000 registered designs still in force under the old regime, governed by the predecessor Designs Act 1906 (Cth) (the Old Act). The New Act broadened the scope of design protection to restore designers' faith in the system but BlueScope Steel v Gram Engineering shows that even under the Old Act, design protection can still be commercially valuable.

Born on the bad side

The case revolves around the solution to the 'vexing problem' faced for years by backyard owners around Australia - the fact that their fences had a 'bad' side. One solution was developed in 1993 by Mr Mann, Managing Director of Gram, who designed a fencing sheet with a sawtooth profile which looked the same from both sides and thereby had two 'good' sides. Gram registered its design under the Old Act and began very successfully producing GramLine fencing. In 2002, BlueScope began producing its own two-good-sided fencing under the name Smartascreen. Gram commenced proceedings against BlueScope in 2011 claiming under the Old Act that the Smartascreen was either an ‘obvious’ or ‘fraudulent imitation’ of its design. BlueScope cross-claimed, challenging the validity of the design.

Thursday, September 18, 2014

High Court may consider patentability of isolated genetic material

By Dr Tony Shaw, Patent Attorney and Associate

We reported here and in our recent Focus article that the Full Federal Court in D'Arcy v Myriad Genetics Inc (D'Arcy) handed down a unanimous decision confirming the decision in the first instance decision, Cancer Voices Australia v Myriad Genetics Inc (Cancer Voices) that genetic materials in their isolated form are patentable in Australia.

The Myriad patent at issue (AU 686004) claims isolated nucleic acids having particular mutations in the BRCA1 gene associated with a predisposition to breast and ovarian cancers. The patent also claims to tests for predisposition to breast and ovarian cancers which are based on detecting those mutations. As correctly stated in D'Arcy, the patent does not claim the genetic code nor claim genes or nucleic acids present in a cell or human body:
'What is claimed is an isolated nucleic acid, a chemical molecule characterised in a certain way, which is chemically, structurally and functionally different to what occurs in nature.'
The judgments in D'Arcy and Cancer Voices have been consistent in the application of Australian patent law in deciding that 'isolated nucleic acids' are patentable subject matter.

As foreshadowed, Ms D'Arcy's lawyers have now filed an application for leave to appeal the D'Arcy decision to the High Court. Ms D'Arcy is seeking leave to appeal on a number of grounds including that the Full Court erred in:

  • holding that 'an isolated nucleic acid' is patent eligible;
  • holding that the isolation of the nucleic acid was sufficient to render the claims as being claims to an 'artificially created state of affairs for economic benefit' and hence to a manner of manufacture;
  • holding that the 'information that the gene encodes' is not relevant in determining patent eligibility; and
  • preferring the reasoning of the US Federal Circuit in Association for Molecular Pathology v US Patent and Trademark Office rather than the US Supreme Court's reasoning in Association for Molecular Pathology v Myriad Genetics.

Keep an eye on Scintilla and the Allens website for details on whether leave to appeal will be granted and the High Court will consider this issue.

Wednesday, September 17, 2014

Have your candy (crush) and eat it too – legal issues in app development

By Tracy Lu, Associate

In 2008, with Apple's launch of the App Store, a brand new market for mobile apps was born. This article discusses some of the legal issues which may be involved in app development.

Confidential information

Being the first to come up with a knockout idea is sometimes critical to the success of an app. However, copyright laws do not afford protection to concepts and ideas, but only their expression. Therefore, when sharing ideas with others, such as during a pitch for funding, it is prudent for the parties involved to come prepared with a well-drafted confidentiality agreement.

Friday, September 5, 2014

Isolated genetic material confirmed as patentable

By Dr Tony Shaw, Associate and Patent Attorney

In a unanimous decision handed down today in D'Arcy v Myriad Genetics, the Full Federal Court, comprising a full bench of five judges, has dismissed the appeal from the decision of Justice Nicholas in Cancer Voices v Myriad Genetics and confirmed that genetic materials in their isolated form remain patentable in Australia.

As we have previously reported here, in Cancer Voices v Myriad Genetics Justice Nicholas found isolated nucleic acids to be a 'manner of manufacture' as required by the Patents Act 1990 and therefore patentable subject matter. Applying the High Court's decision in the landmark NRDC case, his Honour held that isolated nucleic acids consist of 'an artificial state of affairs, that has some discernible effect, and that is of utility in a field of economic endeavor' and are patentable. Relevantly, Justice Nicholas noted that NRDC does not require the court to ask whether a composition of matter is a 'product of nature' for the purpose of deciding whether or not it constitutes patentable subject matter.

Latest edition of Food Law Bulletin

Today Allens has released the September 2014 Food Law Bulletin.

It has the latest on Certification Trade Marks; the ACCC's current enforcement activities on credence claims in food labelling; the development of a national information standard for the contentious area of 'free-range' eggs in light of the industry's failure to self-regulate; and an ACCC cartel proceeding that highlights the potential dangers of the relationship between producers and the industry bodies that represent them.

The Food Law Bulletin is available from the Allens website.

Thursday, September 4, 2014

Patently false: the rise of fake renewal notices

By Kimberley Evans, Associate, Trade Marks Attorney

We frequently receive emails and telephone calls from our clients asking whether a patent or trade mark renewal notice from 'generic company name including reference to a patent or trade mark registry' such as Patent and Trademark Organisation is legitimate and should be paid. Our standard response is that, as our firm is the address for service for that patent or trade mark, clients can ignore any renewal correspondence that requests payment and is not issued on our letterhead. There is an increasing number of organisations that send out these 'renewal notices' and IP Australia warns against unsolicited renewal services on its website.

Wednesday, September 3, 2014

Location, location, location: the dangers of geographical names

By James Gonczi, Lawyer

The Full Federal Court recently handed down its decision in Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited.

Kosciuszko Thredbo Pty Limited (KT, the appellant) has operated the very popular Thredbo Village and Thredbo Resort since the 1980s. In that time the appellant has spent in excess of $150 million on projects around the village and resort. 

Unless you're a snow aficionado or serious Thredbo regular, you may well be unaware that KT holds a lease over essentially everything in Thredbo (that's the geographical area of Thredbo, including most of the accommodation, bars, restaurants and chair lifts). ThredboNet Marketing Pty Limited (TN, the respondent) is a sub-lessee, which manages rental properties in Thredbo using the domain name The appellant took legal action in an effort to prevent the respondent from using the name 'Thredbo' in its domain name.

Tuesday, September 2, 2014

Update on AstraZeneca v Apotex

As promised in our post on the five-judge decision in AstraZeneca v Apotex, we have now published a Focus article providing an in-depth analysis of this decision.

Tuesday, August 19, 2014

The ACIP Innovation Patent Review: Where are the roadside posts leading us?

By Lester Miller, Senior Associate

Australia's innovation patent system has done an excellent job of protecting incremental inventions, but it can be confusing. A person receives a granted patent before an examiner has determined patentability, but the innovation patent can't be enforced until after optional examination and certification. After certification the patent can be enforced, even though the concept may be obvious.

The Advisory Council on Intellectual Property was tasked in February 2011 by the former Minister for Innovation, Industry, Science and Research to review whether the innovation system was working to stimulate innovation in SMEs. ACIP consulted widely, and recently released its final report, which includes six recommendations to the Federal Government.

Friday, August 15, 2014

Protecting personal information online – a review of recent investigations by the Privacy Commissioner

By Tracy Lu, Associate

Since the beginning of the year, the Privacy Commissioner has released three investigation reports into the practices of three Australian businesses relating to the electronic storage and inadvertent disclosure of personal information. This post takes a quick look at each of these cases.

Wednesday, August 13, 2014

AstraZeneca v Apotex: five-judge bench allows AZ appeal on 'starting point' but upholds trial judge on invalidity

By Clare Young, Managing Associate

Australia's appetite for cholesterol-lowering drugs shows no sign of abating. According to a recent news report, rosuvastatin (brand name: CRESTOR) has pushed atorvastatin (brand name: LIPITOR) off the top generic spot. Those generic sales of rosuvastatin were 'at risk' of infringing AstraZeneca's patents, but yesterday's Full Court judgment has given generics the go-ahead to continue sales (although an application for leave to appeal to the High Court is still open).

To recap, Watson, Ascent and Apotex all wanted to sell generic versions of rosuvastatin. AstraZeneca alleged infringement of three patents. The three patents in issue relate to rosuvastatin but are not patents for the invention of the compound rosuvastatin – specifically they relate to a dosage range, a method of treatment and a pharmaceutical composition.

At first instance, Justice Jagot found all three patents invalid on several grounds, including lack of novelty, lack of inventive step and lack of entitlement.

Monday, August 11, 2014

Monkey saw, monkey did - who owns copyright in a selfie taken by a monkey?

By David Stewart, Associate

'It's so easy any monkey could do it' is a phrase that gets bandied around to describe a task that requires so little skill and effort that any of our supposedly inferior opposable-thumbed brethren could do it.

Like 'taking a selfie is so easy any monkey could do it.'

But what if a monkey did actually take a selfie? Well, it happened. A monkey has taken a selfie, and now controversy is boiling over the answer to the age old question – who owns the copyright in a selfie taken by a monkey?

Friday, August 8, 2014

Almost brewed: High Court hears coffee trade mark dispute

By Deborah Jackson, Senior Associate

This blog has been following the dispute between Cantarella and Modena in respect of the challenge to Cantarella's registered trade marks CINQUE STELLE and ORO in relation to coffee, which has now reached the High Court. A five-star debate was foreshadowed, as this is the first time the High Court has had to consider the inherent distinctiveness of foreign laudatory words. In Italian CINQUE STELLE is said to mean 'five stars' and ORO 'gold'. In the unfurling debate, some promising signs emerged in the firm position each side adopted in oral submissions before the High Court on 5 August 2014 on how to determine the issue.

Thursday, July 31, 2014

Online Copyright Infringement — Discussion Paper

By James Gonczi, Lawyer

It has been well documented that Australia is fast becoming one of the world's hotspots for online copyright infringement. The Australian Financial Review has reported that the recent season finale of Game of Thrones was illegally downloaded almost one and a half million times by Australians in the 12 hours after the program aired in the USA. However, to borrow a line from that very popular program, it seems that 'Winter is coming' for illegal downloaders.

Late last week Australian news website published a leaked Australian Government discussion paper concerned with preventing online copyright infringement. The official paper was released by the Attorney General's department on 30 July 2014 in substantially the same form.

Wednesday, July 23, 2014

Protecting designs in the age of 3D Printing

By Lester Miller, Patent Attorney and Senior Associate

You really should see Theo Jansen's brilliant, articulated Animaris Geneticus Parvus emerge from a 3D printer, finished and without any assembly required, and walk itself across a boardroom table powered only by the breeze of conversation. There is brief elation, then the shock of being dumped unprepared into an unfamiliar world.

The Maker Movement has arrived, taking advantage of fast data transfer across national borders for instructing affordable machines to build tangible products. Designs law around the world is already being reviewed in an attempt to keep it relevant to this new technology.

Friday, July 18, 2014

Nagoya Protocol to come into force on 12 October 2014

By Suman Reddy, Associate

The Nagoya Protocol is set to come into force on 12 October 2014 following its ratification by 51 State parties to the Convention on Biological Diversity (the CBD).

Australia is a signatory to the Protocol, but it is yet ratify the Protocol due to Commonwealth and State and Territory laws being currently inadequate to give effect to the Protocol domestically. We previously blogged about the Commonwealth's proposed model for implementing the Protocol.

The Protocol is an international instrument made under the CBD in order to give effect to the CBD objective of achieving the 'fair and equitable sharing of the benefits arising from the utilization of genetic resources'. However, 'the benefits arising from the utilization of genetic resources' has a wide meaning under the Protocol and effectively means any beneficial product or process derived from research conducted on biological organisms or their derivatives. This is commonly referred to as 'biodiscovery'.

Tuesday, July 15, 2014

Lift your game: no infringement of Lift Shop mark

By Stephanie Essey, Lawyer

The Full Court of the Federal Court recently dismissed an appeal brought by Lift Shop Pty Ltd (Lift Shop) against a first instance decision that Easy Living Home Elevators Pty Ltd (Easy Living) had not infringed Lift Shop's composite 'LIFT SHOP' trade mark. The Australian Consumer Law and passing off components of the original decision were not revisited on appeal.

Lifting search rankings: the facts

Lift Shop and Easy Living are competitors who each supply customised and disability platform elevators. In September 2012, Easy Living amended its website to improve its ranking in search engine results. A number of its changes incorporated the words 'lift shop'. It used the words in the website's title as it appears in search results, in descriptions on the home page, and as a keyword in order to target searches. Lift Shop claimed that the use of the words in the title (but not the home page or keyword use) was an infringement of its trade mark.

Lift off: first instance decision and appeal

The primary judge made a number of findings in relation to trade mark infringement which were not challenged on appeal, including that one of Easy Living's commercial objectives was to appear in search results which would likely include Lift Shop, and thereby to compete with Lift Shop to the greatest extent possible. However, Easy Living did not suggest or intend to suggest an association with Lift Shop simply by the use of the words 'Lift Shop' in the title, on the home page or as keywords.

Friday, July 11, 2014

When Trade Marks Attack

Native American Petitioners Score a Touchdown Against the Washington Redskins

by Joel Barrett, Senior Associate
For most Australians, a ‘redskin’ is nothing more than a chewy, raspberry-flavoured lolly. But the clue to its original and, in the United States, more common and controversial meaning is in the image of the man wearing a feathered headdress that appeared, until the late 1990s, on the lolly packaging. Since the sixteenth century, when European colonists coined the word to describe the coppery-skinned indigenous peoples they found in the New World, ‘redskin’ has been used as a slang term for American Indians.

Since 1933, it has also been the official name of the NFL team based in Washington DC.

Tuesday, July 8, 2014

Yasmin sees off Isabelle (and Yelena):

Full Court refuses evidence of experiment

by Clare Young, Managing Associate
Last year we reported on Generic Health's failure to comply with the Federal Court Rules relating to the conduct of experiments in patent cases. Here’s the next (and last?) instalment.

In short, Generic Health wanted to do an experiment which, according to Generic Health, would prove that Bayer's patent for a contraceptive pill lacked novelty. Generic Health's experiment involved the manufacture of tablets in accordance with a process in the prior art and the subsequent dissolution testing of those tablets. The latter dissolution tests were the subject of directions under rule 34.50 of the Federal Court Rules, but Bayer said that Generic Health also needed to comply with rule 34.50 in relation to the manufacture of the tablets.

Thursday, July 3, 2014

Try bombed - footy injunction application fails

by Stephanie Essey, Lawyer

In a recent case, Sports Data, the NRL's former statistics supplier, sought an interlocutory injunction against what it saw as the misuse of copyright in its database and the confidential information in it by Prozone, NRL's new statistics supplier.

Sports Data had developed a database populated with fields which set out events in NRL games that were to be recorded.  Sports Data alleged that Prozone copied confidential input criteria from the Sports Data database without consent in the process of creating its own event template.  Sports Data also claimed that Prozone infringed its copyright in the input criteria by reproducing a substantial part of its copyright work in the Rugby League Definitions Guide 2014.

Tuesday, July 1, 2014

Yellow is for sharing

by Tracy Lu, Lawyer
Further to our post on a decision on disputes over the word mark 'yellow', the Federal Court has handed down its decision on disputes over the colour yellow. This time, Telstra was unsuccessful in proving that the respondents (which included Phone Directories Company Pty Ltd) had engaged in misleading or deceptive conduct and passing off in the way that they had used the colour yellow for their print and electronic directories.

Alleged infringing conduct
Telstra's complaint relates to the respondents' use, since 2005, of yellow covers for their print directories (known as the 'Local Directories') and of the colour yellow on their website and on their mobile app which both had electronic directories.
Such use of the colour yellow, Telstra contended, constituted misleading or deceptive conduct and passing off, as it misrepresents to consumers that:

  1. The respondents' print and electronic directories were Telstra's directories, Yellow Pages directories or local or regional versions of them.
  2. The respondents' print and electronic directories were produced by, connected, associated, sponsored, approved, licensed, endorsed and/or affiliated with Telstra or its directories.
  3. The respondents had a connection, association, affiliation, commercial and/or other arrangement with Telstra.

Friday, June 27, 2014

US Supreme Court turns off TV streaming service

By Jesse Gleeson, Senior Associate

The US Supreme Court has just handed down its long-awaited decision in the Aereo case, reversing the 2013 decision of the US Court of Appeals for the Second Circuit. This decision makes Aereo's free-to-air television streaming service illegal under US copyright law.

For a recap of the play thus far (and the internet streaming landscape), please see our post from 2013. Please also see our coverage of the Full Federal Court of Australia's decision in relation to the similar (but not identical, as discussed below) Optus 'TV Now' service in Australia.

Thursday, June 26, 2014

Financial risk management scheme not eligible for patent, software patents still available

By Anthony Selleck, Patent Attorney and Senior Associate

The United States Supreme Court has issued its decision in Alice Corporation v CLS Bank, a closely  watched case concerning the patentability of computer-related inventions that we have reported on in our previous posts. Although the court decided that the particular patent claims in issue were invalid as being directed to an unpatentable 'abstract idea', we do not read the decision as imposing any additional restrictions on obtaining patents for inventions involving software.

As discussed in those earlier posts, Alice Corporation's US patents cover a trading platform that seeks to mitigate settlement risk (ie the risk that only one party to an agreed-upon financial exchange will satisfy its obligation) by using a programmed computer as a neutral intermediary. CLS Bank successfully challenged the validity of the patents both at first instance and (by majority) on appeal. The Supreme Court has now agreed with those earlier decisions that the patents were not directed to patentable subject matter.

Thursday, June 19, 2014

Thoughts on Tesla Motors' decision to 'give away' its patents

By Jesse Gleeson, Senior Associate

Elon Musk is a true tech visionary. His involvement in everything from PayPal, to his private space company SpaceX, to his electric-only Tesla Motors and even his proposal for a 'hyperloop' high-speed vacuum tube train between San Francisco and Los Angeles shows his extraordinary ambition.

Musk has garnered considerable press recently for his announcement* on his blog on the Tesla Motors website:
Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.

Thursday, May 22, 2014

Australia Releases Model for Implementing Nagoya Protocol

By Alicia Akporiaye, Lawyer

The Federal Government has recently released for comment its preferred model for domestic implementation of the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization (ABS) to the Convention on Biological Diversity (the Nagoya Protocol). The Nagoya Protocol aims to put in place a transparent legal framework for regulating the use of genetic resources and traditional knowledge for biodiscovery.

The term 'biodiscovery' refers to scientific research on the genetic or biochemical make-up of a plant, animal, fungus or microbe with the purpose of developing a product or process that has commercial or other value. Practically speaking, the implementation of the Nagoya Protocol in Australia has the potential to affect a wide range of businesses, including biotechnology companies in the medical, pharmaceutical, agricultural and industrial sectors.

Tuesday, May 20, 2014

TGA confirms its approach to disclosure of commercially confidential information

By Alison Beaumer, Senior Associate

The TGA has released the final version of a document outlining its approach to disclosure of commercially confidential information, including information provided by medicine sponsors. This follows the release of a draft version in June 2013 and a period of public and industry consultation.

The TGA will now classify confidential information provided to it according to the Australian Government Classification System. This involves the use of 5 Disseminating Limiting Markers (DLMs), namely: 'For Official Use Only' (where disclosure may cause limited damage to commercial entities or members of the public), 'Sensitive' (where secrecy provisions apply or disclosure is prohibited), 'Sensitive:Legal', 'Sensitive: Cabinet', and 'Sensitive:Personal'. Commercially confidential information provided to the TGA, including by medicine sponsors, is likely to be classified as 'For Official Use Only'. One key change of terminology is that sensitive business or commercial information previously classified as 'Commercial-in-Confidence' will now be classified as 'For Official Use Only'.

Friday, May 16, 2014

The rise of IP in China

By Tracy Lu, Lawyer

Every year, China celebrates 'China Intellectual Property Rights Publicity Week' across the country. It's popular – 24 government departments, including the State Intellectual Property Office (SIPO), get involved and this time over 50 events were held. You missed the 2014 instalment – it is timed to coincide with World IP Day on 26 April – so if you're going to China this year, make it for the serenely beautiful karst mountains standing over the milky-jade Li River in Yangshuo instead. But read our summary of the highlights of China's IP Week below.

How many suits?
During the 2014 IP Week, the Supreme People's Court released a White Paper on Intellectual Property Rights Protection. The White Paper explores the current status of IP rights protection in China and looks at developments over the course of 2013, providing some key statistics and case studies. In the past year, there were 88,583 new IP proceedings commenced in local courts around the country and 88,286 cases were determined. The subject matter of the new proceedings includes:
  • 9,195 cases – patents
  • 23,272 cases – trade marks
  • 51,351 cases – copyright
  • 949 cases – technical contracts
  • 1,302 cases – unfair competition
  • 2,514 cases – other

Monday, May 12, 2014

Watch this space! High Court grants special leave in the Alphapharm v H Lundbeck patent extension saga

By Suzy Muller, Senior Associate

At the heart of this case is the rights of Lundbeck, patentee of Australian patent no. 623144 (Patent), to obtain an extension of the term of the Patent under the Patents Act. Such extension would extend Lundbeck's monopoly for its escitalopram product LEXAPRO to 9 December 2012. As the Patent has been held valid and infringed and generic escitalopram products entered the market in June 2009, Lundbeck would then be entitled to damages for the period of the extension.

On 11 April 2014, the High Court granted special leave to appeal the decision of the Full Federal Court of Australia in Aspen Pharma Pty Ltd v H Lundbeck A/S [2013] FCAFC 129.

Wednesday, May 7, 2014

Imitation is not the highest form of flattery – it's copyright infringement!

By Julia Kovarsky, Lawyer

When a competitor's product is used as 'inspiration' for another company's similar product, there is a fine line between independent creation and copyright infringement. The recent decision of Justice Dodds-Streeton in Seafolly Pty Limited v Fewstone Pty Ltd [2014] FCA 321, which saw swimwear heavyweights Seafolly and City Beach (Fewstone) in a dispute over three Seafolly designs, shows what happens when you fall on the wrong side of that line.

The decision stretches to just shy of 650 paragraphs - not surprising given the volume of factual evidence about subsistence of copyright and whether a substantial part of the copyright works had been taken. Whilst the legal tests for copyright subsistence and infringement are easy to state – idea/form of expression dichotomy and qualitative assessment of substantiality – they are often difficult to apply in practice. The degree of originality, the cumulative effect of what has been taken from the original work and the particular balance or juxtaposition of features in the original work are all matters that go into the melting pot in determining whether there has been infringement. And it certainly didn't assist City Beach that its employees in internal communications had referred to one of the infringing designs as a 'Seafolly knock-off'.

The artworks in issue were:

Seafolly's English Rose       v        City Beach's Rosette

Seafolly's Covent Garden       v       City Beach's Sienna

Seafolly's Senorita         v           City Beach's Richelle

Copyright subsistence

City Beach conceded that copyright subsisted, and was owned by Seafolly, in the English Rose and Covent Garden artworks, but not the Senorita artwork. It argued the design was unoriginal and inevitably produced by an industrial sewing machine. Although expert evidence confirmed that diamond patterns were very common, there was no evidence to show that that the shape was inevitable. Rather, the embroidery was the product of labour, skill and effort, together with a process of trial and error, on the part of the Seafolly designers in which copyright subsisted. City Beach had to admit that if copyright subsisted in the Senorita artwork, Seafolly owned it.

No right to adaptation of artistic work

City Beach's defence began by focusing on the fact that owners of copyright in an artistic work do not have an exclusive right to create adaptations of the work. It was submitted that an adaptation of artistic works could be made by anyone, and that infringement therefore 'required a strict, faithful and exact reproduction'. City Beach's swimwear collection was argued to be an adaptation of Seafolly's artworks, which Seafolly had no right to restrain. This argument was quickly rejected since copyright in artistic works would be almost worthless if only exact reproduction constituted infringement.

Substantial part of an artistic work

City Beach's next line of defence was that there was insufficient objective similarity between the Seafolly artworks and City Beach’s designs. It was also argued that any parts taken from Seafolly's artworks were not substantial. Justice Dodds-Streeton emphasised that only those parts originating with the author would be substantial. When the details of the composition originate with the author, then those details can be a substantial part of the work. In determining whether elements of an artwork are a substantial part, it is wrong to merely focus on similarities and differences between the original and infringing work. Her Honour affirmed previous authority that a substantial part can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part.

City Beach claimed that Seafolly's artworks were merely used as 'inspiration' and the parts taken were commonplace or derived from other works. This argument likewise failed to impress. Justice Dodds-Streeton found that there was 'considerable scope for originality' in the way the features of the Seafolly artworks could have been combined, arranged and balanced. By using similar elements and combination of elements as the Seafolly artworks, which cumulatively made up a substantial part of the works, City Beach's designs were more than just inspired by Seafolly, they were copyright infringement.

The copyright-design overlap

The question of a corresponding design being industrially applied was only raised in respect of Seafolly's Senorita artwork. City Beach first had to prove that the Senorita embroidery was a 'corresponding design' within the meaning of s 74(1) of the Copyright Act. In that regard, City Beach claimed that the embroidery was a three-dimensional embodiment of the Senorita artwork which was woven into, and had become part of, the structure of the Senorita swimwear. Continuing City Beach's run of rejected arguments, Justice Dodds-Streeton did not consider the embroidery to be a 'corresponding design', but rather, a feature of pattern or ornamentation applied to the surface of the swimwear. If an artistic work cannot be made into the product and is simply a constituent part of another product, it is not a corresponding design.


Seafolly successfully showed that City Beach's swimwear range crossed the line between acceptable use of its swimwear for inspiration and creating copyright infringing 'knock-offs'. City Beach ended up paying a hefty price for its actions. Seafolly was awarded damages of $250,333.06, comprising $80,333.06 compensatory damages for lost profits, $20,000 compensatory damages for damage to its reputation, and $150,000 in additional damages for the flagrancy of the infringement.

Monday, May 5, 2014

Seeing red over yellow

The difficulties in registering a colour mark or word mark denoting a colour (that include issues of market place recognition) were highlighted by a recent set of appeals revolving around the use of the word 'Yellow' in a tussle between various business directory goods and service providers.

Allens Partner Sarah Matheson and Lawyer Tracy Lu report today on a decision that provides some useful clarification on this complex issue.

Thursday, April 17, 2014

Grounds for complaint? Section 59 of the Trade Marks Act

By Sandi Forman, Senior Associate

A ground of opposition that is sometimes overlooked in trade marks is the applicant's lack of intention to use the trade mark.

Section 59 of the Trade Marks Act 1995 provides that an application may be opposed on the ground that the applicant does not, at the time of filing the application, intend to use the mark in relation to the specified goods and/or services. This ground can be difficult to establish, but can be usefully employed given the right circumstances.

In a recent Australian Trade Mark Office decision concerning an opposition to registration of the trade mark '707 estate', the Hearing Officer found in favour of the opponent, Southcorp Brands Pty Limited, on the basis that the section 59 ground had been established.

Thursday, April 10, 2014

The countdown is on - changes to the Franchising Code are upon us

By Nadia Guadagno, Lawyer

Successive governments have been talking about reforms to the Franchising Code of Conduct (the Code) for over a year now. But the time has finally come to take action. Last week, Exposure Drafts of legislation to create a replacement Code and add to its enforcement armoury were released.

The Federal Government says it's done with talking – only submissions regarding 'technical aspects of implementing the law' will be accepted over the next few weeks. So that means that the changes appear to be certain and with the start date said to be 1 January 2015, businesses and advisers have 9 months to get ready.

Here's a snap shot of the more significant changes.

Tuesday, April 8, 2014

Decoding your patent licence

By Adrian Chang, Lawyer

A decision earlier this month has brought light into one of the darker corners of the Patents Act 1990 (Cth).

Despite having an statutory equivalent in Australian patent law since 1952, MPEG LA, LLC v Regency Media Pty Ltd provides the first judicial consideration of section 145(1) which provides:
a contract relating to … a licence to exploit, a patented invention may be terminated by either party, on giving 3 months' notice in writing to the other party, at any time after the patent, or all the patents by which the invention was protected at the time the contract was made, have ceased to be in force.
Section 145(2) expressly prohibits contracting out of s145(1).

Thursday, April 3, 2014

Finding Nappyland: does a registered trade mark trump all?

By Julia Kovarsky, Lawyer

In short, the answer is no.

The recent decision in CI JI Family Pty Limited v National Australian Nappies (NAN) Pty Limited, which involved two family businesses trading in commercial quantities of nappies and other products, examined whether having a registered trade mark can be a defence to a claim for misleading or deceptive conduct, or passing off.

CI JI Family Pty Limited (CJF) (whose sole director was Mr Ngo) had traded as 'Nappyland' in New South Wales since 1999. The business name 'Nappy Land' was registered in New South Wales to Mr Ngo and his wife. CJF traded under the logo:
It was not registered as a trade mark.

Thursday, March 27, 2014

Delegate for a Day – Designs edition

By Lester Miller – Patent attorney, Senior Associate

Pop quiz! We again invite you to be a delegate of the Registrar of Designs:

Step 1: Think like someone familiar with the products shown (an informed user).
Step 2: Get an overall impression of each design in the surveys below. In each category, ask yourself whether the designs are identical or substantially similar to any of the ones shown as prior art.
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 comments on these real-life cases.