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

Thursday, July 30, 2015

Court rules that domain names can be transferred at interlocutory stage

By David Stewart, Senior Associate, and Natasha Dixon, Vacation Clerk

The recent Federal Court decision in Thomas v Humantech [2015] FCA 541 shows that a court will be prepared to order the transfer of a domain name at an interlocutory stage in certain circumstances, and also provides a useful reminder of what is required by a party to satisfy an obligation to negotiate in good faith.


Thomas International (TIL) is an English company that operates a business providing psychological assessments, predominately through the internet. TIL operates a central online hub in the UK that can be accessed by TIL's distributors and customers by logging into the TIL website. Since 2007, TIL's services have been distributed in Australia by Humantech (a company that was ultimately controlled by a Mr Schutte), under an agreement by which Humantech was given exclusive rights to appoint a distributor in Australia and to register domain names relating to the business.

Tuesday, July 28, 2015

Does my domain name infringe a registered trade mark?

By Tim Golder, Partner, Sarah Matheson, Partner, and Grace Walton, Vacation Clerk

A recent 650-paragraph judgment presents a smorgasbord of trade mark law issues with some consumer law for dessert. Perhaps suffering from indigestion, his Honour commented on the disproportionate amount of resources expended on this dispute. To save our Scintilla readers from the same fate, we have focused on selected issues below.

The facts

Cairns Harbour Lights Pty Ltd (CHL) was the developer of an apartment building in Cairns known as 'Cairns Harbour Lights' or 'Harbour Lights'. Some apartments were let on a short-term basis.

In 2009 CHL applied to register two word marks: HARBOUR LIGHTS and CAIRNS HARBOUR LIGHTS in relation to 'commercial real estate agency services', 'hotel services' and 'leasing, letting and rental services'. Registration was granted.

Apartment owners were free to use any letting agent, but CHL granted Accor exclusive rights to operate a letting service on-site, and an exclusive licence to use the trade marks.

Friday, July 24, 2015

Website-blocking injunctions law now in force

By Jonathan Adamopoulos, Senior Associate

Copyright owners are now able to apply to the Federal Court for an injunction to block overseas piracy websites, after the Copyright Amendment (Online Infringement) Bill 2015 commenced recently.

The final version of the Bill, which received assent last month, adopted the recommendation of the Senate Legislative and Constitutional Affairs Committee to give courts greater flexibility in the factors taken into account in determining whether or not to grant an injunction.

Tuesday, July 21, 2015

Federal Court sheds (white) light on Section 43(3) of the Patents Act

By Joel Barrett, Senior Associate

A priority date, as the date at which novelty and inventive step are assessed, is valuable for a patentee. Section 43 of the Patents Act 1990 (Cth) provides that each claim within the same patent may have a different priority date, and that there can even be different priority dates within the same claim:
'Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.'

Until recently, the only Australian judicial guidance on s43(3) was from the Full Court of the Federal Court in AstraZeneca AB v Apotex Pty Ltd, in which the majority of four judges considered whether the following claim 'define[d] more than one form of an invention':
A pharmaceutical composition comprising [rosuvastatin] or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, provided that: (i) the inorganic salt is not hydrotalcite or synthetic hydrotalcite; and (ii) the counter anion to the inorganic salt is not a phosphate. [Emphasis added]
The patentee in that case argued that multiple different 'counter anions' could be used, such as titanium oxide or ferric oxide, and so the claim defined more than one form of the pharmaceutical composition. However, the court disagreed, finding that the claim 'defines only one form of the invention even though there will be any number of potential variants that are within its scope' depending on the counter anion used.