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

Tuesday, September 29, 2015

Bob Katter's proposed amendments to the Trade Marks Act

by Mark Williams, Managing Associate

Law reform in respect of trade marks in Australia moves at glacial pace. Therefore, any proposed amendment to the trade mark legislation generates significant interest amongst the IP Community. Mark Williams reports on Bob Katter's proposal for protecting Aussie icons, in video and in text:

On 14 September, the Trade Marks Amendment (Iconic Symbols of National Identity) Bill was introduced to Parliament by Federal MP Bob Katter. Prompted by Mr Katter's indignation at recent trade mark applications by various parties for trade marks consisting of the words Waltzing Matilda, the Bill proposes a new ground for rejecting a trade mark application if the trade mark consists of a sign that is of national significance, or iconic value, to the people of Australia.

Monday, September 28, 2015

A different kind of birthday suit

By Lauren John, Associate

'Happy Birthday, to you'. Although it is the most recognised and most frequently sung song in the world, many would be surprised to learn that this simple ditty, most famously performed by Marilyn Monroe in 1962, is still protected by copyright. That was, until last week.

US District Judge George King has ruled that Warner/Chappell, the purported copyright owner of Happy Birthday, does not in fact own a valid copyright in the lyrics to the song. The decision is significant given that the song may have been afforded copyright protection in the US until 2030.


A purported class action, filed two years ago, was commenced by a film-maker who paid $1500 to licence the song for use in a film about its history. Anyone seeking to publicly perform the song or use it in a commercial enterprise was required to pay a licence fee to Warner/Chappell, which is the music publishing division of the Warner Music Group. Warner/Chappell acquired the song's copyright for $15 million in 1988 and it reportedly generates $2 million in royalties per year for the company. The plaintiffs alleged that the song's copyright expired in the early 1920s and it should be dedicated to public use.

Tuesday, September 22, 2015

Locking down flighty cybersquatters – new UDRP rules

By Scott Joblin, Lawyer

On 31 July this year, an updated version of the Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) came into effect. The Rules, in combination with the supplemental rules of the various dispute resolution providers, set out procedural requirements to be complied with in disputes relating to abusive registration and use of domain names. The previous Rules will continue to apply to complaints which were submitted before 31 July 2015.


The new UDRP Rules have introduced a number of changes that are, for the most part, intended to address a practice known as cyberflight. This is where a domain name holder, after learning about a complaint that has been filed against it, alters details of the registration or changes the registrar, with the intention of avoiding or delaying proceedings. This has been a tactic commonly associated with cybersquatters (ie those who try to profit from registering and reselling, or hosting paid advertising on, domains that incorporate established company or brand names).

Monday, September 21, 2015

We've created a monster! Government looks to do away with innovation patents

By Emily Cravigan, Associate

Although under scrutiny for some years, things really started to get dicey for the innovation patent system in May of this year, when the Advisory Council on Intellectual Property (ACIP) recommended that the government consider abolishing it altogether. IP Australia is now seeking public submissions on the recommendation by 28 September 2015.

A long review process

Readers of this blog will be familiar with innovation patents – they are the faster, cheaper and more accessible alternative to the standard patent, introduced to encourage innovation amongst small to medium enterprises (SMEs) by providing protection for innovations that may not meet the higher inventive step threshold requirement for standard patents.

The innovation patent has been poked, prodded and probed for some time now. Back in 2011, the Department for Innovation, Industry, Science and Research, concerned about potential misuse, asked ACIP to investigate whether the innovation patent system was meeting its intended objective of stimulating innovation amongst small Australian players. Although ACIP spent three years conducting its review (including by commissioning its own research), its final report was inconclusive - ACIP was unable to recommend whether the system should be kept or done away with.

Friday, September 18, 2015

Turf war: Upholding exclusive territory rights in a licence

By Nadia Guadagno, Senior Associate

Exclusivity is one of the most valuable rights which can be granted under a licence agreement. If that right is impinged upon, then the value of the licence is eroded. Licensees will legitimately expect licensors to honour the grant of an exclusive licence, but how far is the licensor required to go to protect that right?

The Full Federal Court recently considered this issue in Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd [2015] FCAFC 127 concerning a longstanding territory war between a franchisor and two franchisee neighbours.

What happened?

Spanline Weatherstrong Building Systems Pty Ltd (Spanline), a franchisor of the business of sale and installation of home additions, such as verandas and carports, entered into separate franchise agreements with RPR Maintenance Pty Ltd (RPR) and Marmax Investments Pty Ltd (Marmax) under which it granted each of them an exclusive right to conduct the franchised business in adjacent territories.

Wednesday, September 16, 2015

TPP latest: Copyright causing commotion

By Claire McMahon, Associate

Rumblings about the Trans Pacific Partnership (TPP) continue, with copyright activists (on all sides) taking issue with the existing copyright provisions in the latest leaked version of the Intellectual Property Chapter.

We discussed some of the other big ticket items in this new version in a recent post, noting that the US is still pushing to extend copyright protection under the TPP to 70 years beyond the life of the author, with longer protection afforded to corporate authors. This is consistent with current US and Australian law, but some US lobbyists are unhappy about the existing length of protection and are concerned that enshrining these copyright terms in an international treaty will make it more difficult to lobby to have them shortened. This period of copyright protection is also longer than the existing period in a number of the other countries.

Thursday, September 3, 2015

High Court delivers verdict on Crestor patent

By Tracy Lu, Senior Associate

In an unanimous decision, the bench of five Justices of the High Court in the litigation between AstraZeneca, Apotex, Watson and Ascent involving the drug rosuvastatin (brand name Crestor) found against the patentee on the ground of lack of inventive step having regard to the combination of common general knowledge (CGK) with either one of two pieces of section 7(3) prior art information.

We previously reported on the lower court decisions in this case in August 2014 and April 2015.


The patent related to methods of treatment involving the use of particular doses or dosage ranges of a cholesterol lowering agent, rosuvastatin and its pharmaceutically acceptable salts. The invention addressed the problem of developing a new statin treatment that could bring more patients to their target blood cholesterol level without the need to resort to dose titration.