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

Thursday, December 22, 2016

The TPP is dead! Or is it…?

By Isobel Carmody, Vacation Clerk, and Adrian Chang, Associate

Based on his presidential campaign strategy, we are not surprised that before taking office, US president-elect Donald Trump continues to shake the world with his pronouncements. One of his first? The Trans-Pacific Partnership (TPP) is fired! So is this the end of this grand, highly controversial trade deal? Or can it survive despite the Donald's dramatic declaration?

Wednesday, December 21, 2016

Productivity Commission's Final Report on Intellectual Property Arrangements Now Available

By Lev Gutkin, Lawyer

The Productivity Commission IP marathon was completed yesterday with the publication of the Final Report on IP Arrangements.

Unsurprisingly, given the wide scope and limited time, the Final Report is a mixture of good and bad. Some of the more concerning themes evident in the Draft Report published in April (discussed in our prior post) have not been changed by intense lobbying or, indeed, by evidence. Despite covering a huge volume of material (the report is over 700 pages), many of the individual sections are superficial, showing that in-depth understanding of the nuances of the more complex areas of law considered may not have been fully achieved.

Instead of providing high level recommendations, the Final Report often descends to individual and quite specific detail, including legal drafting recommendations. For example, the effect of recommendation 7.2 is to specify the detail of legislative wording, down as far as the detail of the matters to be mentioned in the Explanatory Memorandum.

Tuesday, December 20, 2016

Legislation to implement the Sansom review recommendations clarifies the Government response. We now have an interesting framework for implementation but the details are still to come.

By Ric Morgan, Special Counsel

A little over two months ago we wrote that the Government response to the Sansom review provided no clear indication 'the Government will be taking the medicine Sansom has prescribed'. The ongoing release of information and active consultation by the TGA is much more encouraging than our original prognosis.

Thursday, December 8, 2016

Pregabalin Patent Powers Through

By Lev Gutkin, Lawyer

Pfizer's drug Lyrica (pregabalin) is usually used to treat neuropathic pain, but is no doubt the cause of plenty of headaches for Apotex and Generic Partners, after Nicholas J dismissed their invalidity attack against patent no. 714980 and held that their conduct amounted to threatened infringement.

The patent is in respect of the use of pregabalin, the (S)-enantiomer of 3-aminomethyl-5-methylhexanoic acid (the 3-amino compound), a known anti-seizure drug, for the treatment of pain. Apotex claimed the patent was invalid on the grounds of insufficiency, inutility, false suggestion and because the patentee, Warner-Lambert, was not entitled to the patent.* Other than in relation to the entitlement issue, the pre-Raising-The-Bar provisions of the Patents Act 1990 (Cth) applied.

Friday, November 25, 2016

ACCC means business when it comes to cartels (but your trade mark might not)

By Natasha Dixon, Lawyer

The Federal Court has held that the registration of a trade mark in Australia, and the enforcement of rights pursuant to that registration, is not necessarily sufficient to establish that the owner of that trade mark is carrying on business in Australia for the purposes of applying Australia's competition laws.

Allegations were brought by the ACCC against Italian-based company Prysmian and French-based company Nexans SA, claiming that the companies were engaged in price fixing and market sharing agreements. As part of its argument, the ACCC was required to establish that the two international entities were carrying on business in Australia.

Wednesday, November 23, 2016

Leave the Interference to the Ribonucleic Acid: iRNA Patent Finally Gets There

By Lev Gutkin, Lawyer

Talk about perseverance! Four adverse examination reports didn’t stop Arrowhead Research Corporation from pursuing its patent application, and its efforts have finally paid off, after seeing off the final objection, that its patented invention was not a 'manner of manufacture'. Arrowhead is now the proud owner of an interference RNA patent.

The patent application relates to the process of RNA interference and its use for attenuation of unwanted or pathological protein expression, specifically that of spleen tyrosine kinase (Syk). The registrar's most recent ground for rejecting the application was that the patent was not for a 'method of manufacture' because it claimed double stranded RNA molecules. The 'method of manufacture' objection stemmed from the decision of the High Court in D'Arcy v Myriad Genetics Inc, discussed in a previous post. The majority decision in D'Arcy established that naturally occurring DNA sequences, even if isolated from the rest of the cellular contents, failed to satisfy the 'manner of manufacture' requirement as they are in truth better characterised as 'information'.

Monday, November 21, 2016

It's not easy being green

By Natasha Dixon, Lawyer

A recent Trade Marks Office decision, following an opposition hearing, has left the company that manufactures and markets V energy drink (V), red-faced as its application to register a colour mark was refused by the Registrar of Trade Marks.

In 2012, V applied to register 'Pantone 376c Green' (V Green) as a trade mark in respect of energy drinks. The application was opposed by The Coca Cola Company (Coca Cola), on the basis that the V Green was not inherently adapted to distinguish V's energy drinks.

Friday, November 18, 2016

A Channel Nine Exclusive! (or is it?)

By Julia Kovarsky, Associate

In the media world, getting the 'exclusive' is the ultimate goal. However, a recent decision handed down by the NSW Court of Appeal shows that exclusivity may not always be all it seems.

In 2013, WIN Corporation Pty Ltd (WIN) entered into a licence agreement with Nine Network Australia Pty Ltd (Nine) which granted WIN "the exclusive licence to broadcast on and in the licence areas covered by the WIN Stations the program schedule broadcast by Nine" on its channels. The 'licence areas covered by the WIN Stations' referred to WIN's licence from ACMA to broadcast on free-to-air television frequencies in certain parts of Australia. Six months before the WIN licence was due to expire, Nine embraced the digital age and began live-streaming its programming, including into WIN's territory. WIN brought proceedings, claiming that Nine's live-stream was a breach of their agreement – a spoiler to WIN's exclusive scoop.

Tuesday, November 8, 2016

TPP – Watch this space!

By Adrian Chang, Associate

Regular readers of Scintilla will know that we have kept a close eye on the Trans-Pacific Partnership (including reviewing the various drafts leaked by Wikileaks) and you can rest assured we're also keeping an eye on the parliamentary inquiry into the TPP which kicked off yesterday.

The inquiry is to assess the TPP, with particular reference to the impact of the agreement on (amongst other things) Australia's economy, social, cultural and environmental policies, the effect of Investor-State Dispute Settlement under the TPP and rights for copyright holders. The inquiry is due to report its findings by 7 February 2017.

The TPP has been controversial – critics fear that it will undermine Australia's ability to set domestic policy, particularly in the area of the protection that is to be afforded by patents and other intellectual property.  Unsurprisingly, the inquiry has drawn a great deal of interest, with a diverse range of interest groups making 80 submissions to the inquiry committee.

So to keep up to date with the parliamentary inquiry, and other TPP analysis, stay tuned to Scintilla. To get alerts when we publish a post, hit the subscribe button on the right.

Friday, October 14, 2016

'Playboy, copyright and the CJEU – a revealing decision on hyperlinking in the EU

By Kirsty Corby, Associate, and Natasha Dixon, Lawyer

Hyperlinks are integral to the functioning of the internet. Websites routinely hyperlink to content freely available elsewhere on the world wide web. But what if that content is copyright protected and has been made available online without the copyright owner's consent? What is the website owner's liability, if any, for hyperlinking to that content?

Last month, the Court of Justice of the European Union (CJEU) provided some crucial guidance for copyright and website owners in the European Union on this issue (GS Media). The CJEU determined that where a website owner knows or ought to know that a copyright owner has not authorised the publication of a work online, the website owner infringes copyright by hyperlinking to that work. Where a hyperlink is created for a profit making purpose, the website owner is presumed to know that the work has been published without the consent of the copyright owner and will infringe copyright unless he or she can rebut that presumption.

Background to the decision

In October 2011, Dutch website,, posted a hyperlink to a third party website where internet users could download nude photographs of a Dutch celebrity destined for publication in Playboy. Playboy claimed ownership of copyright in the photographs. Importantly, Playboy had not published nor authorised the publication of the photographs online.

Playboy's Dutch publisher, Sanoma Media, sought to have the photographs taken down, contacting GS Media (the owner of and the Australian website hosting the photographs and notifying them of Playboy's copyright claim. Whilst the host website complied with Sanoma Media's requests and removed the photographs, GS Media refused to remove the hyperlinks from its website, instead publishing two further hyperlinks to the photographs that were then being made available by other host websites. Sanoma Media commenced proceedings against GS Media in the Dutch courts alleging that by hyperlinking to the photographs, GS Media had infringed its copyright in the photographs by communicating the works to the public. The Dutch courts referred the matter to the CJEU for guidance.

The law in the UK and Europe prior to this decision

Prior to this decision, the liability of website owners in the European Union for hyperlinking to copyright works posted online without the right holder's consent was uncertain.

In two previous decisions (Svensson and Others v Retriever Sverige AB and BestWater Intl GmbH v Michael Mebes and Stefan Potsch), the CJEU had determined that website owners would not infringe copyright by hyperlinking to works which were freely available online if the works had been uploaded initially with the right holder's consent. The CJEU reasoned, in essence, that a website owner did not communicate the works to the public in those circumstances because the hyperlink did not make the works available to a 'new public' [ie, an audience not envisaged by the right holder when he or she authorised the initial communication to the public].

However, the CJEU did not address whether the position would be different if the works had been made available online without the right holder's consent.

The CJEU's decision in GS Media

In GS Media, the CJEU sought to resolve this question left open by its previous jurisprudence on hyperlinking. The CJEU determined that where a website owner knows or ought to know that a copyright owner has not authorised the publication of a work online, the website owner – by hyperlinking to that work – communicates the work to a new public. That is, the website owner infringes copyright by hyperlinking to a work in the knowledge that it has been uploaded online without the right holder's consent.

Importantly, the CJEU found that where a hyperlink is created for a profit making purpose, the website owner is presumed to know that the work has been published online without the consent of the right holder. As such, the website owner will infringe copyright unless he or she can rebut that presumption.

Applying this analysis, the CJEU determined (subject to verification of certain factual matters by the Dutch referring court) that GS Media had infringed Playboy's copyright in the nude photographs by posting hyperlinks to the photographs because:

  • neither Playboy nor Sanoma Media had authorised the publication of the photographs online; 
  • the hyperlinks were created for a profit making purpose therefore GS Media's knowledge that the works had been uploaded without Playboy's consent was presumed; and 
  • in any event, GS Media could not rebut this presumption of knowledge because, having received a takedown notice from Sanoma Media, it had actual knowledge that the online publication of the photographs had not been authorised by Playboy. 

GS Media had therefore communicated the copyright works to the public, an infringing act under Article 3(1) of the Information Society Directive 2001/29.

The CJEU's decision in GS Media is a pragmatic response to copyright owners' concerns about the enforcement of their intellectual property rights in an internet age.

This decision reaffirms that a website owner in the European Union is entitled to post hyperlinks to copyright content available online where that content has been uploaded with the copyright owner's consent and online access to that content is not restricted by way of a paywall or otherwise.

However, the decision overall prioritises ease of copyright enforcement for right holders over the free flow of information online. In arriving at its decision, the CJEU expressed its expectation that website owners posting hyperlinks for profit carry out 'necessary checks' to ensure that the work concerned has not been illegally published online. This may prove to be an onerous obligation for website owners given how difficult it is to ascertain the origin of online content and the fact that the content of websites can fluctuate daily. It is not clear, for example, if this decision imposes a continuous obligation on website owners to monitor the pages to which their site links to ensure that the content on that page is, and continues to be, authorised by the content holder. The level of due diligence this decision requires on the part of website owners is likely to be the subject of subsequent cases before the CJEU.

Lessons for the Australian context

There has been limited judicial consideration of this issue in Australia.

Like in the European Union, copyright owners in Australia have the exclusive right to communicate a work to the public under s31(1)(a)(iv) of the Copyright Act 1968 (Cth), which includes the right to make the work available online.

In Universal Music Australia v Cooper (2005) 150 FCR 1, Tamberlin J determined that a website containing hyperlinks which enabled users to download music files from third party websites did not communicate the copyright works to the public. It was the third party websites from which the music files were downloaded, and not the respondent Cooper's website (, that made the works available online, even though the request that triggered the download of the music files came from clicking the hyperlink on Cooper's website.

On appeal, the Full Federal Court determined that Cooper had nonetheless authorised the primary infringement of the third party websites by hyperlinking to those websites. The Full Federal Court pointed to a number of factors in making its finding of authorisation, including that Cooper had the power to prevent internet users from making copies of the music files via his website, that he had deliberately designed the website to facilitate this copying and that he did not take any reasonable steps to prevent or avoid the infringements. Tamberlin J's finding that Cooper's website did not itself communicate the works to the public was not the subject of an appeal.

Further consideration of this issue both in Australia and Europe is inevitable. Whilst the approaches taken by the European and Australian courts differ considerably, the factors the courts have taken into account are similar. Both jurisdictions have placed weight on the state of knowledge of the alleged infringers, the fact that the alleged infringers had a commercial interest in the infringement and the alleged infringers' apparent failure to take steps to prevent the infringement. This means that in either jurisdiction, copyright owners should (as always) notify website owners of any potentially infringing conduct as soon as they become aware of it, and website owners should take seriously and respond promptly to any takedown notices they receive.

Friday, September 30, 2016

ACCC launches first action under the revised Franchising Code of Conduct

By Kaelah Ford, Associate

The Australian Competition and Consumer Commission (ACCC) has commenced proceedings in the Federal Court of Australia against a franchisor for an alleged breach of the Franchising Code of Conduct (the Code). This marks the first time the ACCC has sought to exercise its enforcement powers under the Code since significant revisions to the Code took effect on 1 January 2015.

The proceedings were commenced against Morild Pty Ltd (Morild), the franchisor of the 'Pastacup' chain of restaurants in Western Australia, as well as the co-founder of Pastacup, Stuart Bernstein. The ACCC alleges that as franchisor, Morild had a mandatory obligation to disclose to prospective franchisees that Mr Bernstein had previously been a director of two Pastacup franchisors that became insolvent. The ACCC also alleges that Mr Bernstein was knowingly concerned in Morild's conduct. The ACCC is seeking declarations, injunctions, penalties, findings of fact and costs.

The ACCC has stated that ensuring compliance with the Code is an enforcement priority – meaning that understanding your rights and obligations under the Code should be a priority for all franchisors and franchisees. In this post we provide an overview of the disclosure obligations that currently have Pastacup in hot water. For a more detailed look at the entire Code, take a look at our Focus.

Thursday, September 29, 2016

Most of the Sansom review's recommendations have been accepted but is the Government really prepared to dispense the changes Sansom has prescribed?

By Sarah Matheson, Partner, and Ric Morgan, Special Counsel

In March and July 2015, the Expert Panel Review of Medicine and Medical Devices Regulation – which became known as the Sansom Review – reported its findings and recommendations to the Government. The Sansom Review was tasked with undertaking a systematic examination of how Australia regulates the sale of medicines and medical devices in this country. It offered up a raft of recommendations touching on legislative reform, who should have a say in making these decisions and how the process should work.  Now, more than 15 months later, we have the Government's response. So, does this mean we can expect a healthier regulatory scheme for medicines and medical devices?

Don't get your hopes up – it’s not clear that the Government will be taking the medicine Sansom has prescribed. While only two of the 58 recommendations have been rejected, the remaining responses from the Government cover a spectrum from  deferral to support of intent to  in principle support and also acceptance, with the overriding impression being that there will only be incremental change to the Government regulation of medicines and medical devices.

Tuesday, September 27, 2016

Productivity Commission hands Final Report on IP Arrangements to Government

By Lauren John, Associate

The Productivity Commission has met its deadline to provide its Final Report on Australia's Intellectual Property Arrangements to the Australian Government. The Final Report was handed to the Government on 23 September 2016.

The Government is required to table the report in each House of the Parliament within 25 sitting days of receipt. The Final Report will not be publically available until it has been tabled. As there are less than 25 sitting days left in the year in both Houses, we may not see the Final Report until next year.

We will keep you updated on the Productivity Commission's recommendations and what they mean for you, once the Final Report is made public. In the meantime, you can read our report on the recommendations made in the Draft Report released earlier this year, and what happened at the public hearings held before the Productivity Commission in July.

Monday, September 19, 2016

Defining the relationship (again). Are we really exclusive?

By Lauren John, Associate

If you thought your love life was complicated, wait until you try to unravel the meaning of 'exclusive licensee' in the Patents Act, which has again arisen for interpretation, this time by the Full Federal Court in Actavis Pty Ltd v Orion Corporation [2016] FCAFC 121.

It is crucial to have a firm grasp of what is meant by 'exclusive licensee' when commencing infringement proceedings as a failure to establish this relationship can be a 'deal breaker'. Whether or not you are an exclusive licensee is determinative of whether you have standing to commence infringement proceedings under s120(1) of the Patents Act, and, in seeking interlocutory injunctions, will impact the ability of a party to demonstrate that it has suffered damage in relation to balance of convenience arguments, and whether it is necessary to provide a bank guarantee in order to obtain an interlocutory injunction.

Wednesday, September 7, 2016

Biosimilar Interchangeability – The PBAC's consideration of Brenzys (etanercept)

By Sarah Matheson, Partner, and Ric Morgan, Special Counsel

We now know that the PBAC is prepared to have Brenzys, MSD's biosimilar version of etanercept, 'a-flagged' to Pfizer's as Enbrel.

It appears that the PBAC has continued with its unique position and allowed in-pharmacy substitution in the absence of evidence specifically addressing interchangeability.

The PBAC identifies six matters that it considered in deciding to 'a-flag'.  Of these, only two actually address issues beyond the assessment of whether Brenzys is safe and efficacious as a biosimilar product. 

The first of these relates to study of a "one-way switch from Enbrel to Brenzys".  As noted in our previous post,  such switching and interchangeability involve different risks.

The second is to say that:

"The drug, etanercept, is not immunogenic per se, and anti-drug antibodies are rare. Switching between brands of etanercept is unlikely to change this."

Whether this addresses the real concerns about the PBAC's approach is questionable. Because the PBAC does not refer to any studies or evidence on interchangeability, it appears that there are no studies on which it has relied.

It also suggests that the PBAC is conflating switching (on a single occasion) with interchangeability, as allowed by 'a-flagging'.

It seems that the PBAC is relying on prescriber control and patient choice to suggest that by allowing 'a-flagging' they are not really supporting full interchangeability. The PBAC states:

"…the substitution process allows for patient and prescriber choice and is not automatic. For any individual prescription, a prescriber may choose to not permit brand substitution. If substitution has been permitted by the prescriber, the patient may choose which brand they wish to receive from the pharmacist."

Thursday, September 1, 2016

A Poisonous Path for Patents?

By Richard Hamer, Partner, and Suzy Roessel, Senior Associate

A number of patents which would not be at risk in major jurisdictions have recently been invalidated in Australia. These cases involve three grounds of invalidity where Australian law departs significantly from the law of major filing countries - best method, inutility and false suggestion.

Since 2013, patent amendments which disclose new matter are not permitted in Australia, so there is limited opportunity to amend a complete specification to fix these issues in the Australian national phase, particularly in relation to adding best method disclosures.

Tuesday, August 30, 2016

Access denied: counterfeiters not welcome online

By Emma Gorrie, Lawyer

Legislation in the UK and Australia expressly provides for injunctions against ISPs in the context of copyright infringement, but not for trade mark infringement. A recent UK Court of Appeal decision, Cartier International AG v British Sky Broadcasting Ltd [2016] EWCA Civ 658, confirmed that there is a power to grant injunctions against ISPs to defeat trade mark infringement.

Friday, August 26, 2016

To be human, or not to be human: that is the [patentability] question

By Claire Gregg, Patent Attorney, and Dr Trevor Davies, Partner 

Advances in biological manipulation of cells and stem cell technology continue to test the law on what can be patented.

A recent decision of the Australian Patent Office makes clear that an invention that includes a step on the pathway to the production of a potential human being, even if the end result is not a human being, is not patentable. Claims to the use of cellular structures that may mimic the embryonic process but cannot result in a human being are patentable.


'Human beings, and the biological processes for their generation' is one of the few legislated exclusions from patentability under Australian law. In one of only a handful of decisions of its kind, the Patent Office recently considered the scope of this exclusion in International Stem Cell Corporation [2016] APO 52

Wednesday, August 24, 2016

Same, same but different – design infringement

By Anna Conigrave, Law Graduate.

Good news for designers

A recent Federal Court decision, in Hunter Pacific International Pty Ltd v Martec Pty Ltd, has provided good news for registered design owners, in that liability for design infringement is not avoided by tweaking a registered design to create minor differences.

Hubs at ten paces

Hunter Pacific International Pty Ltd owns registered design No. 340171 for a ceiling fan hub. Martec Pty Ltd imports and sells a ceiling fan known as the 'Martec Razor' . 

Hunter alleged that Martec infringed the Registered Design on the basis that the Razor is a product that is substantially similar in overall impression to the Registered Design.

Appendix 3 of judgment: Registered Design (left) and photograph of Razor (right)

Friday, August 19, 2016

Fee Changes at IP Australia – what action should you take?

By Claire Gregg, Patent Attorney, and Lena Balakrishnan, Associate 

IP Australia has announced changes to its fee structure for patents, trade marks, designs and plant breeder's rights, which are due to commence on 10 October 2016. While certain fees are set to increase, the news isn't all bad, with some significant savings on the horizon.

The key changes include:
  • A significant reduction of $1,250 in International Type Search fees for Patents;
  • An increase in renewal fees for both Patents and Trade Marks;
  • An increase in filing fees for Trade Marks;
  • Removal of the registration fees for Trade Marks filed after 10 October 2016; and
  • Removal of certain opposition fees for Patents, Designs and Trade Marks.
In light of the impending fee changes, we suggest you consider taking the following steps:
  • Paying patent renewal fees (10th anniversary onwards) before 10 October 2016 (saving between $50 and $250 per year)
  • Paying any trade mark renewal fees due in the next 12 months before 10 October 2016 (saving $100 per class per renewal)
  • Filing trade mark applications after 10 October 2016 in order to avoid having to pay any registration fees at a later stage (saving $300 per class).

Wednesday, August 17, 2016

Interchangeability – should science or economics prevail?

By Sarah Matheson, Partner, and Ric Morgan, Special Counsel

We are about to find out a little more about Australia's unique stance on interchangeability for biosimilars.  Later this week, the PBAC's consideration of Brenzys, MSD's biosimilar version of etanercept, currently marketed only by Pfizer as Enbrel will be made public, including whether it will be 'a-flagged'.

In our recently released discussion paper, Biologic medicines and biosimilars in the Australian landscape we raise this important issue and we have explored this further in a more detailed white paper Costs before Caution—Australia's unique approach to the interchangeability of biosimilars developed in support of our discussion paper.

Thursday, August 11, 2016

Unjustified threat, genuine step, or misleading or deceptive conduct: where is the line?

By Lauren John, Associate

A patentee should be alert to the dangers of firing off a communication which threatens a person with patent infringement proceedings – as the saying goes, it may come back to bite you. Where a person makes unjustified threats of infringement proceedings, the Patents Act 1990 (Cth) allows action to be taken against the person. We consider two recent Federal Court cases which shed light on the sorts of communications that are likely to land a patentee in trouble.

The cases, CQMS Pty Ltd v Bradken Resources Pty Limited [2016] FCA 847 (Case 1) and NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty Limited [2016] FCA 614 (Case 2), give guidance as to what constitutes an unjustified threat. Case 1 considers the impact of the Civil Dispute Resolution Act 2011 (Cth) (CDRA), and in particular the obligation imposed on an applicant in civil proceedings to file a genuine steps statement, on the application of the unjustified threats provision. Case 2 serves as a warning that the allegedly threatening communication may also be found to constitute misleading or deceptive conduct in contravention of the Australian Consumer Law (ACL).

Monday, August 8, 2016

Productivity Commission's Report extension might push IP inquiry out to 2017

By Suzy Roessel, Senior Associate

September 2016 is the new deadline for the Productivity Commission to provide its Inquiry Report on IP Arrangements to the Australian Government. The deadline for the inquiry report was previously August 2016.

The Commission has revised the date, stating that the inquiry timetable was "impacted by the caretaker period associated with the federal election which precluded full engagement with government department and agencies".

Monday, July 18, 2016

Keep calm and carry on? The effect of Brexit on IP rights

By Natasha Dixon, Law Graduate

The result of the recent British referendum has no doubt been a hot topic around water coolers since, with many questions raised as to the political, legal and economic repercussions of Britain's exit from the EU. While it may not be the first thought that comes to mind, an important implication to consider is what consequences exist in relation to IP rights in the UK and EU following the decision. While current EU legislation continues to apply to the UK until it has formally left the EU, Australian companies who either own or license IP within these regions should consider the long-term impact of Brexit and what, if any, contingencies should be put in place to address the inevitable changes to come.

Friday, July 15, 2016

TPP at risk from 'Hatch(ed)' accusations that Australia's data exclusivity steals US patents

By Sarah Matheson, Partner and Ric Morgan, Special Counsel 

Allens has released a discussion paper, Biologic medicines and biosimilars in the Australian landscape, and the news reports today of the comments of US Senator Orin Hatch on the Trans Pacific Partnership (TPP) trade agreement and biologic medicines make this all the more relevant.

In this most recent skirmish in relation to the TPP and the agreement about how innovation associated with biologic medicines should be protected, the US Senator is insisting on 12 years' data protection and has accused Australia of wanting to 'steal US patents'. Linking the two concepts, and the language of 'stealing patents', is both curious and inflammatory. First, data exclusivity and patents provide separate and distinct protections for innovation that proceed in parallel. Secondly, by asserting that the TPP deal only requires Australia to provide five years of protection, he misstates the requirement imposed by the TPP's agreed text in relation to data exclusivity. This hyperbole blurs the real dispute that does exist about what protections should be afforded to those that bring biologic medicines to market. We have explored this issue in a more detailed white paper developed in support of our discussion paper.

Thursday, July 14, 2016

Inquiry into IP Arrangements: Productivity Commissioners hold public hearings, but are they listening?

By Suzy Roessel, Senior Associate

Earlier this year we reported on a range of dramatic changes proposed by the Productivity Commission in its Draft Report on IP Arrangements. The Productivity Commission has now held public hearings, with authors, publishers, designers, innovators, lawyers, patent attorneys and economists giving submissions over six days in cities across the east coast of Australia. I attended most of the hearings in Melbourne. Here are my thoughts on what transpired.

Monday, July 11, 2016

Wild Geese knocks Wild Turkey off its perch

By Nadia Guadagno, Senior Associate

The tables have turned in the longstanding battle between the owners of Wild Turkey Bourbon* and the owner of Wild Geese Rare Irish Whisky, Lodestar. Lodestar has succeeded in prying the WILD GEESE marks free from Wild Turkey's claws following a significant Full Court decision which has shed light on the meaning of 'authorised use'. This concept is particularly important in applications to have a trade mark removed for non-use where the relevant user of the mark is a licensee (and not the trade mark owner).

Thursday, July 7, 2016

Cigar manufacturer loses another battle in the Trojan war

By Joel Barrett, Senior Associate

Scandinavian Tobacco Group Eersel BV (STG) and its authorised Australian distributor (STG Australia) have been burned again, now that the Full Court has upheld the first instance decision in their dispute with parallel importer Trojan Trading Company Pty Ltd.

As we reported last year, Dutch company STG was incensed to find that Trojan was purchasing genuine STG cigars packaged overseas, importing them into Australia, unpacking and re-packaging them to comply with our tobacco plain packaging laws, and then selling them to Australian wholesalers and retailers in their new packaging – all without STG's permission. STG commenced proceedings in the Federal Court alleging that Trojan was, among other things, infringing the STG-owned trade marks CAFÉ CRÈME, HENRI WINTERMANS and LA PAZ by re-applying them to the products as part of the re-packaging process. At first instance, Allsop CJ held that while Trojan was engaging in prima facie infringement under section 120 of the Trade Marks Act 1995 (Cth), it could rely on the following defence in section 123(1).

Tuesday, July 5, 2016

Government responds to ACIP Review of the Designs System

By Lauren John, Associate

The federal government has (somewhat inconspicuously) released its response to the recommendations proposed by the Review of the Designs System undertaken by the now defunct Advisory Council on Intellectual Property (ACIP).

About four years ago, ACIP was asked to investigate the effectiveness of the designs system - which has been in operation since the commencement of the Designs Act on 17 June 2004 - in stimulating innovation by Australian users as well as the impact of the system on economic growth. We previously discussed the more significant recommendations made by ACIP on Scintilla TV.

In this post, we consider the government's official response to some of the key recommendations.

Thursday, June 9, 2016

A kick in the Uggs, and litigation to boot

By Lev Gutkin, Law Graduate

Deckers Outdoor Corporation has recently commenced legal proceedings against Australian Leather Pty Ltd in the Illinois Northern District Court for alleged infringements of its UGG trade marks, which has re-enlivened the debate in Australia regarding how it is possible for an American company to prevent Australians from calling their classic Aussie winter boots 'Uggs'. According to a petition to Malcolm Turnbull which was started by Nick Xenophon (and has so far clocked 4826 supporters), Deckers has sought extensive remedies, including punitive damages in the millions of dollars, delivery-up and destruction of Australian Leather Pty Ltd's stock, and transfer of its bank funds to Deckers.

Deckers' Ugg boots connection traces back to a business started by Australian accountant Brian Smith, who, when travelling to California in the 1970s, identified a gap in the footwear market that he thought could be filled by the classic Australian Ugg boot. He built the business over the following years, and in 1995, his business Ugg Holdings Inc, including its US-registered 'UGG' trade mark (No. 1,973,743), was acquired by Deckers.

Friday, June 3, 2016

Federal Court rules Mum was right: Don't make promises you can't keep

By Natasha Dixon, Law Graduate

A recent Federal Court decision, Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, has ruled that, where a patent specification makes multiple promises for an invention, a patent claim is only valid if all those promises are fulfilled.


In this case, Ronneby Road Pty Ltd (Ronneby) opposed the grant of a patent application owned by ESCO Corporation (ESCO) on the grounds that the application lacked utility, novelty and fair basis. Whilst Ronneby was partially successful in its novelty argument, and entirely unsuccessful in relation to fair basis, it succeeded in establishing that all of the claims in ESCO's application lacked utility.

The invention the subject of ESCO's patent application involved a tooth for securing to a base part on the digging edge of excavating equipment, which would, as promised in the patent specification, provide the advantages of 'enhanced stability, strength, durability, penetration, safety and ease of replacement'.

Thursday, June 2, 2016

I, Robot. I, copyright owner?

By Emma Gorrie, Lawyer

A couple of years ago we mulled over copyright ownership issues when a monkey took a selfie. Another equally hairy copyright question is: who owns copyright in robot-generated prose?' More generally, can copyright even subsist in works generated by computer programs and, if so, who is the copyright owner?

To give some context, one of Google's latest artificial intelligence projects is trying to make better conversationalists out of gadgets. To this end, researchers inputted 12,000 e-books into a language model. The researchers then commanded the model to fill the gap between an opening and closing sentence to form a paragraph. If you are curious to know more, read the research paper (PDF). So does copyright subsist in the resulting robot writing? And if it does, who owns copyright?

Currently, the position in Australia is such that copyright simply does not subsist in works not authored by humans. The UK recognises copyright in computer-generated works, which is owned by the person who undertook the arrangements necessary for the creation of the computer-generated work. The EU recognises copyright in databases, identifying the right holder as the natural person who created the base. The position in each of Australia, the UK and Europe is discussed in more detail below.

Monday, May 30, 2016

US says yes to Wayback Machine, but what is the position in Australia?

By Adrian Chang, Associate

Turning back the clock on websites with the Wayback Machine is fun, but according to a recent ruling in a US District Court, it also makes for good evidence.

Most regular internet users will be aware of the Wayback Machine – a service offered by an American non-profit called the Internet Archive that allows users to browse through the Archive's records which house (mostly) complete versions of the past forms of websites.

The Wayback Machine is particularly helpful to IP lawyers because it can demonstrate how clients or the opposing side dressed their websites over time, which can be relevant in all sorts of disputes, such as the one between the parties in Marten Transport, Ltd v Plattform Advertising, Inc.

Wednesday, May 18, 2016

Draft PC Report Update: public hearings to be held in late June

By Suzy Roessel, Senior Associate

The Productivity Commission has today announced that it will be holding public hearings regarding its recent Draft Report on IP Arrangements.

The hearings will be held in Sydney, Melbourne and Canberra, with the possibility of a Brisbane hearing and a second Melbourne hearing if there is sufficient demand.

The public hearings will allow persons who have made submissions to elaborate on what they have submitted, respond to the submissions of others, and to discuss issues with Commissioners. It is also possible to attend the public hearing as an observer only. More information about the conduct of public hearings is available on the Productivity Commission's website.

Written submissions on the Draft Report are due on 3 June 2016. So far, 11 submissions have been made, all of which focus on the dramatic changes proposed in relation to the Copyright system. We expect more submissions to be filed closer to the deadline, and that the public hearings may involve a heated debate regarding the future of innovation in Australia.

Please get in touch with our team if you'd like to work with us to prepare a submission on the Draft Report.

Monday, May 16, 2016

Commonwealth allowed to sue on the usual undertaking as to damages

By Lauren John, Associate

The High Court last week dismissed applications by Sanofi and Wyeth for special leave to appeal against a Full Federal Court decision that the Commonwealth is not precluded from recovering compensation pursuant to the usual undertaking as to damages by virtue of certain provisions of the Therapeutic Goods Act 1989 (Cth) (TG Act).

As a condition on the grant of interlocutory relief in patent infringement proceedings, a patentee or exclusive licensee is ordinarily required to give the 'usual undertaking as to damages', that is, an undertaking to submit to such order (if any) of the Court for the payment of compensation to any person (whether or not a party), adversely affected by the operation of the interlocutory injunction.

In the case of Sanofi, the High Court refused the grant of special leave on the ground that there was no reason to doubt the correctness of the Full Court's conclusion, and in the case of Wyeth, on the grounds that the applications did not raise any issue of principle suitable for the grant of special leave, and if special leave were granted, the appeals would have insufficient prospects of success.

Wednesday, May 11, 2016

New Zealand's ComCom slams the spam

By Lena Balakrishnan, Associate and trade marks attorney

Back in 2014 we reported the on-going problem with trade mark owners and domain name holders receiving unsolicited notices from entities offering trade mark publication, renewal and registration services.  These notices typically are in the form of an invoice charging the owner or applicant of a trade mark or domain name for services relating to the registration, publication, renewal or monitoring of their mark, even though the trade mark applicant or owner has never agreed to buy or engage these services.

Both IP Australia and IPONZ have published warnings about these notices.

One of the companies that is renowned for issuing these unsolicited letters to New Zealand trade mark holders is TM Publisher. TM Publisher's invoices were generally for the amount of $1,638 and related to an overseas trade mark registration service.

Monday, May 9, 2016

Trade Marks Office says McNo to McKosher

By Natasha Dixon, Law Graduate

It was not a happy meal for Mark Glaser when he sat across the table from fast food kingpin McDonald's in a recent Trade Marks Office case.

Mr Glaser had applied to register 'McKosher' as a trade mark (the McKosher Mark) in a variety of classes, including food related goods and services. The application was opposed by McDonald's on a number of grounds, including section 60 of the Trade Marks Act, alleging that the McKosher Mark was similar to a trade mark which had acquired a reputation in Australia, being the family of registered and unregistered marks owned by McDonald's such as 'McChicken,' 'McOz' and 'McChamp' (the McMarks).

In deciding whether the section 60 grounds applied, the Hearing Officer considered the reputation of McDonald's as well as the likelihood of consumers being confused or deceived between the McKosher Mark and the McMarks. Unsurprisingly, the Hearing Officer found that the scale of sales, marketing and promotion of McDonald's services was supersized and that most Australians would be aware of the scale of its operations under the McMarks. As such, he concluded that the McMarks had very strong reputations in Australia, and that the Australian public had an awareness of McDonald's practice of coining further trade marks from the stem 'Mc-' in relation to its offerings.

Thursday, May 5, 2016

End of the Road for RPL Central

By Anthony Selleck, Senior Associate 

Earlier this year we reported that RPL Central had applied to the High Court of Australia for special leave to appeal against the decision of the Full Federal Court. Those following the case will recall that the Full Federal Court decided against RPL Central, holding that the claims of its innovation patent were directed to a 'mere scheme', abstract idea or business method, and thus did not constitute patentable subject matter.

Earlier today, the High Court dismissed RPL Central's special leave application with costs. This means that the orders of the Full Federal Court dismissing an appeal from a decision of the Australian Patent Office, will stand. RPL Central has now exhausted its legal options in respect of its innovation patent. The fact that the case was taken through two Federal Court appeals and a special leave application suggests much was at stake for RPL Central in securing patent rights over its technology.

Monday, May 2, 2016

Dramatic IP changes may be in the pipeline with Draft PC Report

By Suzy Roessel, Senior Associate

The Productivity Commission has released a Draft Report on Intellectual Property arrangements in Australia, which may mean drastic changes to the law are coming. Released on Friday, the Draft Report is open for comment by written submission until 3 June 2016, with a final report to be provided to the Australian Government in August this year and published shortly thereafter. The Draft Report follows last year's issues paper and contains 23 draft recommendations, along with a number of draft findings and requests for further information.

The holistic and principled approach of the Productivity Commission is commendable. It is desirable to avoid 'spot fire' legislation adopted quickly to address a particular issue without proper consideration of compatibility with other aspects of the legislation and affected stakeholders.

A weakness of the Draft Report is that the Commission consists of economists and there are, perhaps not surprisingly, gaps in the legal and practical analysis.

The Draft Report proposes a major re-balancing of copyright between copyright owners and consumers and intermediate users through the reduction of geographical barriers and more flexible defences to copyright infringement, including replacing the fair dealing defences with a flexible fair use defence. Many of these changes reflect previous reviews and will be welcomed by consumers but will be controversial with copyright owners.

Please get in touch with our team if you'd like to work with us to prepare a submission on the Draft Report.

Jimmy Choo thwarts knock-off domain names

By Adrian Chang, Associate

Jimmy Choo has expanded its autumn range by picking up four new domain names from cyber squatters.

Using the Uniform Domain Name Dispute Resolution Policy (UDRP) procedure, the fashion house lodged complaints against three individuals (the Registrants) holding between them the following domain names (links are to the respective UDRP decisions):

Tuesday, April 26, 2016

School's out for descriptive marks

By Mark Williams, Managing Associate

A recent decision of the Australian Trade Marks Office again confirms the difficulty of securing registration of trade marks consisting of descriptive words.

The dispute centred around an application by the University of Wollongong ('UOW') for the trade mark SYDNEY BUSINESS SCHOOL in respect of goods and services in classes 16, 35, 41 and 42. UOW, which was established in 1975, commenced use of the name SYDNEY BUSINESS SCHOOL in connection with its Faculty of Commerce in 1999. Despite being initially rejected for a lack of distinctiveness, UOW had managed to secure acceptance of its application by means of evidence of use of the mark demonstrating that the mark had become distinctive of UOW's goods and services as at the filing date of the application. In 2011, the University of Sydney ('UOS'), Australia's oldest University (established in 1850) renamed its Faculty of Economics and Business as 'The University of Sydney Business School'. UOS then opposed UOW's trade mark application.

Wednesday, April 20, 2016

Petition DENIED: SCOTUS declines to hear Authors Guild copyright challenge to Google Books

By Suzy Roessel, Senior Associate

The United States Supreme Court has denied a petition for a writ of certiorari filed by the Authors Guild and other individual authors to challenge a decision of the Federal Circuit in Authors Guild v. Google, Inc., 804 F. 3d 202 - Court of Appeals, 2nd Circuit 2015.

The Supreme Court's refusal to hear the challenge marks the end of the Google Books saga, which began in 2005, and leaves in place the decision of the US Court of Appeals for the Second Circuit. In that case, a unanimous bench said that the case "tests the boundaries of fair use" under US copyright law.

Through Google Books, Google made digital copies of books without permission of rights holders, scanned those copies, and established a publicly available search function whereby an internet user can freely search for content and view snippets of text containing the searched-for terms. Google also allowed participating libraries to download and retain digital copies of books they submit under agreements which commit the libraries not to use their digital copies in violation of the copyright laws.

Monday, April 18, 2016

Court provides clarity on Google AdWords and use 'as a trade mark'

by James Gonczi, Associate

Justice Katzmann's recent decision in Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255 has provided clarification on whether use of a competitor's trade mark as a Google AdWords search term, and as text in a sponsored link, constitutes use 'as a trade mark' for the purposes of section 120 of the Trade Marks Act. This is an issue which has had scant judicial consideration in Australia, so her Honour's decision provides useful clarification on the rights of advertisers to use their competitor's trade marks in the course of their online advertising.

The applicant (Veda) is a supplier of credit reporting services. Veda owns several trade marks incorporating the word 'Veda', which were registered in, among other classes, class 36 for various financial services, including credit enquiries (the Veda Trade Marks). The respondent (Malouf) operates several businesses which target people with poor credit ratings and assists customers to dispute and apply to have negative listings removed from credit reports compiled and maintained by credit reporting bodies such as Veda.

In the course of advertising its various businesses via Google, Malouf used at least 86 keywords which consisted of, or incorporated, the word 'veda'. The keywords themselves were not visible to consumers who used the Google search engine and located Veda's sponsored links. However, the sponsored links did include the word 'Veda' in conjunction with various other words in the headings of the sponsored links.

Wednesday, March 30, 2016

ACCC v Valve: ACCC Wins

by Adrian Chang

The ACCC has marked another kill against game distribution platforms – this time it has taken down Valve Inc, owner of the legendary Steam software distribution platform.

In a press release, the consumer watchdog said Justice Edelman of the Australian Federal Court has found that Valve made false or misleading representations to consumers in its terms and conditions of three versions of its Steam Subscriber Agreement and two versions of its Steam Refund Policy.

The text of the judgment has yet to be publicly released.

The ACCC says that Justice Edelman found that Valve had represented that:
  • consumers were not entitled to a refund for digitally downloaded games purchased from Valve via the Steam website or Steam Client (in any circumstances);
  • Valve had excluded statutory guarantees and/or warranties that goods would be of acceptable quality; and
  • Valve had restricted or modified statutory guarantees and/or warranties of acceptable quality.

Thursday, January 14, 2016

RPL Central to fight on

by Anthony Selleck 

In our post from the end of last year, we reported the Full Federal Court's decision in RPL Central v Commissioner of Patents and noted that it was open to the patentee to apply for special leave to appeal the decision to the High Court of Australia. We can now report that the patentee has done exactly that. The patentee will need to convince a Justice of the High Court that the case involves a question of law of public importance before it will be granted leave to appeal. We will be closely watching the case in the coming weeks to determine the outcome of the High Court's decision.