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

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):