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Tim Golder, a partner at AAR, and Sandi Montalto have published an article with their take on the Federal Court's recent decision directing that Mars' trade mark application for the colour 'Whiskas Purple' proceed to registration.

IPSANZ' Annual Conference is on over the weekend beginning 10 September, at Noosa. Apparently, there are still some places available. From the USA, Judge Kathleen O'Malley and Covington & Burling's George Pappas are the headline speakers. Siobhan Ryan and I will be talking on aspects of trade marks' use in the trade marks session.

World Trademark Review is running an online survey to gauge understanding of ICANN's proposed new gTLDS and get some insight into what people are doing to prepare for these. If you are a trademark professional or in "marketing", participate here.

The tort of injurious falsehood (sometimes called malicious falsehood or even trade libel) has been largely superseded (but not totally extinguished) by passing off and the modern wrongs against misleading or deceptive conduct. In a helpful, practical primer, Jagot J has had to explore its operation as one of the issues in the Jack Brabham Engines case. There is also an elementary lesson to learn in passing off. In overview, the case concerned 2 rival businesses engaged in developing car engines. They agreed to pool their resources and develop technologies through a new corporate vehicle, Jack Brabham Engines (JBE). The principals in the competitors became directors and shareholders and the great man himself was a shareholder. Things didn't work out and one of the principals, Mr Beare, who had secured patents for technology he had developed earlier decided to invest elsewhere in competition with JBE. Amongst other things, he published statements on his website and in ASIC documents which the applicants complained were injurious falsehoods. Jagot J rejected these allegations. Her Honour pointed out at [246] that the tort required proof of 3 ingredients: proof that (1) the respondent has made a false statement, (2) that the respondent made the statement maliciously and (3) as a result the applicant has suffered actual damage. Her Honour quoted Gleeson CJ on the difference between the tort and defamation:

The tort of defamation protects reputation, and it does so in a manner that involves a balancing of various considerations including the right of free speech. The tort of injurious falsehood protects against provable economic loss resulting from false and malicious statements.

Jagot J at [247] also endorsed the statement in Halsbury's Law of Australia as a convenient summary of what is required for the statement to be malicious:

The applicants failed on all heads for a wide variety of reasons. Some of the statements were not even pleaded. The applicants failed to prove that others were even false and, at every turn, the statements were not shown to be malicious because they were the honest beliefs or opinions of Mr Beare. There was also no proof of damage. The difficulties of proving malice in particular highlight why, if the conduct is in trade or commerce, the tort has largely been supplanted by the fair trading laws such as  s 52 (in the case of corporations) and s 9 / s 42 (in the case of individuals). The applicants also alleged passing off from use of the names “Beare Technology Engine” and “Beare Head Technology”. The names were not registered as trade marks, hence any rights had to arise at common law. The problem for the applicants here was that Mr Beare had used these names in his business before JBE was incorporated and, while he or his company had authorised JBE to use the names, JBE was unable to identify any assignment of the earlier business and its goodwill to JBE. As a result, JBE did not own the relevant reputation. Jack Brabham Engines Limited v Beare [2010] FCA 872

Janice Luck and Peiwen Chen have published at the Fortnightly Review an analysis of the High Court's recent rulings in the trade mark cases: Gallo v Lion Nathan (the Barefoot case) and Health World v Shin-Sun. As Janice was one of the members of the Working Party whose review led to the 1995 Act and has been teaching trade mark courses at Melbourne Uni. for longer than she probably cares to remember, you should read it here.

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The Librarian of Congress has announced 6 new categories of exemption from the prohibitions under US law against circumventing DRM mechanisms (what we call TPM and ERMI). The (Australian) Copyright Council has a nice bullet point summary. Jonathon Bailey, at Plagiarism Today, looks at the politics and the ramifications from a practical perspective. I wouldn't be at all surprised if he didn't spend a fair bit of time on the issue in his weekly podcast, so check back to his site on, say, Monday. Now, the Librarian of Congress' exemptions are applicable under US law only. Our law does contemplate the introduction of additional, so-called "ad hoc" exemptions against circumventing access control tpm, by means of the Regulations: s 116AN(9), Sch. 10A of the regs has 6 nice categories of exemption. These were added way back in 2006 around the time we had a review to find out if we should have some more. Wonder if someone, somewhere is thinking we should investigate some more?

Patent Baristas has a guest post from Bill Bennett at Pizzeys on the Deputy Commissioner's rejection of a patent application for (as described by the Deputy Commissioner):

"a method for commercialising inventions that includes the step of applying for patent protection. The specification indicates that the method is intended to facilitate the uptake of commercialisation of inventions taking into account the restricted timeframe to file for intellectual property rights and the effect of automatic patent publication. The latter is a reference to the practice in most jurisdictions of publishing patent applications 18 months after their earliest priority date."

Claim 1 reproduced in the Deputy Commissioner's decision reads:

At the risk of seeming glib and/or flip, one might think this was a checklist for the commercialisation of "an invention", where one of the items on the checklist includes applying for patent protection, and using a calendaring system to generate reminders so you don't miss a deadline. Wonder what business managers and patent managers have been using Excel, Outlook and any number of computerised database for until now? Any how, Mr Bennett's blog, focusing on the "electronically fillable" and "computer-implemented" wording in the claim, contends that the Deputy Commissioner has reinterpreted Grant (you remember: the asset protection method (formerly known as a trust) in light of the US Supreme Court's ruling in Bilski so that the production of a physical effect will lead to a "manner of manufacture" only where the effect is:

of such substance or quality that the method considered as a whole is “proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies".

Invention Pathways Pty Ltd [2010] APO 10

The Federal Court, Spender J, has allowed Courier Pete's appeal from the Registrar's ruling that, while Courier Pete owned ARD 310528, ARD 312217 and 312218 were owned by Metroll. Section 13 of the Designs Act 2003 prescribes who is entitled to a design. Collymore was employed by Metroll as its factory foreman making water tanks and the like. The Registrar found that it was no part of his duties to be creating new designs for rainwater tanks and Collymore had in fact made the first design on his own time at home. Hence, following an assignment to Collymore's own company, Courier Pete, Courier Pete was the owner. However, the Registrar found that Collymore made the two later designs pursuant to an order from his boss at Metroll, Mr Harland. Thus, the Registrar found that Metroll was the owner. Spender J upheld the Registrar's finding in relation to the first design. (A significant factor in this was Metroll's failure to call the other members of the tank making team to back up Mr Harland's claim that the team was working on the design before the application to register the first design was lodged.) Spender J considered that Mr Harland's direction to Mr Collymore to make up what became the second and third designs had to be considered in all the circumstances. On the evidence, his Honour found that Mr Collymore had made it clear before he agreed to carry out Mr Harland's direction that he, Collymore, would do so only on condition that he retained ownership in the designs and Mr Harland accepted that a royalty would be payable on use of the design. Thus, he retained ownership. Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735