December 2009

Holidays

Holidays Read More »

Customs seizure and trade marks

In two ex parte applications, Greenwood J granted interlocutory injunctions restraining Customs from releasing imported goods which allegedly infringe a trade mark.

The interesting point is that the proceedings for infringement were not brought within the “action period” specified in by s 137 of the Trade Marks Act. Greenwood J reasoned:

Section 136 is headed “Release of Goods to Owner – No Action for Infringement and s 137 is headed “Action for Infringement of Trade Mark”. Some discussion has arisen in earlier authorities, including Jemella v Mackinnon & Another [2008] FCA 1022; 77 IPR 243, in which Logan J had to consider whether non-compliance with these provisions as to commencement and notification within the extension period, might have the effect of depriving the applicant of its standing to maintain infringement proceedings. I am satisfied that ss 136 and 137, taken together, do not deprive the applicant of its standing to maintain proceedings for infringement of the trade mark. Section 137 is not a primary empowering provision conferring rights of action in the applicant. It is permissive in the context in which it appears. Those rights are conferred by s 20 and the provisions of Part 12 of the Trade Marks Act. Section 137 recognises that a trade mark owner may elect to bring proceedings and ss 136 and 137 address what is to occur in the circumstances of those sections in respect of seized goods if the relevant steps are not taken. However, the provisions should be read subject to an order that might be made under s 137(5) to, in effect, preserve the status quo in circumstances where the Court is satisfied that there is a prima facie case of infringement. Nevertheless, a question arises as to whether it is appropriate to make an order directed to the Customs CEO preventing the goods from being released, in all the circumstances, in the exercise of discretion, when s 136 imposes a statutory obligation upon the Customs CEO to release the goods in the circumstances there identified and s 137 imposes time constraints. That directs attention to the merits.

That is, the foundation of the right to be protected by the interlocutory injunction was the right to sue for infringement of the registered trade mark – a right conferred by ss 20 and 120; s 137 merely facilitated that primary right.

Jemella Australia Pty Ltd v Bouobeid [2009] FCA 1567

Jemella Australia Pty Ltd v Daizli [2009] FCA 1566

In the Daizli action there is a further complication that the respondents seem to be out of the jurisdiction for some time. His Honour also refers to products being offered for sale on eBay. But, other than those products being alleged to be infringing, I’m not sure what particular significance that has.

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IP Australia more 2nd round consultations

IP Australia has issued a second consultation paper – with draft drafting instructions:

  • Flexible Search and Examination
  • Streamlining the Patent Process

As with the first round of the second round, comments are required by 12 Feb 2010.

The new paper and drafting instructions can be found here (pdf).

Links to all the papers, pdf and word, via here.

IP Australia more 2nd round consultations Read More »

Clinical trials for new medicines

Clinical trials for new medicines Read More »

Maltesers v Delfi malt balls

Mars’ appeal against the rejection of its claims of trade mark infringement and misleading or deceptive conduct have been tersely rejected.

Images of the product Mars complained about here.

The Full Court noted:

9     It is not in dispute that the evidence established that:
•    confectionary is commonly packaged in primary colours and that red, in various shades, is a predominant and common, indeed ubiquitous, colour;
•    confectionary packaging commonly displays a picture or representation of the product, frequently showing a cross-section or “cut through” of the product;
•    it is not unusual for the name of the product to be written on a diagonal, from bottom left to top right;
•    it is common for packaging of confectionary to include all of the above features.

In this context, the Full Court found that the words malt balls were descriptive and the colour red used by the respondent was not distinctive.

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174

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What’s use of a trade mark in Australia

Bausch & Lomb were distributing an ophthalmic irrigating solution in Australia in bottles like this:

2009_129900.png

The bottles themselves were packaged in cardboard boxes which did not have “BSS” on them and the products were distributed to hospitals and the like.

Alcon, however, has BSS registered as a trade mark in class 5 for such products.

One point of interest is that Bausch & Lomb sought to show that BSS had become descriptive in the trade by relying on a range of publications which included expressions such as “balanced salt solution (BSS Alcon)”, with subsequent references being just to BSS.

Most of the publications were dismissed as inadmissible, being foreign publications not shown to be directed at Australia or referred to by Australians. On the other hand, those in Australia that were admitted:

98 A fair reading of those journal articles suggests that, when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed. The one example of use of the letters “BSS” in government Request for Tender documents is in the same category.

The evidence further showed that until Bausch & Lomb came along, all Alcon’s other competitors used “balanced salt solution” but not BSS. Bausch & Lomb’s conduct, the subject of the proceeding, was the sole exception.

A second, more general, issue is whether or not Bausch & Lomb is using BSS as a trade mark. Foster J found it was. Over at the Australian Trade Marks blog, Professor Davison accepts that there was considerable grounds to find that it was use as a trade mark. However, he contends that one of the factors, (h), relied on by the judge goes to far:

(h) The letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark (Alcon BSS).

I am not sure that the criticism is well made.

For example, in the Caplets case, Gummow J explained the test for determining use of a trade mark as follows:

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426(the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.
Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 194–5 (the Tub Happy case), that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “ partly because “ (emphasis supplied) they are described by the words in question.

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426(the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.

Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 194–5 (the Tub Happy case), that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “ partly because “ (emphasis supplied) they are described by the words in question. (my emphasis)

Now, that doesn’t say that you can take into account consumers’ knowledge that the term is a trade mark. However, if you can take into account their knowledge that something, such as the ox cart in Edward Young v Grierson Oldham, is commonly used descriptively, wouldn’t their knowledge that something was a trade mark be relevant also? The fact that ‘Alligator’ was a fancy word used only by the plaintiff was a vital consideration in JB Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406, a case which Kitto J did read narrowly.

Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299

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Peer to patent Down Under

Ben McEniery from QUT writes advises that QUT is running a “peer to patent” pilot project modelled on those running through New York Law School and the JPO.

According to Ben:

Following on from the Peer-to-Patent projects run recently out of the New York Law School (NYLS) and the JPO comes Peer-to-Patent Australia (www.peertopatent.org.au). Peer-to-Patent Australia is a joint initiative of the Queensland University of Technology (QUT) and IP Australia that is designed to improve the patent examination process and the quality of issued patents. Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.
The project is based on the successful Peer-to-Patent projects run out of the New York Law School (NYLS) in the United States and is the result of the collaborative efforts between QUT and NYLS. The project will initially run as a six-month pilot that will focus on the rapidly advancing technology areas of business methods and computer software. Up to 40 business method, computer software and related patent applications that have been filed in Australia and which are open for public inspection will each be posted on the Peer-to-Patent Australia website for a 90-day period. During that time, members of community can review those applications, submit prior art references and comment on the relevance of any prior art that has been put forward.
At the end of the review period, Peer-to-Patent Australia will forward the top 10 prior art submissions for each application, as selected by the community of reviewers, to IP Australia for consideration in the examination process. The review process in no way abrogates the responsibility of the patent examiner to assess a patent application. Prior art submitted by Peer-to-Patent Australia is solely designed to assist a patent examiner, who remains the arbiter of whether a patent is to be granted.
There are currently 15 patent applications from seven companies open for review. The participating companies include IBM, Aristocrat Technologies Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO.
Since the focus of the pilot is on business methods and related applications, there is an interesting array of new ideas and technologies in the applications that are open for review. Those applications include methods, systems and apparatus for:
– converting a decimal number to a binary representation based on processor size;
– detecting behavioural patterns related to the financial health of a business entity;
– an arrangement where a customer enters into an agreement with a lender to share equity in real estate property;
– efficient cooling of server farms;
– refining mobile device search results using location modifiers;
– integrating browsing histories with media playlists on a media playback device;
– interactive specification of context-sensitive service level agreements;
– controlling a network of trains; and
– gaming machine systems and methods.
Those wishing to review participating patent applications can register at: www.peertopatent.org.au.

Following on from the Peer-to-Patent projects run recently out of the New York Law School (NYLS) and the JPO comes Peer-to-Patent Australia. Peer-to-Patent Australia is a joint initiative of the Queensland University of Technology (QUT) and IP Australia that is designed to improve the patent examination process and the quality of issued patents. Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.

The project is based on the successful Peer-to-Patent projects run out of the New York Law School (NYLS) in the United States and is the result of the collaborative efforts between QUT and NYLS. The project will initially run as a six-month pilot that will focus on the rapidly advancing technology areas of business methods and computer software. Up to 40 business method, computer software and related patent applications that have been filed in Australia and which are open for public inspection will each be posted on the Peer-to-Patent Australia website for a 90-day period. During that time, members of community can review those applications, submit prior art references and comment on the relevance of any prior art that has been put forward.

At the end of the review period, Peer-to-Patent Australia will forward the top 10 prior art submissions for each application, as selected by the community of reviewers, to IP Australia for consideration in the examination process. The review process in no way abrogates the responsibility of the patent examiner to assess a patent application. Prior art submitted by Peer-to-Patent Australia is solely designed to assist a patent examiner, who remains the arbiter of whether a patent is to be granted.

There are currently 15 patent applications from seven companies open for review. The participating companies include IBM, Aristocrat Technologies Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO.

Since the focus of the pilot is on business methods and related applications, there is an interesting array of new ideas and technologies in the applications that are open for review. Those applications include methods, systems and apparatus for:

  • converting a decimal number to a binary representation based on processor size;
  • detecting behavioural patterns related to the financial health of a business entity;
  • an arrangement where a customer enters into an agreement with a lender to share equity in real estate property;
  • efficient cooling of server farms;
  • refining mobile device search results using location modifiers;
  • integrating browsing histories with media playlists on a media playback device;
  • interactive specification of context-sensitive service level agreements;
  • controlling a network of trains; and
  • gaming machine systems and methods.

Those wishing to review participating patent applications can read more and register here.

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