IPwars.com

Mainly intellectual property (IP) issues Down Under

Science Fiction

Noted science fiction author, Kim Stanley Robinson, imagines a future oral argument trying to patent something in light of recent (US) judicial attempts to clarify business method patenting. Imagine what fun he could have in an imaginary place far far away!

Lid dip: PatentlyO

In the meantime, IPwars is also heading far far way for the holidays. Thank you for reading.

Season greetings! Wishing you a happy, safe and prosperous New Year!

Little Brown Balls Bounced Again

Jessup J has ruled that MALTITOS may be registered for confectionary in the face of MALTESERS.

Mars had successfully opposed Delfi’s application before the Office on the grounds of its prior registration for MALTESERS and its reputation in Australia.

On the s 44 point, both marks consisted of three syllables and had the word “malt” in common as the first syllable, but the different appearance and sound of the remaining two syllables were sufficiently strong that ordinary purchasers would not be caused to wonder if there was a common trade source. Both parties accepted (apparently on the basis of Delfi’s overseas use) that MALTITOS would be pronounced “toes”. Jessup J was favoured with the expert evidence of a linguist, Ass Prof Cox, including that:

the consonant between the final two syllables is ‘t’, phonetically described as a voiceless alveolar stop sound /t/, whereas for ‘Maltesers’ it is ‘s’ pronounced as /z/, a voiced alveolar fricative sound. The difference between the two sounds /t/ and /z/ is a difference of manner of articulation (stop vs fricative) and also of voicing (voiceless vs voiced). /t/ is a voiceless speech sound whereas /z/ is voiced. These differences are highly functional in English and separate words like ‘seat’ vs ‘seize’, ‘shoot’ vs ‘shoes’.

Jessup J conceded he was not in a position “to engage with her in her field of technical expertise”, but her evidence confirmed his impression as a layperson. In his Honour’s view:

if the notional consumer under contemplation was someone whose eye fell upon the applicant’s mark, in isolation, displayed on a package sitting on a rack or shelf, I am quite unpersuaded that it would, because of the limited similarities between that mark and the respondent’s mark, enter his or her mind that the product in question derived, or might have derived, from the same source as products sold under the latter.

The Bali Bra case [1] notwithstanding, Jessup J did not consider that he was concerned with the potential for sales assistants to mishear the product request across a noisy counter.

Delfi tried to argue that s 60 could be invoked only by unregistered marks, but Jessup J, after some consideration, was not prepared to buy that. Rather, the reputation (if proved) provided the basis for the comparison:

the only respect in which s 60 requires an exercise different from that arising under so much of s 44 as relates to deceptive similarity is that the reputation in Australia of the “other” mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion. What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.

His Honour accepted that MALTESERS had a widespread, solid reputation. As in the Malt Balls case, however, that in the end told against deception:

with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.

Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065


  1. The Bali Bra case is not referred to in the judgment but, consistently with Jessup J’s view, Mason J did appear to be concerned with the prospect that the consumer would have misheard what the sales person said over the phone: “No doubt orders are sometimes placed by telephone. And in considering the likely reaction of a customer it is important to take into account, not the person whose knowledge of the two marks and the goods sold under them enables her to distinguish between them, but the person who lacks that knowledge.”  ↩

ACIP Final Designs Report

ACIP’s final report into its review of the Designs System has been published.

The report is 70 pages (including annexes) – 43 pages for the report itself; and 23 recommendations. Key recommendations include:

  • investigate joining the Hague system and, if a decision is made to join, extend the maximum term of design protection to 15 years;
  • introduce a grace period of 6 months before the filing date, but require an applicant relying on it to file a declaration to that effect;
  • rename a registered design that has not been certified as an “uncertified design”;
  • require a registered design owner to request examination by the first renewal deadline (i.e. 5 years);
  • introduce a system of opposition following certification;
  • improve the process for multiple designs by reducing fees in line with the ALRC’s original proposal;
  • allow fiddling with the statement of newness and distinctiveness until certification;
  • fix up a range of anomalies;
  • specifically include the role of the designs system in any broader review of Australia’s IP framework such as that contemplated by the Competition Policy Review;
  • not introducing an unregistered design right.

What would Google do [1]

According to Google, government requests (or should that be demands) for access to information about Google users (i.e., you) are up 120% around the world.

Now, it has produced a 3+ minute animated video, The Way of the Warrant, to explain how it deals with such, er, “requests” (in the USA).

I wonder what it does in those parts of the world (e.g. here: contrast the “common law” approach to this one) where they don’t have a fourth amendment?

Lid dip: Ride The Lightning.


  1. With apologies to Jeff Jarvis.  ?

Merry Christmas!

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Thanks for stopping by during the year.

IPwars has headed off into the summer sun. Hopefully to return in late January.

Wishing you the compliments of the Season and all the best for 2014!

Australian blawgs

Separovic Injury Lawyers in Perth have compiled an interesring list of Australian legal blogs.

Law Geek DownUnder provides useful summaries about the issues in upcoming High Court cases and, when they’re handed down, what they decided.

In the past Stephen Warne has explained why all lawyers should have top up professional indemnity insurance (although apparently it does not help solicitors quite as much as it should(?)).

I shall have to check out the others.

Head on over here to see if there are any that might interest you.

In the IP field, I know of at least one other blog covering mainly patents.

New Judges

The Constitution requires that Justice Heydon retires from the High Court by 1 March 2013.

The Attorney General today announced that Justice Keane, currently the Chief Justice of the Federal Court, will be replacing him.

In addition, Justice Allsop, who is currently President of the NSW Court of Appeal, will be taking up appointment as Chief Justice of the Federal Court. Before he went to the Court of Appeal, Allsop J sat in a number of IP matters when he was a Federal Court justice.

The Attorney General’s Media Release.

Lid dip: Peter A P Clarke

Ambush marketing or how did …

… Darth Vader get past LOCOG security?

Watch

(Really starts after 00:23 and watch the crowd at 01:00 and 2:00.)

Lid dip: James McDougall

Merry Christmas!

Thank you for your time and comments and encouragement over the past year.

I hope you have continued to find something of interest.

IPwars is disappearing off into the summer sun like all be-gowned, if not be-wigged, creatures and should be returning in late January.

Meanwhile, I wish you all a very Merry Christmas and all the best for the New Year!

Apple gets interlocutory injunction against Samsung

Apple gets over the first hurdle.