The Institute for Information Law at the University of Amsterdam is holding two copyright related courses between 2 and 6 July:
Follow the links for more information.
IP Australia has published a cost benefit analysis for Australia joining the Hague Agreement for registration of designs.
You are no doubt thinking that sounds very exciting (not). But, even if you are not into registered designs, you SHOULD READ IT. This is the Government’s first attempt at applying the Productivity Commission’s call for any proposals to reform intellectual property laws to be economically justified. As the Report says in the first paragraph of the Executive Summary:
The report assesses the impacts [i.e., the costs and benefits to Australia of joining the Hague Agreement] with reference to the Productivity Commission’s (PC) guiding principles of effectiveness, efficiency, adaptability and accountability. This report is intended to form part of the evidence base in relation to whether Australia should join the Hague Agreement.
So, unless it involves an acronym that is like TPP, this could well be a harbinger of things to come.
And what does it
The big question IP Australia is asking you is how realistic are these estimates?
Now, in arriving at these numbers, the Report does include quite a lot of hard data.
For example, most Australians who file designs overseas do so in the EU, the USA, NZ and China. On the other side of the coin, most incoming design registrations were from the USA, the EU, Japan, NZ, Switzerland and China.
On the other hand, the Productivity Commission reported that less than 20% of registered designs are renewed beyond the first 5 year term. According to IP Australia, however, approximately half of all design registrations are renewed for the second 5 year term and non-residents are more likely to renew than Australians.
Will we become better at designing if we “stick” with our current settings – 19th out of the top 40 – or should we “twist” and sign up? Of course, there is an anterior question: do we even care about good design in the first place?
IP Australia is seeking feedback on its cost-benefit analysis and its proposed methodology to elicit additional evidence and views with the aim of finalising the analysis in 2018. You should get your say in by 31 May 2018.
Bohemia Crystal (BCP) had been formed in 1975 to distribute in Australia Skloexport’s products. Skloexport was the State-owned entity responsible for the export of all crystal and glassware products made in Czechoslovakia. In 1999, Skloexport went into liquidation and BCP took an assignment of its Australian trade marks. The main trade mark BCP used in this period, which had been registered since 1962 was the stylised BOHEMIA Glass mark, TM No. 319701:
Versions of this mark were used with or without the words “Made in Czech Republic” or substituting the word “Glass” for “Crystal”.
On 5 October 2001, BCP applied for and successfully registered BOHEMIA CRYSTAL for glassware and on 2 May 2003 BCP applied for and successfully registered BOHEMIA for glassware.
Host is an importer and supplier of catering goods and equipment in Australia. The business was started in 1999. One range within its 2,500 product lines is its range of glassware sourced from another Czech supplier, Forincorp, marketed under BANQUET BY BOHEMIA  or:
Host started importing this line in 2015. BCP made the fateful decision to start proceedings for infringement of its registered trade marks and contravention of the Australian Consumer Law for false and misleading conduct.
Burley J held that BCP’s trade marks lacked any capacity to distinguish and had not been used in such a way as to have acquired secondary meaning for the purposes of s 41(6). Burley J also dismissed BCP’s allegations of misleading or deceptive conduct.
It is not going to be possible in a blog post to do justice to Burley J’s 376 paragraphs. Instead five points particularly caught my eye.
First, Burley J (who was a very experienced intellectual property barrister before his appointment) pointed out that the High Court in Cantarella referenced both ordinary consumers and traders as the criterion for whether or not a sign was inherently adapted to distinguish.
BCP argued that the test focused on what ordinary consumers would think the sign meant. It had found an expert who opined that ordinary members of the public would think “bohemia” was a reference to persons with an artistic or unconventional lifestyle.
in a case such as the present, it is necessary to consider the ordinary signification of the words “Bohemia” and “Bohemia Crystal” in the context of the “target audience”, being traders and consumers of the relevant goods, to determine whether at the relevant dates other traders might legitimately desire to use these words or something similar in connection with their goods, for the ordinary signification which they possess. …. (emphasis supplied)
Here, despite the evidence of BCP’s principle witness, the evidence was largely one way. It was beyond dispute that for many centuries the geographic region known as “Bohemia” which is now in the Czech Republic had a strong reputation for producing high quality crystal and glassware. There was evidence that between at least four and ten different manufacturers used the term “Bohemia” at an important annual glassware trade show to signify the geographic origins of their products. There was also evidence from a number of dealers that the term signified to the public glassware originating from the Bohemia region. BCP’s own registered user agreements for the use of Skloexport’s trade marks had also required it to promote its products as from the geographic region, Bohemia.
Burley J concluded that other traders who had glassware manufactured in the region formerly known as Bohemia legitimately and honestly wanted to use that word to describe the geographic origins of their products. The fact that Bohemia was no longer a separate country (and had not been since the World War I) and not even the contemporary name of the region was not significant.
Second, Burley J found that the evidence of use of the BOHEMIA and BOHEMIA CRYSTAL did not establish that those terms had been used by BCP as trade marks or in such a way as to have acquired secondary meaning. There were three aspects to this conclusion.
Following BP v Woolworths, promotion and use is not enough. It had to be shown that the signs as registered had been used in some way to identify the signs as being trade marks.
Next, for the most part the relevant evidence showed that what BCP had been using as a trade mark was Skloexport’s composite mark, not the terms as registered. This was not use of either trade mark as registered. Moreover it was the combination of the elements in the signs as a whole which comprised the distinctiveness. These signs should not be dissected into their component parts:
228 I have some difficulty with the proposition that the words “Bohemia” or “Bohemia Crystal” should in this context be regarded as having separate trade mark signification beyond the combination in which they appear in the composite marks described above. In my view, it is the combination of elements that is distinctive. The trade mark should be viewed as a whole and not dissected into parts. Although this is likely to be a matter of fact for each case, it is notable that several cases have cautioned against the proposition that separate elements should be so distilled; see Diamond T Motor Car Company  2 Ch 583 at 588, Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)  FCA 81; (2012) 201 FCR 565 at , .
229 To my eye, the whole of the 701 mark is to be regarded as creating a complicated image that taken collectively represents a sign, or badge of origin. I do not think that the elements within it may be dissected or that they would be dissected by an ordinary consumer of goods within the relevant classes. In any event, I consider that the words “Bohemia Crystal” and “Made in Czech Republic” within the 701 mark tend to reinforce the descriptive, geographical signification of those words. ….
The third factor is the way that evidence was advanced did not help BCP’s case. A lot of the evidence was vague, or general, rather than specific to what needed to be proved here: use of the signs as trade marks before the filing date. In this respect, his Honour’s discussion will repay careful study as it is not uncommon to see evidence prepared for the Office suffering from similar problems.
Third, BCP did not demonstrate any sufficient reason why its trade marks should not be removed from the Register. Burley J accepted that, Host having established the marks were invalidly registered, BCP bore the onus of satisfying the Court that there was sufficient reason not to order cancellation.
Here, the evidence did not establish that BCP had acquired distinctiveness in its signs. Importantly, allowing BCP to keep its registrations would give it an unfair advantage. At , his Honour explained:
…. The presence of the existing ground of revocation via the operation of subsection 88(2)(a) and s 41 indicates an intention on the part of the legislature to ensure that historical registrations should not remain on the Register where they should not have been granted in the first place. In the present case, to permit such a course would advantage the unmeritorious registrant who has incorrectly had the benefit of the monopoly since the relevant dates. BCP is able to apply to register the Bohemia marks now, should it choose to do so.
Of course, if it were to do so, it would run the risk of other traders wishing to use the terms opposing (if the Registrar got suckered into accepting the applications in the first place).
Fourth, if his Honour had not found BCPs trade marks invalidly registered, Host would have infringed. Its attempt to rely on s 122(1)(b) would have failed. This part of the case essentially turned on Host’s use being BANQUET by Bohemia (emphasis supplied) rather than BANQUET from Bohemia.
Burley J accepted that s 122 could be invoked to protect trade mark use, not just descriptive use. However, Host’s form of use showed that Host was trying to assert origin in some particular trade source rather than some geographical origin. At :
…. Ms Flint and Mr Sullivan adopted this language, notwithstanding the obvious difficulty with the perception of “by” and with no knowledge of either BCP or the Bohemia marks. However, I find that they did not do so for the purpose of using “Bohemia” to designate the geographical origin of the goods, but to designate the trade origin of the goods lying in a particular entity (which was ultimately Forincorp). Accordingly, the use does not fall within the defence ….
Fifth, BCP’s allegations of misleading or deceptive conduct also failed. A number of factors contributed to this including the particular trade marks BCP had actually used and the good old-fashioned Hornsby Building Information Centre proposition. In contrast to the trade mark case, in addition, it was highly significant that Host’s market and BCP’s market were quite different. BCP’s market was member of the general public looking for premium quality products. Host’s customers, however, were cafes, restaurants, pubs, clubs, community groups and the like who were cost conscious but attended to their purchases with considerable care. So, for example, at :
the typical reasonable consumer is most likely to perceive the October 2015 catalogue use to represent that the manufacturer or producer of the glassware is an entity known as “Banquet by Bohemia” or “Bohemia”, there is no more than a remote prospect that reasonable customers are likely to consider that the goods offered in the catalogue are offered with the sponsorship or approval of BCP or are offered by Host with the approval of BCP or that the Banquet products emanate from BCP. First, I do not consider that the typical Host customer who encounters this publication would be likely to be aware of BCP. Secondly, I consider that any Host customers who are aware of BCP would understand it to be a retailer of a range of glassware products sold under a range of different brands. Thirdly, to the extent that such customers perceive that BCP has a trade connection with products that it sells, those customers are likely to do so by reference to the common use of the 701 mark or the modified 701 mark. Without the presence of that mark, in my view they are unlikely to consider that the word “Bohemia” as it appears in the impugned uses connotes a connection or association with BCP. Needless to say, no such mark appears in the October 2015 catalogue. Fourthly, such customers would also be influenced by the geographical nature of the term and the material differences between the Host and BCP products such as price, quantity and quality. ….
Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd  FCA 235
The Commonwealth government is participating in negotiations for a new Convention on the recognition and enforcement of foreign judgments. Now it is seeking public input on a range of outstanding issues.
One of the general issues on which input is sought is the extent to which and the nature of problems experienced in trying to enforce a judgment in a foreign country.
Intellectual property issues are high on the list of matters being debated. Chapter 5 of the consultation paper is directed to intellectual property rights’ issues.
The issues include whether or not intellectual property rights should even be included in the judgments covered by the Convention. So draft article 2(m) proposes to exclude judgments about intellectual property rights from the Convention altogether; alternatively, articles 5 and 6 proceed on the basis that intellectual property rights are included. Which approach should it be?
If included, the basic idea is that a judgment on subsistence, ownership or infringement of an intellectual property right made by a Court in the country which granted the right could be enforceable under the proposed Convention to the extent that the judgment dealt with the subsistence, ownership and infringement of the right in that country.
It is proposed to treat judgments about the subsistence, ownership and infringement of registered rights granted by the country where the judgment is made as falling exclusively under the Convention. Judgments about unregistered rights, such as copyright and unregistered designs, would not be exclusive.
According to the consultation paper, one consequence of this arrangement would be that judgments involving “multi-state IP infringements” of registered rights will be enforceable under the Convention only to the extent that the judgment relates to infringements in the country/jurisdiction issuing the judgment.
No doubt for sound philosophical rationalising, trade secrets do not count as intellectual property rights under the draft Convention. Practically speaking from a business’ perspective, however, one might wonder why confidential information should be treated differently to unregistered “rights”.
Another area of issues raised in the consultation paper is the extent to which awards of damages, especially additional or exemplary or otherwise punitive damages, should be capable of enforcement under the Convention.
As the next (and possibly final) meeting of the commission preparing the draft for a Treaty conference is on 24 – 29 May 2018, the deadline for submissions is COB 27 April 2018.
In addition to clarifying infringement of method claims, the Full Court in Warner-Lambert (Pregabalin) also dismissed Apotex’ appeal against the findings that the Patent was fairly based and not invalidated by a false suggestion.
As you will recall, Warner-Lambert’s patent claimed methods for treating pain using pregabalin. The methods included claims 16 – 30 which were Swiss claims.
Apotex argued that the claims were not fairly based and had been obtained by false suggestion.
The main basis for these attacks stemmed from the parties’ acceptance that the point of the patent was the use of pregabalin to treat humans. However, the examples in the patent related to tests conducted on rats. Apotex argued that it was not certain that a compound shown to be efficacious in rats would necessarily work for humans or, if it did, what a “therapeutically effective amount” for humans would be without a considerable amount of testing and experiment. Apotex argued that the “prolonged research, inquiry or experiment” involved fell well short of what was required for a sufficient description of the invention. (This was the pre-Raising the Bar Act version of s 40(2)(a)). Accordingly, as laid down in Kimberly-Clark:
The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?
The Full Court accepted that it would be a complicated and expensive business to produce from the information in the Specification a medicament for the treatment of humans. After all, we are talking about a drug. However, the Full Court agreed with the trial judge that the work involved was nonetheless “routine” and did not require invention. For example, at  the Full Court accepted:
The need to produce “new inventions or additions” or to carry out “prolonged study of matters presenting initial difficulty” may mean that a description is insufficient. The need for time, cost and detailed work will not; at least where, as here, the work involved is of a routine and conventional kind.
“Routine” in this context was not merely simple and easy. The skilled addressees were scientists with Ph Ds and considerable experience.
An important consideration in reaching this conclusion was the nature of the claimed invention. According to the Full Court, the invention lay in the broad recognition that pregabalin, otherwise a known drug, could be used in the treatment of pain. It was not concerned with any particular dosing regime.
It also appears that (see  of the Full Court’s reasons) Apotex’ evidence did not identify any particular problems that would be encountered if one were to embark on formulating the drug for the relevant purpose.
In reaching this conclusion, the Full Court was also highly critical of Apotex’ attempt to characterise the work involved as imposing an “undue burden”. This formulation was derived from EPO and English cases in which the statutory test was close to the Raising the Bar Act formulation:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
So it was irrelevant to the test under the pre-Raising the Bar Act form of s 40(2)(a) and, in any event, was an unhelpful gloss on the terms of the statute.
Bearing in mind the history of the terminology adopted in the Raising the Bar Act version of s 40 and the similarity of the wording to the EPC / UK Act, it is to be hoped that the High Court’s warnings in Lockwood v Doric not to get entangled in English cases post–1977 will fall away when a case arises under the new form of the provision.
Dr Summerfield addresses the invalidity issues of the appeal here.
Warner-Lambert Company LLC v Apotex Pty Ltd (No 2)  FCAFC 26 (Jagot, Yates and Burley JJ)
The Full Court has upheld Nicholas J’s ruling that Apotex infringed the Swiss claims in Warner-Lambert’s (Pfizer’s) pregabalin patent by making the product outside Australia and then threatening to import it into Australia for sale.
Claims 16 to 30 of the pregabalin patent were Swiss claims. For example, claim 16 was for “use of a compound of Formula 1 or a pharmaceutically acceptable salt diastereomer or an enantiomer thereof … in the manufacture of a medicament for the treatment of pain.”
Apotex’ plan was to have its product made overseas by a third party, then import the product and offer it for sale.
As you know, infringement requires the infringer to “exploit” the claim said to be infringed in the patent area. For this purpose, the Dictionary defines exploit to mean:
“exploit ”, in relation to an invention, includes:
(a) where the invention is a product—make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things; or
(b) where the invention is a method or process—use the method or process or do any act mentioned in paragraph (a) in respect of a product resulting from such use.
Apotex argued that it was not going to infringe because Swiss claims are method claims and so, according to Apotex, could be infringed only by practising the method in Australia. Therefore, according to Apotex, paragraph (b) of the definition of “exploit” should be limited to products made by practising the method in Australia only.
In Lundbeck at  – , Lindgren J had found infringement in similar circumstances, but through some rather convoluted reasoning. At , while rejecting Apotex’ criticisms of Lundbeck, the Full Court upheld the trial Judge’s finding of infringement on the basis of his Honour’s reasoning in preference to Lindgren J’s reasoning. Nicholas J found at - :
296 The definition of “exploit” makes no reference to the patent area. As I have said, the express territorial limitation upon the patentee’s exclusive rights is found in s 12 and s 13. In my respectful view, there is therefore no reason to read down the words of either para (a) or para (b) of the definition of “exploit” to found any territorial limitation. This is because the Act expressly provides that a patent only has effect in the patent area: see also s 70 of the Patents Act 1952 (Cth).
297 Paragraph (b) of the definition of “exploit” refers to the doing of an act referred to in para (a) which includes to make or import a product. The patentee’s exclusive rights are infringed (subject to available defences) if another person does any such act within the patent area. The fact that the patented method is performed outside the patent area does not avoid infringement of a method claim (including a Swiss claim) if the product imported and sold in Australia was made using the patented method because the acts of importation and sale occur within the patent area. The relevant act of infringement is not the use of the method outside the patent area but the exploitation (by importation and sale) in Australia of a product made using the patented method.
298 In my respectful opinion, contrary to the approach taken by Lindgren J, the relevant territorial limitation is reflected in the language of s 12 and s 13(3) and there is therefore no justification for importing words of territorial limitation into the definition of “exploit”. It follows that I take a somewhat different approach to the construction of the definition of “exploit” to that taken by Lindgren J in Alphapharm, though I do not think the difference has any impact on whether or not Apotex threatens to infringe the Swiss claims in this case.
So the question now appears to be “Is the respondent exploiting in Australia a product which was made by a method as claimed in the patent?” It does not matter whether the method was performed in or outside Australia.
If Apotex imported its product as planned, therefore, Apotex would infringe because it would be importing into Australia and then offering for sale a product which had been made by one of the claimed methods. Any other result, of course, would have seriously compromised the utility of method patents.
The Full Court also dismissed Apotex’ appeal against the findings that the Patent was fairly based and not invalidated by a false suggestion. That may be a topic for another day.
Warner-Lambert Company LLC v Apotex Pty Ltd (No 2)  FCAFC 26 (Jagot, Yates and Burley JJ)
The three main issues on which consultations are being undertaken are:
The consultation paper arises from the Government’s response to the Productivity Commission’s final report into Intellectual Property Arrangements indicating that these matters required further consideration.
Following the Productivity Commission’s report, the consultation paper sets out an interesting framework for considering how to approach these matters. According to the consultation paper, the proposals “recognise copyright’s role as part of a wider intellectual property system that is:
The consultation paper proposes seven questions:
To what extent do you support introducing:
• additional fair dealing exceptions? What additional purposes should be introduced and what factors should be considered in determining fairness?
• a ‘fair use’ exception? What illustrative purposes should be included and what factors should be considered in determining fairness?
What related changes, if any, to other copyright exceptions do you feel are necessary? For example, consider changes to:
• section 200AB
• specific exceptions relating to galleries, libraries, archives and museums.
Which current and proposed copyright exceptions should be protected against contracting out?
To what extent do you support amending the Copyright Act to make unenforceable contracting out of:
• only prescribed purpose copyright exceptions?
• all copyright exceptions?
To what extent do you support each option and why?
• statutory exception
• limitation of remedies
• a combination of the above.
In terms of limitation of remedies for the use of orphan works, what do you consider is the best way to limit liability? Suggested options include:
• restricting liability to a right to injunctive relief and reasonable compensation in lieu of damages (such as for non-commercial uses)
• capping liability to a standard commercial licence fee
• allowing for an account of profits for commercial use.
Do you support a separate approach for collecting and cultural institutions, including a direct exception or other mechanism to legalise the non-commercial use of orphaned material by this sector?
In a final section of the consultation paper, a number of “ongoing concerns raised by federal cultural and collecting institutions” are identified for consultation. Apparently, these “arts portfolio agencies” are concerned that copyright is being used to inhibit their ability to “provide broad-based access to their collections”. The consultation paper explains:
This includes concerns over exceptions being tied to an institution’s physical location, and thus preventing offsite supply of material. At other times, exceptions permit digitisation of content but not providing digitised content to users. Some arts portfolio agencies expend a disproportionate effort on copyright due diligence, especially when identifying and locating authors of works. This can discourage institutions from digitising, promoting or providing access to their collections. As a result, copyright law may inhibit them from adopting modern cultural institution practices and engaging with Australians online. The Department notes that, at least in some cases, better online access would involve non-commercial use or the use of copyright material with low commercial significance.
Accordingly, the consultation paper questions whether the Copyright Act 1968 should be amended by:
Submissions should be provided to the Department of Communications and the Arts by 5pm on 4 June 2018.
Honoured to be included in Feedspot’s Top 25 Australian law blogs and websites for Australian lawyers.
No 1 is Melbourne Uni’s Opinions on High which is a “must read” for following developments in the High Court.
K & L Gates’ IP Law Watch, which includes posts about Australian law as well as the USA, the UK and EU comes in at No. 10.
There are also two competition / consumer law blogs which I should check out.
Part 1 of my article on the Productivity Commission’s Final Report on Intellectual Property Arrangements has been belatedly published in the Australian Intellectual Property Law Bulletin: (2018) Vol. 30 No. 10 p. 210.
Subscription only, I’m afraid.
This part looks at the Productivity Commission’s approach and treatment of patents. Part 2 will deal with copyright, designs and other issues.
This issue of AIPLB also includes a paper by Richard Hamer and Lev Gutkin on patents law in 2016 and Marina Olsen’s review of the Productivity Commission’s recommendations on designs.
Between writing the paper and its publication, the Government has published its response to the Productivity Commission’s report. Despite the Raising the Bar reforms to inventive step, that response included acceptance of the recommendation to change the inventive step requirement yet again. The Government has since published several discussion papers on ways to “reform” inventive step and the requirement for disclosure of the technical advance, a statement of objects and Crown use.
The government has commenced a review of the regime under s 115A of the Copyright Act 1968 by which copyright owners can seek injunctions ordering ISPs to block access to offshore infringing websites.
The discussion paper raises three questions:
The discussion paper notes a survey by Kantar Public which reported that the downloading of unlawful content by individuals had fallen by 10% from 2015 to 2017. However, there had been a slight increase for video games. These results were considered consistent with other evidence from Creative Content Australia and Choice. The discussion paper did not that other factors such as increased availability and increasing use of subscription services may also have contributed to the falling levels of infringement.
Submissions are requested by 6 March 2018