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.
More on ‘Whiskas Purple’ TM Read More »
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.
The Australian High Court on trade marks Read 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
A new approach to business method patents Down Under? Read More »
Bennett J has allowed Mars to proceed to register its “Whiskas purple” colour as a trade mark for pet food, following Nestlé’s withdrawal of its opposition.
Nicholas Weston has a helpful summary; note Mars’ deliberate emphasis of the colour as a trade mark.
Some Whiskas in the “wild“.
Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (with nice colour trade mark representation)
In a further round of the Food Channel / Network war, Greenwood J has accepted that the inclusion of the trade mark on programming broadcast by ABC Asia Pacific is use of the trade mark in Australia.
ABC Asia Pacific is primarily intended to transmit ABC programming into countries in the Asia Pacific region. Depending on the satellite, however, Australia or large parts of mainland Australia fell within the transmission footprint and not on the periphery. As the ABC Asia Pacific transmissions were free-to-air, the transmissions could be received and viewed by members of the Australian public who installed appropriate satellite dishes and there was evidence before his Honour of businesses operating in Australia which sold and installed the necessary equipment.
As a result, his Honour found that the trade mark was used in relation to the television production services in class 41 for which it was registered. However, the trade mark was not used in relation to the class 38 services of television broadcasting – ABC Asia Pacific was the broadcaster.
Food Channel Network Pty Ltd v Television Food Network G.P. [2010] FCA 703
Satellite broadcast and trade mark use Read More »
ICANN is considering introducing new gTLDs – the top level domains that come after the last “dot” in a domain name (e.g., .com, .au).
The Australian government is now seeking your views on what it’s position should be.
You can find out more, and the contact details, here (pdf).
Marty Schwimmer looked at some of the issues for someone thinking of introducing their own .brand (via here). More ICANN resources via here.
I didn’t see a deadline for submissions.
Australian government consults on new gTLDs Read More »
The Commonwealth Attorney-General introduced the Civil Dispute Resolution Bill 2010 into Parliament today which, if enacted, will require:
A genuine steps statement will not be required where the proceeding relates wholly to “excluded proceedings”: clauses 15 – 17 provide lists of excluded proceedings and a power for regulations to prescribe further proceedings.
An applicant’s genuine steps statement must set out the steps that have been taken to try to resolve the dispute before commencing proceedings or why no such steps were taken.
The Bill does recognise, however, that what will constitute “genuine steps” in any particular case will depend on the circumstances of that case. The EM states in relation to cl. 4:
The Bill does not prescribe specific steps to be undertaken. Rather, it is intentionally flexible to enable parties to turn their minds to what they can do to attempt to resolve the dispute. This is to ensure that the focus is on resolution and identifying the central issues without incurring unnecessary upfront costs, which has been a criticism of compulsory pre-action protocols.
A failure to provide a genuine steps statement would not automatically invalidate the application or defence/response. However, in exercising its powers in relation to the proceeding, by cl. 11 the court may have regard to whether a genuine steps statement was filed (when required) and whether genuine steps were in fact taken. In addition to referall of the dispute to ADR, the EM at [45] gives as examples of ways the power may be exercised:
The NADRAC report contemplated that courts might use this information in various ways such as tailored orders for the provision of necessary information without requiring or fostering costly discovery processes. This, and other measures contemplated, are already within the courts’ powers so, at least this far, the bill seems to be an instrument to encourage cultural change. Indeed, this is made explicit in relation to cl. 12 – the court’s powers to award costs:
The court may also have regard to whether a genuine steps statement was filed (when required) and whether genuine steps were in fact taken when exercising its powers to award costs.
Furthermore, the court may order costs personally against a lawyer who fails to comply with his or her duties.
The EM states that these provisions are intended “to bring about a cultural change in the conduct of litigation so that parties are focused on resolving disputes as early as possible.”
Clause 14 seeks to preserve the “without prejudice” privilege for negotiations to settle.
So far as IP goes, “ex parte” applications are within the definition of “excluded proceedings”, so some Anton Piller and Mareva situations will not be affected. IP litigation is usually preceded by letters of demand. This (and the resulting rejection) may well fall within, if suitably drawn, the first two or three examples given in cl 4:
The discussion of these matters in the NADRAC report identifies a tension perceived in the UK between reducing some court backlogs while imposing onerous costs obligations on parties before the litigation commences.
Civil Dispute Resolution Bill 2010 (html) (pdf)
Press release
Some further background and consideration of the thinking behind the legislation may be found in the NADRAC report
Taking genuine steps to resolve before going to court -corrected Read More »
Ben McEniery from QUT has kindly provided an update on the completion of the Peer-to-patent Australia pilot:
Peer-to-patent Australia Read More »
If there were any doubt about it, the Full Federal Court has confirmed that the person opposing the registration of a trade mark bears the onus of proving a successful ground of opposition on appeal to the Court. (As a side note, I think this is the new Chief Justice’s first IP decision, at least since joining this Court.)
The Food Channel Pty Ltd (Channel) had applied to register TM 967804:
in class 16 for printed matter. During the application process, it assigned the trade mark application to The Food Channel Network Pty Ltd (Network). Both companies were related entities as a Mr Lawrence was the sole director and shareholder of both.
The registration of TM 967804 was opposed by Television Food Network GP (Television), a US entity. Television is the owner of TM 881666 for TELEVISION FOOD NETWORK and TM 881667, both registered in classes 9, 38, 41 and 42 and TM938228 for services in class 41. TM 881667 and 938228 were for devices:
The Registrar rejected Television’s opposition. The trial judge, however, upheld the appeal finding that Network bore the onus of establishing it was the owner of the trade mark, had used it in good faith and that it was confusingly similar to Television’s trade marks.
The onus point
The Full Court (Keane CJ, Stone and Jagot JJ) dealt with this point quite quickly as inconsistent with the the presumption of registrability established by s 33, long standing principle and the legislative scheme.
The Full Court rejected Television’s argument that the difficulties facing an opponent attempting to establish lack of ownership (s 58) or lack of intention to use (s 59) meant that an evidential onus should shift to the applicant. While the Court appeared to accept that an evidential onus might arise under s 59 where the opponent raises a prima facie case of lack of intention, it considered the difficulties that could arise in the context of s 59 did not attend s 58 which was usually directed to showing that someone else, often the opponent, had used the trade mark first.
The not the owner point
The difficulty which Television seized on here was the assignment from Channel to Network and some evidence in chief from Mr Lawrence:
Television’s argument was that Mr Lawrence defined “The Food Channel” as Network in his affidavit and deposed that it was The Food Channel (i.e., Network) which created and used the trade mark.
The trial judge had found that, the onus being on Network and it not being clear from Mr Lawrence’s evidence who created the trade mark, the ground of opposition was successfully made out.
The Full Court noted that Mr Lawrence had drawn his affidavit himself and commented:
61 The courts should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other. This is particularly so where, as here, the conclusion that the words The Food Channel in Mr Lawrence’s affidavit meant Network and only Network depends on a single opening definition in an affidavit drafted by a layperson, in a case where Network was the sole respondent attempting to answer a notified ground of opposition that Network was not the owner of the mark, and where any distinctions Mr Lawrence drew between his companies were few, random and confused. In this case, this evidence does not establish that Network was the prior owner through use. It may establish that Network used the mark at a time before registration, but it doesn’t negate the possibility that Channel was, in fact, also a user (and indeed the first user) of the mark before registration. Further, there is no evidence as to how the mark was used by Network. Use needs to be in relation to the goods or services claimed; on the only evidence before the Court, there was “no set formula” with regard to use. This tends against a conclusion that any mark was used by Mr Lawrence, Network or Channel to distinguish one company’s goods from another. Finally, the requirement of prior user as a trademark is that it is used to distinguish one’s goods from another’s: if Network did use the mark, there does not seem to be evidence of an attempt to use it in such a manner as to distinguish its goods from those of Channel. And of course, it is inherently unlikely that Mr Lawrence, as the directing mind and will of both companies, would have had any such an intention.
62 To treat Mr Lawrence’s statement that Network ‘created’ and ‘used’ the mark as exclusive of permitted use by Channel is counter-intuitive, given her Honour’s observation at [77] that the “evidence …is that Mr Lawrence tended to confuse his own business interests with those of his companies, and appeared to randomly use companies and trade marks depending on the circumstances…”.
This with respect pragmatic approach may be constrasted with the very strict approach taken by a rather different Full Court in Crazy Ron at [109] – [127].
As the Full Court noted, further, to the extent there was any confusion about ownership, it fell to Television to clarify the position since the onus lay on it as the opponent.
(It would appear from the Register that TM 733265 was in fact registered by Channel and subsequently assigned to Network.)
The no intention to use point
The trial judge’s finding that Network had no intention to use the trade mark when it was filed was tied up with the confusion in Mr Lawrence’s evidence about who created the trade mark.
Mr Lawrence did give evidence that “The Food Channel” had provided recipes bearing the trade mark to butchers for distribution by the butchers to their customers. It was not clear whether or not the recipes were sold to the butchers or there was some other quid pro quo. However, the Full Court accepted that this uncontested evidence demonstrated that there had in fact been use of the trade mark in the course of trade.
Trade mark comparison
Finally, the Full Court found that Network’s trade mark was not deceptively similar to Television’s trade marks when viewed as a whole – they neither looked nor sounded similar – and having regard to the differences in the goods and services specified.
Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (Keane CJ, Stone and Jagot JJ)
The onus on appeal from a trade mark opposition Read More »
Last February, Gordon J ruled that there was no copyright in White Pages subscriber listings and (perhaps more surprisingly) Yellow Pages listings. Now, Stone J has applied IceTV (here and here) to find that copyright did not subsist in medical records held by a range of general practitioners.
Primary Health Care (PHC) is a publicly listed company that has been buying up medical practices. As part of the purchase, the medical practitioner contracted to work at the new practice for a period. The vendor practice’s patient records consisting of (1) consultation notes, (2) prescriptions and (3) referral letters were transferred to the new PHC practice. PHC claimed deductions from its income tax for depreciation of the value of the copyright said to subsist in the patient records and the Commissioner disallowed the claim.
Stone J accepted that copyright subsisted in the sample patient referral letters written by the medical practitioners and one sample consultation note (the so called di Michiel patient 6), but rejected the claim to copyright in all the other sample patient records. Her Honour did note that her ruling was not a finding that copyright could never subsist in any patient records, only that it did not subsist in the particular samples addressed in the case.
The case could easily become a ready instructional tool for students and “new” intellectual property lawyers.
The consultation notes
Each practice maintained a file for each patient. The file usually consisted of a summary sheet which contained information such as the patient’s name, address, age, medicare number and, sometimes, important medical issues. This information was usually taken down by the receptionist or other clerical staff. In addition, there were cards, or sheets of paper, or in some cases electronic records containing a series of notes entered sequentially about each consultation with the patient.
All the notes recorded for di Michiel patient 6 were in fact made by Dr di Michiel himself. In the case of all the other samples tendered in evidence, however, the individual notes were made by different practitioners: sometimes the principal, sometimes an employee, sometimes a locum and sometimes another partner in the practice.
This led to PHC’s first problem.
Stone J held that the consultation notes where the entries were made at different times by different practitioners were not works of joint authorship. Her Honour did accept that that, at least in some cases, the consultation notes for each patient could be seen as a continuous narrative. They were not, however, the fruits of a collaborative effort in which the contributions of each author could not be distinguished. To the contrary, each individual contribution could be simply identified by looking at the different handwriting for each entry. (Hmm. I wonder what would happen if all the entries were made electronically and it was not possible to identify who made them?)
A first consequence of this conclusion was that large swathes of many of the consultation notes fell out of consideration as, following IceTV, (1) the person who had actually written them – the author – had not been identified and (2) nor was it established that those unidentified individual authors were “qualified persons” as defined in s 10(1).
The principals of the sample practices (well, some of them) were able to identify various individual entries in particular consultation notes that they had written. That, however, led to the second problem.
Some entries were simply listings of medical conditions. Three examples particularly relied on by PHC by 3 different doctors for 3 different patients were given in [127]:
While these entries conveyed information, her Honour held that such clinical data and the names of particular medications did not originate with the doctor who recorded them.
Some were more developed – 3 further entries for 3 different patients:
7kg – growing well. On fresh milk and vitamins
Now c/o diarrhoea – possibly antibiotic induced …
Last 2/12 notices wheezy breathing if lies flat – associated with dry irritant cough – Says doesn’t feel SOB
These too “were not sufficiently substantial to qualify as works the product of independent intellectual effort directed at expression.” Stone J explained at [133]:
None of this denies the intellectual effort and professional skill needed to form the diagnoses, to select methods of treatment or to understand the significance of clinical data that is recorded, however, copyright protects a form of expression not this underlying expertise.
On the other hand, Dr di Michiel patient 6 record, which did constitute a continuous and single work as a whole, was an original work.
Sample prescriptions
The sample prescriptions [113]-[114] and summary notes were at [135] similarly too insubstantial to qualify “as original literary works embodying independent intellectual effort directed towards expression.”
A problem of assignment
A further problem for PHC was that only one of the sale agreements included an express assignment of copyright. Stone J refused to infer an intention to assign the copyright, as distinct from the property in the physical record, from the sale of the medical practice as a going concern. It simply wasn’t necessary to infer such a term. The lack of such necessity was supported both by the fact that PHC did not claim copyright in third party documents forming part of the patients’ medical records, such as x-rays and letters from specialist consultants, and a consideration of how the records were in fact used after the sale.
No use of copyright
As to the second point, while PHC claimed that the copyright was used after the sale, most of the evidence was not consistent with this. In one case, her Honour accepted that the records had been transferred into a computerised database (and so the copyright was used) but, in the other cases, the most that could be said was that some information only had been used.
Primary Health Care Limited v Commissioner of Taxation [2010] FCA 419
Ramifications of IceTV Read More »
