Electronic filing / service in the Office (IP Australia)

Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.

Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.

All very quaint and so 19th century, but fatal!

The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.

Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.

New Chief Judge of the Federal Court

The Attorney-General has announced  that Justice Pat Keane will become the new Chief Justice of the Federal Court on the statutory retirement on 21 March of Chief JusticeMichael Black.

Justice Keane is currently a Justice of Appeal in Queensland and will become the third Chief Justice.

Announcement here.

Lid dip: Peter Clarke

Trade marks as security for costs

Lindgren J has ordered that the owners of the WILD TURKEY trade mark (which those of you who drink bourbon may be familiar with) provide security for costs before they can pursue their Federal Court application to have WILD GEESE removed from the Register of Trade Marks.

Lindgren J accepted that the owners, members of the international Pernod Ricard or Davide Campari groups, would have sufficient funds to satisfy an order of costs if they were unsuccessful. However, the purpose of s 56 of the Federal Court of Australia Act was to ensure that there was a fund available within Australia to satisfy the costs order.

His Honour accepted that there were procedures available to enforce money judgments against the owners in their home base(s) eg New York, but those procedures placed an additional burden on a party seeking satisfaction of a costs order over and above the difficulties a party litigating against an Australian based entity would incur.

Lindgren J then rejected the owners’ argument that their registered trade marks in Australia were sufficiently liquid assets within the jurisdiction. They were indeed assets, but they were not “sufficiently liquid”.

44 With respect, the applicants’ submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs.

45 The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business.

46 Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks.

47 Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed’s trade marks. Would they be interested to acquire those trade marks in addition?

48 It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay.

With respect, the applicants’ submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs.
The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business.
Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks.
Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed’s trade marks. Would they be interested to acquire those trade marks in addition?
It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay.

Similarly, his Honour rejected the Australian distribution rights for Wild Turkey.

Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228

Lid dip POF

New Federal courts structure

The (Cth) Attorney-General has announced (pdf) that the Federal Magistrates Court will be merged into the Family Law and Federal Courts.

So far as IP generally goes, according to the media release:

The Federal Court will be the single court dealing with all general federal law matters:

The restructured Federal Court will have two tiers;

Appeals and other complex work will generally be heard in the first tier, with shorter, less complex matters redirected to the second tier;

Existing judges of the Federal Court will operate in the first tier;

Federal Magistrates will operate in the second tier;

Upper and lower level Fair Work Divisions, which will hear matters under the Government’s new workplace relations system, will be maintained and provide a one stop shop for employers and employees;

Federal Magistrates appointed to the Federal Court will have expertise in general federal law matters and will continue to be named ‘magistrates’.

Apparently, it is envisaged that the new arrangements will save the Government $7.8million over 4 years. Some of that will be reinvested to improve individuals’ access to the courts.

Access the Report on Future Governance of Federal Family Courts in Australia Report – November 2008 underlying the announcement here (pdf). Consultation paper on the Report here (pdf). Links to the submissions etc. here.