Are you carrying on business in Australia by registering a trade mark here

If you need authority for the proposition that registering a trade mark, or enforcing the rights under the registration, does not necessarily mean you are carrying on business in Australia, Besanko J may help you out.

The ACCC sued Nexans SA and others alleging they were engaged in price fixing cartel.

Nexans SA is the global parent of the Nexans group. It had registered NEXANS in Australia as a trade mark. It had also licensed the trade mark to Nexans Australia, which was a member of the group, but not a direct subsidiary.

Besanko J rather sensibly stated at [282]:

…. I do not think the fact that the ultimate holding company of a large worldwide Group, insures all of the directors and officers of the companies comprising the Group means that the ultimate holding company is carrying on business within all the jurisdictions where companies in the Group are operating or is even a reasonably strong indication of that fact. The registration of trade marks in Australia by an overseas company could be an indication that the company is carrying on business in Australia, but, of course, it is only the beginning of the inquiry. The fact is that here there is a licence to Nexans Australia which (depending on the precise circumstances) may be considered to be an authorised user of the registered trade marks under s 8 of the Trade Marks Act. Nor do I think the fact that Nexans SA took action in this Court to protect its rights as owner of the registered trade marks indicates that it was carrying on business within Australia.

His Honour then explored other factors which in the end did lead to Nexans SA being held to carry on business in Australia. Ultimately, however, Besanko J did not consider it had engaged in the cartel behaviour, but another company, Prysmian, had.

Australian Competition and Consumer Commission v Prysmian Cavi E Sistemi S.R.L. (No 12) [2016] FCA 82

Logan J has ruled that documents prepared by a firm of trade mark attorneys in connection with a domain name arbitration are not covered by trade marks attorney privilege. The limits on the scope of “trade marks attorney privilege” is the main takeaway – in particular, Logan J considered that a draft statutory declaration prepared in connection with a UDRP complaint did not fall within the scope of the privilege. There is a warning about how a claim of privilege is made too.

Logan J has ruled that documents prepared by a firm of trade mark attorneys in connection with a domain name arbitration are not covered by trade marks attorney privilege. The limits on the scope of “trade marks attorney privilege” is the main takeaway – in particular, Logan J considered that a draft statutory declaration prepared in connection with a UDRP complaint did not fall within the scope of the privilege. There is a warning about how a claim of privilege is made too.

Titan is suing a Mr Cross and a Dr Harmon alleging that a website they, or one of them, operated – Beware of Titan Garages – infringed its trade mark rights and copyright.

Titan alleges that Mr Cross is a fictitious person.[1]

Titan had previously brought a complaint against Mr Cross under the UDRP unsuccessfully. Mr Cross was represented in that dispute by a firm of patent and trade mark attorneys (the attorneys) and not their associated law firm.

Titan issued a subpoena to the attorneys for production of documents which disclosed information about the identity of Mr Cross. The subpoena allowed redaction of information in the documents protected by client legal privilege (apart from name and contact details). The attorneys produced documents in answer to the privilege in redacted form. After inspection, Titan sought to access the documents in unredacted form. The attorneys objected, citing s 229.

Section 229 provides that a communication, or a record or document, made for the dominant purpose of a registered trade marks attorney providing “intellectual property advice” is privileged in the same way and to the same extent as if made by a lawyer.

The attorneys recognised that the privilege was Mr Cross’ privilege; not theirs. They had made efforts to obtain his instructions, but these were not forthcoming. Mr Cross did not appear at the hearing before Logan J either. As it was Mr Cross’ privilege to waive or not, the attorneys properly maintained the objection.

Why the claim of privilege was refused

In support of the claim, the trade mark attorneys provided an affidavit by the solicitors acting for them in connection with the subpoena. It stated that the deponent was informed the documents:

(1) were part of the trade mark attorney firm’s confidential files; and

(2) contained confidential communications with the attorneys for the purpose of them giving advice in connection with the UDRP complaint.

Logan J considered that the evidence did not rise above “mere assertion” and, in the circumstances of this case, was insufficient to discharge the onus on the person claiming the privilege to prove the privilege applied. His Honour had earlier explained at [9] that:

“the essential issue on a claim for privilege is the purpose for which the document or communication in question was made”: Hancock v Rinehart at [32]. It necessarily follows that the best, though not the only sufficient, source of evidence is the direct evidence of the person whose purpose is in question: Hancock v Rinehart at [32]. Procedural fairness questions in relation to other affected parties intrude in relation to any endeavour to prove the requisite purpose just by an inspection by the Court of the document which is the subject of the asserted privilege. That means that a court ought to be cautious about acting upon an invitation so to do, especially if that invitation is not attended by separate evidence describing the document and the circumstances of its creation….

Logan J did acknowledge that there might be other situations where the circumstances could lead to a different result. His Honour’s approach, however, highlights the risks that can be run by what might be thought to have been a fairly typical form of claim to privilege.

No doubt the attorneys were hampered in preparing the response by Mr Cross’ failure to provide instructions. One might also speculate whether his failure to provide instructions or to appear in circumstances where Titan alleged he was fictitious influenced his Honour’s approach. Titan did not take the point that the affidavit was “on information and belief”, but that is often problematic.[2] Logan J was not invited to inspect the documents and did not consider it appropriate to do so of his own motion. Presumably the point of claiming the privilege would be lost if his Honour had inspected the documents.

The scope of trade mark attorney privilege

Logan J noted that s 229 provides a privilege only in respect of communications and documents made for the dominant purpose of providing “intellectual property advice”.

Relevantly, that was defined as advice in relation to “trade marks” or (one might add) “any related matters”.

His Honour pointed out at [11] – [12] that the privilege was conferred only in respect of the advisory aspect of client legal privilege and did not extend to the litigation aspects.[3] While s 19(2) of the Code of Conduct for Patent and Trade Marks Attorneys 2013 incorporates a duty of confidentiality into the attorneys’ retainer. The terms and scope of that obligation were not co-extensive with the privilege. Consequently at [14]:

As s 229 is presently drawn, it is certainly possible to conceive of anomalous outcomes concerning the existence or otherwise of s 229 privilege with respect to such an arbitral proceeding. For example, it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3). And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights did or did not extend to an Internet domain name seem to fall within the ambit of s 229 privilege – either by virtue of paragraph (b) or (e) of the s 229(3) definition. But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege. Likewise, advice as to what submission ought to be made to demonstrate that the asserted trade mark right did or did not extend to cover a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission for use in an arbitral proceeding would not. However this may be, the present claim must be determined solely by reference to the scope of the privilege as presently enunciated by Parliament. (emphasis supplied)

If with respect his Honour’s approach is right, there would appear to be potentially quite drastic consequences for the normal practice of attorney firms, and for that matter patent attorneys,[4] in drafting statutory declarations and preparing submissions in contested hearings before the Office such as opposition proceedings.

Of course, given the view Logan J took about the adequacy of the claim to privilege, his Honour’s view on the scope of the privilege is “only” obiter dicta.

And, it must be said, the circumstances were rather unusual given Mr Cross’ failure to provide instructions or defend his claim.

Further, his Honour was not considering the potential application of the privilege to proceedings in the Office. And it might be possible to argue that such proceedings are not what is normally within the scope of litigation privilege rather than “advisory” privilege. Both privilege provisions for trade mark attorneys and patent attorneys draw a clear line between “intellectual property advice” and “court proceedings”. But “arbitrations” under the UDRP are not court cases either, officially being styled administrative proceedings without prejudice to the parties’ rights to litigate in court.

It may be arguable that, given the traditional role of patent attorneys and trade marks attorneys in preparing such documents before the Office (at least), it can be argued that they fall within the scope of the “any related matters” part of the definition of “intellectual property advice”. That may be seen as straining the concept of “advice” too far in the dichotomy Logan J acted under.

On a positive note, Logan J accepted that documents prepared by persons who were not registered trade marks attorneys could benefit from the privilege if prepared under the supervision of a registered trade marks attorney.

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241


  1. at [4].  ?
  2. For example, Ansell Healthcare Products LLC v Reckitt Benckiser (Australia) Pty Ltd (No 2)
    [2016] FCA 765 at [32] – [35].  ?
  3. Contrast s 118 and s 119 of the Evidence Act 1995.  ?
  4. Patents Act 1990 s 200  ?

Dot Feedback

I was the panelist in an interesting UDRP dispute, debeers.feedback, which raises a couple of points worth being aware of.

If you’re not aware of it, .feedback is one of those new Top Level Domains that ICANN approved earlier this year. It is supposed to be a forum where people wishing to provide feedback (Duh!) can make their point. At the time of its approval, it was apparently rather controversial.

In this particular case, a number of what appeared to be otherwise genuine “feedback” posts only appeared on the website after Debeers sent a letter of demand, even though they were dated much earlier. The registrant did not seek to explain that.

The first point I wanted to draw your attention to is that, unbeknownst to the Complainant or me, the posts in question seem to have been cut and pasted from Yelp. If you have to deal with one of these domain names, a Google search will be in order.

Marty Schwimmer, the original trademark blog, suggests another argument: that “feedback” is semantically different to “.sucks” (and similar criticism outlets) and, Marty argues, implies an official outlet or connection.

Selected links,from last week

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Remedies

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from last week

Here is a selection of links to IP-related matters I found interesting last week:

Patents

Trade marks

  • Is the US Olympic Committee’s [#TwitterBan Fair or Foul?](https://t.co/kmG0Avith) compare
    Telstra ‘Go to Rio’ campaign cleared by Federal Court, AOC case dismissed

Copyright

Remedies

  • Want An Enforceable Online Contract? Don’t Use A Footer Link Called “Reference”–Zajac v. Walker (USA)

Designs

Not categorised

Future of the profession

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from last week

Here is a selection of links to IP-related matters I found interesting this week:

Patents

Trade marks

Copyright

Not categorised

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Repackaging into tobacco plain packaging is still parallel importing

The Full Court has dismissed Scandinavian Tobacco’s appeal from Allsop CJ’s ruling that Trojan’s repackaging of various genuine cigar products into conformity with Australia’s plain packaging laws is legitimate.

Scandinavian Tobacco is the owner, amongst other things, of the Henri Wintermans, La Paz and Cafe Creme cigar brands. Trojan bought genuine products in Scandinavian Tobacco’s genuine packaging overseas. As that genuine packaging did not comply with Australia’s tobacco plain packaging laws, Trojan removed that packaging and replaced it with packaging that did conform. Amongst other things, this involved Trojan placing The relevant trade mark – Henri Winterman, La Paz or Cafe Creme – on the packaging in the font style and size permitted under the legislation.

The Full Court considered that Trojan was using the Scandinavian Tobacco trade marks as trade marks within the meaning of s 120 by importing and offering the repackaged goods for sale. So Trojan would infringe if the s 123 defence did not apply. However, the s 123 defence did apply.

Use as a trade mark

Case law in the 1930s had established that using a trade mark in relation to goods to which the trade mark owner had applied the goods was not infringing use of the trade mark. So there was no infringement of CHAMPAGNE HEIDSIECK to import and sell genuine products marked CHAMPAGNE HEIDSIECK by the trade mark owner – even if they were a different quality to those put on the market within the jurisdiction by the trade mark owner.[1] Similarly, there was no infringement to use the trade mark YEAST VITE in the expression “YEAST TABLETS a substitute for YEAST-VITE”.[2] Numerous decisions of Australian courts under the 1955 Act proceeded on that basis.

The Scandinavian Tobacco Full Court agreed with four previous Full Courts that the introduction of s 123 into the 1995 Act – there having been no counterpart in the 1955 Act – has led to a change in the law. At [56], their Honours ruled:

In our opinion, under the provisions of the 1995 Act, a person who, in the course of trade, imports and sells goods to which a registered mark was applied by its owner at the time of manufacture will have used the mark as a trade mark. It follows that, on this issue, we are not satisfied that the position under the 1995 Act is other than as stated in Montana, Gallo, Sporte Leisure and Lonsdale.

As their Honours explained at [58]:

Section 123 of the 1995 Act gives the Champagne Heidsieck principle an express statutory footing that, in our view, leaves no scope for the principle to be given any more expansive operation by reference to cases decided under different legislation including Champagne Heidsieck itself: see Sporte Leisure at [71] and Lonsdale at [62]-[63] where reference is made to the difficulties involved, as a matter of statutory construction, in attributing to the Champagne Heidsieck principle a broader operation that travels beyond the scope of s 123. Under the 1995 Act, the question of whether or not a registered mark is infringed by the commercial importation or sale of genuine goods (what Clauson J described as “those upon which the plaintiff’s mark is properly used”) must now be determined by reference to s 123(1). If the respondent who is selling what are said to be genuine goods is held to be outside the protection of s 123(1), then the respondent will not avoid liability for trade mark infringement on the basis that he or she is not using the relevant mark unless there is something else about the context in which the use occurs that (as in Wingate) might lead to a different conclusion.

The Scandinavian Tobacco Full Court noted that was the way the English Court of Appeal in Revlon v Cripps and Lee Ltd had treated the introduction of a counterpart “consent” defence into the UK Trade Marks Act.

The Scandinavian Tobacco Full Court perceived a lack of enthusiasm for the “old” cases in the High Court’s decisions, such as Gallo, under the 1995 Act. In addition, their Honours noted their conclusions was consistent with the position expressed by Aickin J, sitting alone, in the Pioneer case:

Thus if Pioneer Australia had done no more than import the goods and sell them by retail it would have used the mark, but in fact it did much more as the evidence referred to above demonstrates.

There is no doubt that the Pioneer ruling was a landmark decision in Australia accepting the validity of trade mark licensing. For many years, however, Aickin J’s acceptance that a trade mark could be validly used to denote source in both the trade mark owner and one or more authorised users, rather than the trade mark owner alone, was considered rather problematical, albeit arguably contemplated by the definition of a trade mark under the 1955 Act[3]. That Janus-like approach appears very difficult to maintain in the face of the definitions in s 7 and s 8 of the 1995 Act.

Their Honours also noted the problems that defendants might have, bearing in mind the onus of proving the elements of the defence. However, they considered that the evidential burden could shift quickly as the trade mark owner would usually ve best placed to give the relevant evidence.

The s 123 defence

The Full Court upheld Allsop CJ’s ruling that the s 123 defence applied. Section 123(1) provides:

(1) In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

The repackaged cigars were goods which ST itself had applied its trade marks to, or in relation to. So the requirements of s 123 were literally satisfied. ST argued, however, that s 123 applied only in relation to goods while the trade mark owner’s trade mark was actually applied to them. Once it was removed (such as by repackaging), therefore, s 123 had no operation.

The Full Court, however, pointed out that a trade mark owner could legitimately use its trade mark in relation to goods and did not necessarily have to apply the trade mark actually to the goods. Examples of this could be use of the trade mark on an advertisement or a document, rather than on the goods themselves. The Full Court held, therefore, that there was no express or implied limitation in the words of s 123. The temporal requirement in s 123 would be satisifed if at some point before the alleged infringer used the trade mark the trade mark owner (or someone with the trade mark owner’s consent) applied the trade mark to the goods or used it in relation to them. At [65], their Honours explained:

The language of s 123(1) refers to a mark that has been applied to or in relation to goods by or with the consent of the registered owner. The operation of the section is not expressly or impliedly confined to a situation in which the goods still bear the mark as applied by the owner. The temporal requirement of the section will be satisfied if at some time in the past, which may be after the time of manufacture, the mark has been applied to or in relation to goods by or with the consent of the owner. If those goods are later sold by a person in circumstances which involve him or her using a mark that was previously applied by or in relation to the goods by the owner then s 123(1) will be engaged.

Section 123 did not provide a defence to the type of infringement prescribed by s 121.[4] Therefore, the words of s 123 were not to be read down by reference to s 121.

The Full Court considered that Scandinavian Tobacco’s concerns that its goodwill may be harmed by Trojan’s repackaging exercise were not matters falling for consideration under the terms of s 123. Rather, such issues would need to be addressed through passing off and the consumer protection laws.

Passing off

The claim in passing off (and under s 18 of the ACL), however, also failed. The trial judge had found the repackaging did not misrepresent that Scandinavian Tobacco had repackaged, or authorised the repackaging of, the cigars. In this respect, Scandinavian Tobacco’s own evidence was unhelpful as it appears that Scandinavian Tobacco Australia itself had engaged in repackaging other brands of cigars for which it was not an authorised distributor.

Wrap up

I think this is the first case since Montana that has gone to trial which the parallel importer has won. Then again it is also the first case since Montana that actually involved parallel imports.

The Full Court’s interpretation of s 123 is at least straightforward and avoids the complicated notice procedure applying in the EU. The “new”[5] concept of use as a trade mark apparently introduced by the 1995 Act will mean some careful thought needs to be given to “old” cases on what constitutes trade mark use, unless the High Court becomes motivated to revisit the reservation left open in [33] and [34] of the Gallo decision. It will interesting to see if trade mark owners start to explore the use of conditions under s 121 or are willing to assign the Australian trade marks as in Montana in attempting to circumvent the operation of s 123.

Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2016] FCAFC 91


  1. Champagne Heisieck et cie Monopole SA v Buxton [1930] 1 Ch 330.  ?
  2. Irving’s Yeast-Vite Ltd v FA Horsenail (1934) 51 RPC 110 (HL), a decision adopted and applied by the High Court in, for example, the [Tub Happy][tub] case.  ?
  3. That definition referred to a mark used so as to “indicate a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person”.  ?
  4. Section 121 empowers the trade mark owner to impose condition which may run with the goods to prevent those subsequently acquiring them from doing acts in breach of the conditions.  ?
  5. Bearing in mind this is the fifth Full Court decision adopting this position.  ?

Now for the PLAYGO word mark

Moshinsky J has now extended the declarations and injunctions in the Playgro v Playgo proceedings to include the PLAYGO word mark, but refused orders to recall infringing products and for delivery up.

The previous decision concerned the use of the PLAYGO device. This device appeared prominently on the top and the four sides of the product packaging. In small print (6 point or 8 point) on the bottom of the packaging, the following legend was printed:

Screen Shot 2016-05-11 at 12.28.21 PM

Moshinsky J has now ruled that PLAYGO in the first line of that “notice” also infringed, but not the other occurrences of PLAYGO in the company names.

The respondents argued that the PLAYGO device placed prominently on the top and sides of the packaging was clearly the trade mark and would be understood by the consumers to be the trade mark. This “notice” was just a legend referring to that device. Consumers would never even see it, unless they picked the package up and looked at its underside. His Honour said at [17]:

In the present case, the word, ‘PLAYGO’ was immediately followed by the letters, ‘TM’ in superscript and the words “is a trademark of”. These are strong indicators that the word, ‘PLAYGO’ is being used as a trade mark, that is, as a ‘badge of origin’ to distinguish the respondents’ playthings from playthings made by others. While the nature and purpose of the use of the word must be considered in the context of the packaging as a whole, which includes the Playgo Device Mark on the front and sides of the box, the fact that the Playgo Device Mark is used as a trade mark does not diminish the fact, in this case, that the word, ‘PLAYGO’ in the small print is also being used as a trade mark. This case may be contrasted with cases where a word which is arguably descriptive is used in small print on the packaging and it is concluded that, in the context of the packaging as a whole, including the use of a prominent brand elsewhere on the packet, the word is not being used as a trade mark: compare, for example, Nature’s Blend Pty Ltd v Nestle Australia Ltd (2010) 86 IPR 1 at [22], [37]-[40] per Sundberg J; Nature’s Blend Pty Ltd v Nestlé Australia Ltd (2010) 87 IPR 464 at [42], [48] per Stone, Gordon and McKerracher JJ. In the present case, the word, ‘PLAYGO’ is not descriptive and the presence of the superscript letters, ‘TM’ and the words “is a trademark of” indicate use as a trade mark.

Even if the word PLAYGO in the first line of the “notice” could be seen as a legend, it would be sufficient that one of the impressions a consumer could take away from the use was that it was used as a trade mark and that was the case here.

Bearing in mind that Playgo was outside Australia (in China) and supplied its products there to retailers who imported them into Australia for sale, the injunctions Moshinsky J ordered were against supplying for sale in Australia playthings under or by reference to the PLAYGO device or in packaging bearing both the PLAYGO device and the word PLAYGO in small print on the packaging (other than as part of a company name).

The words “under or by reference to” were preferred to “use as a trade mark” as, while the latter expression is the term used in the Act, it was liable to debate and uncertainty about its scope. The use of PLAYGO in the company names was not enjoined as it was not trade mark use. In addition, his Honour was not prepared to enjoin wider uses of PLAYGO where the trial had concerned only the limited use in small print on the bottom of the packaging.

Moshinsky J refused to order Playgo to recall all unsold goods. Playgo had stopped supplying goods with the trade mark in November 2014. His Honour considered it unlikely that stocks would still be held by retailers. Even if there were, there was no evidence that Playgo had any right to require the retailers to return the products. (That of course does not mean that retailers who sell would not infringe.)

The order for delivery up was also refused. This was because any goods in Playgo’s possession or control were in China – where it was located and operated – and could be sold to places other than Australia where there might not be an infringement.

Playgro Pty Ltd v Playgo Art & Craft Manufactory Limited (No 2) [2016] FCA 478

Playgro v Playgo

PLAYGRO v PLAYGO

Well, you’ll never guess what? It turns out that:

playgo

is deceptively similar to:

playgro

No April Fool’s. Now, maybe some of you (like me) are thinking, “Wait a minute, there must be ‘gazillions’ of trade marks for toys with PLAY in them. That’s true, but the second syllables of the verbal elements are just too close, both visually and aurally. As Moshinsky J explained:

In my view, the fact that there are other trade marks for goods in class 28 containing ‘PLAY’ as part of the word, does not assist in resolving the matter. Accepting that it is a crowded market for toys, games and playthings where the word ‘PLAY’ is used as an element of the trade mark, and therefore more attention than usual may be paid to the second syllable, there is nevertheless a closer degree of similarity between the trade marks in issue here and the marks referred to in paragraph [94] above. In the present case, the second syllable of each mark (‘GRO’ and ‘GO’ respectively) is visually and phonetically very similar, while in the other cases (for example, PLAYSKOOL and PLAYBOY) the second syllable is quite different.

The different shaped backgrounds and colours and arrangement of the verbal element(s) were not signficant matters.

A couple of other points.

Playgo is based in Hong Kong. It sold and supplied its products to Myer, Woolworths and Big W there (presumably FOB or some similar arrangement). It argued therefore that it did not use its trade mark in the course of trade in Australia as property in the goods passed on delivery in Hong Kong.

Moshinsky J rejected this argument. When Playgo sold its product to Myer and the others, it knew they were intending to import them into Australia for sale at retail. Moshinsky J considered this was just a straightforward application of Gallo and Estex. Until the goods passed into the hands of the ultimate consumers, they were still in the course of trade and the PLAYGO trade mark operated to denote Playgo as the trade source.

Perhaps surprisingly given this conclusion, however, his Honour considered that Playgo was not liable as a joint tortfeasor with Myer, Woolworths or Big W for the infringements committed by their use. Selling the goods to them, with knowledge of what they intended to do with them (i.e., import them into Australia for retail sale) did not have sufficient commonality of purpose to amount to a common design, to “acting in concert together”; it was merely facilitation:

Nevertheless, in my view, the facts do not establish that Playgo Enterprises and Myer engaged in a ‘common design’ to offer for sale and sell toys bearing the Playgo Device Mark. The relationship between Playgo Enterprises and Myer was merely that of vendor and purchaser. The Supply Agreement appears to be a standard agreement for the sale and purchase of goods; there are no special features which involve Playgo Enterprises in the process of offering for sale and sale of the goods to customers. The facts do not indicate that Playgo Enterprises played any role in the offering for sale or sale of the goods to customers. It is true that Playgo Enterprises sold goods bearing the Playgo Device Mark to Myer, and knew that they were to be offered for sale and sold to customers in Australia. Nevertheless, in my view, that is insufficient to amount to a ‘common design’ because Playgo Enterprises did not engage in any acts in furtherance of the alleged common design. At most, Playgo Enterprises facilitated the infringement by selling the goods to Myer; but mere facilitation is not enough to establish joint tortfeasorship.

Although it is not referred to in the judgment, presumably the other limb of joint tortfeasorship – directing, procuring or inducing the infringement – would also fail in the absence of some positive act (other than selling to the importer for importation in Australia and sale)?[1] If so, that illustrates that the common law principles are much less help to the right holder than the statutory prohibitions in copyright law and patent law against authorising infringement[2] and, even more so, s 117 of the Patents Act 1990.

Playgro Pty Ltd v Playgo Art & Craft Manufactory Limited [2016] FCA 280


  1. See e.g. Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898; 44 IPR 481 at [41], [52].  ?
  2. In Cooper v Universal Music, for example, the provision of links on a website which browsers could use to download infringing content did constitute infringement where the website was designed to enable anyone, including the primary infringers, to place the links on the website.  ?

Australia Wins Philip Morris’ Challenge Against tobacco plain packaging

The IPkat reports that Australia has won the claim Philip Morris brought against the Tobacco Plain Packaging laws under the investor dispute resolution clause of the Australia – Hong Kong Business Investment Treaty.

As the IPkat’s report notes, the dispute resolution panels under the WTO are still in train.