UKSC rejects Thaler and DABUS

The United Kingdom Supreme Court has ruled that DABUS is not an inventor for the purposes of UK patent law and so Dr Thaler’s applications for a patent claimed to be invented by DABUS have failed.

You will recall that Dr Thaler has applied in the UK (and many other parts of the world) for the grant of patents in his name for inventions said to have been generated by a machine acting autonomously and powered by the artificial intelligence, DABUS.

Section 7 of the UK Patents Act 1977 provides in part:

7 Right to apply for and obtain a patent.

(1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted—

(a) primarily to the inventor or joint inventors;

(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;

(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.

(3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Further, section 13 reinforced the centrality of the position of “the inventor” in the scheme of the Act.

Lord Kitchin pointed out that s 7(2) read with s 7(3) provides an exhaustive code for determining who is entitled to a patent. And, just like s 15(1) of the Patents Act, that is the inventor or someone claiming through the inventor.

Unlike the Australian Act, section 7 of the UK Act also includes s 7(4) which defines the inventor as “the actual deviser of the invention”.

Unlike the approach taken by the Australian High Court, Lord Kitchin (with whom Lords Hodge, Hamblen, Leggatt and Richards agreed) considered it was entirely proper for the Comptroller-General to take Dr Thaler’s statements at face value.

Accordingly, at [56], Lord Kitchin ruled that an inventor for the purposes of the Patents Act 1977 must be a natural person and, as DABUS was not a person, it was not the inventor.

In my judgment, the position taken by the Comptroller on this issue is entirely correct. The structure and content of sections 7 and 13 of the Act, on their own and in the context of the Act as a whole, permit only one interpretation: an inventor within the meaning of the 1977 Act must be a natural person, and DABUS is not a person at all, let alone a natural person: it is a machine and on the factual assumption underpinning these proceedings, created or generated the technical advances disclosed in the applications on its own. Here I use the term “technical advance” rather than “invention”, and the terms “create” or “generate” rather than “devise” or “invent” deliberately to avoid prejudging the first issue we have to decide. But it is indisputable that DABUS is a machine, not a person (whether natural or legal), and I do not understand Dr Thaler to suggest otherwise.

As in the Australian cases, Dr Thaler advanced an alternative claim based on the “doctrine of accession”. Thus, Dr Thaler claimed he was entitled to the patent as the owner of DABUS and so entitled to any fruits of its production.

At [83], Lord Kitchin explained Dr Thaler’s contention based “purely” on ownership of the machine:

The DABUS inventions are, he says, the fruits of (in the sense they were produced by) the DABUS machine that he owns and further, that DABUS was designed to make inventions and so these fruits were by no means unexpected. He also contends that he was and remains the first person to possess the inventions and this provides a proper basis for their ownership. In short, he contends that he derived title by operation of a rule of law (the doctrine of accession) that satisfied the terms of section 7(2)(b) of the Act and conferred on him the right to apply for and secure the grant of patent protection for any inventions made by DABUS.

This contention failed. First, as DABUS was not an inventor, at [84] it gave rise to no rights which could be claimed. That was sufficient for the application to fail.

Secondly, in any event, Dr Thaler’s invocation of the doctrine of accession was entirely misplaced. The doctrine of accession applied to new tangible property (e.g. a calf) produced by an existing tangible property (e.g. a cow), not intangible property such as inventions. At [88] – [89], Lord Kitchin explained:

We are not concerned here with a new item of tangible property produced by an existing item of tangible property, however. We are concerned with what appear (and which for present purposes we must assume) to be concepts for new and non-obvious devices and methods, and descriptions of ways to put them to into practice, all of which, so Dr Thaler maintains, have been generated autonomously by DABUS. There is no principled basis for applying the doctrine of accession in these circumstances.


For these reasons and those given by the Court of Appeal, I am satisfied that the doctrine upon which Dr Thaler relies here, that of accession, does not, as a matter of law, operate to confer on him the property in or the right to apply for and obtain a patent for any technical development made by DABUS.

As the Comptroller-General was entitled to take Dr Thaler’s claims at face value, the Comptroller-General was entitled to reject the applications as they were obviously defective: they did not identify anyone who could be the inventor or any basis on which Dr Thaler could claim to derive title from an inventor.

It should be noted that Lord Kitchin was at pains to point out that the Court was concerned with a narrow question: the meaning of section 7 and associated provisions in the UK Act. It was not concerned, he considered with broader, policy questions. His Lordship explained at [48] – [50]:

The Comptroller has emphasised, correctly in my view, that this appeal is not concerned with the broader question whether technical advances generated by machines acting autonomously and powered by AI should be patentable. Nor is it concerned with the question whether the meaning of the term “inventor” ought to be expanded, so far as necessary, to include machines powered by AI which generate new and non-obvious products and processes which may be thought to offer benefits over products and processes which are already known.


These questions raise policy issues about the purpose of a patent system, the need to incentivise technical innovation and the provision of an appropriate monopoly in return for the making available to the public of new and non-obvious technical advances, and an explanation of how to put them into practice across the range of the monopoly sought. It may be thought that the rapid advances in AI technology in recent times render these questions even more important than they were when these applications were made.


This appeal is concerned instead with the much more focused question of the correct interpretation and application of the relevant provisions of the 1977 Act to the applications made by Dr Thaler. This was the approach taken by the Comptroller, the High Court and the Court of Appeal, and rightly so.

Dr Thaler having failed to identify an inventor through whom he could claim entitlement, the Comptroller-General had been right to deem the applications withdrawn.

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023] UKSC 49 (20 December 2023)

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CampaignTrack, Biggin & Scott and (not) authorisation

The High Court has unanimously allowed Real Estate Tool Box (RETB) and other parties’ appeals against findings that they had authorised infringements of copyright in Campaigntrack’s “DreamDesk” software.

The High Court made a point of emphasising that whether a person can be found liable for authorising copyright infringement depends on “the proper inference to be drawn from all of the facts of the case.”

I am afraid that, as their Honours said, “It is therefore necessary to set out those facts in some detail.”

Some facts

Real estate agents use web to print software to quickly and efficiently generate promotional materials advertising the properties on their websites, in brochures and other advertisements.

Biggin & Scott is one such real estate agent.

Back in the mists of time, Biggn & Scott licensed software from Campaigntrack for this purpose. However, Biggn & Scott became disenchanted with Campaigntrack for some reason and in 2015 had switched over to software licensed from DreamDesk Pty Ltd (DDPL) imaginatively named “DreamDesk”.

DDPL’s DreamDesk software had been written for it by an one of its “officers”, Mr Semmens.

Before he wrote the DreamDesk software, Mr Semmens had written the Process 55 software that another competitor, Digital Group,[1] was licensing to real estate agents.

Mr Semmens’ fellow directors in Digital Group formed the view that he had stolen Digital Group’s intellectual property in Process 55 in writing DreamDesk. They confronted him about this and on 26 May 2016 he signed documents admitting the infringements.

Shortly after these documents were signed, Digital Group informed Mr Meissner, the princiapl of DDPL who, the trial judge found, was “shocked” by this revelation. Mr Meissner accepted DDPL could not continue with DreamDesk and set about trying to buy the rights to Process 55 or sell DreamDesk.

Meanwhile, Campaigntrack was unhappy about the loss of customers and set about a campaign to buy out its competitors and so corner the market.

In July 2016, CampaignTrack agreed to buy DreamDesk from DDPL, granting DDPL a licence to keep using DreamDesk until 3 October 2016. Shortly after, CampaignTrack also acquired the rights to Process 55.

Not wanting to fall back into the clutches of CampaignTrack, Mr Stoner from Biggn & Scott met with Mr Semmens on 3 August 2016. At Mr Semmens’s suggestion, Mr Stoner commissioned Mr Semmens to start work on the new software which became known as Toolbox. The letter of instruction stated in part:[2]

You are instructed to build a web to print delivery system that does not breach any other companies IP or ownership, in particular Dream Desk or Campaign Track. …. In simple terms we do not want any thing used that can be claimed as owned by the 2 companies above.

Mr Semmens provided assurances that he could do the job in time and would do so without infringing anyone’s copyright.

To undertake the project, Biggn & Scott and Mr Semmens incorporated RETB. Mr Stoner was the sole director and Mr Semmens was doing the design and coding, with some assistance from some of DDPL’s employees and in a workspace borrowed from DDPL.

On 29 September 2016, CampaignTrack’s solicitor, Ms McLean, emailed Mr Meissner and DDPL warning it had discovered improper access and duplication of code which CampaignTrack now owned and expressing concerns about RETB. The email stated CampaignTrack was prepared to grant a one week extension of DDPL’s licence to use DreamDesk provided it was used “in the ordinary course of business” only and demanding undertakings from all involved that there would be no use of the improperly obtained code.

By 6 October 2016, all the Biggn & Scott and DDPL parties had signed and provided the undertakings to Ms McLean – except Mr Semmens.

On 7 October 2016, Ms McLean advised Biggn & Scott and DDPL that the DreamDesk licence would not be extended beyond 10 October 2016 as Mr Semmens had failed to provide the undertakings.

On 10 October 2016, ToolBox became operational and Biggn & Scott switched its users of DreamDesk over to Toolbox.

In the pre-litigation correspondence that followed, the parties agreed to allow CampaignTrack’s expert, a Mr Geri from Ferrier Hodson, to inspect the Toolbox system and prepare a preliminary report.

On 19 January 2017, Mr Geri delivered his preliminary report. His conclusion was that it was “highly probable” there had been an infringement of CampaignTrack’s copyright in DreamDesk in the development of Toolbox. However, to confirm that opinion, he needed to undertake a forensic examination of the servers hosting Toolbox.

Through Ms McLean, CampaignTrack demanded that Biggn & Scott shut down Toolbox and provide Mr Geri with the requested access. Biggn & Scott refused, instead demanding proof of CampaignTrack’s ownership. The litigation followed.

It was not until 17 June 2018 that Biggn & Scott ultimately stopped use of Toolbox, having introduced a new system in April 2018.

At trial

The trial judge found that Mr Semmens had infringed CampaignTrack’s copyright in DreamDesk by reproducing a substantial part in Toolbox. Correspondingly, the users of Toolbox also infringed CampaignTrack’s copyright when they downloaded the software and ran it to generate their advertising collateral. Mr Semmens was also liable for authorising those infringements.

However, the trial judge rejected CampaignTrack’s cases against Biggn & Scott, Mr Stoner, Ms Bartels, DDPL and Mr Meissner alleging they had authorised Mr Semmens’ and the users’ infringements. As a result, his Honour found that CampaignTrack had not established that either the Biggn & Scott or DDPL parties had authorised either Mr Semmens’ or the users’ copyright infringements.

The Full Court

The Full Court (Greenwood and McElwaine JJ, Cheeseman J dissenting) allowed CampaignTrack’s appeal and found the Biggn & Scott and DDPL parties all liable for authorising infringement.

In the Full Court, the majority accepted that, before 29 September 2016, the Biggn & Scott and DDPL parties did not know about Mr Semmens’ infringing conduct and, until that date, were not obliged to take reasonble steps to avoid the infringements by Mr Semmens.

However, Ms McLean’s letter on 29 September 2016 put the Biggn & Scott and DDPL parties on notice of CampaignTrack’s claims. Accordingly, McElwaine and Greenwood JJ found that the Biggn & Scott and DDPL parties knew or had reason to suspect that Mr Semmens had infringed copyright and failed to sufficient steps to prevent infringements after that date.

The law

Section 36 of the Copyright Act 1968 provides:

(1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

So, there is direct infringement by doing one or more of the acts comprised in the copyright (such as reproducing, or communicating to the public, the whole or a substantial part of the work). There is also infringement by someone who “authorises” someone else to do the infringing act(s). In deciding whether there has been authorisation s 36(1A) further provides three considerations that a court must take into account:[3]

In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:

(a) the extent (if any) of the person’s power to prevent the doing of the act concerned;

(b) the nature of any relationship existing between the person and the person who did the act concerned;

(c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.

The High Court

At [63] – [65], the High Court referred to the examination of the concept of ‘authorisation’ by Gummow and Hayne JJ in the Roadshow case and confirmed that ‘authorisation’ for the purposes of copyright law had long extended beyond traditional concepts of agency and could be found where there was ‘indifference’.

The High Court also endorsed Gummow and Hayne JJ’s warning that ‘authorisation’ for copyright infringement purposes “is not to be identified by deconstructing the dictionary definitions of notions such as ‘sanction’, ‘approve’ and ‘countenance’.”

Having reviewed four prior High Court judgments, at [77], their Honours explained:

The foregoing survey of authorities demonstrates that what constitutes indifference amounting to authorisation depends upon a close analysis of the facts of each case. Mere neutrality or inattention will not suffice. The quality of the indifference, and the nature of the relationship between the infringer and the alleged authoriser, must be such as to justify a conclusion that there was sufficient involvement in the infringement as to amount to authorisation of the acts constituting the breach of copyright for the purposes of s 36(1) of the Copyright Act. The central factors to consider will be those matters in s 36(1A):[39] the person’s power to prevent the act of infringement; the relationship between that person and the infringer; and whether the person took any reasonable steps to prevent or avoid the doing of the act, including compliance with any relevant industry codes of practice. That necessarily requires consideration of whether a person knows or has reason to anticipate or suspect an infringing act is occurring or is likely to occur.[40] (citations omitted)

and at [88] their Honours posed the issue as what the particular person in the particular circumstances at the particular time (or times) ought to have done:

Proof of an allegation of authorisation by indifference requires findings, supported by evidence, that the person was in a position and had knowledge of facts, matters and circumstances sufficient to give rise to a duty to take reasonable steps to avoid or prevent the doing of an act by another person, or else be liable for the act of that person. That is not a general inquiry. It is directed to a particular state of affairs at a particular time or times. That inquiry requires an assessment of the reasonableness, again supported by evidence, of what the person did, and what the person, in that position with that knowledge, at that particular time or times, ought to have done.

The High Court than concluded that, in the circumstances of this case, the Biggin & Scott parties could not be said to have omitted to take reasonable steps they ought to have taken to prevent infringement. At [45], the High Court identified the primary judge’s unchallenged findings in relation to the Biggn & Scott parties:

(a) Mr Stoner and Ms Bartels trusted Mr Semmens not to infringe the intellectual property rights of DDPL or Campaigntrack P/L in developing Toolbox and they did not want Mr Semmens to misuse intellectual property belonging to others in developing it.

(b) Mr Stoner and Ms Bartels considered Mr Semmens to be a person who had the relevant expertise in building a software system and he could build the system in sufficient time given his expertise. They left the development of Toolbox to Mr Semmens and that was not unusual or surprising.

(c) Biggin & Scott was in a contractual relationship with, and could instruct, Mr Semmens. Its instruction to him was relevantly to build Toolbox without infringing any person’s intellectual property rights.

(d) Given the instructions to Mr Semmens, and that Mr Stoner and Ms Bartels trusted him, there was no independent audit of Toolbox or verification that Mr Semmens had not infringed another person’s intellectual property rights. In all likelihood, neither Mr Stoner nor Ms Bartels turned their mind to consider this.

(e) Mr Stoner did not instruct Mr Semmens to “tamper” with the commit log file.

(f) Mr Stoner, Ms Bartels and Mr Semmens were friends. The payment of Mr Semmens’ legal bills in this matter did not indicate any authorisation of the infringement of copyright.

(g) It had not been established that any of the Biggin & Scott parties knew, or should reasonably have known, that Campaigntrack P/L’s intellectual property had been used to develop Toolbox.

Accordingly, up to the sending of Ms McLean’s letter of 29 September, both the trial judge and all members of the Full Court accepted the Biggin & Scott parties did not know or have reason to suspect Semmens had infringed copyright in making ToolBox. Ms McLean’s letter of 29 September, or subsequent developments, did not change the result.

89 It was not established that the Biggin & Scott parties knew of or suspected Mr Semmens’ infringing acts at any relevant time. Although, following the letter of 29 September 2016, the Biggin & Scott parties had some reason to suspect that the infringing acts might be occurring, and although they had the necessary means to prevent these infringing acts, this Court cannot conclude that they defaulted in some duty of control by failing to take any further action. Given the manner in which the case was conducted at first instance, the Court cannot conclude that the Biggin & Scott parties omitted to take reasonable steps after 29 September 2016, being steps that they ought to have taken to prevent or avoid the infringing acts.

A similar conclusion was reached in relation to Mr Meissner and DDPL even though they made personnel available to Mr Semmens to write the infringing code and provided infrastracture necessary for him to undertake the work.

Some comments

From the outside, it is difficult to assess some aspects of the High Court’s reasoning.

For example, in both [77] and [88], their Honours referred to liability arising where the alleged authoriser knew or had reason to suspect there was an infringer. And, in [89], their Honours accepted that the Biggin & Scott parties had some reason to suspect infringements on receipt of Ms McLean’s 29 September letter. But, the High Court rejected reliance on the letter in this case.

In practice, such letters are typically relied on to fix the alleged infringer with knowledge. In this case, however, the letter immediately led to all the parties, except Mr Semmens, unreservedly giving the undertakings demanded by CampaignTrack. In addition, Mr Stoner and Ms Bartel were friends with Mr Semmens, he had the expertise which they did not, they had repeatedly sought assurances from him that he had complied with his instructions and they were entitled to trust him to carry out their genuine concern not to infringe.

Even so, in many situations, you might very well expect the alleged infringer to be put on inquiry when they learned, as the Biggin & Scott parties did within a few days, that Mr Semmens refused to give the underakings – according to his evidence, because he was concerned it would restrict him from working in his industry.

Likewise, one would often expect a preliminary report from a forensic IT expert would provide a sufficient basis to infer authorisation. The High Court held that it did not in this case:

84 As to the Geri investigation, it is notable that the Biggin & Scott parties permitted it to take place and co-operated with Mr Geri. That is entirely consistent with the Biggin & Scott parties continuing to trust Mr Semmens. Moreover, Cheeseman J was correct to characterise the Geri report as “inconclusive”.[44] Indeed, the “preliminary” conclusion that there was a “high probability” that Campaigntrack P/L’s intellectual property had been used to develop Toolbox was confined to matters already known to the Biggin & Scott parties: namely, that both DreamDesk and Toolbox had been developed by the same person, who had access to both systems during the production of Toolbox. Because Mr Geri could also not confirm his conclusion, there is no sensible basis for concluding that the ongoing faith in Mr Semmens’ compliance with his express instructions had now become unreasonable. …

The forensic IT expert’s opinion, however, was qualified. It acknowledged that many similarities were the sorts of things one would expect anyone in the industry to require and requested further access. Indeed, in the Full Court at [157], Cheeseman J had described the conclusion of a high probability of infringement as “no more than a speculative assumption” – in effect based on the fact that the same person wrote both programs.

As to the Biggin & Scott parties’ refusal to allow the further inspection of Biggin & Scott’s servers, the High Court continued at [84]:

…. it will be recalled that the relationship between the Biggin & Scott parties and Campaigntrack P/L had soured considerably since the refusal to extend the licence for DreamDesk. The Campaigntrack system was a competitor product with Toolbox. No doubt the Biggin & Scott parties saw the attack on them in that light. As such, in defence of Toolbox, they were entitled to insist upon proper proof of Campaigntrack P/L’s claims and to reject what appeared to them to be a fishing exercise. Such conduct is unremarkable in the tousled field of commercial disputation.

This might suggest that an alleged infringer may be entitled to take a robust position in the face of allegations, especially from a competitor with whom there is bad blood. However, in addition to the matters already canvassed, it is important to remember that the High Court’s conclusions are also predicated on references to how the case was run at first instance. On the High Court’s analysis, this meant the conclusions reached by the majority in the Full Court were not open on the evidence.

Finally, it is interesting to note that, in four of the five cases the High Court has considered liability for copyright infringement by authorisation, the High Court has ruled there was no authorisation.[4]

Real Estate Tool Box Pty Ltd v Campaigntrack Pty Ltd [2023] HCA 38 Gageler CJ, Gordon, Edelman, Steward and Jagot JJ)


  1. Mr Semmens was, with his brother-in-law Mr Farrugia, a founder Digital Group. By the time of the events relevant to this proceeding, Mr Semmens, Mr Farrugia and a third person, Mr Stewart, were the three directors of Digital Group.  ?
  2. The letter is set out in full in paragraph 17 of the judgment.  ?
  3. As the High Court noted in footnote 39, these matters have been derived from Gibbs J’s judgment in University of New South Wales v Moorhouse (1975) 133 CLR 1.  ?
  4. In this case, the High Court considered Adelaide Corporation v Australasian Performing Right Association Ltd (1928) 40 CLR 481; University of New South Wales v Moorhouse (1975) 133 CLR 1 and Roadshow Films Pty Ltd v iiNet Ltd (No 2) (2012) 248 CLR 42. The fifth case, Australian Tape Manufacturers Association Ltd v The Commonwealth [1993] HCA 10; 176 CLR 480, was directly concerned with the constitutional validity of the blank tapes levy which turned on whether or not the suppliers of blank cassette tapes on whom the levy was imposed ‘authorised’ the unlicensed copying of recorded music on to those tapes by purchasers.  ?

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New Copyright and AI reference group

The Commonwealth Attorney-General, Mark Dreyfus, yesterday announced that the Government will form a Copyright and Artificial Intelligence reference group “to better prepare for future copyright challenges emerging from AI.”

The Attorney-General and his department have held a number of roundtables during the course of the year to consult about a range of issues. One of the issues discussed included the issues arising from the use of AI tools.

According to the Media Release:

AI gives rise to a number of important copyright issues, including the material used to train AI models, transparency of inputs and outputs, the use of AI to create imitative works, and whether and when AI-generated works should receive copyright protection.

The reference group will be a standing mechanism for ongoing engagement with stakeholders across a wide range of sectors, including the creative, media and technology sectors, to consider issues in a careful and consultative way.

Engagement with a broad range of stakeholders and sectors will help Australia harness AI opportunities, while continuing to support the vitality of our creative sector.

The Media Release notes that the reference group will complement “other AI-related Government initiatives, including the work being led by the Minister for Industry and Science Ed Husic on the safe and responsible use of AI.”

The Media Release notes that further details, in addition to outcomes from the Roundtables, will be made available through the Attorney-General’s Department’s website in due course.

Some very quick thoughts

One would hope the complementing of other agencies’ work may involve some fairly close co-operation on some issues at least since the question of authorship for copyright seems to raise similar issues to who is the designer for the purposes of registered design or the inventor for patents – all three being predicated on the assumption of human agency.

It seems pretty clear under our law following Telstra v PDC ([118] – [119] and [169]) that works generated by one or two simple “prompts” will not qualify for copyright protection as original works in Australia. The situation where the material results from much more detailed instructions is much more up in the air – both here and overseas.

In the USA, the Register of Copyright’s Review Board has rejected the claim to copyright in a work resulting from 624 prompts and further ‘adjustments’ by the human ‘operator’ / claimant, Mr Allen:

There is increasing commentary likening the generation of materials through detailed prompts to the basis on which copyright is recognised as subsisting in photographs. According to the Review Board, however, Mr Allen’s arguments based on the inputting of detailed prompts did not establish authorship:

As the Office has explained, “Midjourney does not interpret prompts as specific instructions to create a particular expressive result,” because “Midjourney does not understand grammar, sentence structure, or words like humans.” It is the Office’s understanding that, because Midjourney does not treat text prompts as direct instructions, users may need to attempt hundreds of iterations before landing upon an image they find satisfactory. This appears to be the case for Mr. Allen, who experimented with over 600 prompts before he “select[ed] and crop[ped] out one ‘acceptable’ panel out of four potential images … (after hundreds were previously generated).” As the Office described in its March guidance, “when an AI technology receives solely a prompt from a human and produces complex written, visual, or musical works in response, the ‘traditional elements of authorship’ are determined and executed by the technology—not the human user.” And because the authorship in the Midjourney Image is more than de minimis, Mr. Allen must exclude it from his claim. Because Mr. Allen has refused to limit his claim to exclude its non-human authorship elements, the Office cannot register the Work as submitted. (Footnotes and citations omitted)

Whether the US courts or, for that matter, an Australian court will follow that approach remains to be seen. Judge Howell, in rejecting Dr Thaler’s attempt to register copyright in “A Recent Entrance to Paradise” on purely administrative review grounds, outlined the argument in obiter:

A camera may generate only a “mechanical reproduction” of a scene, but does so only after the photographer develops a “mental conception” of the photograph, which is given its final form by that photographer’s decisions like “posing the [subject] in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation” crafting the overall image. Human involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright.

The position on the treatment of inputs is also up in the air. The Authors’ Guild of America and others have brought a number of cases against various AI operators including Open AI and LLaMA on the basis that the training of these LLMs involved the wholesale copying of the authors’ works into the LLM’s databases.

A number of commentators argue these cases are likely to fail, however, in light of the Second Circuit’s ruling that the Google Books Project, in which Google scanned thousands of in-copyright books to create a searchable digital database, did not infringe copyright as a “fair use”.

Arguably, however, the nature and purpose of the uses are different and it will be interesting to see if the US Supreme Court’s decision in Andy Warhol Foundation v Goldsmith with its emphasis on the balancing nature of the inquiry will lead to a different outcome.

On the other hand, if the conduct is found to be a non-infringing use in the USA, Australian law does not have a corresponding, broadly based “fair use” defence. Can one argue that the AI is engaged in “research or study”? If not, what will the policy ramifications be for Australia? Will anyone develop AIs in Australia if training an AI in Australia does infringe copyright while it is not an infringement in, say, the United States? If it’s open slather, though, how will authors and publishers get paid?

Then, there’s the question of infringement. It seems it is possible in at least some cases to find out what an LLM has been trained on – but how long that will remain the case must be a question. Then, ordinarily, a copyright owner under our law would approach this by demonstrating a close degree of resemblance to a copyright work and the potential for access. Then, a court is likely to see if the alleged infringer can explain how it developed the material independently (or there is some other defence).

We do have judicial statements that there is no infringement in copying the style or the ideas. The successful cases of emulating the style are pretty rare but I guess the point of asking an AI to produce something in the style of … is that the AI is going to produce something new rather than merely copied. Ultimately, that is going to depend on comparing what is produced to one (or much less likely, more) copyright works.

Apart from the uncertainties about how our law will deal with these issues, it seems clear that careful consideration of how things are developing overseas is required and, in Dr Pangloss’ world, development of uniform approaches.

New Copyright and AI reference group Read More »

Attorneys can’t witness stat decs for IPONZ

In dismissing Lolicel’s opposition to the registration of SIMPLY DELISH by Stanmar, Assistant Commissioner Rendle excluded evidence witnessed by a patent attorney in Australia because a patent attorney is not authorised to witness a declaration under New Zealand’s Oaths and Declarations Act 1957. The Assistant Commissioner would have dismissed the opposition even if the evidence had been allowed.

Background

Stanmore applied to register SIMPLY DELISH, TMA No. 1163933, in respect of dessert mixes, dessert mousse, dessert puddings and the like in class 30.

Lolicel opposed, claiming use of the mark by Stanmore was likely to deceive or cause confusion and the application was filed in bad faith, respectively, Trade Marks Act 2002 (NZ) ss 17(1)(a) and (2). Lolicel in effect claimed it was the owner of the trade mark and Stanmore was merely its distributor. Stanmar claimed it was the owner and Lolicel was just its contract manufacturer.

Lolicel filed a statutory declaration by its trade mark attorney, a Ms Rimmer, in support of its opposition. Most of the contents of the declaration were based on information provided by Lolicel’s trade mark attorney in South Africa and so were hearsay. Ms Rimmer’s declaration was witnessed in Brisbane Australia by its Australian patent attorney.

Stanmare did not file any evidence in answer but requested a hearing.

(After the hearing was requested, Lolicel sought to file a declaration by one of its employees which “confirmed” the contents of Ms Rimmer’s declaration. As it was filed out of time and an extension of time had not been requested, however, this declaration was excluded from the evidence.)

The declaration was inadmissible

Section 160 of the New Zealand Trade Marks Act requires evidence before IPONZ to be in the form of an affidavit or a statutory declaration in the absence of a direction to the contrary. (There was no direction to the contrary.)

The Rimmer declaration purported to have been made and witnessed under s 11 of the Oaths and Declarations Act 1957 (NZ).

Section 11(1) of the Oaths and Declarations Act 1957 provides:

A declaration made in a Commonwealth country other than New Zealand shall be made before a Judge, a Commissioner of Oaths, a notary public, a Justice of the Peace, or any person authorised by the law of that country to administer an oath there for the purpose of a judicial proceeding, or before a Commonwealth representative, or before a solicitor of the High Court of New Zealand. (emphasis supplied)

The Assistant Commissioner contrasted the specific requirements of s 11 with the terms of s 10 and s 12, the latter of which authorised officers of the armed services of a Commonwealth country, or an ally, to witness both affidavits and statutory declarations.

So it was necessary to show that the patent attorney had authority under the law in Australia to administer an oath for the purposes of a judicial proceeding.

It is clear that a patent attorney can witness a statutory declaration under Australian law – at least for the purposes of matters arising under Commonwealth laws.[1]

The Assistant Commissioner agreed with Stanmore, however, that a statutory declaration was not interchangeable with an affidavit, the truth of which has been sworn on oath or affirmation.

Moreover, it may be noted, s 6(3) of the Statutory Declarations Act 1959 (Cth) provides that the section does not authorise the use of a statutory declaration in a judicial proceeding.

As the declaration was made in Brisbane, the Oaths Act 1867 (Qld) s 16A provides:

(1)A person’s affidavit may be witnessed by any of the following persons without a commission being issued for the purpose—

(a) a justice, commissioner for declarations or notary public under the law of the State, the Commonwealth or another State;

(b) a lawyer;

(c) a conveyancer, or another person authorised to administer an oath, under the law of the State, the Commonwealth or another State;

(d) if the affidavit is witnessed outside Australia—a person authorised to administer an oath under the law of the place in which the affidavit is witnessed;

(e) another person prescribed by regulation for this subsection.

and reg. 4 of the Oaths Regulations 2022 (QLD) prescribes only “a senior police officer”.

The Assistant Commissioner was also referred to s 186 of the Evidence Act 1995 (Cth) which identifies the persons authorised to witness an affidavit for the purposes of court proceedings in the federal jurisdiction as “any justice of the peace, notary public or Australian lawyer”.

As a result, the Assistant Commissioner concluded at [38] – [41] that Lolicel’s Australian patent attorney was not authorised to witness affidavits under Queensland or Australian Federal law. Accordingly, the Rimmer declaration was not admissible in the opposition proceedings before IPONZ.

Hearsay

There was a further problem with the Rimmer declaration. Ms Rimmer had made it on the basis of information supplied by Lolicel’s trade mark attorney in South Africa. In other words, it was hearsay.

The Assistant Commissioner referred to an earlier IPONZ decision, BitFlyer Inc v Coinbase Inc, in which another Assistant Commissioner, recognising that trade mark oppositions dealt with valuable property rights, explained at [36] that hearsay evidence should be given little, if any, weight:[2]

in trade mark oppositions the Assistant Commissioners take the tribunal approach but are guided by and rely on the Evidence Act when assessing the reliability and probity of evidence. A high standard of evidence is expected.

As there was no way of separating statements made by Ms Rimmer from her own knowledge and those which were hearsay, at [52] the Assistant Commissioner concluded that Ms Rimmer’s declaration was inadmissible or of no probative weight.

The Assistant Commissioner appears to have made an exception from this ruling for invoices and emails between the parties as “business records”. At [53], however, the Assistant Commissioner considered these materials, even if admitted, were not adequate to sustain Lolicel’s grounds of opposition.

The substantive grounds

Section 17(1)(a) required the opponent to show that there was an “awareness, cognisance or knowledge” of its mark in the relevant market at the application date to found a likelihood of deception or confusion.

The business records annexed to Ms Rimmer’s declaration did not provide a sufficient foundation for this as they did not address the typical indicators of the extent of use in New Zealand such as sales volumes or advertising and promotional expenditure on the brand in New Zealand.

The s 17(2) ground required Lolicel to show that Stanmore had made its application in bad faith.

At [62], the Assistant Commissioner considered this required Lolicel to prove it was the owner of the trade mark in New Zealand when Stanmore applied to register it and it was unreasonable for Stanmore to have made the application in those circumstances.

While there were email communications between the parties that showed they had dealings with one another before the priority date, these communications left ownership of the trade mark unclear. Accordingly, this ground failed too.

Short comment

As the Trans-Tasman arrangements mean that all Australian and New Zealand patent attorneys are admitted to practise in both Australia and New Zealand, regardless of whether they are based in New Zealand or Australia, precluding patent and trade mark attorneys based in Australia from witnessing statutory declarations for use in IPONZ proceedings seems anomalous as well as inconvenient for businesses.

Lolicel (Pty) Ltd v Stanmar International [USA] Inc. [2023] NZIPOTM 49


  1. Statutory Declarations Act 1959 (Cth) [s 8][s8] and, for prescribed persons, see the Statutory Declarations Regulations 1993 (Cth) reg. 4 and items 107 and 111 of Sch. 2.  ?
  2. Citing Lacoste v Crocodile International Pte Ltd [2014] NZIPOTM 26 at [18].  ?

Attorneys can’t witness stat decs for IPONZ Read More »

Lavazza qualità Oro – Oro tarnished or sanity restored

In what is surely only the first step on the long road to the High Court, Yates J has ruled that Lavazza qualità Oro coffee does not infringe Cantarella’s ORO trade mark – because Cantarella’s trade mark was invalidly registered.

As you probably recall, Cantarella famously has registered trade marks for ORO (and also CINQUE STELLE) for, amongst other things, coffee and coffee beverages.[1]

Lavazza has been importing Lavazza qualità Oro coffee into Australia since at least 1979. In about 2017, however, it introduced new packaging in the following form:

Cantarella sued Lavazza for infringing its ORO registrations contrary to section 120(1) of the Trade Marks Act by the 2017 and later years’ forms of packaging.[2] Lavazza denied infringement and also cross-claimed for revocation on the grounds (a) that Cantarella’s trade marks were not capable of distinguishing and/or (b) Cantarella was not the owner of ORO as a trade mark for coffee in Australia.

Infringement

Citing Gallo, Self Care, Woolworths v BP, Anheuser-Busch and Johnson & Johnson, Yates J found that the 2017 (and later years) forms of packaging involved use of ORO as a trade mark and so infringed – subject to any defences.

The issue on infringement was whether ORO was being used as a trade mark – a badge of origin. That fell to be assessed objectively in the setting and context in which ORO appeared on the packaging. Would the relevant public think it was being presented as an identifier of the trade source of the product?

At [375], Yates J did not agree with Cantarella that ORO was the dominant feature of the packaging but it was one (original emphasis) of the dominant features.

At [376], his Honour accepted that LAVAZZA was being used as a trade mark but that didn’t preclude ORO as presented (my emphasis) from also (my emphasis) being used as a trade mark. Instead, his Honour found both LAVAZZA and ORO functioned independently as trade marks – badges of origin.

The flavour of his Honour’s reasoning can be seen in his Honour’s rejection at [377] of Lavazza’s argument that ORO was used only as part of a composite mark – QUALITÀ ORO:

I do not accept that, in this packaging, the word “oro” is used as part of a composite mark QUALITÀ ORO. Whilst, on the packaging, the word “oro” is used in proximity to the word “qualità”, I do not accept that there is any necessary connection between the two words for trade mark purposes. In my view, for trade mark purposes, the two words function independently of each other, particularly given the different sizes and stylistic representations of the two words, with the word “oro” functioning as a trade mark. The word “qualità” is not functioning as a trade mark. Even if traders or customers were to associate the two words because of their proximity to each other on the packaging, it does not follow that the word “oro” is not functioning, in its own right, as a trade mark. As explained above, the existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark: [343] – [346] above.

Similarly, Yates J held the fact that the evidence showed numerous other traders were also using ORO in relation to their products did not avoid infringement. At [379], his Honour explained:

I do not accept that mere common use of a particular word in a given trade means that the word is precluded from functioning as a trade mark in that trade. The circumstances and manner of use of the word in question are critical to determining whether trade mark use of the word is involved. In the present case, whilst background circumstances cannot be ignored, the focus must be on the way in which the word “oro” is used on the impugned packaging.

So, subject to the cross-claim, Lavazza would infringe.

The cross-claims

Lavazza cross-claimed under s 88(2)(a) for revocation on the grounds that the registration of the ORO trade marks could have been opposed (a) under s 41[3] as not capable of distinguishing and/or (b) s 58, Cantarella was not the owner.

Not capable of distinguishing

Under either form of s 41, the central question was whether or not ORO was capable of distinguishing or did in fact distinguish Cantarella’s coffee – when the trade mark in question was filed.

Citing Lord Parker’s speech in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624,[4] Lavazza argued that ORO did not serve as a badge of origin because:

“other persons had registered and/or used in Australia, and/or were continuing to use in Australia, and/or without any improper motive would desire to use in Australia the word ORO in respect of their coffee products”

or, alternatively, because, as a significant part of the Australian public would understand ORO was a laudatory reference to “gold”, it was descriptive.

Yates J rejected the first argument about common usage as inconsistent with the High Court’s majority ruling in the earlier ORO case – which his Honour refers to as the Modena proceeding.

In the the Modena proceeding, Yates J pointed out in a lengthy discussion concluding at [303], the majority held that inherent capacity to distinguish was not tested only by other traders’ desire to use, or use of, the sign. Rather, the ‘ordinary signification’ of the sign had to be ascertained and the legitimacy of other traders’ use tested by reference to that. French CJ, Hayne, Crennan and Kiefel JJ explained:

70 In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

71 As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

At [415], Yates J summarised the ruling in the the Modena proceeding:

…. As the majority explained, the desire of other traders to use the word in question is a function of the meaning that that word bears, according to its ordinary signification, in relation to the goods or services for which the mark is, or is sought to be, registered. ….

Accordingly, it was not for a judge sitting at first instance in the Federal Court to treat the majority in the the Modena proceeding as dealing only with a “narrow” question of distinctiveness of “descriptive” signs rather than a “broader” question of common usage. Moreover, it was not permissible for a judge sitting at first instance to disregard the majority view and adopt the dissenting view of Gageler J.[5]

Yates J then turned to consider the “ordinary signification” of ORO.

First, (albeit at [457]), Yates J rejected Cantarella’s argument that the High Court’s decision was conclusive on the question. Lavazza was not a party to that proceeding so there was no question of stare decisis.

Secondly, in this context, it was significant that the public was a broad consumer market and not a specialised trade or market. At [424], therefore, his Honour explained how the “ordinary signification” of a word fell to be determined:

Bringing these strands together, for presently relevant purposes a word will have an “ordinary signification” if it has been received into Australian English and has a commonly understood and commonly shared meaning by ordinary members throughout the Australian community at large.

(See also [463].)

This would not be satisfied if the word was shown to be used just in a particular locality or by a particular trader or even traders. Nor merely where a numerically large number of people knew the meaning. This latter point proved decisive.

Lavazza led extensive evidence of the use of “oro” by Lavazza and other traders before the relevant priority dates; the promotion of its own LAVAZZA QUALITÀ ORO in Australia in conjunction with “gold”; the permeation of the Italian language and coffee culture in the Australian coffee market; direct evidence from those in the trade (most of whom happened to be Italian speakers) that oro means gold and is used as a quality indication; and census data.

Yates J accepted that a numerically large section of the Australian public did appreciate that “ORO” meant gold in Italian but the evidence fell short of establishing ORO had been accepted into Australian English throughout the Australian community at large in contrast to, say, bravo, encore, en route and tour de force. At [460], his Honour summarised:

Whilst I accept that, speaking generally, a numerically large number of persons in Australia might understand, by their knowledge of Italian or another Romance language, that the word “oro” means “gold” in English, I am far from persuaded that the evidence before me shows that, even at the present time, “oro” has been received into Australian English such that the ordinary signification of “oro” is “gold”. I am satisfied, therefore, that the word “oro” does not have an ordinary signification. It follows that I am not satisfied that, as at 24 March 2000 or as at 30 September 2013, the Australian public, at large, would have understood that the word “oro”, when used in relation to the registered goods, meant “gold”, or was a laudatory reference to “gold”, and, therefore, “premium quality”.

Not the owner

In contrast, his Honour found the evidence established that Cantarella was not the owner of ORO as a trade mark for coffee at the priority dates for its registrations contrary to s 58.

At [490] – [491], Yates J rejected an argument that Cantarella could not own ORO as a trade mark because it was descriptive or in common use or lacked distinctiveness. That was the realm of s 41, not s 58.

As you know, the owner of a trade mark for Australian purposes is the first person to use the sign as a trade mark for the relevant goods or services or, if there has been no use, to apply to register it with the intention of using it as a trade mark – [494] – [498] and [571].

As the case was run, this required first establishing when Cantarella first used ORO as a trade mark for coffee and then examining when someone else’s use first started (and was not abandoned).

Cantarella was able to establish by accessing archived back-up tape that a product code COVIBON3 with the product description “VITT BK ORO BNS” was created in its systems on 2 August 1996. The data also showed that the first sale of COVIBON3 was made on 20 August 1996 “to the firm of solicitors formerly known as Mallesons Stephen Jaques” with sales ensuing to other customers in subsequent months.

Cantarella also led evidence from an employee who during the 1990s worked as a machine operator. His evidence included that Cantarella’s products were packaged using rewind tape – pre-printed film supplied on a roll. These rolls were inserted into an automated in-line packaging machine to create the bags. Part of this process involved inserting a printing plate into the packaging machine to stamp on the film product specific information. He recalled inserting ORO brand plates in “the mid–1990s could be 1993 or 1994”. However, Yates J was not prepared to accept this dating as it was inconsistent with Canteralla’s case based on the creation of the COVIBON3 code.

Turning to the other side of the equation, Lavazza relied on its own use in relation to its LAVAZZA QUALITÀ ORO product or, alternatively, use by a third party CAFFÈ MOLINARI ORO.

As mentioned at the outset, Lavazza’s product has been imported and sold in Australia since 1979. For many years (before the packaging that sparked this litigation), the packaging was in the following form or variations:

This, however, was not use of ORO simpliciter as a trade mark (e.g. at [548]).

Lavazza did establish that Caffè Molinari SpA has been supplying its CAFFÈ MOLINARI ORO product in Australia since September 1995:

The evidence of the lengths involved in establishing this use is quite involved and discussed in detail at [117] – [193]. This included evidence of witnesses from Molinari, the supplier, and CMS / Saeco, the first importer.

A particular twist here is that Modena’s importation and sale of CAFFÈ Molinari Oro coffee was found to be infringing conduct in the earlier Modena proceeding. However, the evidence of prior use in this case was from different witnesses, more extensive than and different to the evidence from Molinari that Modena advanced in the Modena proceeding.

At [574], Yates J found that the use of ORO on the CAFFÈ Molinari Oro packaging was use as a trade mark:

I reach this conclusion having regard to the size, colour, positioning, and prominence of the word “oro” on the packaging in relation to the other packaging elements. I observe that the word “oro” on that packaging is as conspicuous as the other trade mark used—CAFFÈ MOLINARI. I do not accept Cantarella’s contention that the word “oro” is used only as an element in the composite mark MISCELA DI CAFFÈ ORO, and not as a trade mark its own right.

However, the use of ORO BAR on the 3 kg packaging was not trade mark use of ORO alone – ORO BAR was not the same as, or substantially identical with ORO.

His Honour then went on to reject Cantarella’s contention that Molinari had abandoned its use of the trade mark.

At [581] – [582], Yates J recognised that ownership of a trade mark could be lost by abandonment – which required more than “mere” non-use or slightness of use. Despite the changes in Molinari’s packaging over the years, however, Yates J found Molinari had been using the ORO mark continuously as a matter of fact.

Finally, consistently with the decision in Anchorage Capital, Yates J ruled it was inappropriate to exercise his discretion under s 88(1) against non-cancellation of Cantarella’s mark.

In Anchorage Capital, the Full Court considered it was not in the public interest to allow someone, who was not the owner of the trade mark when they applied to register it, to jump the queue. Similarly, at [599], Yates J considered that ownership cannot (my emphasis) depend on the nature and scope of Cantarella’s reputation. Nor should other traders be vexed by use of the registrations “such as happened in the present case”.

Obiter dicta

As it was not necessary for his decision, Yates J commented only briefly on Lavazza’s defences to infringement based on prior use, good faith description as per s 122(1)(b), a right of use (s 122(1)(e)) or honest concurrent user through the operation of s 122(1)(f) or (fa).

Perhaps the most interesting comment is that Yates J, who was I think a member of the Working Party to Recommend Changes to the Australian Trade Marks Legislation[6], suggested at [647] – [649] that the orthodoxy prevailing since McCormick that honest concurrent use does not defeat an opposition on grounds of s 58 or s 60 should be reconsidered. Referring to Project Blue Sky on statutory construction, his Honor noted at [647]:

However, giving s 58 an operation that is independent of s 44(3) robs the latter provision of practical effect. If the registered owner of a trade mark is truly the owner of that mark, every application under s 44(3) can be met with a s 58 objection by the registered owner. There is, therefore, an apparent conflict between the operation of s 44(3) and the operation of s 58 of the Act.

Yates J also drew attention to other drafting difficulties with s 122(1)(f) and (fa). At [642] for example, his Honour explained:

To explain, the defence under s 122(1)(f) is directed to the case where the infringer has used the very mark that is registered (in this case, the ORO word mark), and the Court is satisfied that the infringer would obtain registration of that mark in that person’s name. On the other hand, the defence under s 122(1)(fa) is directed to the case where the infringer has not used the mark that is registered, but a mark that is substantially identical with or deceptively similar to the mark that is registered, and the Court is satisfied that the infringer would obtain registration of the substantially identical or deceptively similar mark in that person’s name. (my emphasis)

Yates J thought that this wording meant that only the defence under s 122(1)(f) would be available and it would be available only to “LL SpA” – the Italian parent of the Lavazza group. However, it was the local subsidiaries, Lavazza Australia and Lavazza OCS, which were being sued for infringement. The suggestion being that, despite s 7 and s 26, the defence was unavailable to the subsidiaries.

In any event, his Honour’s findings on Molinari’s ownership would preclude the Lavazza companies achieving registration.

I have no inside information about the commercial goals or intentions of any of the parties and, with respect, I would not want to be taken as suggesting Yates J has messed up in any way but one would think that, given Cantarella pursued the Modena proceedings all the way to the High Court, an appeal is likely to be forthcoming.

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258


  1. For ORO, Trade Mark No. 829098 registered since 24 March 2000 and also Trade Mark No. 1583290 registered since 30 September 2013 (which is also the same date the Full Federal Court delivered judgment upholding Modena’s appeal in the case the High Court subsequently overruled.  ?
  2. In 2022, Lavazza also started importing into Australia capsules for Nespresso machines. The capsules were gold and had ORO emblazoned in black on them and these were added to the complaint.  ?
  3. Given the different dates of the two registered trade marks, the two different version of s 41 were in play. For the “old” version, see [393].  ?
  4. Quoted in Lavazza at [292].  ?
  5. Should special leave to appeal this proceeding eventually be granted, someone will no doubt notice that only Gageler J, now Gageler CJ, remains of the Court that decided the the Modena proceeding.  ?
  6. Despite its centrality to understanding what was intended to be achieved, I don’t think the Report itself is actually available online – which (if I am right) is something IP Australia should surely rectify.  ?

Lavazza qualità Oro – Oro tarnished or sanity restored Read More »

Copyright & Designs Update 2023

Copyright & Designs Update 2023 Read More »

To be estopped or not …

O’Bryan J has ruled that Vehicle Management Systems (VMS) is not estopped from seeking revocation of Orikan’s patent despite earlier opposition proceedings in which VMS could have raised the allegations, but did not.

Under the pre Raising the Bar versions of the Patents Act, it was clearly established that an unsuccessful opponent was not estopped from subsequently seeking revocation on the same grounds. This was at least because of the different onus: an opponent had to show that it was “practically certain” the patent application was invalid to succeed whereas a party seeking revocation only had to satisfy the balance of probabilities standard.[1] The Raising the Bar amendments, however, sought to change the burden at the examination and opposition stages to the balance of probabilities standard. The debate since then has been whether this meant an unsuccessful opponent was estopped from seeking revocation on the same grounds.

Overview

Orikan is the registered owner of Australian Patent No. 2013213708 titled “Vehicle Detection”, having been assigned the patent by SARB Management Group. It has sued VMS for infringement. In addition to denying infringement, VMS has cross-claimed seeking revocation of the Patent. So, this is another campaign between VMS and SARB-related entities over competing systems and apparatus to detect cars which have overstayed parking.

In this particular application, Orikan was seeking to have VMS’ cross-claim stayed on grounds of Anshun estoppel or, alternatively, as an abuse of process.

Some background

Back in happier days, VMS and SARB had explored jointly developing systems for detecting vehicles which were parked without paying the fee or after the alotted time had expired.

Things didn’t work out and, by a decision handed down in 2013, VMS successfully sued SARB for infringement of one of VMS’ patents for vehicle detection systems.

In 2008, however, SARB had applied for its own patent. That application led to two divisional patents: Australian Patent No. 2011101179 (Innovation Patent), which was filed in 2011, and secondly the Patent the subject of these proceedings, which was filed in 2013. As you might suspect, there was considerable overlap between the claims of the Innovation Patent and the Patent.

In 2012, SARB sued VMS for infringement of the Innovation Patent. VMS defended, including a cross-claim for invalidity on grounds including lack of novelty, secret use and lack of sufficiency and best method. This proceeding settled before trial in 2014.

In 2016, VMS opposed the grant of the Patent. That opposition failed in both the Office and the Court.[2] The Opposition Proceeding in the Court involved extensive evidence and 5 days’ trial. According to O’Bryan J, however, it did not involve the grounds of invalidity or particulars that VMS sought to argue in this proceeding.

In addition to challenging the priority date, clarity and sufficiency grounds, VMS sought to revoke the Patent in this proceeding on grounds of lack of novelty, secret use and failure to disclose the best method.

Given this prior history, Orikan contended VMS’ cross-claim should be stayed on grounds of either Anshun estoppel or abuse of process.

Legal tests

The parties were not really in dispute about the principles.

Anshun estoppel

At [26], O’Bryan J explained:

Anshun estoppel operates to preclude the making of a claim, or the raising of an issue of fact or law, in a subsequent proceeding if the claim or issue was so connected with the subject of an earlier proceeding that it would have been unreasonable, in the context of the earlier proceeding, for the claim not to have been made or the issue not to have been raised in that proceeding …. [3]

Thus, at [28] his Honour considered three conditions needed to be satisfied:

(1) the relevant cause of action, defence or issue must be one that could have been raised in the earlier proceeding;

(2) the same or substantially the same facts must arise for consideration in the second as in the first proceeding; and

(3) it must have been unreasonable in all the circumstances for the party not to have raised the issue in the first proceeding – i.e. it is not enough that the issue could have been raised; in all the circumstances it should have been raised.

The third requirement means the test has an element of discretion and evaluation.

The requirement of “unreasonableness” is a “severe test” and not to be made lightly. O’Bryan J noted one situation where unreasonableness was likely to be established is where a judgment or order made in the second proceeding was likely to conflict with a judgment or order in the earlier proceeding. But, the doctrine is not limited only to such situations.

Abuse of process

Abuse of process is not capable of explanation in terms of closed categories. At [38], O’Bryan J noted the principles governing its application are broader and more flexible than those governing estoppels.

In general terms what needs to be shown is that the use of the Court’s procedures would be unjustifiably oppressive to the party or would bring the administration of justice into dispute. At [39], O’Bryan J noted that this brought into play considerations of the overarching purpose of civil litigation as set out in s 37M.

Why O’Bryan J dismissed Orikan’s application

At [71], O’Bryan J accepted that Orikan, as the assignee of the rights in the Innovation Patent and the Patent, could take the benefit of an Anshan estoppel arising from the earlier proceedings. It had not been a party to the earlier proceedings but, as the assignee, was a “privy” of the SARB entity which had been.

It was not in dispute between the parties that VMS could have raised the invalidity issues it now wished to argue in the earlier Opposition Proceeding. The matters VMS now sought to rely on were either known to it or it ought to have been aware of them. In fact, the grounds and particulars had been asserted by VMS in the Innovation Patent Proceeding and, while they were different patents, they were both derived from the same parent and the claims were substantially similar.

Nonetheless, O’Bryan J considered that it was not unreasonable for VMS not to have raised the issues it now sought to agitate in the Opposition Proceeding.[4]

First, at [75] his Honour considered there was not a relevant risk of inconsistent judgments. His Honour accepted that a finding that the Patent was invalid in this proceeding would be inconsistent with the result in the Opposition Proceeding. As the grounds and particulars relied on in this proceeding were different, however, the basis of an invalidity finding in this proceeding would be different to the basis of the findings in the Opposition Proceeding.

Secondly, O’Bryan J considered at [76] there was a fundamental difference between the nature and consequences of an opposition proceeding and a revocation proceeding. The Opposition Proceeding involved an election by VMS to challenge the Patent on limited grounds. In contrast, in this proceeding, VMS was being sued for infringement and so compelled to come to court. Later, at [80] O’Bryan J noted that his conclusion might have been different if VMS had initiated the proceedings rather than being the respondent.

O’Bryan J also noted that the Innovation Patent Proceeding had not proceeded to trial and so the invalidity claims had not been tested in court.

Thirdly, O’Bryan J considered that allowing the invalidity claims to go forward in this proceeding would not result in more costs and delay than would have been the case if the claims had been brought in the Opposition Proceeding.

There was one overlap with the Opposition Proceeding in that one of Orikan’s witnesses, a Mr Del Papa, had been cross-examined about a particular document and both Mr Del Papa and the document were involved in this proceeding. However, the relevance and cross-examination in the Opposition Proceeding was limited to an issue of entitlement, not in issue in this proceeding.

Finally, O’Bryan J did not place “significant weight” on the public interest in the integrity of the Register or the fact the Act specifically provided for pre-grant oppositions.

O’Bryan J dismissed the abuse of process attack for essentially the same reasons.

An observation

Interestingly, while O’Bryan J did have regard to the in rem nature of patents, the public interest in the integrity of the Register and the specific provision in the Act for pre-grant opposition (and the change in onus), his Honour did not give those considerations much weight. His Honour eschewed adopting a general principle and instead applied an approach very heavily based on the particular facts of the case.

For example, it is often said (as is the case) that defeating an opposition is not a guarantee that the patent is valid. That is also true of an unsuccessful revocation proceeding. The fact one person’s revocation proceeding failed does not preclude anyone else seeking to revoke the patent. And there are cases where the second challenger succeeded despite the failure of the first.

In considering the fundamental difference between the nature and consequences of opposition proceedings and infringement/revocation proceedings, O’Bryan J emphasised VMS’s choice to fight the Opposition Proceeding on limited grounds in light of the nature and purpose of opposition proceedings. At [76], his Honour explained:

But the Opposition Proceeding involved an election by VMS to challenge the validity of the Patent. It did so on limited grounds, and did not raise the grounds and particulars of invalidity that had been raised in the earlier Innovation Patent Proceeding. There is no proper basis to criticise that election. …. The election made by VMS confined the scope of the issues in dispute in the Opposition Proceeding and therefore the costs and time required for its determination. That course was consistent with the overarching purpose of civil litigation expressed in s 37M of the Federal Court of Australia Act 1976 (Cth). It was also consistent with the character and purpose of pre-grant opposition proceedings, which are intended to provide a swift, economical means of settling disputes: Genetics Institute at [19]. Although it is desirable to avoid a multiplicity of proceedings and to ensure that parties address, as far as possible, the issues arising between them in a single proceeding, parties ought not to be encouraged to raise each and every possible claim or issue irrespective of the time and cost associated with doing so. Anshun estoppel must operate conformably with the demands of s 37M, as well as the substantive statutory context in which it is said to arise. (Emphasis supplied)

This suggests his Honour’s conclusion might reflect a reaction to Beach J’s heartfelt paragraph 1784. It is also consistent with a number of extra-judicial comments encouraging some effort on the part of parties to simplify proceedings. It does seem a little odd, however, that an opposition proceeding taking up 5 days’ of the Court’s time and a carefully reasoned 274 paragraph judgment might qualify as a swift economical means of resolving the dispute between the parties especially when the consequences lead to a further infringement proceeding with what promises to be an even more involved revocation component.

Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited [2023] FCA 1031


  1. In at least one case (which I haven’t been able to find again in the time available), the judge did warn the opponent / revoker that it was at risk of indemnity costs if its revocation action also failed.  ?
  2. There was also an appeal to the Full Court which, by the time of the hearing, was limited to the issue of entitlement.  ?
  3. Citing Anshun at 598, 602–3 (Gibbs CJ, Mason and Aickin JJ); Tomlinson v Ramsey Food Processing Pty Limited (2015) 256 CLR 507 at [22] (French CJ, Bell, Gageler and Keane JJ).  ?
  4. Yes I realise that double negatives are “awkward” (to say the least) but that the point!  ?

To be estopped or not … Read More »

A cautionary trade mark tale

In a rare case of a successful opposition under s 59, Energy Beverages has successfully opposed in the Court KMA’s attempt to register KANGAROO MOTHER.

Overview

As you might recall, Energy Beverages is the owner of registered trade marks in Australia for MOTHER in respect of amongst other things, non-acoholic beverages in class 5 and pharmaceutical and veterinary preparations, dietetic substances and food and beverages for babies in class 32.[1]

A New Zealand company, Erbaviva, applied to register KANGAROO MOTHER for a range of goods in classes 5, 29, 30, 31 and 32. Subsequently, the application was assigned to KMA. A Mr Zheng was the sole director and shareholder of both companies.

Energy Beverages’ opposition to the application on the basis of ss 42(b), 44 and 60 of the Trade Marks Act was unsuccessful. Energy Beverages “appealed” the Delegate’s decision to the Federal Court on the basis of s 59, s 44 and s 60.[2]

Secion 59

Section 59 provides:

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

which mirrors s 27.

Unlike s 92(4)(a), however, the person opposing registration under s 59 bears the onus of proving the lack of the requisite intention.

In very broad terms, this requires demonstration that the applicant does not have “a resolve or settled purpose at the time the application was filed to use the trade mark as a trade mark in relation to the relevant goods or services. A mere ”speculative possibility“ or ”a general intention to use the mark as some future but unascertained time” is not enough.

What happened

Before he incorporated Erbaviva and later KMA, Mr Zheng worked as the “Assistant to the Group Chairman” of NZ Skin Care Company. NZ Skin Care Company, as its name suggests, sold a range of skin care products and also home cleaning products.

The Group Chairman Mr Zheng assisted was a Mr Liu. Mr Liu was also the Chairman of a Chinese company, Shanghai Urganic. Mr Liu, however, was not a director of NZ Skin Care Company and Shanghai Urganic was not a shareholder in NZ Skin Care Company (although later it did become the ultimate shareholder of that company).

While he was still working for NZ Skin Care Company, Mr Zheng incorporated Erbaviva to sell “Erbaviva” brand skin care products and, after the trade mark application in issue had been filed, KMA. Neither company, however, has ever traded.

In the course of 2018, Erbaviva applied for and became registered as the owner of trade marks for a “Kangaroo Mother” logo and Kangaroo Mother in respect of a range of goods in classes 3, 5 and 21.[3]

In February 2019, Mr Zheng received an email from a Shanghai Urganic employee, Ms Lim,[4] informing him that Director Liu had “mentioned” we should apply for a food trade mark for “Kangaroo Mother”. Ms Lim supplied a catalogue for another company’s products to illustrate the goods under consideration. This exchange led to the application the subject of the appeal.

After some back and forth, Mr Zheng contacted Erbaviva’s then trade mark attorneys with instructions to file a trade mark application in Australia for a range of goods in classes 5, 29, 30, 31 and 32. (With the exception of “chocolate flavoured cola drinks”, Mr Zheng had simply cut and pasted the specification for another, unrelated company’s trade mark he had found on the IPONZ site.)

The attorney indicated he could file for this range of goods but proposed he amend it to ensure that Erbaviva had “the widest scope of protection in those classes.” So, after Mr Zheng approved that proposal, the application wound up in the form under opposition.[5]

What O’Callaghan J found

As the application was filed in Erbaviva’s name, the relevant intention was Erbaviva’s at the time the application was filed. That is, the question was whether or not Erbaviva had an intention to use the trade mark in any of the ways specified in s 59 when it filed the application.

O’Callaghan J held it did not.

First, the goods specified in the application as filed were much broader than those suggested by Ms Lim or proposed to the attorney by Mr Zheng.

Secondly, in cross-examination Mr Zheng’s evidence was that he did not regard Ms Lim’s report about what Director Liu “mentioned” as an instruction.

Thirdly, there were no documents produced through discovery or evidence of any plan or proposal beyond use for “gel candies, pressed candies, drops, powdered dairy products, solid beverages or capsules”.

Fourthly, Mr Zheng had simply cut and paste the specification he proposed to the attorney in a matter of minutes.

Fifthly, although the application had been made over four years ago, there was no evidence of any use or preparations to use.

Sixthly, there was no evidence to support the contention that Shanghai Urganic, NZ Skin Care Company and Erbaviva were part of a “conglomerate” (see “secondly” above).

Mr Zheng’s evidence unfortunately only went as far as claiming Erbaviva intended to use or authorise another company to use. So submissions that it intended to assign to KMA on its incorporation did not fly.

The evidence also included a non-disclosure agreement with an Australian manufacturer of various goods, but the counterparty was NZ Skin Care, not Erbaviva.

So O’Calaghan J found the s 59 ground proven and allowed the appeal to refuse registration. By way of obiter, O’Callaghan J would also have upheld the opposition grounds under s 44 and s 60.

Some observations

As noted above, successful oppositions under s 59 are not very common in view of the onus – unlike removal actions under s 92 in which s 100 places the onus on the trade mark owner to prove use.[6] And this case seems to have been particularly assisted by Mr Zheng’s problematic evidence and the amorphous nature of the relationship(s) with Director Liu.

That said, the first thing to note is that Energy Beverages did not pursue the ground before the Registrar but only on “appeal” where the Court procedures of discovery and cross-examination were deployed.

Next, it is significant that this was an opposition rather than an application under s 92. This is because O’Callaghan J followed Yates J’s decision in Apple (at [232]) and accepted that the whole application should be rejected if it failed in respect of any specified goods. At [28]:

There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole….

In contrast, an application under s 92 may often result in removal of some, but not all, goods or services.

Thirdly, recognising this problem, KMA made an application on the penultimate day of the trial under s 197 to amend the specification of goods for a much more limited scope.

At [35], O’Callaghan J accepted that he should exercise this power in similar manner to that exercised by the Court when considering amendments to patents under s 105 of the Patents Act. That is, the power to amend was discretionary and required consideration of all the circumstances including when the owner became aware of the need to amend and any explanation for delay.

At [36] – [38], O’Callaghan J refused the request. KMA had been aware that Energy Beverages relied on the Apple approach from at least the opening. KMA failed to provide any explanation for its delay or the basis on which it proposed to exclude some goods but not others. Also, Erbaviva had deliberately sought the widest scope of protection possible, much broader than its own instructions.

In that connection, it is unusual to get the communications between the client and the attorney. While it is part of our jobs to ensure the client is getting appropriate protection, this case should serve as a warning against being too enthusiastic.

The question of discovery is also instructive. In October 2022, KMA had made discovery of 5 documents and a number of other documents over which privilege was claimed.

Two days before trial, however, KMA announced it proposed to rely on documents over which it had previously claimed privilege and, in the course of the trial just before Mr Zheng’s cross-examination, KMA sought to rely on a “further, extensive, tranche of documents which ought to have been produced in answer to the order for discovery”. At [62], O’Callaghan J invoked Aon Risk and refused that attempt on the grounds of prejudice and KMA’s failure to adequately explain the delay.

Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 (O’Callaghan J)


  1. The class 32 goods were specified in TM No 1320799 for the “Mother” mark in gothic script.  ?
  2. Because the “appeal” is a hearing de novo, it is possible to raise grounds not raised before the Registrar.  ?
  3. After the trade marks were assigned to KMA, the logo mark has subsequently been removed for non-use under s 92 on application by Energy Beverages. KMA did not seek to defend the non-use application.  ?
  4. Although not an employee of NZ Skin Care Company, she did have the use of a NZ Skin Care Company email account.  ?
  5. Reasons for decision at [93] – [94].  ?
  6. S 92(4)(a) can be rebutted by showing use in good faith after the application was filed. And s 92(4)(b) proceedings can be brought only after the expiry of the period specified in s 93 (which is different depending on whether the application was filed before or after the Productivity Commission Implementation Act amendments).  ?

A cautionary trade mark tale Read More »

Copyright and another AI

Judge Howell in the District Court for the District of Columbia (USA) has rejected Dr Thaler’s attempt to register copyright in “A Recent Entrance to Paradise”.

Dr Thaler – well-known for his attempt to obtain patent protection for some kind of “fractal” bottle “invented” by DABUS – attempted to register[1] a copyright in the United States for “A Recent Entrance to Paradise”:

In his application to the Register of Copyrights, Dr Thaler stated the work had been “autonomously created by a computer algorithm running on a machine” – an AI which Dr Thaler named “Creativity Machine” – and nominated himself as the owner of the copyright in the computer-generated work “as a work-for-hire the owner of the Creativity Machine.”

The Register of Copyrights rejected the application on the basis that copyright law requires a human author and the “Creativity Machine” was not human.

Dr Thaler applied for administrative law review. Judge Howell affirmed the Register’s ruling.

Judge Howell followed a number of earlier decisions which required a human author. Her Honour noted (e.g. slip op. 10):

The act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception. Non-human actors need no incentivization with the promise of exclusive rights under United States law, and copyright was therefore not designed to reach them.[2](emphasis supplied)

Judge Howell’s ruling, however, is very narrow.

The fact that the case was an administrative law review is significant. As the case was an administrative law review, the only question was whether the Register acted arbitrarily, capriciously or otherwise in violation of the Administrative Procedure Act on the basis of the administrative record before the Register.

On that basis, the case failed.

In the course of the proceeding before Judge Howell, Dr Thaler attempted to introduce new facts (which may seem familiar to those of you following the patent debate). Dr Thaler devoted a “substantial portion” of his submissions to various theories about how ownership of any copyright transferred to him by operation of the “work made for hire” or common law property principles. (Slip op. footnote 1):

[Dr Thaler] elaborates on his development, use, ownership, and prompting of the AI generating software in the so-called “Creativity Machine,” implying a level of human involvement in this case entirely absent in the administrative record. ….

These additional facts were irrelevant on the administrative law review presented (Slip op. 14):

Plaintiff’s effort to update and modify the facts for judicial review on an APA claim is too late. On the record designed by plaintiff from the outset of his application for copyright registration, this case presents only the question of whether a work generated autonomously by a computer system is eligible for copyright. In the absence of any human involvement in the creation of the work, the clear and straightforward answer is the one given by the Register: No.

If Dr Thaler’s submissions about his development, use, ownership and prompting of “Creativity Machine” had been relevant, it might possibly lead to a different conclusion.

As noted above, Judge Howell did opine that non-human actors do not need the incentivization of exclusive rights to generate materials. But Judge Howell also noted that the law had developed to recognise copyright in the “mechanical reproduction” of a scene by a camera because that reproduction resulted from “human involvement in, and ultimate creative control over, the work ….”[3]

Judge Howell noted that a case raising issues such as those Dr Thaler belatedly attempted raise would give rise to complex issues:

Undoubtedly, we are approaching new frontiers in copyright as artists put AI in their toolbox to be used in the generation of new visual and other artistic works. The increased attenuation of human creativity from the actual generation of the final work will prompt challenging questions regarding how much human input is necessary to qualify the user of an AI system as an “author” of a generated work, the scope of the protection obtained over the resultant image, how to assess the originality of AI-generated works where the systems may have been trained on unknown pre-existing works, how copyright might best be used to incentivize creative works involving AI, and more.[4]

All of these considerations seem likely to be relevant under Australian law for the subsistence of copyright in original works.[5]

In her letter rejecting the “Zarya of the Dawn” application, the Register did reject the claim to copyright made on the basis of the sort of facts Dr Thaler wished to raise.

I guess we can expect Dr Thaler to seek to register some new production by the “Creativity Machine” with a more extensive record.

Stephen Thaler v Shira Perlmutter (DCDC 23 Aug 2023 Case 22–1564)


  1. The USA is one of the very few countries which operate a system to register copyright. Even in the USA, registration is not madatory but, in the case of “US Works”, registration is a requirement before an infringement action can be brought in the USA and also to qualify for statutory damages: 17 USC §411 and §412. 17 USC [§101][101] defines “United States work” to mean: (a) a published work that is first published in the United States; first published simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States; first published simultaneously in the United States and a foreign nation that is not a treaty party; or first published in a foreign nation that is not a treaty party, and all of the authors of the work are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual work legal entities with headquarters in, the United States; (b) an unpublished work where all the authors of the work are nationals, domiciliaries, or habitual residents of the United States, or in the case of an unpublished audiovisual work, all the authors are legal entities with headquarters in the United States; or (c) a pictorial, graphic, or sculptural work incorporated in a building or structure that is located in the United States. So, if you publish your work first overseas and not simultaneously in the United States and the authors are not US citizens or residents, the obligation to register will not usually apply. See generally Circular 1. ?
  2. Footnote 2 in the Opinion also includes a fun quote from Justin Hughes, Restating Copyright Law’s Originality Requirement, 44 COLUMBIA J. L. & ARTS 383, 408 “this debate is an unnecessary detour since “[t]he day sentient refugees from some intergalactic war arrive on Earth and are granted asylum in Iceland, copyright law will be the least of our problems.”  ?
  3. “A camera may generate only a “mechanical reproduction” of a scene, but does so only after the photographer develops a “mental conception” of the photograph, which is given its final form by that photographer’s decisions like “posing the [subject] in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation” crafting the overall image. Human involvement in, and ultimate creative control over, the work at issue was key to the conclusion that the new type of work fell within the bounds of copyright.” citing Burrow-Giles Lithographic Co. v. Sarony 111 U.S. 53, 59 – 60 (1884).  ?
  4. (Slip op. 13) citing a letter from Senators Tilllis and Coons to the Director of the USPTO and the Register of Copyrights calling for the establishment of a national commission on AI.  ?
  5. See e.g Telstra v PDC at [118] – [119] and [169].  ?

Copyright and another AI Read More »

Motherland, Mothersky and Mother

The Full Court has allowed Energy Beverages’ (EB) appeal opposing Canteralla’s registration of MOTHER as a trade mark for coffee and related products. However, the Full Court rejected EB’s appeal against the removal of its MOTHERLAND trade mark for non-use. In the process, the Full Court provided helpful clarification of the role of Trade Marks Act s44(3)(b) “other circumstances”.

Some background

Cantarella applied to register MOTHERSKY in class 30 in respect of coffee, coffee beans and chocolate, coffee beverages and chocolate beverages and in class 41 in respect of coffee roasting and coffee grinding (TMA 1819816).

EB – the producer and distributor of the MOTHER energy drink – opposed, relying on its prior registered trade marks for MOTHERLAND (TM 1345404), MOTHER LOADED ICED COFFEE (TM 1408011) and MOTHER (TM 1230388) all registered, amongst other things, for non-alcoholic beverages.

Cantarella countered by seeking the removal of the MOTHERLAND and MOTHER LOADED ICED COFFEE marks for non-use under s 92 and deleting coffee beverages and chocolate beverages from its specification of goods.

The delegate ordered removal of MOTHERLAND (here) and MOTHER LOADED ICED COFFEE (here) from the Register for non-use. The delegate also dismissed EB’s opposition to the registration of MOTHERSKY. On appeal, the primary Judge upheld the delegates’ decisions.

EB sought leave to appeal the decisions in respect of MOTHERLAND and allowing the registration of MOTHERSKY. The Full Court refused leave to appeal the MOTHERLAND decision but allowed leave and upheld the appeal against registration of MOTHERSKY.[1]

MOTHERLAND

At [61], the Full Court quoted the well settled principles for trade mark use from Nature’s Blend:

(1) Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at 19; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [43] (Lion Nathan).

(2) A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347–8; 101 ALR 700 at 723; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).

(3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; 1B IPR 523 at 532 (Shell Co).

(4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.

(5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).

(6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

The problem for EB was that its product is the energy drink MOTHER and its uses of MOTHERLAND focused on it being a fictional fantasyland tailored to “MOTHER-drinking” consumers.

An example of its use, taken from one of two commercials using MOTHERLAND, is:

Another example of use – the description in the “About Us” page of EB’s YouTube channel was “Welcome to MOTHERland”.

The Full Court considered that EB used only MOTHER as a trade mark in respect of energy drinks; MOTHERLAND was just used as the name of the fictional theme park and no more. Accepting that there could be more than one trade mark used in relation to a product, in context MOTHERLAND was not being used as a trade mark to indicate the trade source of the drink. At [67] – [68]:

The depiction of MOTHERLAND in the commercial with the prominent MOTHER in the well-known gothic script representation in contradistinction to LAND, appended in plain red font, emphasises the use of the distinctive gothic script MOTHER mark as the only mark possessing the character of a brand. MOTHERLAND was the name of the fictional theme park, and no more.

The presence of the dominant gothic script MOTHER mark each time MOTHERLAND appears in the commercial, including as the central part of the mark itself, is part of the context relevant to the assessment of the role of MOTHERLAND: Anheuser at [191]. The focus on the well-known gothic script MOTHER, including as part of MOTHERLAND, supports the conclusion that the gothic script MOTHER is the only mark being used to distinguish the MOTHER energy drinks in the commercial from the energy drinks of others.

There was a further problem with reliance on the commercials. The commercials had been run on television well before the non-use period. The commercials had also remained publicly available during the non-use period as they had been uploaded to EB’s YouTube and Facebook pages. There was no evidence, however, that anyone in Australia had accessed the commercials on either site. At [76], the Full Court explained:

Under existing authority, which has not been challenged in the present application, the mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia …

citing Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471; 143 FCR 479; Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519; Christian v Societe Des Produits Nestle SA (No 2) [2015] FCAFC 153; 327 ALR 630.

Consequently, EB failed to demonstrate that the primary judge’s order to remove MOTHERLAND for non-use in respect of non-alcoholic beverages etc. was attended by sufficient doubt to warrant leave being granted to appeal.

MOTHERSKY

Despite the deletion of coffee beverages from Cantarella’s specification of goods, both parties conducted the proceedings on the basis that “coffee” included coffee beverages, not just the product of the coffee plant or coffee beans.

In contrast to the MOTHERLAND proceeding, the Full Court found that the primary judge made two material errors. First, his Honour had examined whether coffee beverages were similar goods to energy drinks and the powders and syrups for bottling energy drinks and concluded that the respective products had fundamentally different taste and flavour and were presented for sale and consumed in different circumstances.

This was in error. Section 44(1) calls for comparison of Cantarella’s “coffee” across the full scope of its normal and fair meaning to the full scope of EB’s specification. The correct comparison therefore was between “coffee” and “non-alcoholic beverages”.

Given the way the case had been conducted, the Full Court had little difficulty concluding that coffee beverages were “non-alcoholic beverages” within the scope of EB’s registration.

The fact that coffee as a beverage was classified in class 30 and not class 32 was a matter of administrative convenience and, at [132], irrelevant given Cantarella contended “coffee” covered “coffee beverages”.

Further, contrary to the primary judge’s approach, Cantarella’s claim for “coffee beverages” was not limited to “pure” coffee but extended across a range of beverages. Cantarella argued that coffee beverage did not include coffee flavoured milk. The Full Court accepted at [129] that there may be “a penumbra of uncertainty” about when a coffee flavoured beverage is not “coffee”. Treating “coffee” as meaning “coffee beverage”, however, at [128]:

there is nothing in the specification, so construed, which would limit the meaning of “coffee” to any particular coffee beverage or to any particular kind or type of coffee beverage. For example, there is nothing to limit “coffee” to black coffee as opposed to white coffee or coffee made with milk. There is nothing to limit “coffee” to coffee that does not include some additive such as, for example, a flavoured syrup. Further, there is nothing to limit “coffee” to a hot beverage or a freshly-brewed beverage as opposed to a cold or iced beverage. Further still, there is nothing to limit “coffee” to coffee produced by a particular process or prepared in a particular way, or to coffee packaged and promoted in a particular way. There are many permutations of what constitutes “coffee” as a beverage. Thus, coffee beverages cover a range of goods.

Further still, there was a sufficient body of evidence demonstrating that, at the priority date of the MOTHERSKY application, drinks such as pre-packaged iced coffee were regarded in the trade as non-alcoholic beverages and, further, of overlap between the trade channels through which coffee beverages and energy drinks were marketed and sold.

Secondly, the Full Court considered the primary judge materially erred when undertaking the deceptive similarity comparison.

The Full Court recognised that the comparison the test of deceptive similarity called for involved matters of judgment and degree about which opinions could reasonably differ. In the absence of legal error, mere difference of opinion was not enough. In undertaking the comparison, however, the primary judge’s assessment was heavily coloured by his Honour’s conclusion that “coffee beverages” and the goods covered by EB’s MOTHER registration were not the same or even of the same description.

Further, the primary judge erred by comparing only the specific way Cantarella actually used its trade mark with the specific way EB used its mark rather than comparing how notionally the competing marks could fairly be used across their full scope.

Undertaking the comparison themselves, the Full Court concluded that MOTHERSKY was deceptively similar to MOTHER.

First, at [167], while “mother” is a commonly used English word, it is not in any way descriptive of “non-alcoholic beverages” and was inherently distinctive of such goods. This was of considerable importance in the assessment. (emphasis supplied)

Secondly, at [168], “mother” was wholly incorporated in MOTHERSKY and did not lose its identify merely by the addition of “sky”.

Thirdly, at [169] to [170], “sky” did not have a well-understood meaning when added to “mother”. It might for example be understood according to its ordinary signification. Or it might be treated as some sort of playful variant or as creating a diminutive of “mother”. The Full Court considered that “mother” remained the dominanting element and, consequently, the likelihood of confusion arose.

As a result, s 44(1) operated to preclude registration of MOTHERSKY in the face of EB’s MOTHER registration for non-alcoholic beverages.

Other circumstances

It is well established that the registrability of a trade mark application falls to be determined at the date of the application.

Cantarella’s tactic of applying to clear the way for its MOTHERSKY application by removing EB’s blocking registrations for non-use is also long-standing although, of course, as at the date of the MOTHERSKY application, EB’s registrations were still in the way – removal for non-use being prospective, not retrospective.

At [176] – [178], however, the Full Court endorsed the Registrar’s practice (albeit by way of obiter dicta) of allowing an application to proceed to registration if the blocking citation was removed for non-use as “other circumstances” for the purposes of s44(3)(b). There would be “something perverse” in testing the registrability of the application against a mark which will be removed from the Register.

It is understood that an application for special leave to appeal to the High Court has been filed.

Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 (Yates, Stewart and Rofe JJ)


  1. Leave to appeal being required under s 195(2) and so EB needed to persuade the Full Court that “(a) whether, in all the circumstances, the decision below is attended with sufficient doubt to warrant it being considered by a Full Court; and (b) whether substantial injustice would result if leave were refused, supposing the decision to be wrong.” citing Decor Corp Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398 – 399 and Primary Health Care Ltd v Commonwealth [2017] FCAFC 174; 260 FCR 359 at [206].  ?

Motherland, Mothersky and Mother Read More »