Perhaps the most notable point (apart from this long drawn process finally reaching a conclusion) is that the Treaty does not include a provision about the term of protection.
Before the Conference convened, the draft text had two competing proposals. One requiring members to provide design protection for at least 15 years. The second option provided members with the ability to choose between TRIPS (10 years) and 15 years. In the result, no agreement could be reached and the Treaty does not include either. Instead, paragraph 1 of article 2 provides:
>[No Regulation of Substantive Industrial Design Law] Nothing in this Treaty or the Regulations is intended to be construed as prescribing anything that would limit the freedom of a Contracting Party to prescribe such requirements of the applicable substantive law relating to industrial designs as it desires.
On the concrete side, Article 3(2) provides:
>This Treaty shall apply to industrial designs that can be registered as industrial designs, or for which patents can be granted, under the applicable law.
More practically, the Treaty read with the regulations does prescribe a closed list of documents and requirements for filing an application. By Article 4, each Member may require that an application contain some or all of:
>(i) a request for registration;
>(ii) the name and address of the applicant;
(iii) where the applicant has a representative, the name and address of that representative;
(iv) where an address for service or an address for correspondence is required under Article 5(3), such address; DLT/DC/26 page 7
(v) a representation of the industrial design, as prescribed in the Regulations;
(vi) an indication of the product or products which incorporate the industrial design, or in relation to which the industrial design is to be used;
(vii) where the applicant wishes to take advantage of the priority of an earlier application, a declaration claiming the priority of that earlier application, together with indications and evidence in support of the declaration that may be required pursuant to Article 4 of the Paris Convention;
(viii) where the applicant wishes to take advantage of Article 11 of the Paris Convention, evidence that the product or products which incorporate the industrial design or in relation to which the industrial design is to be used have been shown at an official, or officially recognized, international exhibition;
(ix) any further indication or element prescribed in the Regulations.
Rule 2 in the Regulations also includes a list of 16 other matters which may be permitted and Rule 3 provides for the permissible forms of representation.
Article 4(2) also permits a requirement to disclose in the application:
>an indication of any prior application or registration, or of other information, including information on *traditional cultural expressions and traditional knowledge*, of which the applicant is aware, that is relevant to the eligibility for registration of the industrial design.
To secure a “filing date”, the requirements under Article 6 are that the application contain in a language admitted by the receiving Office:
>(i) an express or implicit indication to the effect that the elements are intended to be an application; (ii) indications allowing the identity of the applicant to be established; (iii) a sufficiently clear representation of the industrial design; (iv) indications allowing the applicant or the applicant’s representative, if any, to be contacted.
A jurisdiction whose laws immediately before it accedes to the Treaty require the following may also continue these requirements:
>(i) an indication of the product or products which incorporate the industrial design, or in relation to which the industrial design is to be used; (ii) a brief description of the reproduction or of the characteristic features of the industrial design; (iii) a claim; (iv) the payment of the required fees; (v) indications concerning the identity of the creator of the industrial design.
Article 8 also permits members to require that the application be filed in the name of the creator of the design. But this requirement may be satisfied by filing an application which includes a name of the creator as appellant or an assignment signed by the creator.
Article 7 also provides for a grace period of 12 months before the filing date, or priority date if priority is claimed from an earlier date, for disclosures made by the creator or his/her successor in title or by person who obtained the disclosed information directly or indirectly from the creator or his/her successor. This is consistent with section 17 of the Designs Act 2003 since the amendments introduced by the ACIP Implementation Act back in 2021. An alternative proposal providing for a grace period only in the case of disclosure at international exhibitions and the like was rejected.
Article 10(1) and Rule 6 provide that a member may a design to remain unpublished for at least 6 months.
The Treaty enters into force once 15 countries have acceded to it.
O’Callaghan J has awarded “The Practice” $200,000 in damages against The Practice Business Advisers & Tax Practitioners for trade mark infringement.
The Practice has been the owner since 2016 of Registered trade mark No 1757523:
for tax, accounting and business management services in class 35 and financial advisory and tax services in class 36. It had been using this trade mark since 2014, having adopted it in place of two rather more stylised logos in use from 1999.
The Respondent was incorporated in January 2017 and began providing business advisory and accountancy services under this logo:
In addition to the logo and in perhaps something of a differentiation from The Agency case, the evidence showed the Respondent’s website also featured:
(i) “At the Practice, our purpose is to Open New Possibilities and Add Value to Your Business”;
(ii) “The Practice can help you with: >> Taxation Advice >> Tax Planning >> Tax Effective Structures”;
(iii) “The Practice has the best business advisory accountants to guide you through this process.”;
(iv) “Contact The Practice”;
(v) “The Practice offers a full suite of financial and administration solutions for business such as small business bookkeeping in Melbourne and preparing sample small business financial statements”;
(vi) “Whether you need big or small business succession planning, The Practice is here to help.”;
(vii) “The Practice: Experts in Tax Compliance for Small Business”; and
(c) The following statements on the Respondent’s social media accounts:
(i) “The Practice can provide the tax solutions you need.”;
(ii) “The Practice’s Main Purpose is to open new possibility and add value to your business”;
(iii) “Here at The Practice, we tailor our services to meet the unique needs of your business”; and
(iv) “Let The Practice provide tax and business solutions for you!”
(d) On invoices sent to clients the words “THE PRACTICE” are shown in different coloured font to the rest of the invoice, with “THE” in light blue and “PRACTICE” in dark blue.
(e) Mr Hassan’s email signature has the words “The Practice” in bold font above the italicised words Business Advisers and Tax Practitioners.
(the emphasis was added by O’Callaghan J).
Perhaps the most interesting aspect of the case is that the Respondent sought to rely on the use of own name in good faith (s 122(1)(a)) and honest concurrent user (s 44(3) via s 122(1)(f) and (fa) as defences to infringement.
In rejecting both defences, O’Callaghan J considered at [61] and [88] that a person would not be acting in good faith (or honestly) if they did not take the steps that an honest and reasonable person would take to ascertain the ability to use the trade mark; they had in effect taken a risk.
The basis of these defences were searches that Mr Hassan, the sole director of the Respondent, claimed to have made. These claims were rejected. They came under sustained attack as “recent invention”. But O’Callaghan J also pointed out, Mr Hassan claimed to have searched terms like “The Practice Business Advisers and Tax Practitioners”; no where did he claim simply to have searched “The Practice”. Moreover, while Mr Hassan did claim to have undertaken a trade mark search, that was only back in 2001 when he was adopting a different version of the name.
O’Callaghan J did not accept the argument that the Respondent was only a one man company, not a large multinational (at 71] to [72]):
I cannot accept that submission. In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches than Mr Hassan says he did to ensure that his chosen name did not conflict with a registered trade mark. In those circumstances it is unnecessary to consider the veracity of Mr Hassan’s evidence about his searches in 2013, 2014 and 2017.
The onus was on the respondent to prove that it had used reasonable diligence to ascertain that a chosen name did not conflict with a registered trade mark and in my view, the respondent has not discharged that onus for the reasons I have given.
The $200,000 damages were comprised of $100,000 compensatory damages and $100,000 additional damages. The judgment doesn’t disclose the scale of the Respondent’s business or its impact on the applicant’s business – other than it was a one man company.
The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299
A trade mark registration may be attacked, or its registration opposed, on the grounds that the application was made in “bad faith“.
Basing themselves on UK decisions on the corresponding provision, Australian courts have sought to test this by whether people adopting proper standards would regard the decision to (apply to) register the trade mark as “falling short of acceptable commercial behaviour”. See e.g. Fry Consulting at [165] and DC Comics at [62].
Generally speaking, influenced by the examples in the EM, this has meant allegations of bad faith have tended to have success where the applicant can be said to have been aware of some other person’s trade mark and has sought to take advantage of that unfairly or opportunistically.
The IPKat, however, reports that the UK Supreme Court has accepted bad faith may be found where the applicant did not have an intention to use the trade mark in relation to all the goods, or services, specified in the application.
This decision was reached in circumstances where Sky’s trade mark was registered in respect of:
(a) good which it never had any intention of using – such as “bleaching preparations” and “whips”;
(b) categories of goods and services such as “computer software” which were so broad that Sky could not have intended to use its trade mark across the full range; and
(c) in some cases all goods or services in particular classes.
Now, it is certainly arguable that Lord Kitchin’s reasoning is not directly transferable to Australia as it was made under the strictures of EU law and his Lordship considered that the position under the 1938 Act had been superseded and replaced by the requirements of the 1994 Act implementing the requirements of the EU Trade Marks Directive.
That said, as Lord Kitchin pointed out, the EU regime has been developed to implement obligations under the Paris Convention and the TRIPS Agreement – both of which our 1995 Act sought to implement.
Moreover, Lord Kitchin recognised that challenges based on non-use did not preclude a challenge on the grounds of bad faith. At [193] – [194], his Lordship explained:
Indeed, in Ragopika at [73] – [74], Kennett J considered that “bad faith” requires to be tested by whether or not the conduct involves and attempt to use the trade mark system contrary to the purposes of the system:
What these examples have in common is an attempt to use the statutory regime for registration and protection of trade marks for a purpose that is foreign to the purposes of that regime, and undermines or hampers the proper use of that regime by businesses consistently with those purposes. Trade mark legislation balances various interests, as discussed by reference to the 1955 Act in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12; 202 CLR 45 at [40]–[49], but its objectives can be said to boil down to “consumer protection and protecting the interest of traders in both the goodwill associated with their trade mark and the value of the registered trade mark as property in its own right” (Davidson and Horak, Shanahan’s Australian Law of Trade Marks and Passing Off (7th ed, Thomson Reuters 2022) at [1.05]). A leading English case described registration of a trade mark as “designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading” (Harrison v Teton Valley Trading Co Ltd [2004] 1 WLR 2577 at [24], quoted in Fry Consulting at [147]).
The concept of “falling short of acceptable commercial behaviour”, as an aspect of or pointer to “bad faith”, needs to be understood in this context and anchored in the Act. The behaviour needs, in my view, to be more than simply ruthless or morally questionable. If not actually fraudulent or dishonest, it needs to have some quality that makes it repugnant to the purposes for which the statutory regime exists. ….
His Honour’s reasoning is reflected in Lord Kitchin’s analysis. So, at [152] – [153], Lord Kitchin explained:
Wheelahan J has ruled that Vittoria’s[1] instant coffee jar did not infringe the registered trade mark for the shape of the Moccona instant coffee jar, TM 1599824. In some consolation for KDE, however, Wheelahan J also rejected Vittoria’s attempts to have the Moccona shape trade mark cancelled.
Moccona “shape” TM
As well as (non-)infringmenet, his Honour’s 603 paragraphs cover a kitchen sink of issues including s 41, s 59, bad faith, fraud, false suggestion or misrepresentation, non-use, authorised use and, just in case the infringement case did not succeed, misleading or deceptive conduct / passing off.
One interesting aspect of this case is that both sides relied on evidence from marketing experts and industrial designers although the industrial designers proved more useful (for the Judge) than the marketers.
To give some context to the infringement findings, it is as well to start with the attack on validity.
For the purposess of this post, I will touch on the s41 attack only.
Not inherently adapted to distinguish
Wheelahan J held that the Moccona jar had no inherent capacity to distinguish at all. However, TM 1599824 was filed on 7 January 2014 and KDE had used it so extensively that it has acquired secondary meaning so that it did in fact distinguish coffee as coming from KDE.
Although the shape was the shape of a container and, unlike Kenman Kandy, not the shape of the goods – coffee, a container for “otherwise formless goods” which was purely functional could not be adapted distinguish; there must be something “extra” about the shape. (At [258] – [259]).
The Moccona coffee jar was not purely functional: it was not a plain box, sachet, tube, tin or carton. It had relatively squat proportions, a double-tiered lid and a particularly shaped shoulder.
However, the expert evidence considered the shape was essentially a traditional jar shape. There was evidence of similarly shaped jars for other prodcts, the shape was similar to food preserving jars and at least two producers, Andronicus and Park Avenue, had used similarly shaped jars in the 1980s and 1990s.
In light of this evidence, Wheelahan J considered that the non-functional features of the Moccona jar played an aesthetic role but did not play the role of a badge of origin. At [267]:
even those features of the KDE shape mark that do play an aesthetic role still do not serve any inherently distinctive role. Rather, features such as the double-tiered lid and the shoulder of the jar serve to evoke a particular tradition, forming part of the common heritage. In other words: the KDE shape mark is both primarily functional and, to the extent that it is not functional, it draws on features of the common heritage that are not apt to distinguish the goods of any one trader.
Secondary meaning
His Honour found, however, that KDE had used the shape of the Moccona jar sufficiently that it had become distinctive in fact of KDE thereby defeating the operation of s 41(3).
A number of factors led to this conclusion.
First, there were numerous coffee jars and containers in evidence but within the diversity of shapes and sizes, the Moccona jar was distinct ([293]).
Secondly, in 1981, the then rival Andronicus brand had run an advertisement featuring an unlabelled Moccona-shaped jar to identify the expensive import which Andronicus sought to be compared to and compete with ([294] – [296]).
Thirdly, while Andronicus and Park Avenue had used jars similar to the Moccona jar in the 1980s and 1990s, there was no evidence of anyone supplying instant coffee in such a shaped jar since then – except of course “Moccona” ([297]).
Fourthly, there had been some (Cantarella described it as “limited”) television or streamed video advertising in which the jars had been depicted without any labelling.[2] The “Moccona” trade mark did appear at various points in the advertisements, sometimes in close proximity to the jars, but not actually on the jars themselves. For example, Wheelahan J explained of one advertisment in the course of rejecting the non-use attack (at [352]):
Unlabelled Moccona coffee jars
The “Dec Jar 2022” video, which related to the “Be Inspired” range of limited-edition Moccona glass jars, is striking. This video — which, I have already noted, has been viewed more than one million times — shows six unlabelled Moccona jars together and individually. The video never shows the jars with a Moccona label. While the Moccona logo does appear at certain points, this video illustrates clearly how the applicants have deployed the shape of the jar as a trade mark. It was accepted that the actual jars depicted, when sold in supermarkets, did bear Moccona labels. The fact that the applicants chose to advertise the jars without the Moccona labels, however, indicates that the jar was being used as a device that, in and of itself, marked out the coffee within the jars as Moccona coffee. The Moccona logo appearing in the advertisement was relatively small, and was not dominant when compared with the jars. Viewed objectively, this video is an instance of the KDE shape mark being used as a device indicating the origin of the coffee contained within the jars, and thus as a trade mark.
Returning to the question of acquired distinctiveness, his Honour concluded at [306]:
…. But from when the Andronicus advertisement was broadcast in 1981, the applicants developed a significant association between their coffee products and the jar shape in which those products were sold. In the two decades immediately preceding the priority date, there were no competitors using jars that were apt to detract from the effectiveness of this use as a badge of origin. That provides the context in which the advertisements described above must be understood. Especially by means of those advertisements, which I find to have been extensive given the amount of revenue spent on advertising that was the subject of confidential evidence, the applicants clearly deployed the KDE shape mark as a badge of origin in the last decade before the priority date. In all of the circumstances, I consider that this amounted to such significant use of the KDE shape mark as a badge of origin before the priority date as to satisfy the test of use under s 41(3)(b).
The confidentiality of the advertising expenditure figures makes it a bit difficult to assess the extent of use. Also, by my count, there were 14 TVCs / YouTube videos of which 4 or possibly 5 were before the priority date. Four of those 5 were shown in free-to-air and pay TV (presumably reaching national audiences); the fifth in 2014 was shown to have had 19,000 views. Some of the later videos were shown to have hundreds of thousands of views and even millions.[3]
Authorised use
Cantarella argued that KDE could not rely on the advertising in Australia as that advertising was produced and run by JDE Australia. JDE Australia was not a subsidiary of KDE (nor KDE, a Netherlands company) of JDE Australia. Both, however, were subsidiaries of the same ultimate parent company.
Wheelahan J found that JDE Australia’s use was nonetheless use under KDE’s control and so qualified as authorised use.
First, the evidence showed that the coffee sold in Australia had been manufactured in a factory in the Netherlands by JDE Netherlands. JDE Netherlands sold the coffee in the jars to JDE Australia. JDE Netherlands was a wholly-owned subsidiary of KDE and both shared the same address. In these circumstances, Wheelahan J at [322] was willing to infer JDE Netherlands made and sold the coffee under KDE’s control.
Cantarella argued there was no evidence that the glass jars themselves had been manufactured under KDE’s control. Wheelahan J considered this was not necessary. At [323]:
…. The question posed by s 8(3) is whether “the owner of a trade mark exercises quality control over goods or services” in relation to which a trade mark is used. Having regard to the registration of the KDE shape mark in this case, s 8(3) will be satisfied if KDE exercised quality control over the coffee or instant coffee in relation to which the shape mark was used. It is not to the point whether KDE oversaw the manufacture of the glass jars in which the coffee was sold.
I am not sure I would be willing to advise a client not to control the manner of use of the trade mark as well as the quality of the goods or services being provided. Although one might expect in this situation it was fairly safe to assume KDE was not letting JDE Netherlands send out coffee in cracked or otherwise deficient jars.
In any event, Wheelahan J also found a second basis for finding quality control. Cantarella pointed to the fact that, unlike Trident Seafoods, KDE and JDE Australia did not have common directors.
Wheelahan J accepted at [331] that common directors was one of three key considerations in the Trident Seafoods court finding a “unity of purpose” between the user and the trade mark owner. It was a significant, but not determinative, factor. His Honour considered that the principle emerging from Trident Seafoods was that “unity of purpose” would be indicative of actual control by the trade mark owner over use of the mark. Whether sufficient “unity of purpose” could be inferred will vary from the circumstances of individual cases.
In addition to the two companies both being members of the same corporate group, JDE Australia was a wholly-owned subsidiary of DE Investments. During the relevant non-use period, DE Investments and JDE Australia did share some directors.
Moreover, DE Investments and KDE had entered into a licence agreement as a result of which JDE Australia was required to comply with KDE’s “brand guidelines” and, further, to obtain KDE’s approval before introducing “any new key communication asset in Australia”. At [335], Wheelahan J found KDE did in fact exercise actual control over the advertising used by JDE Australia.
As a result, Wheelahan J found that KDE, DE Investments and JDE Australia shared a common purpose of deploying KDE’s intellectual property for the purposes of the global group.
Unless you’re acting for someone being sued by such a global tentacle, we can all with respect breathe a sigh of relief.
Infringement – or not
While Wheelahan J rejected Cantarella’s wide-ranging attacks on the validit of KDE’s registered trade mark, his Honour found Cantarella’s Vittoria jar did not infringe.
First, his Honour held that the Vittoria jar was not actually used as a trade mark.
The jar itself was relatively plain, in contrast to the Moccona jar, and for that reason less likely to draw attention. Moreover, there was no evidence of Cantarella advertising its products in unbranded jars.
And, while the use of the Vittoria logo was necessarily smaller than the jar itself, his Honour considered the Vittoria logo served the trade mark function, in some cases “swamping” any possibility that the jar would be seen as a trade mark.
An advertisement for Vittoria coffee
As his Honour explained at [463] of this advertisement:
…. the overall impression I gain from this advertisement is of a Vittoria-branded product that is packaged in a particular jar. Without more, featuring a product in its packaging as part of an advertisement does not constitute trade mark use. Nothing about the advertisement is apt to suggest to a viewer that Vittoria coffee can be distinguished from the coffee of other traders by the relatively plain shape of the jar alone. ….
Similarly, at [475] the overall appearance of the aisle fins featuring the Vittoria product including the fact that the whole product was displayed, the plainness of the jar and the prominence of other branding elements led his Honour to distinguish RB Hygeine on its facts.
Aisle fin for Vittoria coffee
Secondly, while Wheelahan J accepted KDE’s argument that purchasers of instant coffee do not spend a long time deciding which products to buy, his Honour considered at [496] (and [502]) that there was no “real, tangible risk that a notional buyer, with a recollection only of the KDE shape mark’s rough proportions and general shape, would be perplexed, mixed up, caused to wonder, or left in doubt, about whether instant coffee sold in the Cantarella jar shape has the same commercial source as coffee sold in the KDE shape mark.”
Moccona coffee jarVittoria coffee jar
Wheelahan J considered that a notional consumer would recall three core features of the Moccona jar: its overall proportions being a fairly squat body sitting beneath a slowing sloping should and lid; the body being roughly two thirds of the overall height. Secondly, the shape of the shoulder and the neck. Thirdly, the height of the lid.
In contrast, Cantarella’s jar had a much taller body compared to its width; the shoulder was quite rounded and involved very little height and the lid appeared as a single, flat disk wider than the neck. At [502]:
The buyer would view the Cantarella jar shape as noticeably taller in its proportions, with a compressed neck section, and a plain, low lid. Even with the imperfect recollection outlined above, there is no real risk that a buyer could confuse the Cantarella jar shape, in view of its distinct visual impression, with the KDE shape mark.
A short comment on the evidence of the marketing experts
At [187], Wheelahan J recorded that he did not find the evidence of the marketing experts of much assistance. This was essentially because the experts addressed (and had been asked by the parties to address) marketing concepts rather than the legal concepts related to trade mark use.
In the case of Prof. O’Sullivan (called by JDE), this was because his evidence was directed to “diagnostic cues”; features used by consumers to identify something or distinguish it from something else. Wheelahan J considered this did not address whether the features the Professor identified functioned as a “badge of origin”. As his Honour explained by way of an example at [190]:
For example, if only one producer of instant coffee were to market a 750-gram jar, consumers could successfully rely on the size of the jar as a “diagnostic cue” for identifying that producer’s coffee. But, without more, nothing about this example suggests that the size of the jar is being used as a badge of origin. In this way, the concepts deployed by Professor O’Sullivan were too broad to answer the narrower question the Court must confront.
On the other hand, Vittoria’s Mr Blanket addressed questions about “the core elements of a brand” rather than whether some feature was being used as a trade mark. Wheelahan J explained at [191]:
…. He seemed to suggest that a feature will not amount to a core element of a brand, or perhaps even a brand element at all, if the feature does not appear consistently in relation to the entire range of products within the brand, or if it is not necessary for consumers to use for the purposes of identifying products within that brand. During cross-examination, examples were given of the Coca-Cola bottle and the triangular prism involved in the Toblerone packaging. Mr Blanket appeared to suggest that the bottle and packaging would not amount to core brand elements because some Coca-Cola and Toblerone products are sold without them. ….
Wheelahan J also considered that “certain aspects” of the experts’ evidence were not persuasive, even in their own terms.
Thirdly, Wheelahan J considered the marketing experts’ evidence did “not provide great assistance” as it was directed the to “jury issues” which were ultimately matters for the Court to decide.
Given the expense of deploying marketing evidence, very careful thought indeed needs to be given to its desirability and how it can be made useful
The advertisements and stills extracted from them are discussed at [45] – [88]. Unlike the YouTube video in Motherland, KDE’s evidence included evidence of broadcast on Australian TV or “views” by Australian consumers. ?
IP Australia has opened a consultation on the draft Design Law Treaty which will be the subject of a Diplomatic Conference in November.
According to IP Australia’s announcement, most of the text is agreed but the outstanding issues are:
grace periods – namely the periods after public disclosure of the product when you can still seek design registration (Article 6)
whether a procedural treaty should include substantive law (e.g. proposal for term of protection in Article 9bis)
the option for an office to require disclosure when a designer has utilised any traditional knowledge, traditional cultural expressions or biological/genetic resources in the design (Article 3)
whether IP offices should be required to provide an electronic system for design applications (Article 9ter and 9quater)
the assistance WIPO should provide to developing countries (e.g. technical assistance and capacity building for the ratification of the treaty) (Article 22).
Most of these seem unlikely to cause much difficulty for Australia.
The main substantive impact, hiding under the “e.g. proposal for term of protection Article 9bis“, is whether the term of protection should be raised to at least 15 years or Member States can choose to stay at the TRIPS minimum of 10 years. (You will remember six years ago now IP Australia published a cost benefit analysis of Australia raising the term of designs protection from 10 to 15 years.)
A requirement for the disclosure of utilisation of traditional knowledge, traditional cultural expressions or biological/genetic resources would be new – but seems to be the direction policy development is heading in Australia anyway. Of course, a big question will be just what is encompassed by those expressions and the consequences of both disclosure and failure to disclose.
There are also some options about filing requirements such as how many and which representations need to be filed which should be carefully considered if the promises of simplification and efficiency are to be achieved.
IP Australia requires submissions by 22 September 2024. That is a very tight timeframe, no doubt dictated by the fact the Diplomatic Conference is being held in November. As IP Australia has known about all these issues since last November, one might wonder why they are only getting around to consulting now.
O’Bryan J sets out a convenient summary of how the case came to be before him and IPwars has had a few goes including here and here but in case the meaning of “manner of manufacture” for the purposes of the Patents Act 1990 is not tattooed over you heart, a brief recap:
The Commissioner rejected Aristocrat’s innovation patents over an electronic gaming machine (EGM) with a new software-implemented feature game and trigger.
Burley J allowed Aristocrat’s appeal, pointing out it was accepted on all sides that the claims would have been patentable if implemented in the traditional mechanical way rather than software implementation.
The Full Federal Court allowed the Commissioner’s appeal restoring the rejection of the claims. Although agreed in the result, the reasoning was divided. Middleton and Perram JJ held at [26] that it was first necessary to decide if the claimed invention was for a computer or computer-implemented. If so, it was then necessary for the claim to result in an advance in computer technology. In the result (and subject to any appeal to the High Court), after setting aside Burley J’s orders, the Full Federal Court ordered: The proceedings are remitted to the primary judge for determination of any residual issues in light of the Full Court’s reasons including any issues which concern the position of claims other than claim 1 of Innovation Patent No. 2016101967 (referred to at [8] of the reasons of the primary judge dated 5 June 2020) and the costs of the hearings before the primary judge.
The High Court memorably failed to reach a decision, with three judges dismissing the appeal while the other three judges would have allowed Aristocrat’s appeal (a seventh judge was unable to sit). Consequently, under Judiciary Act 1903 s 23(2)(a), the decision of the Full Federal Court was affirmed.
On remitter, Burley J considered he was bound by the Full Federal Court’s decision and ruled that the dependent claims of Aristocrat’s patents were also invalid.
Leave to appeal
As Burley J was hearing and determining an appeal from a decision of the Commissioner, Aristocrat needed leave to appeal to the Full Court under s 158(2).
Often where leave is being sought by the patentee or applicant for the patent rather than an opponent, one might expect leave would be granted as otherwise the patent is dead. As O’Bryan J explained at [50]:
The guidance that emerges from the above cases may be summarised as follows. Section 158(2) evinces a legislative policy against the bringing of appeals against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner except where the court, acting judicially, finds reason to grant leave. The discretionary power to grant leave is not constrained by express legislative criteria and the Court should not lay down rigid rules that would restrict the exercise of the discretion given the diversity of cases to which s 158(2) will potentially apply. In determining whether to grant leave, it is relevant to consider: whether the decision is attended with sufficient doubt to warrant it being reconsidered on appeal; whether the issues proposed to be raised by the appeal are of general application; and the consequences of a refusal to grant leave – particularly whether the refusal will finally determine the matter. None of those considerations is determinative in and of itself and the considerations are interrelated. The cases make clear that the degree of doubt with respect to the decision that would warrant a grant of leave is affected by the consequences of a refusal to grant leave. In a pre-grant opposition proceeding, where there have been two hearings with the opposition dismissed, and where the opponent of the patent will still be able to institute revocation proceedings, leave to appeal will often be granted only where the opponent has demonstrated a clear prima facie case of error in the decision appealed from. In contrast, where an opponent has been successful such that the decision will be final with respect to the grant of the patent, leave to appeal would ordinarily be granted where the grounds are arguable.
O’Bryan J appears to have had some reservation in granting leave this time around. His Honour described the application as “finely balanced”.
The two main areas that seem to have been particularly troubling were that, as the Commissioner characterised it, the parties had agreed that Burley J’s determination of claim 1 in the first hearing would guide the determination of the other claims. Secondly, the innovation patents in question had expired and Aristocrat still had applications for standard patents covering the same subject matter pending.
Ultimately, his Honour found in favour of granting leave in the “unusual circumstances” of this case.
The factor that appears to have tipped his Honour in favour of granting leave was not just that the High Court had divided 3:3 in its previous decision. O’Bryan J was sceptical that this was just Aristocrat trying to have a “second go”. Rather, the additional factor is how s 23 of the Judiciary Act should apply in circumstances where all six judges of the High Court appear to have rejected the majority view in the Full Federal Court.
At [65], O’Bryan J explained:
Having taken all of the foregoing factors into account, I have determined on balance that leave to appeal should be granted. Ultimately, two factors weigh marginally in favour of the grant of leave: that the effect of the primary judgment is to determine finally that the innovation patents in suit will not be granted, and that the grounds of appeal sought to be raised by Aristocrat are arguable (raising novel questions about the operations of s 23(2)(a) in the unusual circumstances of this case). If Aristocrat is able to persuade an appellate court that the primary judge’s application of s 23(2)(a) of the Judiciary Act in this case was erroneous, Aristocrat should be entitled to have the residual claims adjudicated in accordance with the legal principles that the appellate court determines are applicable.
What happens next
Having been granted leave to appeal, Aristocrat has foreshadowed an application under Judiciary Act s 40 requesting the High Court to hear and determine the appeal without the need for a further hearing in the Full Federal Court. This is of course a very unusual step. In this case, however, the foundational question can really be answered only by the High Court: how does s 23(2)(a) operate when the decision under appeal is affirmed but all the High Court judges sitting on the appeal appear to have rejected the reasoning of the “affirmed” decision?
Who know, we might even get something approaching a settled test for “manner of manufacture” (again).
The attempt by global online sports merchandise retailer, Fanatics LLC, to expand its operations directly into Australia has resulted in the cancellation of its FANATICS registrations in class 35[1] (but not class 42[2]) and findings that it had infringed FanFirm’s competing registrations in class 25[3]. FanFirm’s own registrations in classes 9, 16, 24, 32 and 38, however, were cancelled for non-use.
The case runs through the gamut of issues: ownership, first use, similarity of goods / services, cancellation under s 88, removal for non-use, honest concurrent user, infringement, defences under s 122(1) and ACL / passing off. Rofe J’s judgment runs to 497 paragraphs so I am not going to try to tackle everything. Rather, I want to pick out three or four issues which I found particularly interesting. In particular, when the US-based respondent sought to expand its business in Australia, it was forced (unsuccessfully) to try to read down the scope of FanFirm’s registered trade marks as mere adjuncts to its tour operator business.
You might recall watching a sporting event where there were some raucous crowd members wearing green and gold curly wigs. It turns out the original fanatic, a Mr Livingstone, attended the US Open in 1997 where his “enthusiastic support” earned him an invitation to attend a post match celebration with the winner, Pat Rafter.
Beginning with a Davis Cup match in October 1997, Mr Livingstone parlayed this beginning into a business promoting tours to sporting and, eventually, cultural events and selling merchandise. Those attending the tours often wore merchandise such as “FANATICS”- branded t-shirts and caps. In 2004, Mr Livingstone incorporated the applicant and it took over the business which has continued to grow and expand so that, by the time of the trial, there were some 160,000 members in its customer database.
Meanwhile, in 1995, the respondent started life in the United States as Football Fanatics Inc. It formally became Fanatics Inc only in 2010.
The respondent operates around the world selling licensed sports merchandise such as NBA, NFL, F1 and Premier League products and, since 2018, third party merchandise which it manufactures and brands with its FANATICS Marks.
Before 2010, the respondent’s business was operated through a series of audience-specific brands and websites such as www.footballfanatics.com (1997), www.fastballfanatics.com (2006), www.fastbreakfanatics.com (2007), www.faceofffanatics.com (2007), www.fightingfanatics.com (2008), www.surffanatics.com (2008), www.fanaticsoutlet.com (2008), www.kidfanatics.com (2009) and www.ladyfanatics.com (2009).
In 2009, it acquired the domain name <fanatics.com> which initially redirected to the Football Fanatics website. From 2011, however, it became the respondent’s primary website.
It appears the respondent had been making some sales to customers in Australia from its Football Fanatics website since 2000. The respondent also provided what were described in the judgment as modest sales figures from its www.fanatics.com website to Australians beginning in 2014 through till 2020.
In 2020, the respondent’s Australian operations expanded significantly. It began operating the Essendon Football Club’s online store as “A Fanatics Experience” and began selling its FANATICS branded merchandise nationally through Rebel Sports stores.
The trade marks
FanFirm relied on two trade marks of which, TM 1232983, was for FANATICS in classes 9, 16, 24, 25, 32, 38 and 39 which was registered with effect from its filing date on 2 April 2008. (The respondent had unsuccessfully opposed registration back in 2010.)
The respondent also had two registrations for FANATICS, another for FANATICS and Flag device and registrations for FOOTBALL FANATICS and SPORTS FANATICS. The earliest registrations, for FANATICS and FOOTBALL FANATICS, dated from 10 September 2008. That first FANATICS registration was achieved on the basis of continuous prior use under s 44(4).
The respondent’s Flag device:
Who used first (in Australia) and for what
Rofe J’s first crucial ruling was the determination of who was the first user of FANATICS as a trade mark in Australia – and for what.
Her Honour found that FanFirm had been using FANATICS in relation to goods – the merchandise – from its website at www.thefanatics.com from 2004.
Her Honour also found ([151] and [158]) that FanFirm’s use on its website was use in relation to the class 35 services of on-line retail services of sports related clothing and merchandise, order fulfilment services and product merchandising.
In reliance on the CHIFLEY Hotel case, the respondent contended (at [152]) that FanFirm’s sales from its website were neither use in respect of clothing nor retail sales as they were merely an adjunct to FanFirm’s core business of providing tour and event services.
Rofe J rejected this characterisation. At [153], her Honour pointed out that merchandise could be purchased from FanFirm’s website even if no tour or event booking was made. Thus, there was no necessary relationship between tours and events on one hand and, on the other, the merchandise. Her Honour also noted that Markovic J in the Katy Perry case had found that the sale of merchandise at and in conjunction with Katy Perry’s concerts was use in relation to the goods and retail services. Rofe J explained at [155]:
Markovic J’s findings on this issue were not challenged on appeal and I respectfully agree with her Honour. Using a trade mark on goods does not cease to be “use as a trade mark … in relation to goods” for the purposes of s 120(1) of the Act simply because the sale of the relevant goods is “closely tied” or an adjunct to some service offered by the applicant which is their primary or core business. In any event, I do not consider that the sale of merchandise on the applicant’s website to be merely an adjunct to its main business of providing tour and event services.
and at [158]:
…. The applicant’s website provided an online retail service from at least 2004 because customers could visit the website, select a product and then purchase that product. It therefore also provided order fulfillment services and product merchandising within the meaning of the respondent’s class 35 registration. ….
As FanFirm’s use was before the respondent’s earliest use in Australia in 2010 or 2011 (at [144] – [145]), her Honour’s conclusions ultimately led to orders for the cancellation of the respondent’s registered trade marks in class 35.
This conclusion did not extend to the respondent’s class 42 services – setting up, managing and operating an online store for a third party – as her Honour at [159] found such services were not the same kind of thing as online retail services or the class 25 goods.
The respondent’s use infringed FanFirm’s class 25 registration
Next, Rofe J found that the respondent’s sales of clothing merchandise from its fanatics.com website to Australians infringed FanFirm’s registration in class 25.
Some of the goods sold were the respondent’s own products branded with its Fanatics and/or Fanatics Flag mark. The respondent, however, contested that the sales of third party merchandise (i.e., not branded FANATICS) from its website and some products where FANATICS appeared only on the swing tag (or similar) involved use as a trade mark in relation to goods.
The third party merchandise
FanFirm argued that the sale of NBA, NFL and other third-party clothing manufactured by the likes of Adidas and Nike from the respondent’s website constituted not just use of FANATICS in relation to online retail services in class 35 but also use in relation to the goods themselves.
An example is this webpage:
The respondent argued (at [215]) that this was only use of FANATICS in relation to online retail services just as use of REBEL on REBEL SPORTS stores was use in relation to retail services and not the goods themselves.
Rofe J held, however, that this use constituted use in relation to the clothing goods themselves, not just in relation to retail services. In doing so, her Honour relied on the decisions in Sports Warehouse, [Solarhut][sol], [Flexopack][flex], Edgetec and Bob Jane. At least some of these cases involved the sale from the infringer’s website of goods which were not manufactured by (or for) the infringer. Accordingly, her Honour concluded at [220]:
The respondent invites consumers to visit its website at www.fanatics.com. At that website, goods are available for purchase under the name FANATICS as part of the domain name, displayed in page headings and in references to products. I consider that this constitutes use of the FANATICS Marks as trade marks in relation to the goods for which the applicant’s FanFirm Marks are registered, including clothing, sportswear and headgear.
The swing tag use
From 2020, the respondent was offering for sale from sites such as “www.aflstore.com.au” and “www.rebelsport.com.au” shirts and other apparel for 11 AFL teams and also some of its own branded clothing. At least some of the AFL clothing did not bear FANATICS on the labelling or otherwise. The “only” use of FANATICS was on the swing tag:
In addition to the swing tag, the FAQ also stated:
15.1 “When you make a purchase, you are purchasing from rebel. The order is simply being sent from a Fanatics warehouse.”
15.2 “Products shipped by Fanatics will only be available online and will be shipped direct from a Fanatics distribution centre to customers. Rebel does not hold these products in Australia.”
15.3 “Click and Collect is not available for products shipped by Fanatics as they are not stocked in our stores. They will be available for delivery only”
Further, there were other goods on which the respondent’s trade mark had been embroidered or printed on the label (albeit a small proportion of the total).
As with the third party merchandise from the respondent’s own website, the respondent argued this use on the swing tag was only use in relation to retail services, not the goods themselves. Rofe J also rejected this argument in the context of this case.
Given that s 7 defines use as use upon or in physical or other relation to the goods, the fact that the use was on the swing tag and not on the goods themselves was hardly determinative.
At [198], Rofe J considered:
It would be apparent to any reasonable Australian consumer that the Hawthorn Football Club (or any sporting club) does not manufacture clothing, and that the Hawthorn indicia are part of the design of the shirt material. The use of the FANATICS Marks in these instances are being used as “a badge of origin” to distinguish the respondent’s relevant good from goods manufactured by other sports clothing manufacturers such as Nike or Adidas: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41]–[42] (per French CJ, Gummow, Crennan and Bell JJ).
In any event, her Honour pointed at at [200]:
In this case, the FANATICS Marks on the FANATICS branded goods are being used as a badge of origin and thus the use constitutes trade mark use. The fact that other marks are present on the clothing, such as the logo of the relevant sporting team or league, does not matter. Dual branding is “nothing unusual” and does not have the effect that one of the marks is not being used as a trade mark: see Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (2021) 162 IPR 52 at [66] (per Jagot, Lee and Thawley JJ) and the cases there cited (these comments were not disturbed on appeal in Self Care). See also Anheuser at [189] and [191] (per Allsop J).
Thus, subject to the respondent’s numerous defences, FanFirm’s trade mark for clothing etc. in class 25 was infringed.
Some issues raised by the defences
The respondent raised a number of defences against a finding of infringement – in addition to its unsuccessful attempt to have FanFirm’s trade mark cancelled.
The respondent was exercising a right to use the trade mark given by registration
The respondent’s first line of defence was s 122(1)(e) – the exercise of a right to use a trade mark given to the user under the Act. That is, someone does not infringe another person’s registered trade mark if the “someone” has registered their own trade mark and is using it within the scope of that registration.
The issue here is that, as the respondent was not the owner of the trade mark for online retail services, its trade mark was not validly registered as a result of the operation of s 88(1)(a) and s 58.
On this issue, while her Honour considered it a “strange result” from a policy perspective, at [313] – [314] Rofe J followed Nicholas J’s ruling in Dunlop and held that cancellation was not retrospective but prospective only. That is, the respondent’s trade marks were not cancelled ab initio but only from the date of her Honour’s order.
While this protected the respondent from awards of damages (or an account) for its past conduct, (at [385]) this did not protect the respondent from an injunction against continued use of the infringing trade marks.
Honest concurrent user
As it had been using its trade marks in Australia since 2010 or 2011, the respondent also argued the Court should find the respondent was entitled to registration (s 122(1)(f) or (fa)) on the basis of honest concurrent user (ss 44(3)).
Ultimately, her Honour rejected this defence, finding that the respondent’s use did not qualify as honest concurrent user.
The problem for the respondent was at least three fold. First, the respondent adopted FANATICS as its corporate name and trade mark with knowledge of FanFirm and its trade mark. Indeed, it had sought to oppose registration of FanFirm’s mark. Rofe J accepted the respondent did not adopt the trade mark to take advantage of FanFirm’s reputation, however, it could not be described as “independent adoption”. Moreover, while two of the respondent’s senior executives involved in the decisions gave evidence, no-one from the respondent gave evidence of any honest belief that confusion would not result. At [331], her Honour concluded:
The adoption of the respondent’s new corporate name and mark occurred with knowledge of the applicant and its mark, and the goods for which registration of that mark was sought. Whilst I do not consider that the respondent adopted the FANATICS Marks in order to divert business or goodwill from the applicant, it cannot be described as “independent adoption”. Further, as I have said above, despite leading evidence from two senior employees of the respondent, the respondent led no evidence as to the existence of any honest belief that there would be no confusion as a result of the respondent adopting the same mark as the applicant’s existing marks. Thus, the two hallmarks of honesty are absent from the respondent’s adoption of the FANATICS Marks.
At [383] – [383], Rofe J relied on similar reasoning to reject the respondent’s contention that her Honour should exercise the discretion arising under s 89not to remove the trade marks.
The injunction issue
In her Honour’s subsequent ruling on costs and non-pecuniary remedies, Rofe J stayed the operation of the order for cancellation of the registered trade marks pending the outcome of the appeal (for which Rofe J gave leave).
Rofe J also ordered an injunction restraining infringing use but refused to stay that order pending the determination of any appeal.
A number of factors led to her Honour refusing the stay.
These included, first, that her Honour was far from convinced that the respondent had the level of reputation in Australia it claimed given the apparently small scale of its sales here.
Secondly, the respondent’s claims of the disruption to its global business seemed overstated in light of the small scale of its Australian sales compared to the global business, its apparent disregard of the Australian market in deciding to adopt FANATICS and FanFirm’s evidence about the availability and utility of geo-blocking services so that the respondent’s sales to the rest of the world would be unaffected.
Further considerations included the dilution of FanFirm’s own goodwill and the difficulties in quantifying that.
Accordingly, Rofe J considered the balance of convenience lay in favour of not staying the injunction.
Bromwich J substantially upheld her Honour’s refusal to order a stay of the injunction but modified it slightly:
to allow the respondent 28 days to implement geo-blocking of Australia; and
to enable continued use in respect of “global customer care labels” in a particular form and to allow the respondent to deal with returns.
Bromwich J, like Rofe J, also referred to a number of other considerations.
Rofe J’s key finding was that FanFirm was the first user of FANATICS in Australia for goods such as clothing and online retail services for such products. Such use was not merely an adjunct to FanFirm’s tour organisation and supply business. As a result, the respondent’s trade marks for those goods and services will be cancelled and it has been enjoined against continued use in Australia. Just because you are clear to operate under your trade mark in one country does not mean you will be able to use it in another, different market.
Class 35: Business marketing consulting services; customer service in the field of retail store services and on-line retail store services; on-line retail store services featuring sports related and sports team branded clothing and merchandise; order fulfillment services; product merchandising; retail store services featuring sports related and sports team branded clothing and merchandise ?
Class 42: Development of new technology for others in the field of retail store services for the purpose of creating and maintaining the look and feel of web sites for others, not in the field of web site hosting; computer services, namely, creating and maintaining the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely designing and implementing the look and feel of web sites for others, not in the field of web site hosting services; computer services, namely, managing the look and feel of web sites for others, not in the field of web site hosting ?
Class 25: Clothing, footwear and headgear, shirts, scarves, ties, socks, sportswear ?
In the 7Now case, the Full Court reminded us that the classic statement of when a sign is used as a trade mark for the purposes of Australian law is the Oil Drop Man case:[1]
With the aid of the definition of ‘trade mark’ in s. 6 of the [1955 Trade Marks] Act, the adverbial expression [‘as a trade mark’] may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?
In that case, the High Court held that Shell was not using a caricature image of an animated oil drop man as a trade mark in its television advertisements and so did not infringe Esso’s registered trade marks depicting a “humanized oil-drop”. A surprising aspect of that decision is that, in doing so, the High Court overruled Windeyer J who had found it did infringe.
Unlike the High Court (who did watch the ads), we can’t see how Shell’s Oil Drop Man appeared. So it has always been something of a challenge to understand why.
Now Dr Vicki Huang, who professes law at Deakin University, has published an article revealing to the world some images from the original appeal books: “Uncovering secrets of Australia’s landmark High Court cases” (2024) 54 Australian Bar Review 209. (Unfortunately, its behind a paywall.) If you are a trade mark lawyer trying to grapple with what the late Prof. Lahore always regarded as the most elusive concept in Australian IP law, you should read it!
Seven had registered 7NOW as a trade mark, TM No 1540574, in respect of a range of goods and services in classes 9, 35, 38 and 41. 7-Eleven filed non-use applications against the trade mark on the s 92(4)(b) grounds.
By the time the proceeding reached the Full Court, four categories of goods and services in classes 9 and 35 were still in dispute (7-Eleven not pursuing the other services):
Category 1: computer software (in class 9);
Category 2: the promotion and sale of goods and services for others including through the distribution of online promotional material and promotional contests (in class 35);
Category 3: retail and wholesale services including retail trading via television programmes and by telephone and electronic means including the Internet (in class 35); and
Category 4: the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods including by mail order, telecommunications, website or television shopping channels (in class 35).
The trial Judge found that Seven had not discharged its onus under s 100 to show it had used its trade mark in respect of any of the categories and refused to exercise the discretion under s 101 not to order removal.
The Full Court allowed Seven’s appeal in relation to the promotion of goods and services for others only in Category 2 but otherwised dismissed it. As the Full Court emphasised in its quote from the Oil Drop Man case, the different outcomes arose from whether or not Seven’s use of its sign was sufficiently connected with the particular category.
How Seven used its 7NOW mark
It seems Seven’s evidence of use in the relevant period was limited to a one-page website:
As you can see, there is a 7NOW banner at the top of the page. Then (during the relevant period) there were 48 “tiles” which, if clicked, transferred the user to a different websites (some of which were associated with Seven such as 7plus and 7travel while others were not) and, finally, there was a panel with four columns of links at the bottom of the page.
Category 2 services
In effect the website operated as advertising the services being offered from the various websites linked through the 48 “tiles”. As the Full Court explained at [105], the
grid of those icons – [brought] to the consumer’s attention the services and goods offered on the linked websites and [made] it easier for the consumer to acquire those services and goods….
That was the performance of promotional services and those services were provided by reference to the 7NOW badge which clearly functioned as a trade mark. Accordingly, at [106]:
In our view, the connection shown on the website between the 7NOW mark, which has the character of a brand, and the actual performance of those promotional services is sufficient to mean that it has been used as a trade mark in relation to those services. ….
But, as the 7NOW website did not actually offer any goods or services for sale as opposed to the linked websites, the website was not “a means of delivering the service of selling goods. And so, Seven had not proved use of the mark in relation to sales services.
The other categories
To establish use in relation to computer software, Seven relied on the bottom two links under the 7Plus logo in the first column in the page “footer”:
“Get the iOS App
“Get the Android App”
If you clicked on one or other of those links, you were transferred to the page in the App store or the Android Play store where you could download the 7Plus app. 7NOW did not appear anywhere on those pages.
The Full Court agreed with the primary Judge’s conclusion that 7NOW had not been used to distinguish the (7PLUS) software from software being offered by third parties. A number of considerations from the overall context of the use played into this conclusion. These included:
7NOW appeared only once on the website – at the top of the page and separated from the Store links by the 48 “tiles”;
the links to the stores were very much smaller and much less prominent that the tiles;
the links appeared under the, relatively speaking, prominent 7PLUS logo
there was no reference to the 7plus app at all;
getting to the software involved a 3-step process
the user had to navigate to the 7NOW page
the user then had to scroll down to links at the bottom of the page and perceived and read the words under the 7PLUS logo; and
then click on the link and be transferred to the page;
the 7NOW trade mark did not appear on the Store page
The same problem infected the claimed use for the other categories. Seven’s argument was that its 7NOW trade mark was being used for retail services because a user could buy goods of services from the websites linked by some of the tiles. So for example if one clicked on the tile for 7travel or House & Garden, this is what happened:
As with the computer software, however, the Full Court found the consumer would think the goods or services being offered from the linked website were being offered by reference to the trade mark(s) on that website. The connection between the 7NOW trade mark and the service of offering the goods or services in question for sale was not so much attenuated as severed.
If you do a Google search to buy some product, such as say a book, and the search results bring up, say, 10 or 20 links to sites from which you can buy the book, would you think Google was engaging in retailing the book?
Discretion
Finally, the Full Court rejected the appeal from the refusal to exercise the discretion against removal.
Seven placed heavy reliance on its family of 7-formative marks and its reputation in particularly the 7plus mark given there were some 12.5 million registered users of the 7plus app.
A number of factors played into the Full Court’s conclusion at [166] that the risk of confusion if another trader were to use 7NOW in relation to, say, retail services [via convenience stores] was so high that it would be reasonable to retain the registration for all categoires. Seven Network (Operations) Limited v 7-Eleven Inc [2024] FCAFC 65 (Burley, Jackson & Downes JJ)
Ms Skildum-Reid’s application for preliminary discovery against the University of Queensland (UQ) has failed for a number of reasons, the most interesting of which is Derrington J’s ruling that it is likely that a six year statute of limitations applies to infringements of moral rights.
Ms Skildum-Reid is a corporate sponsorship consultant, adviser, speaker and author. Over the years since 2006, she has given presentations at various workshops. In the course of doing so, Ms Skildum-Reid developed one or more slide decks.
In July 2023, Ms Skildum-Reid discovered through internet searches some 15 slide decks with 79 instances of what she considered plagiarism being, or having been used, in two marketing courses being run by UQ.
Through her lawyers, Ms Skildum-Reid wrote to the University stating (amongst other things):
In addition to the egregious and blatant infringement of our client’s Copyright Works, our client considers the unauthorised use of the Copyright Works by the University without any accreditation or reference to her as author (in breach of her moral rights in the Copyright Works) to constitute plagiarism and serious academic misconduct on the part of the UQ staff members who have been responsible for delivering/presenting the UQ Courses.
Correspondence between the parties’ lawyers followed, without resolving the dispute.
Ms Skildum-Reid then brought a preliminary discovery application against the University under both FCR 2011 r 7.22 and r. 7.23. That is, seeking discovery from the University of documents or information to enable her to identify a prospective respondent or, alternatively, whether she had a right to relief against the prospective respondent.
In responding to the application, however, the University provided evidence from the person running the course, a Dr Chien, that she was simply using and updating slide decks provided to her by the University when she took over the course in 2009, some 15 years earlier.
The problem
This evidence caused considerable consternation in Ms Skildum-Reid’s camp. Ms Skildum-Reid wanted to identify who were the person(s) who had prepared the slide decks passed on to Dr Chien.
As those events occurred more than six years previously, Ms Skildum-Reid ran into the limitation of actions provided by Copyright Act 1968 (Cth) s 134(1):
An action shall not be brought for an infringement of copyright or in respect of the conversion or detention of an infringing copy, or of a device (including a circumvention device) used or intended to be used for making infringing copies, after the expiration of six years from the time when the infringement took place or the infringing copy or device was made, as the case may be. (emphasis supplied)
and the University made it plain it intended to rely on s 134(1).
At the hearing of the application for preliminary discovery, Ms Skildum-Reid sought to modify her claims to include infringement of her moral rights.
By this stage, Ms Skildum-Reid had realised that any claims of copyright infringement against whomever had prepared the slide decks provided to Dr Chien were well and truly statute barred. Ms Skildum-Reid’s argument was quite simple. Section 134(1) applies only to infringement of copyright. Infringement of moral rights is not infringement of copyright so, therefore, s 134(1) has no application.
An attempted solution
The argument is that infringement of copyright is defined by ss 36 to 38 in Part III and ss 101 to 102 in Part IV. So, for example, s 36(1) provides in part that “copyright subsisting in a literary, dramatic, musical or artistic work is infringed by ….”[1] (emphasis supplied)
And, further, what constitutes copyright is defined by s 31 “Nature of copyright in original works” in the case of original literary, dramatic, musical and artistic works[2] and ss 85 – 88 in the case of other subject matter. None of these provisions confers a right of attribution or a right of integrity.
Moral rights while subsisting in original works and other (Part IV) subject matter, are not “copyright” and do not arise under Part III (original works) or Part IV (other subject matter). Instead, moral rights arise under Part IX – all the way down in s 189 and following.
These provisions include separate provisions about infringement. So, for example, s 195AO provides:
… a person infringes an author’s right of attribution of authorship in respect of a work if ….
Sections 195AP and 195AQ make corresponding provision for infringement of the moral rights of integrity and against false attribution.
No mention of “copyright” in any of them.
Despite running (in the case of “author’s rights) all the way down to s 195AZO, there is no counterpart to s 134. The Copyright Act does not in terms include a statute of limitations on moral rights claims.
The University, however, sought to invoke the six year statute of limitations on claims of tort arising under Queensland state law[3] which, the University contended, applied through s 79(1) of the Judiciary Act 1903 (Cth):
The laws of each State or Territory, including the laws relating to procedure, evidence, and the competency of witnesses, shall, except as otherwise provided by the Constitution or the laws of the Commonwealth, be binding on all Courts exercising federal jurisdiction in that State or Territory in all cases to which they are applicable.
The State statute of limitations applied
At [40] – [42], Derrington J cited the High Court’s interpretation of the role of s 79 as filling any “gaps” in Federal law by allowing the application of the relevant state or territory law in such cases.[4]
Derrington J could discern nothing in the Copyright Act or the Explanatory Memorandum for the bill introducing moral rights to suggest that a limitations period for moral rights had been deliberately excluded. Accordingly, there was a “gap” and it was generally accepted infringement of copyright, while statute based, was tortious conduct.
Rule 7.22 requires only that the prospective applicant for preliminary discovery may have a claim, not a prima facie case. Derrington J considered, however, it was still necessary to take into account the prospects of success. Pointing out at [53]:
…. It would be productive of wasted time and money to require a person to make discovery of documents to a prospective applicant in circumstances where, if the contemplated action were pursued, it would necessarily fail.
His Honour found that it was unlikely Ms Skildum-Reid would be able to avoid the operation of the Queensland Limitations of Actions Act. Accordingly, her application under r. 7.22 failed. At [54], his Honour concluded:
Here, no answer was provided to the prospective respondents’ submissions that the claims sought to be made would be barred by s 10 of the Limitation of Actions Act. Though there may be arguments that actions for the infringement of statutory intellectual property rights are not tortious in nature so that s 10 of the Act does not apply to them, such arguments would have to overturn long lines of authority to the contrary. The prospect of doing so is unlikely. In those circumstances, the prospective applicant has not established for the purposes of r 7.22(1)(a) that she may have a right to obtain relief against the unidentified previous course co-ordinator or guest lecturer for infringement of her moral rights.
The prospects of a successful claim, or rather the lack of prospects, also meant Derrington J would not have exercised the discretion in favour of ordering preliminary discovery.
Rule 7.23
Ms Skildum-Reid’s application for preliminary discovery under r 7.23 ran into other difficulties. The main problem being, having accused the University of “egregious and blatant” copyright infringement, it was rather difficult to satisfy the requirement that Ms Skildum-Reid had insufficient information to decide whether to sue or not.
Having made allegations in “emphatic and unequivocal terms”, there was nothing in her evidence explaining why she had insufficient information to decide whether to proceed. At [88] – [89]:
…. It might be inferred from her affidavit material that she believes that she has claims against the prospective respondents. However, there is nothing to suggest that her belief is only that she may have claims against them. No statement of uncertainty about the veracity of her anticipated claims, or why that uncertainty might exist, is provided. Further, she did not identify what information she lacked but needed in order to decide whether to start proceedings. (original emphasis)
These were fatal omissions. Whilst it might occasionally be possible to attribute to the prospective applicant the assertions of their solicitor or counsel for the purposes of establishing the reasonable belief, the drawing of that inference can be difficult. It is preferable, on any application for there to be direct evidence of the prospective applicant’s belief for the purposes of subparagraph (1)(a) and of the lack of information which prevents a decision being made for the purposes of (1)(b). Here, none of those matters were addressed in the affidavits relied upon.
Section 101 makes similar provision: “a copyright subsisting by virtue of this Part is infringed by ….” ?
In the case of literary, dramatic and musical works, the familiar rights to reproduce the work in a material form, publish it (for the first time), perform it in public, communicate it to the public etc. ?
s 10 of the Limitation of Actions Act 1974 (Qld). Every state and territory has equivalent legislaton. ?
Rizeq v Western Australia (2017) 262 CLR 1 at [16] (Kiefel CJ) and [90] (Bell, Gageler, Keane, Nettle and Gordon JJ). ?
