May 2009

Geographical indications

Bennett J has dismissed the Bavarian Beer (trade) association’s opposition to the Dutch company, Bavaria NV’s application to register the Bavarian Beer trade mark.

(The application is in black and white)
(The application is in black and white)

Her Honour found:

182 In summary:

    • The trade mark is inherently adapted to distinguish Bavaria NV’s goods from those of other traders and does so distinguish.
    • If the trade mark were only inherently adapted to distinguish Bavaria NV’s goods to some extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(5) of the Act.
    • If the trade mark were not inherently adapted to distinguish Bavaria NV’s goods to any extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(6) of the Act.
    • I am not satisfied that the trade mark connotes that Bavaria NV’s product comes from Bavaria or that it has certain characteristics attributable to a Bavarian origin. I am not satisfied that the use of the trade mark would be likely to deceive or cause confusion or that it would be contrary to law.
    • GENUINE BAVARIAN BEER and BAYERISCHES BEER are geographical indications for the purposes of ss 6 and 61 of the Act. Neither of these geographical indications equate with “Bavaria”. Section 61 does not refer to a sign that is substantially the same as or deceptively similar to a geographical indication. The trade mark does not contain a sign that is a geographical indication for the purposes of the Act.
    • Even if the trade mark did contain a sign that is a geographical indication for the purposes of the Act, Bavaria NV would succeed in raising the defence under s 61(2)(c) of the Act.
    • There is no discretion under s 55 of the Act to refuse to register a trade mark if none of the grounds of opposition are made out.

Professor Davison looks at the implications for (non-wine) GIs here.

I’ll just add that the Bavarians had argued s 55 of the Trade Marks Act conferred a discretion to block an application independently of the grounds of opposition. Hence the last bullet point above.

Of course, the last time I went to Europe, the Netherlands did seem to be quite some distance from Bavaria. I’m not sure what the status of the war (between the 2 sides) in Germany is.

Bennett J’s decision in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428

Geographical indications Read More »

Copyright Agenda

The Attorney General opened the Copyright Futures conference in Canberra yesterday.

As part of his speech he mentioned that last week he held a roundtable forum with ‘about 30 of the key representative groups’.

Wonder what that was about? According to the Attorney-General, some of the emerging themes were:

  • whether the Government would benefit from an independent source of advice in addition to my Department, especially for technology and competition issues 
  • access to justice considerations for individual creators and also the effectiveness of the Copyright Tribunal
  • addressing piracy in the online environment
  • the roles and responsibilities of declared collecting societies
  • whether there should be new rights for visual artists, indigenous creators  and audio-visual performers
  • the relationship between copyright and contract law, and
  • whether there should be new exceptions to allow greater access to copyright materials.

Then, he identified the Government’s agenda:

These include the issues of resale royalty legislation for visual artists and the review of restrictions on the parallel importation of books. 

I am also evaluating proposals on the use of internet material by educational institutions, the role of Internet Service Providers in relation to online infringements, and appropriate enforcement of intellectual property crimes.

There is also the push for Governments to consider how to enhance access to and re-use Government information.

(Of course, in the best traditions, the printed speech is followed by a copyright warning notice.)

The speech is online here.

Copyright Agenda Read More »

“All of a sudden we realized we were in the auction business.”

The Annual Meeting of the American Economics Association tries to work out how Google works or how AdWords changed the world:


A tidbit:

During the question-and-answer period, a man wearing a camel-colored corduroy blazer raises his hand. “Let me understand this,” he begins, half skeptical, half unsure. “You say that an auction happens every time a search takes place? That would mean millions of times a day!”

Varian smiles. “Millions,” he says, “is actually quite an understatement.”

Lid dip @joshgans

“All of a sudden we realized we were in the auction business.” Read More »

Did eBay win?

Some headlines are reporting that L’Oreal lost its trade mark infringement action in the UK against eBay. For example: here, here and here.

The basic facts were that L’Oreal was suing eBay for trade mark infringement as a result of hosting auctions in which vendors were alleged to be selling counterfeit L’Oreal products.

It seems that most of the vendors turned out to be selling parallel imports – imported from outside the European Economic Area – and so they were infringing BUT …

the IPKat reports Arnold J didn’t exonerate eBay, rather his Honour has referred some questions to the European Court of Justice. There may well be a lot more to emerge about Arnold J’s ruling itself – as you’ll see from the IPKat’s update, there are at least 482 paragraphs to scramble through (put our Federal Court to shame (thankfully!)).

From [481]:

iii) eBay Europe are not jointly liable for the infringements committed by the Fourth to Tenth Defendants.

iv) Whether eBay Europe have infringed the Link Marks by use in sponsored links and on the Site in relation to infringing goods again depends upon a number of questions of interpretation of the Trade Marks Directive upon which guidance from the ECJ is required (see paragraphs 388-392, 393-398 and 413-418 above).

v) Whether eBay Europe have a defence under Article 14 of the E-Commerce Directive is another matter upon which guidance from the ECJ is needed (see paragraphs 436-443 above).

vi) As a matter of domestic law the court has power to grant an injunction against eBay Europe by virtue of the infringements committed by the Fourth to Tenth Defendants, but the scope of the relief which Article 11 requires national courts to grant in such circumstances is another matter upon which guidance from the ECJ is required (see paragraphs 455-465 above).

L’Oréal v eBay [2009] EWHC 1094 (Ch)

Meanwhile, you’ll recall that Dowsett J held that a market operator is not liable for authorising trade mark infringement when stall holders sell counterfeit products from their stalls.

Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443

So far as I am aware, this didn’t go on appeal. Therefore, you  have to bring such allegations within the common law tort of concerted action or ‘procuring or directing’.

Did eBay win? Read More »

Acceptance by email

Logan J expresses the view, which in the end wasn’t necessary for his decision, that the instantaneous communication rule applies when considering when and where the acceptance of an offer by email occurs. That is, his Honour would employ an analogy to telexes – the place where the message is received; not the postal rule the time and place where the letter was posted.

25.  Flottweg’s acceptance was communicated by email to Olivaylle at its olive grove in Victoria. Experience suggests that email is often, but not invariably, a form of near instantaneous communication. The parties seemed content to assume that the place of contract was either Victoria or New South Wales, content because the common law of Australia was the same in either place and so, too, was the only statute law considered material. There was no suggestion in submissions that the place of contract was, for example, Germany. As a result, the ramifications of the adoption by the parties of email for their written pre-contractual communications, particularly the acceptance, were not explored. As it happens, the subject of formation of contracts by email has been explored in depth in an article by a local academic, Christensen S, “Formation of Contracts by Email Is it Just the Same as the Post?” (2001) 1(1) Queensland University of Technology Law and Justice Journal 22. Ms Christensen details there arguments for and against the assimilation of email communications with “the postal rule” or with what one might term “the instantaneous communication rule” and also the local adoption of international convention which touches on the subject. Having regard to the position taken by the parties in this case, it is not necessary to give detailed consideration to the point. It is enough to observe that I consider that there are analogies to be drawn with the way the law developed in relation to telex communications in an earlier era where what I have termed “the instantaneous communication rule” came to be adopted, perhaps at the expense of scientific precision but not so in relation to common commercial understanding. Thus, by analogy with cases concerning the position with what were, or were treated as, other forms of instantaneous communication, I consider that the contract was made where the acceptance was received, ie in Victoria: Entores Ltd v Miles Far East Corporation [1955] 2 QB 327; W A Dewhurst & Co Pty Ltd v Cawrse [1960] VR 278; Express Airways v Port Augusta Air Services [1980] Qd R 543; Reese Bros Plastics Ltd v Hamon-Sobelco Australia Pty Ltd (1988) 5 BPR 11,106.

Olivaylle Pty Ltd v Flottweg GMBH & Co KGAA (No 4) [2009] FCA 522

Lid dip Inchoate.

This seems eminently sensible in many situations, but could well prove rather random. Suppose you’re travelling from INTA and you get the email on your Blackberry (or that other phone) at LAX. Contract governed by the laws of California?

Acceptance by email Read More »

Notice and take down

If you have to send a take down notice to someone under the DMCA, send it to them and not their parent:

Prof. Goldman here; Plagiarism Today here.

Under our legislation, the notice must be sent to the carriage service provider’s “designated representative” (Reg. 20D) and the carriage service provider must publish a notice on its website prominently identifying the designated representative, and their contact details, to whom such notices should be sent: Reg. 20C.

Of course, all this begs the question, what on earth (or in cyberspace) is a “carriage service provider”? (Unhelpful) hint via s 10 of the Copyright Act, look at s 87 of the Telecommunications Act 1997.

Notice and take down Read More »

wolfing it down, er, up

Wolfram Alpha, a new search engine that attempts to answer questions, not “just” provide a list of potentially relevant websites.

According to the website:

You enter your question or calculation, and Wolfram|Alpha uses its built-in algorithms and growing collection of data to compute the answer. 

Perhaps rather more sexily, ask it what the answer to life, the universe and everything?

The Daily Telegraph has a video.

Lid dip, Joshua Gans (try his other examples).

wolfing it down, er, up Read More »

Microsoft wars

Ernie the Attorney posts an interesting review of “Free the Market” by Gary L. Reback, apparently the principal Government lawyer behind the Justice Department’s anti-trust law suit against Microsoft.

The key question posed by the book is this: do we need better government regulation of the tech sector?  Also: is the current state of technology development such that we need to re-examine how we use antitrust law to regulate it?  These are important questions, and Reback does a great job of laying the groundwork for understanding these questions.  

Fishpond’s price is AUD$36.69, which is not bad. If you do a search of the book on, you’ll see quite a number of bookshops are prepared to sell it for between US$6.60 and, say, US$20. That’s the new price, not just for used ones. The cheapest ones are mostly through Amazon. But, here’s the thing, none of them will sell them to Australia. You get a nice notice telling you that customs restrictions or somethings preclude the sale.

Customs restrictions?

Microsoft wars Read More »

IPRIA seminar on patent infringementi

IPRIA (Ass. Prof. Beth Webster and Kimberlee Weatherall) is holding a lunch time seminar reporting on the results of their survey of patent infringement in Australia:

  • in Melbourne on 9 June 2009; and
  • in Brisbane on 10 June,

at the Blake Dawson offices in those cities.

According to the blurb:

One of the great unknowns of patent policy is how much infringement actually goes on, and how much of that infringement leads to enforcement of an informal or formal kind. IPRIA recently conducted a representative survey of over 3700 Australian inventors in order to estimate the prevalence of (alleged) infringement and what formal and informal steps were taken to stop the copying activities. We present these findings along with a discussion of what can be done to improve the efficacy of patent enforcement in Australia.

The seminar is free of charge.

More information and links to the registration pages for each event here.

IPRIA seminar on patent infringementi Read More »

Linking to a website can incur $11,000 fine

Linking to a website can incur $11,000 fine Read More »

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