October 2011

ECJ’s first case on Registered Community Design

ECJ’s first case on Registered Community Design Read More »

Trade marks and survey evidence in Australia

Adidas is suing Pacific Brands, alleging that the latter’s use of 3 stripes on footwear infringes Adidas’ registered trade marks for the “3 Stripes” (the judgment doesn’t identify which trade marks or the Pacific Brands’ product(s) in question).

Adidas gave notice under CM-13 (this is .doc download link, but the terms of the practice note are also set out in the judgment) that it intended to conduct a consumer survey.

It would appear that what Adidas proposed to ask survey respondents was:
After setting out the proposed form and methodology of survey and control to be used the Notice set out the proposed survey questions as follows:
(a) Who do you think makes this shoe?
(b) Why do you say that?
(c) When did you last buy a pair of sports shoes?

Pacific Brands sought an order preventing the survey being undertaken or used. Pacific Brands argued that the survey was a waste of time and money because:

  1. it had conceded Adidas had a reputation in the 3 stripes trade mark in Australia; and
  2. whether or not the use of the stripes on Pacific Brands’ footwear was use as a trade mark or, if it was, was deceptively similar to Adidas’ trade marks,
were purely questions of law for the judge alone.
Robertson J refused to block the survey for those reasons at this early stage. His Honour considered that Gummow J’s observations in Interlego did not support Pacific Brands’ argument.
In support of this proposition, the respondent referred to Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at 387-389. I do not so read the passages in the judgment of Gummow J, with whom Black CJ and Lockhart J agreed. It is correct to say that deceptive similarity is a question for the tribunal of fact and is not a matter for any witness to decide but, as the passage cited by Gummow J from Lord Diplock’s judgment in General Electric Co (USA) v General Electric Co Ltd [1972] 1 WLR 729 at 738 makes plain, to say that a question is for the tribunal of fact or to describe it as a “jury question” does not mean that evidence going to that question is impermissible.
It might also be said that s 80 of the Evidence Act creates a problem for it too. See Cadbury Scwheppes v Darrell Lea at [49] – [57].
Adidas is not out of the woods yet. It would appear that Pacific Brands have identified defects in the proposed survey itself. Robertson J indicated what Pacific Brands should have done is identify those defects as part of the CM-13 process.
What the defects may be is not identified (and his Honour was not necessarily agreeing that they were defects). At least questions (a) and (b) set out above seem to be the sort of questions which courts have typically found acceptable, at least since the Jif Lemon case, as they do not involve the survey respondent engaging in undue speculation. I guess we shall have to wait and see if anything further emerges.
Adidas AG v Pacific Brands Footwear Pty Ltd [2011] FCA 1205

Trade marks and survey evidence in Australia Read More »

EU bans stem cell patents

The European Court of Justice has ruled that human embryonic stems cells are not patentable subject matter in the EU.

Article 6 of the Biotechnology Directive, 98/44/EC, provides:

1. Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.

2. On the basis of paragraph 1, the following, in particular, shall be considered unpatentable: (a) processes for cloning human beings; (b) processes for modifying the germ line genetic identity of human beings; (c) uses of human embryos for industrial or commercial purposes; (d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.

A Mr Brüstle had a patent in Germany relating to isolated and purified neural precursor cells, processes for their production from embryonic stem cells and the use of neural precursor cells for the treatment of neural defects. It would appear this involved use of isolated and purified precursor cells having neural or glial properties, obtained from embryonic stem cells. That in turn appears to have involved removal of stem cells from the embryo at the blatocyst stage which, in turn, resulted in destruction of the embryo.

Greenpeace sought to invalidate it.

The ECJ had to consider first the meaning of human embryo:

– any human ovum after fertilisation, any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted and any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a ‘human embryo’ within the meaning of Article 6(2)(c) of the Directive;


– it is for the referring court to ascertain, in the light of scientific developments, whether a stem cell obtained from a human embryo at the blastocyst stage constitutes a ‘human embryo’ within the meaning of Article 6(2)(c) of the Directive.

Secondly, the ECJ considered that the use of human embryos in research for patentable subject matter was prohibited by paragraph 6(2)(c), but use for the development of therapeutic or diagnostic purposes applied to human embryos could be patentable if useful.

Thirdly, the ECJ ruled that:

Article 6(2)(c) of the Directive excludes an invention from patentability where the technical teaching which is the subject-matter of the patent application requires the prior destruction of human embryos or their use as base material, whatever the stage at which that takes place and even if the description of the technical teaching claimed does not refer to the use of human embryos.

IPKat here; Scientific American here; Patent Docs here.  Lid dip Ian Pascarl and Penny Smith

S 18(2) of our Act provides:

(2) Human beings, and the biological processes for their generation, are not patentable inventions.

As a result of that prohibition, the Deputy Commissioner has rejected the patentability of

40. Claims 10 to 23 are directed to a method of growing preblastocyst human embryos. It is a method applied to a human embryo. The method has clear advantages in better simulating the natural environment, and reducing apoptosis of cells in the blastocyst, resulting in greater success in implantation, and babies of greater body mass and having fewer complications compared to IVF babies born without the benefit of the method – all of which demonstrates that the process is one that directly relates to the generation of a human being. The process is a biological process – it is a process involving the presence of a chemical such that the in vitro environment better simulates the natural fallopian tube environment. I am satisfied that these claims fall within the ambit of `biological processes for {the generation of human beings}’ as proscribed by s.18(2).

Fertilitescentrum AB and Luminis Pty. Ltd [2004] APO 19. There is presumably some scope to patent embryonic stem cells at least where they do not relate to the biological processes for the generation of human beings. Thus, in H Bion Inc v Commissioner of Patents [2010] FCA 539 a patent application entitled “Embryonic Stem Cell Line and Method of Preparing the Same was accepted. The acceptance was subsequently withdrawn, however, on grounds of fraud or misrepresentation. The decision does not make it clear what the fraud related to.






EU bans stem cell patents Read More »

Apple v Samsung

Belated link to Bennett J’s reasons for granting the interlocutory injunction against Samsung’s Galaxy Tab:

Apple Inc. v Samsung Electronics Co. Limited [2011] FCA 1164

It has now been reported that Samsung has appealed, with Gerry Harvey in support.

Samsung is also reported to be bringing claims of patent infringement against Australia and Japan, although the patents it is asserting in Australia are apparently counterparts to the ‘frand’ patents which a Dutch court refused to grant injunctions for. For the ‘frand’ issue in ND California.

Apple v Samsung Read More »

Copyright safe harbour scheme review Mk 2

Last Friday, the Commonwealth Attorney-General released a Consultation Paper on ‘Revising the Scope of the Copyright Safe Harbour Scheme’.

As reported then, there were two components to that review.

Over the weekend, the second component – streamlining the notice and take down procedures – has been edited out of the revised version (pdf) (doc version via here).

So now, the consultation paper just relates to re-defining “carriage service provider“.

There’s a fact sheet on how the scheme currently works. Unfortunately, the links to the previous review and submissions seem to have been taken down.

Last Friday’s post referred to the US-Australia Free Trade Agreement. The relevant provision is in chapter 17. So far as the protections apply to service providers, Art. 17.11 paragraph 29 provides:

(xii) For the purposes of the function referred to in clause (i)(A), service provider means a provider of transmission, routing, or connections for digital online communications without modification of their content between or among points specified by the user of material of the user’s choosing, and for the purposes of the functions referred to in clause (i)(B) through (D), service provider means a provider or operator of facilities for online services or network access.

This may be contrasted with the corresponding provision in the “parent” of article 17.11, §512(k) (pdf) of the US Copyright Act which defines service provider for the purposes of the DMCA safe harbours as follows:

(1) Service provider.—(A) As used in subsection (a), the term “service provider” means an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received. (B) As used in this section, other than subsection (a), the term “service provider” means a provider of online services or network access, or the operator of facilities therefor, and includes an entity described in sub- paragraph (A).

At least, the US definition appears to make it clear that a service provider may be one who provides services not just, as the Australian legislation seems to have been drafted to reflect, only providers, or operators, of facilities for such services. Given the nebulous nature of the term ‘facilities’, however, that may be a difference more imagined than real.

Although it doesn’t provide any “binding” authority like the Free Trade Agreement, the EU directives proceed on the basis of persons providing “information society services”. See e.g. art.s 12 -15 of the E-Commerce Directive, DIRECTIVE 2000/31/EC (pdf).

Lid dip: Leanne O’Donnell.

Copyright safe harbour scheme review Mk 2 Read More »

Copyright safe harbour scheme

Links to the Consulatation Paper on the Copyright safe harbour scheme for carriage service providers.

Broadly, the safe harbour schemes provide some protection from some remedies for carriage service providers:

Category A – acting as a conduit for internet activities by providing facilities for transmitting, routing or providing connections for copyright material
Category B – caching through an automatic process
Category C – storing copyright material on their systems or networks, and
Category D – referring users to an online location (for example, linking).

The first problem is that the definition of csp isFrom


the Telco Act (i.e.) those providing the, er, telephone service. Didn’t cover Google or Yahoo or a whole host of other Internet service providers. The Australian definition is much narrower than the US definition. So, the Government is exploring broadening this.

There may be a question of what the US Free Trade Agreement permits.

The second question is looking at ways to streamline the notice system.

Lid dip Libby Baulch

Submissions must be in by 22 November 2011.

Copyright safe harbour scheme Read More »

Apple gets interlocutory injunction against Samsung

Apple gets interlocutory injunction against Samsung Read More »

The future (?) for booksellers

Remember all the fuss when the Minister (was reported to have) said all the bookshops (except those in the big cities) were going to close? (or something like that).

It would appear that his comments may have arisen from a report by the Book Industry Study Group.

The report is not public yet, but the 138 submissions are and so is the Market Analysis Research Report from PWC (pdf).

There are lots of facts and figures in there. You may even recognise this as a world you live in:

Lengthy delivery times and insufficient availability of eBook titles are seen as impeding the competitiveness of Australia’s booksellers (‘bricks and mortar’ and online).

On the question of insufficient availability:

Options to improve business models for publishers could involve entering into international agreements to share global rights, competing directly for global rights, and controlling costs through centralisation. Experimentation will remain a priority for book publishers.

“Sharing” global rights probably won’t help the availability problem for electronic titles as that seems to be the cause of the problem. As a consumer, don’t I want less “sharing” so that when things become available electronically overseas I can get access to them now?


The available evidence suggests that overseas online booksellers are generally able to sell books published overseas at prices (including delivery) that are cheaper than those charged by Australian online booksellers. The price competitiveness of Australian booksellers is affected by the GST, the exchange rate, wholesale book prices, and postage costs.

On postage costs:

Our initial analysis suggests that an Australian business posting a book-like parcel to an Australian address would pay approximately 90 per cent more than a British business would to post the same package to the same address.

Well, if you’ve ever bought a book from The Book Depository, you know you don’t pay anything like the $10+ an Australian retailer charges you -$0. So why would you pay $30+ for a new paperback if you can get it for $10 – 15 from The Book Depository or electronically from Kindle/iBook/Nook?

Being old fashioned, I do enjoy wandering into a book store and browsing, but spending an extra $20 for a paperback which I (usually) only read once?

I do also enjoy reading books set in Australia or, more portentously, about the Australian experience. These cost pressures, however, will surely mean that Australian books will have to become cheaper to compete. It will be interesting to see how the Book Industry Study Group tries to solve that conundrum.

Lid dips: @isobelclare and @smh


The future (?) for booksellers Read More »

More plain packaging for tobacco products

Back in July, the Government introduced the Tobacco Plain Packaging Bill and related legislation.

As you will recall it generated quite some controversy as it effectively bans the use of some types of trade marks and severely restricts the way others can be used. It has passed the House and, now that the Senate’s Legal and Constitutional Affairs committee has recommended the Trade Marks Amendment (Tobacco Plain Packaging) Bill be passed, is due to return to the Senate for passage, with the aim that all product on shelves on 1 July 2012 will comply with the new rules.

The Government has now released a second round of consultations on the form the packaging should take for cigars and other non-cigarette tobacco products.

Submissions should be received by 28 October 2011 with the resulting regulations expected to released in January 2012.

Consultation paper (pdf)

More plain packaging for tobacco products Read More »

Australia signed up to ACTA

Last Saturday, while half of us were trying not to watch Meat Loaf earn a reported $500,ooo (here, here or here) or tweeting, the Minister for Trade travelled to Japan to sign ACTA (the Department’s home page currently has a photograph of the actual signing).

According to the Minister’s Press Release:

The implementation of ACTA will not require legislative changes in Australia. Rather, trading partners will adapt their laws to the high standards of IP enforcement that already apply in Australia.

According to the USTR, no changes would be required to US law either.

The Minister for Trade’s Press Release states that Australia is one of 10 countries attending the signing + the EU. Howard Knopf reports that those signing included Australia, Canada,  Japan, Morocco, New Zealand, Singapore, (South) Korea & USA, but the EU didn’t. According to ZDNet, the EU still working on it. So this may be a bit “optimistic”.

According to the USTR, the EU, Mexico and Switzerland did attend and “confirmed their continuing strong support for and preparations to sign the Agreement as soon as practicable”.

Lid dip @howardknopf

Australia signed up to ACTA Read More »

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