Author name: war

A barrister practising mainly in Australian patents, trade marks, copyright and other IP law; lecturer and contributing author to LexisNexis' Copyright & Designs and Patents looseleaf services

What do you get when you are granted an exclusive territory

Leave a Comment / Franchising, IP generally / / / , , , , , ,

This case is a franchising case, but it explores the legal consequences of granting an exclusive territory and so should be of interest to IP practitioners too.

Some facts

Spanline carries on a business of providing home additions and extensions such as awnings and patios. It operates nationally through a network of franchisees and sub-franchisees.

In 2001, Spanline appointed RPR as its exclusive franchisee for the South Coast of NSW. RPR was based in Nowra, but its territory also included the Illawarra region and the Southern Highlands. The Southern Highlands were about an hour’s drive from Nowra, but much closer to the Illawarra region.

In 2004, RPR granted Marmax a sub-franchise for the Illawarra region. That was in anticipation of events which finally took place in 2005. In 2005, RPR sold its business in the Illawarra region to Marmax and Spanline granted a new, exclusive franchise over the Illawarra region to Marmax.

In 2007, Marmax began selling to customers in the Southern Highlands. The first time RPR complained to Spanline, Spanline did nothing. It said it could find nothing amiss although, if it had conducted even a cursory search of its database, it would have found that Marmax was indeed selling in RPR’s territory.

Spanline met with Marmax in July 2009 and orally approved Marmax continuing to service customers from the Southern Highlands. Spanline considered this was in its commercial interests as RPR refused to open an office in the Southern Highlands and Spanline was concerned business from potential customers in the Southern Highlands would be lost because they would not travel to Nowra.

After yet further complaints from RPR, Spanline sent Marmax a letter in September 2009 telling it not to sell in RPR’s territory. But Marmax’ subsequent telephone call left Marmax with the understanding that it could continue in line with the July 2009 oral permission.

An attempt to negotiate a co-existence arrangement over the Southern Highlands failed as RPR would not agree to the proposed reduction in its exclusivity and Spanline authorised Marmax to continue.

The result

The trial judge had awarded RPR damages from both Spanline and Marmax: Spanline for breach of the exclusivity arrangements in the franchise agreement; Marmax for breach of the terms of the sale of business agreement.

The Full Court allowed Marmax’s appeal. The Full Court also partially allowed Spanline’s appeal, finding it liable to pay damages only for sales by Marmax in RPR’s territory after Spanline gave Marmax oral permission to continue selling in the Southern Highlands.

What kind of exclusivity was the exclusive territory

Spanline first argued that the grant of the exclusive right “to conduct the Franchised Business in the [Franchised] Territory” was just a promise to be the only franchisee located in the territory and not directed to the location of customers. The Full Court agreed with the trial judge that the exclusivity extended to the customers. The definition of Franchised Business extended to installation of the products. Also, the nature of the business was supplying and installing products in retail customers’ homes.

What did the promise of exclusivity mean

The trial judge had found Spanline in breach of its obligations to RPR implied by the grant of exclusivity both by failing to undertake even the most rudimentary investigation of RPR’s initial complaints as well as by failing to stop Marmax from selling into RPR’s territory, both before and after Spanline gave Marmax oral permission to sell to customers in the Southern Highlands and authorising Marmax to sell in RPR’s exclusive territory.

The promise of exclusivity imported with it implied terms of good faith and fair dealing and an implied term to co-operate: to do all things necessary to ensue each party got the benefit of its bargain. In doing so, the trial judge had relied on Far Horizons Pty Ltd v McDonald’s Australia Ltd [2000] VSC 310 and similar cases.

The Full Court did not disagree that those terms should be implied. Instead, it disagreed about their content. In essence, the Full Court held that the grant of an exclusive territory required Spanline only to refrain from taking positive steps to derogate from the grant of exclusivity or to authorise someone else to invade the territory. The Full Court said:

[139] …. In our view, the content of the obligation to do all things necessary to give the other party the benefit of the contract required Spanline to refrain from taking positive steps that would infringe upon or cause a third party to infringe upon the exclusive franchise granted to RPR. To require Spanline to do more, such as to take positive steps to investigate possible incursions by Marmax upon the rights of RPR, would exceed the requirement of necessity. It could not be said that the absence of a requirement to investigate such conduct would render the RPR Franchise agreement nugatory, worthless or seriously undermined.

[140] For the same reasons, we also do not accept RPR’s contention that Spanline was under an obligation to take steps to enforce its contractual rights against Marmax for the benefit of RPR.

At [150], the Full Court held that the implied duty to act in good faith did not require anything more than the implied duty to co-operate.

What did this mean? First, Spanline had no obligation to do anything to protect RPR or to try to stop Marmax invading RPR’s territory. (Any of us who might have thought that setting up a network of exclusive territories might have implied such an obligation would apparently be wrong.)

As already noted, therefore, Spanline was only liable to RPR for damages on sales[1] made by Marmax in RPR’s territory after Spanline gave Marmax permission to carry on. Spanline was not liable for sales while it was just “sitting on its hands”.

If you were acting for a franchisee, or an exclusive licensee, of a territory which did not extend to the whole of Australia, you would want to consider bargaining for a term requiring the franchisor (or licensor) to do “something”.

In this connection, the Full Court expressed an additional concern about implying a term that Spanline take reasonable steps to ensure RPR’s territory remained exclusive. It was likely to be uncertain in scope:

[141] …. The mere fact that the term operates by reference to a criterion of reasonableness is not the problem: it is that the contract does not supply any means for determining what is reasonable in the circumstances. It was argued that Spanline’s obligation to RPR could extend to termination of the contractual relationship between Spanline and Marmax. How the interests of Spanline and Marmax would be taken into account in determining whether such a step would be “reasonable” was not explored.

Something rather explicit would seem to be required

Why didn’t Marmax have to pay damages

RPR argued that Marmax was also in breach of both the original sub-franchise agreement and the sale of business agreement.

The Full Court held that the initial sub-franchise agreement between RPR and Marmax had been terminated once RPR and Marmax entered into the sale of business agreement and Spanline granted exclusivity over the Illawarra region to Marmax (with RPR’s knowledge and consent).

The Full Court accepted that a restraint on Marmax selling in RPR’s (retained) territory would not have been an unreasonable restraint of trade. However, the restraints imposed in the sale of business agreement did not extend to Marmax’ activities.

The sale of business agreement did include a restraint clause which seems fairly typical:

Except as permitted by clause 3.10, Marmax must not, and must ensure that each of its affiliates does not, during each restraint period in the South Coast Franchise Area:

(a) promote, participate in, finance, operate or engage in (whether on its own account or in partnership or by joint-venture); or

(b) be concerned or interested (directly or indirectly, or through any interposed body corporate, trust, principal, agent, shareholder, beneficiary, or as an independent contract, consultant or in any other capacity) in,

any of the Restrained Businesses.

For this purpose, “Restrained Business” was defined to mean:

a business, or operation:

(i) similar to the Spanline franchise businesses such as the Business; or

(ii) competitive with the Spanline franchise businesses such as the Business; or

(iii) supplying similar products and services to the Spanline franchise businesses such as the Business.

As best I can make out, this clause did not provide any protection to RPR because Marmax was conducting a Spanline franchise business, not a competing or similar business. There was also a “non-interference” clause:

On and from the Completion Date, [RPR] must not, and must ensure that each of its affiliates does not, during each restraint period:

a) Solicit, canvas or secure the custom of a person who is at the Completion Date, or was within 1 year before the Adjustment Date, a customer of the Business or [RPR] in connection with the Business;

b) Represent itself as being in any way connected with, interested in or associated with the Business (except as its proprietor before the Completion Date) or any business conduct by Marmax; or

c) Solicit, employ or engage the services of any transferring employee or any other person who becomes an employee of Marmax in connection with the Business.

The remarkable feature about the non-interference clause is that it was one way. There was no reciprocal obligation on Marmax not to interfere with RPR’s continuing business.

As a result, Marmax was not in breach of any contractual obligations it owed to RPR and the award of damages for making sales in RPR’s territories could not be sustained.

Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd [2015] FCAFC 127 (Middleton, Foster and Gleeson JJ)

  1. Strictly speaking, damages for the loss of the opportunity to make those sales.  ?

What do you get when you are granted an exclusive territory Read More »

When can an authorised user sue

Leave a Comment / Trade marks / / / , , , , , , , ,

Following on from my earlier post about the Trade Marks Act 1995 and repackaged goods, it is worth noting that there was also a dispute about the power of an authorised user to bring proceedings under s 26(1)(b) of the Act.

Amongst other things, section s 26(1)(b) provides:

Powers of authorised user of registered trade mark

(1) Subject to any agreement between the registered owner of a registered trade mark and an authorised user of the trade mark, the authorised user may do any of the following:

….

(b) the authorised user may (subject to subsection (2)) bring an action for infringement of the trade mark:

   (i) at any time, with the consent of the registered owner; or

  (ii) during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or

  (iii) after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period;

Scandinavian Tobacco Group Eersel, as the owner of the registered trade marks, had brought the proceeding, but it was joined as an applicant by its local distributor as an authorised user. Trojan argued that the authorised user had no standing to sue in this case. This was not an argument about whether the local distributor was an authorised user. Rather, it was whether or not the formal requirements of s 26(1)(b) had been met.

Allsop CJ confirmed that s 26(1)(b) allowed an authorised user to bring proceedings for trade mark infringement concurrently with the trade mark owner. It was not necessary for the authorised user to call on the registered owner to bring proceedings and then wait 60 days for the owner to fail to take any action.

The power of an authorised user under the Act to bring proceedings is subject to any agreement with the registered owner to the contrary. In that connection Cl 8 of the relevant distribution agreement is in fairly typical terms:

Nothing in this Agreement shall be interpreted or otherwise construed as giving the Distributor any rights to any of the Supplier Trade Marks. The Distributor shall inform the Supplier of any Infringements of the Supplier Trade Marks of which the Distributor becomes aware. Prosecutions for infringements shall be at the Supplier’s discretion and cost, but the Distributor shall offer all reasonable assistance. Any damages received shall be credited to the Supplier.

Allsop CJ considered this did not exclude the authorised user’s powers under s 26(1)(b) but, if it did, his Honour would have inferred the registered owner had given consent in the circumstances of this case: both the registered owner and the authorised user had issued the proceedings as joint applicants.

The question of the local distributor’s standing as an authorised user to bring proceedings is not necessarily an arid debate in cases where the right owner is also an applicant. It might have affected how much damages could be recovered for any infringement by Trojan.

There are of course a number of ways damages could be calculated (assuming damages and not an account of profits were pursued). One way of calculating such damages is the amount of profits that would have been made on sales lost as a result of the infringing activity. If s 123 had not provided Trojan with a defence and the applicants had pursued damages for lost sales, the quantum as measured by any profits lost by reason of the (hypothetical) infringement would probably include the local distributor’s “lost” profits only if it was an authorised user and entitled to join in the proceeding. If STG, as the owner of the registered trade marks, was the only applicant, its damages would probably have been limited only to the profits it lost on sales to its distributor and probably would not include profits on sales “lost” by the distributor.[1]

Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2015] FCA 1086[2]

  1. The qualification “probably” is necessary in light of the Full Court’s decision in a copyright case: Insight SRC IP Holdings Pty Ltd v Australian Council for Educational Research Ltd [2013] FCAFC 62  ?
  2. STG’s appeal from the principal decision was heard by the Full Court on 25 November.  ?

When can an authorised user sue Read More »

Parallel imports – repackaging Down Under

1 Comment / Trade marks / / / , , , , , ,

Scandinavian Tobacco Group Eersel (STG) is the world’s largest manufacturer of cigars and pipe tobacco. Three of its brands include CAFE CREME, LA PAZ and HENRY WINTERMANS; each of which is registered in Australia as a trade mark for tobacco products.

Trojan bought up stocks of genuine STG cigars in Europe in their original packaging. STG had placed the relevant trade marks on the cigars or their packaging.

The Tobacco Plain Packaging Act, however, precludes the sale of such cigars in Australia in their packaging. Trojan took the cigars out of the packaging which STG sold them in and put them in the drab, khaki packaging with gruesome pictures and health warnings as required under the TPPA. It also placed on the new packaging the relevant trade mark in the plain font and type size in the limited places that the TPPA allows.

STG sued for infringement unsuccessfully. Trojan did use the trade marks as trade marks within the meaning of s 120, but the defence provided by s 123(1) applied.

Allsop CJ held that use of the trade mark by an importer on genuine goods was use of the trade mark “as a trade mark” and so would infringe if done without consent or other defence. While appearing to express some doubts, his Honour considered that 4 Full Courts[1] required him to find that the 1995 Act changed the law so that Champagne Heidsieck[2] was no longer good law. Accordingly, subject to the s 123 defence, Trojan would have infringed.

Section 123(1) provides:

In spite of [section 120][s120], a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

This seems like a pretty straightforward application of s 123(1). STG argued, however, that the application of the trade mark which Trojan had to show STG’s consent was the application to the plain packaging by Trojan, not the application of the trade mark to the original packaging by STG.

Allsop CJ short circuited that argument. His Honour got STG to agree that a retailer could rely on s 123(1) to avoid infringement if it printed the trade mark on a purchase receipt. One would hope that proposition was not controversial. At [82], his Honour developed the ramifications:

During argument, I posited to Mr Heerey, counsel for STG, an example: a tie with
trade mark Z woven into the tie, in a pink box with trade mark Z embossed on the box. Both trade marks have been applied by the registered owner. The shop owner advertises his stock of Z ties with a sign outside bearing trade mark Z and invoices customers with a document bearing the same mark. Mr Heerey accepted that there would be no infringement in the use of the advertising and invoices even though such use would be use as a trade mark because of the operation of s 123: Facton Ltd v Toast Sales Group Pty Ltd [2012] FCA 612; 205 FCR 378 at 398–404 [112]-[145]. (It is to be noted, and Trojan emphasised this point in its submissions, that Middleton J in Facton said at [132] that “a natural reading of the words used in s 123 suggest that the only time at which the issue of consent is to be assessed is the time of the application of the trade mark to goods.”) I then posited a change to the facts. The
shop owner preferred selling the tie in a blue box (fitting in with a blue theme to his shop) upon which he faithfully and accurately placed the trade mark Z. The tie was taken out of the pink box (which was discarded) and put in the blue box for display and sale. STG submitted that the step of placing the Z trade mark on the blue box would not be protected by s 123, but accepted that the sign and invoices remained protected. That was so, it was submitted, because of an implied consent by the registered owner of the trade mark to the advertising and invoices in the light of the trade mark on the tie. Yet, should the difference be governed by the existence of weaving on the tie? Has not the trade mark already been applied in relation to the good (the tie) by embossing on the pink box?

Allsop CJ considered that the plain, natural meaning of the statutory language led to the answer “Yes” and was to be preferred.

In this case, there was no question about the quality of the goods once Trojan had repackaged them. Section 123(1) arguably does not concern itself with such matters. Nonetheless, the approach under the Australian Act contrasts starkly with the convoluted regime applicable in the EU which even requires the parallel importing repackager to give the trade mark owner advance notice of its nefarious plans.[3]

Scandinavian Tobacco Group Eersel BV v Trojan Trading Company Pty Ltd [2015] FCA 1086

  1. The famous four: Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd [1999] FCA 329; 93 FCR 421 at 440 [94]; [Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd [2012] FCAFC 51; 202 FCR 286 at 295 [66]; Paul’s Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130; 294 ALR 72 at 82 [65] and E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; 175 FCR 386 at 403–404 [57]- [58]. The two Paul’s Retail cases, of course, did not involve genuine goods and the High Court in Gallo refrained from deciding this point while overtuning the Full Federal Court’s decision.  ?
  2. Champagne Heidsieck et cie Monopole Society Anonyme v Buxton [1930] 1 Ch 330.  ?
  3. See for example Case C–143/00 Boehringer Ingelheim KG v Swingward Ltd and Dowelhurst Ltd [2002] ECR–1 at [61] – [68].  ?

Parallel imports – repackaging Down Under Read More »

Harper Review: Government Response

Leave a Comment / Copyright, IP generally, Trade marks / / / , , , , , , , ,

Yesterday (November 24), the Government published its response to the Competition (Harper) Review.

According to the response, “Harper” made 5556 recommendations; the Government has accepted 39 of them in full, 5 in part and the remainder are still under advisement.

In the intellectual property field, the item receiving most press (here and here) is the Government’s acceptance of the recommendation to remove all remaining restrictions on parallel importing books. At the moment,[1] the importation of a genuine book published first in Australia or within 30 days of first publication overseas may be blocked provided the copyright owner complies with the convoluted regime to supply copies in response to an order. This guarantees availability, but still leaves the copyright owner free to set the price it charges the person placing the order.

Harper recommended:

Restrictions on parallel imports should be removed unless it can be shown that:

• the benefits of the restrictions to the community as a whole outweigh the costs; and

• the objectives of the restrictions can only be achieved by restricting competition.

Consistent with the recommendations of recent Productivity Commission reviews, parallel import restrictions on books and second?hand cars should be removed, subject to transitional arrangements as recommended by the Productivity Commission.

Remaining provisions of the Copyright Act 1968 that restrict parallel imports, and the parallel importation defence under the Trade Marks Act 1995, should be reviewed by an independent body, such as the Productivity Commission.

What the Government plans:

The Government supports the removal of parallel import restrictions on books. The Government will progress this recommendation following the Productivity Commission’s inquiry into Australia’s intellectual property arrangements (see Recommendations 6 above) and consultations with the sector on transitional arrangements.

The terms of reference for the inquiry provide that the Productivity Commission is to have regard to the findings and recommendations of the Harper Review in the context of the Government’s response, including recommendations related to parallel import restrictions in the Copyright Act 1968 and the parallel importation defence under the Trade Marks Act 1995.[2]

Harper’s recommendation 6 was a reference to the Productivity Commission to undertake a 12 month long “overarching review of intellectual property” focusing on

competition policy issues in intellectual property arising from new developments in technology and markets; and the principles underpinning the inclusion of intellectual property provisions in international trade agreements.

The Government response notes that in August it had already made this reference to the Productivity Commission.[3] The response on this point is curiously even-handed. The Productivty Commission:

is to have regard to Australia’s international arrangements, including obligations accepted under bilateral, multilateral and regional trade agreements to which Australia is a party. The global economy and technology are changing and there have been increases in the scope and duration of intellectual property protection. Excessive intellectual property protection can result in higher costs for Australian businesses and consumers and inhibit innovation. However, weak intellectual property protection can lead to under?investment in research and development (R&D) which also stifles innovation. A comprehensive evaluation of Australia’s intellectual property framework is needed to ensure that the appropriate balance exists between incentives for innovation and investment and the interests of both individuals and businesses, including small businesses, in accessing ideas and products. (emphasis supplied)

However, an independent inquiry into the processes for negotiating intellectual property provisions in treaties is not necessary: there are already robust processes in place and publishing an independent cost benefit analysis before the negotiations have concluded might tip our hand in the negotiations.

Section 51(3) gained a slight reprieve. Harper’s recommendation 7 was that it be repealed (and a new power for the ACCC to create block exemptions be introduced). Despite Prof. Harper’s injunctions that this is old news and we should just, er, do it, the Government thinks it should wait and see what the Productivity Commission says. Anyone betting the Productivity Commission won’t recommend …?

The Government also supports conferring a power to grant block exemptions on the ACCC:

A block exemption removes the need to make individual applications for exemption. The exemption is granted if the competition regulator considers that certain conditions are satisfied: either that the category of conduct is unlikely to damage competition; or that the conduct is likely to generate a net public benefit.

A block exemption power that supplements the existing authorisation and notification frameworks will be helpful in establishing ‘safe harbours’ for business. Block exemptions will reduce compliance costs and provide further certainty about the application of the CCA. They are an efficient way to deal with certain types of business conduct that are unlikely to raise competition concerns, either because of the parties engaged in the conduct or the nature of the conduct itself.

So, in the interests of promoting competition, we are going to introduce a European-style power for the regulator to design the marketplace.

  1. Copyright Act s 44A.  ?
  2. The Government also said it would not proceed with the recommendation about second hand cars, in the interests of consumer protection and community safety.  ?
  3. Indeed, you should already be putting the finishing touches on your submissions in response to the Issue Paper since they are due on Monday!  ?

Harper Review: Government Response Read More »

Section 155 notices

Leave a Comment / Enforcement / / / , , , , , , ,

Under s 155 of the Competition and Consumer Act 2010, the ACCC can issue a notice to a person requiring them to provide information and answer questions. Failure to comply, or knowingly furnishing false or misleading information in response, is a criminal offence.

Natural Food Vending Pty Ltd was served with one such notice and failed to comply. Davies was its sole director and was convicted of aiding, abetting, counselling or procuring that failure.

The Act provides for a maximum fine of 20 penalty units ($2200) or up to 12 months imprisonment. Reeves J considered that the particular offending in this case did not warrant a sentence of imprisonment. His Honour further considered that a fine, given Davies’ impecuniosity, would effectively lead to his imprisonment on his default. Accordingly, Reeves J has now sentenced Davies to 200 hours community service provided he does not commit another offence during the service period.

Australian Competition and Consumer Commission v Davies (No 2) [2015] FCA 1290

Section 155 notices Read More »

The official Text Of The Trans Pacific Partnership (TPP) Has Now Been Published

Leave a Comment / Trade / / / ,

Full text of TPP here.

IP chapter here.

Lid dip: Prof. Cotter

The official Text Of The Trans Pacific Partnership (TPP) Has Now Been Published Read More »

The word yellow is descriptive of online directories

Leave a Comment / Trade marks / / / , , , , , , , , , , , , , , ,

Telstra has lost its appeal in the “Yellow” case.

The Full Court upheld the trial judge’s conclusion that the word “yellow” lacked any capacity to distinguish print or online directories under (the old version of) s 41. However, the Full Court accepted that the word “yellow” had become sufficiently distinctive of Telstra by reason of use and promotion after the date of the application that it would have been registrable if it had had some inherent capacity to distinguish.

Following the High Court’s ruling in “Oro/Cinque Stelle“, the Full Court agreed with the trial judge that the word “yellow” signifies the colour yellow and the evidence showed that the colour yellow signified print and online directories. Consequently, the word itself was descriptive. At [117], in considering the ordinary signification of the word, the Full Court said:

We would say at the outset that it was appropriate for Telstra to proceed on the basis that capacity to distinguish could not be decided by reference to inherent adaption alone even if the Court accepted all of its arguments. The word yellow describes a colour and, even without evidence, it would be appropriate to infer that at least some other traders might wish to use that colour. Furthermore, there was at the very least evidence in this case of not infrequent use of the colour yellow in connection with print and online directories.

The Full Court then considered that the evidence of use by other traders in print and online directories confirmed that consumers did in fact consider the word “yellow” descriptive of such directories. Like the trial judge, the Full Court took into account the usage of traders overseas as well as within Australia, although it may have been to support the good faith of the local traders’ use.

Survey and acquired distinctiveness – s 41(5)

If the word “yellow” had had some capacity to distinguish print and online directories, the Full Court would have allowed Telstra’s appeal that it had become sufficiently distinctive under s 41(5) by use after application. A 2008 survey (not the 2007 survey relied on by the primary judge) showed that after several years of use including millions of dollars of expenditure on advertising, at least 12% of the survey respondents identified (associated?) the word “yellow” with Telstra’s directory unprompted. A further 4%, making 16% in total, had similar unprompted association.

The Full Court distinguished British Sugar and held that would be sufficient. (The report does not disclose the terms of the question that elicited those responses.) Arguably, makes a nice contrast to the Oro/Cinque Stelle case.

What about .com.au

In dismissing a second, cross-appeal in which yellowbook.com.au was found to be deceptively similar to Telstra’s Yellow Pages trade mark, the Full Court treated the domain name “accoutrement” .com.au as largely insignificant for the purposes of the deceptive similarity analysis.

The interesting point here is that the Full Court considered this may not always be the case. It was appropriate to disregard the element here in the context where the services were online directories and consumers were shown largely to disregard such elements.

The question of onus

The Full Court also seems to have resolved the ongoing disputes about the onus of proof. The Full Court held that the opponent has the onus of proving that a proposed trade mark has no inherent capacity to distinguish. It further held that that onus was on the balance of probabilities, not the practically certain standard which some courts at first instance have applied.

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 (Besanko, Jagot and Edelman JJ)

The word yellow is descriptive of online directories Read More »

TPP Workshop

Leave a Comment / IP generally, Trade / /

The University of Melbourne’ Global Economic Law Network is holding a Workshop on the TPP (DFAT page, Wikipedia):

TPP Revealed

Friday 13 November.

Apparently, it is expected that the TPP itself will be published a few days before.

For details and registration (including registration fee) click here.

TPP Workshop Read More »

IP Australia consults on patenting genetic material post Myriad

Leave a Comment / Patents / / / , , , , , ,

Following the High Court’s ruling that Myriad’s claims for isolated DNA relating to BRCA1 were not patentable subject matter, IP Australia has released a “consultation” on how it proposes to treat patent applications claiming genetic material.

The Commissioner considers that the High Court’s ruling excludes from ‘manner of manufacture’ a claim “to an isolated nucleic acid that merely represents information coding for a polypeptide is not patent eligible.”

Accordingly, at this stage, IP Australia contemplates rejecting as not manners of manufactures claims to:

  • Naturally occurring (human) nucleic acid sequences encoding polypeptides or functional fragments thereof -either isolated or synthesised
  • Naturally occurring (non-human) nucleic acid sequences encoding polypeptides or functional fragments thereof – either isolated or synthesised
  • cDNA
  • Naturally occurring human and non-human coding RNA – either isolated or synthesised

On the other hand, IP Australia considers the following could be patent subject matter:

  • Naturally occurring isolated regulatory DNA (e.g. promoters, enhancers, inhibitors, intergenic DNA)
  • Isolated non-coding (e.g. “Junk”) DNA
  • Isolated non-coding RNA (e.g. miRNA)
  • Naturally occurring isolated bacteria
  • Naturally occurring isolated virus Isolated polypeptides
  • Synthesised/modified polypeptides
  • Isolated polyclonal antibodies
  • Chemical molecules purified from natural sources (e.g. new chemical entities, antibiotics, small molecules) Isolated cells Isolated stem cells
  • Probes
  • Primers Isolated interfering/inhibitory nucleic acids (e.g. antisense, ribozymes)
  • Monoclonal antibodies Fusion/chimeric nucleic acids
  • Transgene comprising naturally occurring gene sequences
  • Vectors/microorganisms/animals/plants comprising a transgene

The Commissioner is interested in receiving comments on her proposed practice by 30 October 2015.

IP Australia consults on patenting genetic material post Myriad Read More »

Google Books = fair use in USA

Leave a Comment / Copyright / / / , , , , , ,

Just in time for the 2015 Copyright Symposium, the Second Circuit Court of Appeals has ruled that the Google Books Project is “fair use” of copyright and so not infringing.

Judgment here (pdf). Opinion authored by Circuit Judge Leval.

Eleanora of the IPkats first look here; Rebecca Tushnet focuses on the fourth factor discussion here. The “four factors” from §107 are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Before responsibility for copyright was transferred to the Department of Communications and the Arts, the Commonwealth Attorney-General had commissioned a study of the economic effects of the ALRC’s recommendation to introduce “fair use” into Australian copyright law.

The Authors Guild v Google Inc. (CA2 Oct 16. 2015 13-4829-cv)

Google Books = fair use in USA Read More »

Scroll to Top