IP Australia has issued a second consultation paper – with draft drafting instructions:
As with the first round of the second round, comments are required by 12 Feb 2010.
The new paper and drafting instructions can be found here (pdf).
Links to all the papers, pdf and word, via here.
IP Australia more 2nd round consultations Read More »
The Australian Life Scientist has an article on the top 10 mistakes made in setting up and running the clinical trials for TGA and FDA legal and regulatory approvals:
Special feature: Top 10 clinical trial mistakes
by James Cameron of McCullough Robertson.
Lid dip: Kim O’Connell at Mallesons.
Clinical trials for new medicines Read More »
Mars’ appeal against the rejection of its claims of trade mark infringement and misleading or deceptive conduct have been tersely rejected.
Images of the product Mars complained about here.
The Full Court noted:
9 It is not in dispute that the evidence established that:
• confectionary is commonly packaged in primary colours and that red, in various shades, is a predominant and common, indeed ubiquitous, colour;
• confectionary packaging commonly displays a picture or representation of the product, frequently showing a cross-section or “cut through” of the product;
• it is not unusual for the name of the product to be written on a diagonal, from bottom left to top right;
• it is common for packaging of confectionary to include all of the above features.
In this context, the Full Court found that the words malt balls were descriptive and the colour red used by the respondent was not distinctive.
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
Maltesers v Delfi malt balls Read More »
Bausch & Lomb were distributing an ophthalmic irrigating solution in Australia in bottles like this:
The bottles themselves were packaged in cardboard boxes which did not have “BSS” on them and the products were distributed to hospitals and the like.
Alcon, however, has BSS registered as a trade mark in class 5 for such products.
One point of interest is that Bausch & Lomb sought to show that BSS had become descriptive in the trade by relying on a range of publications which included expressions such as “balanced salt solution (BSS Alcon)”, with subsequent references being just to BSS.
Most of the publications were dismissed as inadmissible, being foreign publications not shown to be directed at Australia or referred to by Australians. On the other hand, those in Australia that were admitted:
98 A fair reading of those journal articles suggests that, when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed. The one example of use of the letters “BSS” in government Request for Tender documents is in the same category.
The evidence further showed that until Bausch & Lomb came along, all Alcon’s other competitors used “balanced salt solution” but not BSS. Bausch & Lomb’s conduct, the subject of the proceeding, was the sole exception.
A second, more general, issue is whether or not Bausch & Lomb is using BSS as a trade mark. Foster J found it was. Over at the Australian Trade Marks blog, Professor Davison accepts that there was considerable grounds to find that it was use as a trade mark. However, he contends that one of the factors, (h), relied on by the judge goes to far:
(h) The letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark (Alcon BSS).
I am not sure that the criticism is well made.
For example, in the Caplets case, Gummow J explained the test for determining use of a trade mark as follows:
When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426(the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.
Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 194–5 (the Tub Happy case), that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “ partly because “ (emphasis supplied) they are described by the words in question. (my emphasis)
Now, that doesn’t say that you can take into account consumers’ knowledge that the term is a trade mark. However, if you can take into account their knowledge that something, such as the ox cart in Edward Young v Grierson Oldham, is commonly used descriptively, wouldn’t their knowledge that something was a trade mark be relevant also? The fact that ‘Alligator’ was a fancy word used only by the plaintiff was a vital consideration in JB Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406, a case which Kitto J did read narrowly.
Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299
What’s use of a trade mark in Australia Read More »
Ben McEniery from QUT writes advises that QUT is running a “peer to patent” pilot project modelled on those running through New York Law School and the JPO.
According to Ben:
Following on from the Peer-to-Patent projects run recently out of the New York Law School (NYLS) and the JPO comes Peer-to-Patent Australia. Peer-to-Patent Australia is a joint initiative of the Queensland University of Technology (QUT) and IP Australia that is designed to improve the patent examination process and the quality of issued patents. Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.
The project is based on the successful Peer-to-Patent projects run out of the New York Law School (NYLS) in the United States and is the result of the collaborative efforts between QUT and NYLS. The project will initially run as a six-month pilot that will focus on the rapidly advancing technology areas of business methods and computer software. Up to 40 business method, computer software and related patent applications that have been filed in Australia and which are open for public inspection will each be posted on the Peer-to-Patent Australia website for a 90-day period. During that time, members of community can review those applications, submit prior art references and comment on the relevance of any prior art that has been put forward.
At the end of the review period, Peer-to-Patent Australia will forward the top 10 prior art submissions for each application, as selected by the community of reviewers, to IP Australia for consideration in the examination process. The review process in no way abrogates the responsibility of the patent examiner to assess a patent application. Prior art submitted by Peer-to-Patent Australia is solely designed to assist a patent examiner, who remains the arbiter of whether a patent is to be granted.
There are currently 15 patent applications from seven companies open for review. The participating companies include IBM, Aristocrat Technologies Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO.
Since the focus of the pilot is on business methods and related applications, there is an interesting array of new ideas and technologies in the applications that are open for review. Those applications include methods, systems and apparatus for:
Those wishing to review participating patent applications can read more and register here.
x
Peer to patent Down Under Read More »
Back in October, Jessup J found Chiropedic’s design for a mattress and base (registered under the 1906 Act) valid and infringed, by only 2 of a number of Radburg’s competing mattresses.
The first point of interest is the impact of a statement of novelty. A second point of interest is the impact of trade variants or “features commonly used in the trade”. Thirdly, his Honour ruled on the costs to be taken into account in the course of an account of profits.
This was the representation in the design (ADR 127723)
There was the usual statement of monopoly, limiting the design to the features of shape or configuration.
Unusually, there was also a statement of novelty:
Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations.
Chiropedic (the design owner) contended that novelty or originality of its design was not limited by this statement and, even if it were, validity and infringement still fell to be assessed by consideration of the design as a whole citing, in support, the judgment of Davies and Whitlam JJ in Richsell v Khoury at [7].
Jessup J reviewed the cases referred to in Richsell, but discovered that they did not actually deal with it. His Honour found considerably greater assistance in the Franki Report which had led to the introduction of the concept:
On the other hand we were of the opinion that the Registrar should be given power to require a ‘statement of novelty’ to be lodged. By ‘statement of novelty’ we mean a statement dealing with the features of a design that may be said to provide the basis for the design being new or original. For example, if in a design for a chair the significant feature is in the shape of the two front legs and attention is drawn to this fact in a statement of novelty, while there would be no infringement of the design unless the infringing article satisfied the tests for infringement of the chair as a whole, nevertheless it is reasonable to assume that, in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair. (my emphasis)
and Slade LJ’s consideration in Sommer Allibert of the similar concept in the UK legislation (the latter of which had not been referred to in Richsell or Polyaire). Accordingly, Jessup J held:
[22] …. The argument which Davies and Whitlam JJ rejected in that case was that, in making the comparison required by s 17(1), one should look only at the features for which novelty had been claimed. It is one thing to say that the registered owner should not be permitted to use his or her own statement of novelty for the purpose of shutting the court’s eyes to the appearance of a complete design, and to do so to his or her own advantage. It is another thing altogether to say that the registered owner should not be held to such a statement of novelty when the court comes to consider what aspects of the registered design are new or original. The court’s eyes would then be open to the complete design, of course, but it should, in my view, assess that design against the prior art with a particular emphasis upon those features that the registered owner himself or herself, at the point of registration, considered to be novel.
Paying particular attention to the features identified in the Statement of Novelty, his Honour went on to find the design valid over the prior art. For example, it had a relatively square look where the horizontal surface met the upper line of beading, while the prior art was relatively curved. Similarly, the proportion of the upper layer to the lower lower of the mattress was significant over the prior art.
These findings had particular significance when it came to considering infringement. One of Radburg’s designs was found to be identical to the registered design. A second was an obvious imitation. A number of others, however, escaped liability as they either had similar convex curvature to the prior art rather than the square look of the registered design or the upper layer of the mattress was a significantly smaller proportion of the mattress; many of them also had quite different ribbing.
One striking visual difference was discounted in the comparisons: the mattresses in some of the prior art had three layers, not two; so that the mattress could be flipped over and used. The evidence established, however, that the omission or inclusion of the bottom or third layer was a variant commonly resorted to in the trade. Another feature, an “inward set” was apparently visible to those in the trade on fastidious inspection, but his Honour found it did not strike the eye and was an immaterial variation.
Finally, on the principles to be applied in the account, Jessup J ruled that the respondent’s bills of materials should be used (where available) on the principle that they reflected as closely as possible the actual costs incurred and so, where the evidence showed that margins earned on different product lines were not uniform, the respondent would not generate a windfall profit.
Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163
So far as I can see, no application for leave to appeal has been filed.
Infringing a registered design Read More »
Foster J has ruled that Bitech’s patent for an apparatus that simulates log flames or coal fire in electric or gas fired domestic room heaters is valid, but not infringed.
An essential feature of the patent was that the simulated flames resulted from reflected light, however, the alleged infringements used directly projected light, not reflected light and consequently did not infringe.
The novelty attack failed because the relevant prior art did not possess all the features claimed. The attack on obviousness failed because s 7(3) was not available – the complete specification was filed before the 1990 Act came into force and so the Alphapharm rules were all that was relevant.
Of potentially greater interest, if there had been infringement, Foster J would have found the importer and retailer (Bunnings) were engaged in a common design.
Somewhat bizarrely, on of the respondents denied it had imported the allegedly infringing products, but led no evidence on the point. As a result, Foster J has foreshadowed some consequences in costs for putting the applicant to proof on this point.
Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393
The patent was valid, but not infringed Read More »
IP Australia has published a second round of consultation paper (pdf) on its proposals for reform of intellectual property laws and procedures in Australia.
Topics covered include:
Submissions are due by 12 February 2010.
In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.
(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)
Some further papers will be published soon on:
2nd round consultations on IP reform in Australia Read More »
Lindgren J has ordered that the owners of the WILD TURKEY trade mark (which those of you who drink bourbon may be familiar with) provide security for costs before they can pursue their Federal Court application to have WILD GEESE removed from the Register of Trade Marks.
Lindgren J accepted that the owners, members of the international Pernod Ricard or Davide Campari groups, would have sufficient funds to satisfy an order of costs if they were unsuccessful. However, the purpose of s 56 of the Federal Court of Australia Act was to ensure that there was a fund available within Australia to satisfy the costs order.
His Honour accepted that there were procedures available to enforce money judgments against the owners in their home base(s) eg New York, but those procedures placed an additional burden on a party seeking satisfaction of a costs order over and above the difficulties a party litigating against an Australian based entity would incur.
Lindgren J then rejected the owners’ argument that their registered trade marks in Australia were sufficiently liquid assets within the jurisdiction. They were indeed assets, but they were not “sufficiently liquid”.
44 With respect, the applicants’ submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs.
45 The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business.
46 Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks.
47 Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed’s trade marks. Would they be interested to acquire those trade marks in addition?
48 It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay.
Similarly, his Honour rejected the Australian distribution rights for Wild Turkey.
Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228
Lid dip POF
Trade marks as security for costs Read More »
The Australian Government has announced today that it will not be changing the limitations in the Copyright Act on the parallel importation of books.
According to the Press Release:
Australian book printing and publishing is under strong competitive pressure from international online booksellers such as Amazon and The Book Depository and the Government has formed the view that that this pressure is likely to intensify.
In addition, the technology of electronic books (e-books) like Kindle Books will continue to improve with further innovations and price reductions expected.
The Government has not accepted the Productivity Commission’s recommendation to remove the parallel importation restrictions on books.
You could write a book on the rules governing parallel importation of books so I won’t attempt to summarise them here.
The Productivity Commission’s report. I still don’t think there has been any answer to the question whether the prices of music CDs or computer software fell after open markets were introduced for those products.
Parallel imports, books and Australia Read More »
