Talk on keywords, adwords and trade marks
For anyone who may find some value in them, I have posted the slides from my IPSANZ talk ‘Of Keywords, Adwords and Trade Mark Infringers at Slideshare.
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infringement
Appeal sinks luscious LIPS
One month after the appeal was heard, the Full Court has rejected Nature’s Blend’s appeal that Nestlé used Luscious Lips as a trade mark.
Nature’s Blend argued first that the trial judge had wrongly focused on the character of Nestlé’s use instead of the proper meaning of the Nature’s Blend mark. As the mark was registered for all confectionery, not just “lips”, it was said to be inherently distinctive. The Full Court, however, rejected this requirement and re-affirmed that the test was to examine whether or not the way Nestlé used the mark (the “impugned use”) would be understood by ordinary consumers as functioning as a badge of origin.
Nestlé’s Luscious Lips are part of its ‘Retro Party Mix’ pack. The expression ‘luscious Lips’ appeared only on the back of the packaging in the expression:
That’s right! All your old favourites are back, so put on those flares & get ready to party! Up to 7 lolly varieties including … cool COLA Bottles, those radical Racing Cars, yummy Honey flavoured Bears, totally freeeekie Teeth, luscious Lips, partying Pineapples and outrageous Raspberries.
You can see the front of the packaging at the product’s very own facebook page.
Nature’s Blend contended that the trial judge had improperly diluted the significance of the ‘luscious Lips’ expression on the Nestlé packaging by reference to the presence of other, more prominent brands.
This issue can be tricky because the Courts have long held that one does not take into account extraneous matters such as disclaimers or the presence of other trade marks when considering the question of deceptive similarity. On the question of use as a trade mark, it is permissible.
While the Full Court acknowledged that the fact that other trade marks were used more prominently on the packaging did not preclude ‘luscious Lips’ from being used as a trade mark, the characterisation of the impugned use depended on the particular usage in question in its own particular setting. In this case, the presence of ALLEN’s and Retro Party Mix did in fact undercut the likelihood that consumers would read ‘luscious Lips’ as a trade mark.
The Full Court also agreed that Nestlé had used the trade mark in good faith as a description.
Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117 (Stone, Gordon and Mckerracher JJ)
Comment on decision at first instance.
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Infringing a registered design
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.
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The patent was valid, but not infringed
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
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2nd round consultations on IP reform in Australia
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:
-
Getting the Balance RightExemptions to Patent InfringementResolving patent opposition proceedings fasterResolving trade mark opposition proceedings fasterResolving divisional applications faster
- Getting the Balance Right
- Exemptions to Patent Infringement
- Resolving patent opposition proceedings faster
- Resolving trade mark opposition proceedings faster
- Resolving divisional applications faster
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:
- Flexible Search and Examination
- Streamlining the Patent Process
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Linking should infringe?
Judge Posner (of the 7th Circuit Court of Appeals in the USA) writing extra-judicially on his blog has stirred up a maelstron in the blogosphere with a typically thoughtful and provocative post contending that linking to websites should be copyright infringement. (At the time of writing, there are only 211 comments!)
Less contentiously (at least in terms of blogosphere reaction), Prof Becker’s reaction is that newspapers are doomed:
That the Internet is a more efficient provider of news and opinion than newspapers is seen in the fact that hardly anyone under age 40 now reads papers. Readership is also declining among older persons ….
Although the printed newspaper industry is doomed, and will be missed by those of us that remember newspapers in their heyday, they are being replaced by good substitutes in the form of blogs, social networks like Facebook and Twitter, online news gathering by various groups, including newspapers, and other electronic forms of communication. People in democracies will continue to have access to independent and often quite accurate, reports on events in their own countries and most other parts of the world.
from The Social Cost of the Decline of Newspapers? Becker
Marty Schwimmer rounds up some of the reaction to Judge Posner.
Judge Posner has seized on what is widely seen as a crisis in the newspaper industry. That crisis has led Rupert Murdoch and Associated Press, in particular, to start waging a public relations war against Google. The difficulty is, if they really don’t want the links (and all the incoming traffic), they can block them quite simply.
Read Danny Sullivan’s thoughtful expose of the threadbare nature of these Emperors’ clothes: esp. here and here.
(ps Of course, here in Australia, you do have to be careful you are not linking to websites that contain infringing content themselves – Cooper v Universal.)
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$80,000 (USD) per download
In case your newsfeed hasn’t beeped you, the jury in Minnesota has awarded the record companies US$1,920,000 against Jammie Thomas for her 24 infringing downloads.
That’s right, $80,000 per infringement.
The original award, which the judge quashed “sua sponte“, was “only” $220,000. Presumably, there are going to be some interesting motions “non obstante veredicto“?
Evan Brown has some links. The Age (lid dip Matt Bromley).
Howard predicts (hopes?) this is the end for record companies.
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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.
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Working a patent for regulatory approvals
Patently-O considers a new Federal Circuit case in the USA dealing with the scope of s 271(e)(1) – a defence to infringement by working the patent to prepare regulatory data.
It would appear that the defence should now apply in proceedings against imports before the ITC.
Patents Act 1990 (Cth) s 119A (introduced with effect from 25 October 2006 following ACIP’s report) permits such activity where the working:
- is for purposes of having a therapeutic pharmaceutical product included in the Australian Register of Therapeutic Goods;
- or a similar foreign regulatory approval.
Although working for a foreign regulatory approval may take place only in the supplementary protection period (see e.g. ACIP on experimental use p. 44 (pdf)).
See now Alphapharm Pty Ltd v H Lundbeck A/S [2008] FCA 559 at [643]ff.
IP Australia is considering extending this: see paragraphs 9 and 17 of IP Australia’s Consultation Paper on experimental use (pdf) [NOTE: submissions should be in by 8 May 2009. Submissions on the Getting the Balance Right paper (pdf) are also due by then.]
WIPO’s Standing Committee on Patents has a study paper on exceptions and limitations as an area of increased focus.
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Dough Vo = no go
Arnott’s complained (e.g. here and here) that Krispy Kreme’s new dooughnut, the Dough Vo, infringed its trade mark for the Iced Vo Vo.
You probably had those marshmallow and jam concoctions inflicted on you as a kid. But the trade mark, No 864, which is just for VO VO has been registered since 1906 for biscuits.
Krispy Kreme was reported in the press as saying it wasn’t going to back down – on legal advice, no less –
Arnott’s gave the Australian arm of the doughnut chain until 5pm (AEST) on Friday (April 24) to stop using the name and to undertake not to use similar names in the future.
However, Krispy Kreme Australia CEO John McGuigan said after taking legal advice, the company had decided to continue selling the Iced Dough-Vo.
Next thing we know, however, the headlines read “Dough-Vo bows to Vo-Vo” and “Krispy Kreme backs down on Vo-Vo boo-boo“.
One interesting question for trade mark students: to what extent can you look at what the Dough-Vo looks like when considering the trade mark infringement question? In this case, you probably get rather more latitude because the infringement would arise under s 120(2).
Another thing to worry about. How often do you see (or write in your letters):
we have taken legal advice and our advice is that it is not the case (that trademark was breached)
Has Mr Krispy Kreme just waived privilege in his legal advice? Have a look e.g. at Bennett v Chief Executive Officer of the Australian Customs Service [2004] FCAFC 237 esp. at [4], [10] and [32].
Lid dip: James McDougall for word of Krispy Kreme’s retreat.
