Emmett J rejected the construction of claim 1 adopted by the trial judge and found that it was directed simply to the (+) enantiomer of citalopram as a substance “in whatever surroundings it may exist”. On this construction citalopram, a racemic mixture of its (+) and (-) enantiomers, fell within the scope of the claim and as such was an anticipation. In light of this finding his Honour felt it unnecessary to decide the remaining issues on appeal.

Bennett J, with whom Middleton J agreed, adopted a construction similar to that of the trial judge. Her honour held that having regard to the context of the specification as a whole and the evidence of various expert witnesses, it was clear that the skilled addressee would understand the claim to be directed to the (+) enantiomer in a pure, isolated or separated form. However Bennet J was not prepared to read into the claim a limit on the purity of the (+) enantiomer of at least 95% as the trial judge had done.

Having so construed the claim, Bennett J then considered whether the prior art, including a patent directed to the racemic citalopram, deprived the claim of novelty. Her Honour reviewed in some detail the various authorities, both in Australia and the UK on the question of novelty and in particular the concept of “enabling disclosure” and concluded:

It follows that, where the prior publication is of the subsequently claimed invention, that is sufficient.  Where the prior disclosure falls short of a complete disclosure, the question of the sufficiency of that disclosure arises.  It is there that consideration must be given to the quality of a disclosure to the skilled addressee armed with common general knowledge.  It is in that context that, in a limited fashion, questions of “enablement” can be said to arise.  The use of that expression tends to cause confusion between anticipation and sufficiency.  Rather, the Court, armed with the evidence of the skilled addressee as to terms of art and the nature and extent of the disclosure in the prior art document, must determine whether the prior disclosure is sufficient to enable the skilled addressee to perceive, understand and, where appropriate, apply the prior disclosure necessarily to obtain the invention.

It was therefore held that as neither the citalopram patent, nor any other prior art document specifically disclosed the isolated (+) enantiomer, nor enabled a skilled addressee to produce the isolated (+) enantiomer, there was no anticipation.

It is unclear what impact this judgement will have on the concept of enabling disclosure in Australia. On the one hand it seems to suggest that where a prior art document discloses something identical to what is subsequently claimed, it is irrelevant that the prior art would not have enabled the skilled addressee to implement the invention. On the other hand, the prior disclosure must be so precisely and explicitly coincident with what is subsequently claim that almost any prior art could be said not to “disclose” the claimed invention, thereby enlivening the “enablement” requirement.

In relation to the claims of passing off and misrepresentation his Honour considered that “the principal component in the Maltesers get-up is the word “Maltesers” and therefore:

it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products.

The claim of trade mark infringement was also rejected, principally on the basis that Sweet Rewards was not using the words “Malt Balls” as a trade mark but rather as a description of its product. Perram J also considered that even if there was relevant trade mark use by Sweet Rewards, the two marks could not be deceptively similar, again because of the fame of Maltesers, stating that:

The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small.

There is no mechanism for trade mark owners to preferentially register their mark as a username, nor is it clear if a blocked name can later be changed to a Facebook username by the trade mark owner.

It is unclear how Facebook will deal with different owners of the same trade mark (in different classes and/or different jurisdictions). This could become an issue if one owner wants to register the trade mark as a Facebook username, but finds it blocked by another owner.

This is a timely reminder to trade mark owners to consider registering their trade marks in other online environments.

The Deputy Commissioner considered that the Court decisions such as Boehringer and Prejay Holdings Ltd v Commissioner of Patents [2003] FCAFC 77 addressed the “per se” limitation of section 70. However the question in the present case was whether the drug delivery system as a whole constituted a pharmaceutical substance, defined by the Act “as a substance (including a mixture or compound of substances)”.The Deputy Commissioner noted that the term compound was to be understood “in the sense used within the pharmaceutical industry rather than the narrow meaning in pure chemistry” but that despite this broader meaning the scheme established by section 70 “was not intended to assist the developers of other therapeutic products or processes including medical apparatus used with therapeutic substances”. Accordingly:

a pharmaceutical substance (including a mixture or compound of substances) can include a compound with a controlled spatial configuration if, as a whole, it can still be considered a pharmaceutical “substance” but the combination of such a substance with what would reasonably be considered a separate physical device, layer or structure or …“any purely physical integers” is excluded

With respect to the drug delivery system in issue, the Deputy Commissioner stated that “the thermoplastic materials … have a physical purpose to position, contain and provide for the controlled release of the steroidal components” and that  “there are also two distinct and adjacent physical layers or regions that differ in composition, that is, the core and skin.” These factors “could well suggest that the thermoplastic core and skin are more in the nature of separate physical integers.”

However, having regard to expert evidence filed by the patentee, it was held that “the steroidal components … are mixed with and necessarily diffuse through the thermoplastic materials in the core and skin regions and as such the product as a whole exhibits a level of integration or interaction between the component parts that … is more characteristic of a pharmaceutical substance in itself rather than a substance combined with another element or thing.” Accordingly, the application for extension was allowed.