Spender J stated that
“Employers’ rights in the inventions of employees are not governed by statute but by common law and equitable principles which clearly show that in the absence of any express contractual obligation there is no rule that an invention made by an employee is inevitably the property of the employer. It is instead necessary to determine whether the employment relationship suggests that the invention concerned was made in the course of employment or, in other words, whether it is something it was the employee’s job to invent.”

In this case, there was not enough information for the Court to find that the employment relationship suggested the invention was made in the course of Mr Williams’ employment.

The decision re-iterates the importance of ensuring employment contracts specify who is to own an employee’s inventions. This issue has of course also been highlighted recently by the well publicised Federal Court decisions in University of Western Australia v Gray (see our posts here and here).

While the two countries treat each other in the same way when it comes to cross-border court proceedings, this legislation will enable closer integration of the two civil justice systems.

Some important measures in the Bill include:

1. Simplifying the service requirement for civil court proceedings.  For instance the new legislation will enable a statement of claim filed in a court to be served on someone in New Zealand as of right and visa versa. A plaintiff will no longer be required to prove a connection between the proceedings and New Zealand, or to seek leave of the court.
2. The New Zealand Bill and its Australian equivalent will adopt a common give-way rule for deciding which country’s court should hear a dispute. The current problem of courts in New Zealand and Australian applying different tests to decide this issue leading to unnecessary expense and uncertainty will hopefully be ameliorated.
3. The Bill will expand the range of Australian court judgments that can be enforced in New Zealand, and simplify the process for enforcing them. Currently, only final money judgments from one country may be enforced in the other. This Bill extends this to include final non-money judgments, such as an injunction. The only ground for not enforcing an Australian judgment will be public policy.  However, it will continue the case that any challenge to the merits of a judgment will meed to be raised with the original court.
4. The Bill also introduces new measures to improve regulatory enforcement. New Zealand and Australia both have a strong mutual interest in the integrity of trans-Tasman markets and the effective enforcement of each other’s regulatory regimes. The bill will allow all Australian civil pecuniary penalties to be enforced in New Zealand, unless they are specifically excluded from the regime. The parallel legislation in Australia contains mirror provisions.
5. The Bill will also allow criminal fines to be enforced in the same way as a civil judgment debt is but only in respect of those regulatory regimes that affect the integrity, effectiveness, and efficiency of trans-Tasman markets.
6. Finally the Bill will simplify the conduct of court proceedings in various ways including through the use of technology.

Oakley sought interlocutory relief against the owner of the goods in Oakley, Inc v Elkofairi [2010] FCA 188. However, the parties reached an agreement on the first day of the proceedings in the Federal Court resulting in a consent order permanently restraining Elkofairi from importing and selling goods bearing Oakley’s trade marks or any marks substantially identical with or deceptively to, and from assisting any other person to do so.

Elkofairi was also required to forfeit the goods to the Commonwealth for disposal. It was ordered to deliver up to Oakley’s lawyers any goods or documents in his possession, custody or control which bore Oakley’s trade marks or any name, word, mark, sign or device substantially identical or deceptive similar thereto, applied without Oakley’s authority.

This case demonstrates the value of registered trade mark owners having an effective strategy to combat counterfeiters. Such a strategy should include the lodgement of a Notice of Objection with Customs, identifying a company’s registered trade marks and copyright material. By way of example, Oakley also relies on consumers to report the present of counterfeit goods in the marketplace and on the Internet.  Consumers can dob in a counterfeiter by reporting sightings of allegedly fake products through the company’s website.

In relation to the difference in interpretation between the two expert witnesses, Bennet J commented that:

I formed the clear impression that, while Dr Sinosich gave his opinion honestly and impartially, his approach was, as he conceded in evidence, influenced by his own specific area of expertise and his own rigorous approach to the relevant terminology. It was apparent during cross-examination when Dr Sinosich was taken to different parts of the specification that the patentee did not adopt the same limited use of terminology.

Another important consideration in determining the correct construction, as noted by her Honour, was that Sinosich’s construction did not accord with much of the literature as at the priority date, or with the specification, which has broader application. By comparison, Boscato pointed to literature which formed part of the prior art, including papers considered to be very important in the field at the priority date, which showed use of the expression “specific binding reagent” consistent with her construction. Bennet J concluded that:

Dr Sinosich’s use of the terminology may well reflect his own experience and practice but the evidence suggests that it is not and was not the common use of others in the art to which the specification relates.

This decision highlights the importance of carefully selecting expert witnesses but also the importance of contemporaneous documentary evidence in supporting the views expressed by those witnesses

In a hearing before the Registrar’s Delegate, Apple objected to registration of the DOPI trade mark for use on various carry bags and accessories for digital devices including its own iPhone® products, MacBook® computers and iPod® devices.

Citing its various other trade marks registrations combining the prefix “i” with another word such as, iTunes®, iMac®, iLife®, iWork® and iPhone®, Apple argued it had a family of “i” marks and that use of the DOPI trade mark with this emphasis on the letter “i” was likely to deceive or cause confusion. Apple also alleged Wholesale Central had piggy backed on the fame of its iPod® mark and the association implicit in the use of “i” in the industry, and that this should lead to a finding that the trade marks were deceptively similar.

However, the Hearing Officer disagreed, drawing on the numerous trade marks on the Australian Register and his own knowledge of the technology industry to support his view that Apple did not have a monopoly in trade marks comprising the prefix “i” and another word. He did not consider the fact Wholesale Central’s trade mark ended in the letter “i”, or use of a trade mark which was the iPod® trade mark in reverse order to give rise to deception or confusion. The absence of any evidence of actual confusion despite Wholesale Central’s sale of items including covers for Apple’s iPod® players under the DOPI trade mark since January 2007 also suggested no deception or confusion was likely to arise.

Apple, citing the case of Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“the Woolworths’ case”), also tried to argue that the assessment of deceptive similarity should take into account its reputation in the iPod® mark as it had “a degree of notoriety or familiarity of which judicial notice can be taken”.

By analogy with the Woolworths’ case, where WOOLWORTHS METRO and METRO were not found deceptively similar because of the “notorious familiarity” of WOOLWORTHS, the Hearing Officer considered the “ubiquitous nature” of the iPod® mark tended to lessen the likelihood of deception or confusion arising with the DOPI trade mark.

Dismissing the opposition, the Hearing Officer found the “coincidental similarity” between the trade marks was not sufficient for them to be deceptively similar. Consequently, the DOPI trade mark is now registered. This decision could be said to create an “i-opening” for other traders who may seek to register trade marks beginning or ending with the prefix “i” for digital devices and accessories.

Apple’s POD protection

In another recent development, Apple Inc has settled a potential Federal Court stoush over registration of the Australian trade mark POD.

Apple had appealed the Trade Mark Registrar’s earlier decision to refuse registration of the POD trade mark after Line 6, Inc argued it had superior rights to the trade mark by virtue of its use of the mark in Australia since 1999 and its prior trade mark registration.

Line 6, Inc had used the POD trade mark for electronic devices which take signals from electrical guitars and digitally process the signal to modify the sound. Bands such as Silverchair had used Line 6’s POD product and Line 6 was found to have a significant reputation in the trade mark in Australia. The Hearing Officer found Line 6’s opposition successful on a number of grounds including s.44 and s.60. The Hearing Officer also found Apple had established the s.59 ground of opposition, and that it did not have an intention to use the trade mark, but had filed the application for strategic purposes.

The appeal has been settled and Apple’s trade mark is now registered albeit for goods which now exclude those which could be said to conflict with Line 6 Inc’s goods of interest.

In HamLon Pty Ltd v EziAdz Pty Ltd [2010] ATMO 9 the Registrar’s delegate had to consider whether an application for ECOPOP in relation to goods in class 16 was blocked by an earlier registration of an identical mark covering goods in class 20. Class 20 covers, amongst other things, furniture, and it was held that HamLon’s display equipment, stands and shelves were analogous to furniture and correctly classified in this class, despite the fact that HamLon’s ECOPOP range was made of cardboard from recyclable paper waste. Similarly, it was held that EziAdz’s countertop cardboard brochure holders and product dispensers were correctly classified in class 16, which covers a range of goods made from paper and cardboard.

Even though the two marks covered goods in different classes, the Registrar’s delegate went on to find that the goods in each case were designed to display the goods of other traders and were sold to the same customers for the same purposes. On this basis, the goods were found to be similar goods, and the application for ECOPOP in class 16 was refused.

To avoid problems of this sort, it is worth getting professional advice regarding the class(es) your goods or services may fall into, or potentially conflict with..