The new provisions will introduce a number of reforms to Australia’s IP system, and are intended to encourage innovation by supporting investment in research and technology. Presently, amendments are proposed for all of Australia’s IP regimes, including the Patents Act 1990, Trade Marks Act 1995, Copyright Act 1968, Designs Act 2003 and Plant Breeders’ Rights Act 1994. Specifically, the following key areas are marked for reform:

•   Raising the quality and standard of granted patents;
•   Providing access to patented inventions for regulatory approvals and research;
•   Reducing delays in patent and trade mark applications;
•   Improving mechanisms for trade mark and copyright enforcement; and
•   Simplifying the IP system.

However, the vast majority of the amendments relate to the Patents Act 1990, including:

•   A more stringent test of inventiveness;
•   A new assessment of utility, requiring disclosure of “a specific, substantial and credible use” for the invention;
•   A new sufficiency requirement likely to require applicants to provide further description and examples;
•   Current “fair basis” requirement will be amended to align with the disclosure rules in Europe;
•   As well as further changes to examination and re-examination, amendments, infringement exemptions, grace periods, modified examination, attorney-client privilege and opposition practice.

Regulations governing the new provisions are yet to be published. However, presently the abovementioned changes will apply to patent applications that have already been filed, but not yet examined at the Commencement Date of the new Act. In view of this, Applicants and inventors are encouraged to seek advice from a registered attorney in order to ensure they are not adversely affected.

Ansell Healthcare Products LLC v Molnlycke Health Care AB [2011] ATMO 109 (8 November 2011)

In September 2009, Molnlycke Health Care AB filed an application for the removal/restriction of Trade Mark No. 732286  BARRIER in the name of  Ansell Healthcare Products LLC (“Ansell”) for non-use. The BARRIER trade mark was registered in respect of Gloves and disposable gloves in this class, including gloves for protection against accidents; gloves for industrial, scientific and emergency work and services in Class 9. Ansell opposed the removal application.

Section 92(4)(b) of Trade Marks Act 1995 (Cth) (“the Act”) states that a non-use application may be made to remove a registered trade mark if the mark has not been used in the three year period prior to the application for removal in relation to the goods and/or services the subject of the application. Such an application may not be made before a period of five years has passed from the filing date of the application for registration.

The removal applicant requested removal for all goods within the class 9 claim except for “multilayer flat film gloves offering chemical protection, but excluding latex, rubber and vinyl gloves”. The sales and marketing Director for Ansell provided evidence of use of the mark in connection with some of the goods covered by the registration and in particular “multilayer flat film chemical resistant gloves”.

Accordingly, the Hearing Officer considered whether the registration for BARRIER should be restricted to these goods.

The Hearing Officer exercised his discretion and determined that Ansell’s use of the trade mark BARRIER in relation to the goods above was sufficient to preserve the registration in respect of all goods. Citing a prior decision McHattan v Australian Specialised Vehicle Systems Pty Ltd, the hearing Officer referred to the potential for fragmented ownership of the same or very similar mark in respect of very similar goods to cause confusion. The decision also noted that if fine distinctions were permitted in relation to different items when determining use, the value of a trade mark registration could be seriously eroded.

He held that it would be inappropriate to restrict the goods to only those goods for which actual use has been shown and noted that “this would produce a situation where trade mark confusion is a distinct likelihood if the goods within the description “gloves and disposable gloves” are divided up amongst a number of producers.”

The decision confirmed that the Registrar has a general discretion to allow a trade mark to remain registered for goods and services.  This discretion may be applied where there has been little or no use of the trade mark for certain goods or services, if it is “reasonable” to do so. This case is also a reminder that trade mark owners should “use their trade mark or lose it” and record samples of evidence of the mark in use.

Rare Breed Distilling LLC, current owner of the WILD TURKEY whiskey brand, together with its former owner, Austin, Nichols & Co Inc, appealed the first instance decision to allow Lodestar Anstalt’s WILD GEESE mark to remain on the register despite a finding of non-use, on grounds that Cowdroy J had inappropriately exercised discretion under s 101(3) of the Trade Marks Act 1995 (Cth).

In the decision, handed down this week, the Full Federal Court held that Cowdroy J had made a finding of fact unsupported by the evidence in failing to explain why, if the WILD GEESE mark were removed, then public confusion might follow.

The Full Federal Court, while acknowledging that there was recognition of the brand in Australia, albeit limited; and evidence of some use confined to a period between 2008 and 2010; nevertheless considered that whatever reputation the WILD GEESE mark had acquired, it was “slight, not long established, and unlikely to have had any significant impact”.

The onus was on Lodestar Anstalt to show that confusion would or, at least, could result from removal of the WILD GEESE mark from the Register, but this was not established.

The Court confirmed that while discretion under s 101(3) is broad and exceptional circumstances need not be shown before it may be invoked, in this instance it was not reasonable to do so.

The following trademarks have been opposed as at 23 February 2012.

Click the trademark for details.

Applicant	Trademark	Opponent
Taylors Wines Pty Limited	ST ANDREWS	Ceravolo Premium Wines Pty Ltd
Affordable Accessories Pty Ltd	Luci-Lu	Lidl Stiftung & Co. Kg
Australian Institute Of Quantity Surveyors		The Royal Institution Of Chartered Surveyors
Australian Institute Of Quantity Surveyors		The Royal Institution Of Chartered Surveyors
Australian Organics Body Care Pty Ltd		Sisig Limited
BB Online Uk Ltd.		101domain, Inc
Brisbane Business & Commercial Sales Pty Ltd		Banca Sella Holdings Spa
Burnlee Pty Ltd		The Procter & GambleCompany
Classic Frosted Glass Pty Ltd	CLIMATE SAVE  CLIMATE+	CSR Building Products Limited
Coating & Industrial Technologies Pty Ltd		EvonikDegussa Gmbh
Cubic Transportation Systems, Inc	NEXTACCOUNT	Next Retail Limited
Discovery Holdings Limited		Discover Financial Services
Ecovation Pty Ltd		BuildingIQ Pty Ltd
Friedr. Ischebeck Gmbh	TITAN-HV	Illinois ToolWorks, Inc
Global National Australia Pty Ltd	JUNGLE REEF	South Cone, Inc
Lemonstone Group Pty Ltd	FETCH SEARCH SOLUTIONS	Fetchtv Pty Ltd
Lion Retail Management Group Pty Ltd		Best BuyEnterprise Services, Inc
Otter Group Pty Ltd	DECKTOBER	Duluxgroup
Qiaqia Food Co., Ltd		Mars, Incorporated
Randwick City Council	THE AUSTRALIAN FILM WALK OF FAME	Australian Walk Of Fame
Speedagro S.R.L.	XION	MERCK KGAA and SYNGENTA LIMITED
Safepayme Pty Ltd		Pay Me Australia Pty Ltd and Ian Lindgren
Simic, Sharon Marie and Simic, Peter	THE BULLFIGHTER	Red Bull Gmbh
Sunfoods, LLC		Real Foods Pty Limited
Ted Inc	Equipteria	Strandbags Group Pty Limited
Tata Sons Limited	TATA WATER PLUS	Bickfords Australia Limited
The Procter & Gamble Company		Unilever Plc And Unilever Australia Ltd
Watershed Drug & Alcohol Recovery And Education Centre Incorporated		Safe Places Pty Ltd

In July 2011, the United States Court of Appeals upheld Myriad Genetics’ US patent rights in an equivalent case, finding that genes could be patented.   ACLU and the Public Patent Foundation subsequently petitioned the US Supreme Court in December 2011 to have the decision overturned.

Nevertheless, the outcome of this landmark Australian case will have significant implications for the biotechnology industry. The case is scheduled to be heard on Monday 20 February by Justice Nicholas. Further updates will be provided in due course.

2012 marks the 75th anniversary of the sign.  But what you may not know is that many of the trademarks filed for Skipping Girl Vinegar are up to 100 years old and are still registered trademarks.

Goodman Fielder Consumer Foods Pty Limited is the current owner of the Skipping Girl trademarks.

Skipping Girl in 1913:

Skipping Girl in 1927:

Skipping Girl in 1913:

Skipping Girl in 1927:

The following trademarks have been opposed as at 16 February 2012.

Click the trademark for details.

Applicant	Trademark	Opponent
Biblioquest International	Mary Poppins Birthplace Bowral	Disney Enterprises
A & V 2000 Inc		Comite International Olympique
AB Gustaf Kahr	DECORESS	Decor Corporation
Cricket Australia		The Sydney Opera House Trust
D. Place Marketing	Zoara	Industira DeDiseno Textil
Htc Corporation	HTC PLAY	Sony Ericsson
Focus Gear Pty Ltd		James Abbott
Illinois Tool Works	WELDARC	Lincoln Global, Inc
Morris, Craig		Jack Weaving
Cedros FamilyTrust Et Al		Duluxgroup (Australia)
Rimoptics Pty Ltd	Avanti	Mod Style (Aust) Pty Ltd
Spanish Foods (Aust)Pty Ltd.		Ashley Chase Estate Limited
Sutton, Julie	SHOWER”N”POWER	Church & Dwight Co., Inc
The N. & A.Fruit Distributors		Batlow FruitCo-Operative Limited
Mypeace.Org.Au	My Peace	My Peace Incorporated

The key issues considered under the Copyright Act 1968 (Cth):

1. Who makes the recording using the TV Now service? Optus argued that it merely provided the software and technology for the service and that by the user pressing ‘play’ on his or her mobile device it is the user who makes the recording.
2. Does s 111 of the Copyright Act 1968 (Cth) apply? Optus argued that s 111 is applicable. That the recordings were made for the purposes of ‘private and domestic use’ to be viewed at a more convenient time ‘then the time when the broadcast was made’.

In answering the issue of who makes the recording his honour Rares J, embarked on a technical analysis of how both the user and the Optus equipment combine to create the recording. The rightholders contended that it was the TV Now service itself that made the recording and that the user played no role (See: Roadshow Films Pty Ltf v iiNet Ltd [2011] FCAFC 23). Contrary to this view, his honour found that it is the user of the TV Now service who makes the film. His honour further stated that the TV Now service provides the ‘means’ and that the user by pressing the ‘record’ button ultimately made the recording.

On the application of s 111 of the Copyright Act 1968 (Cth) the rightholders argued that there was no evidence of the users’ subjective intent in their dealings with the recordings and that the recordings do now fit within the exception at s 111(1). His honour in deciding on this issue placed emphasis on the fact that the recordings only existed for 30 days on ‘mobile devices or PCs which are, of their nature, private’ and that the rightholders could not prove that the users had any other intention than to watch the broadcasts at a more convenient time.  His honour cited the example of a person finishing late at work and then being able to watch the broadcast near live on their compatible device.

Given the threat the TV Now service poses it should be no surprise that the NRL and AFL have appealed the decision to the Full Federal Court with the matter set to be heard from 14-15 March 2012.  Click here for further details of the appeal.

This article was prepared by George Klonis, a fourth year BBiomed / LLB student at Monash University. George is presently undertaking work experience in POF’s Melbourne office.

G-Star took action against a company called Mish Mash Clothing P/L (“Mish Mash”).  Unlike recent cases brought by G-Star, the jeans in question in this case were not counterfeit “G-star” products.  Some of Mish Mash’s jeans bore the trade mark “M-Mash”, together with other elements of one of G-Star’s Australian trade mark registrations, the composite “logo” trade mark shown below.  G-Star brought proceedings for trade mark infringement and infringement of copyright in its logo.

The court found that two labels used by Mish Mash on its jeans infringed G-Star’s logo trade mark registration.  These two labels are shown below.

The court also found that the infringed G-Star trade mark logo was a copyright work, and Mish Mash had infringed that copyright.

Although G-Star was successful in both trade mark and copyright infringement claims in this case, it was not awarded any monetary compensation.  Thus, this case provides a good guide as to what sort of evidence the court might need if it is to award damages for trade mark or copyright infringement.

In this case, 266 pairs of jeans bearing the infringing trade mark and copyright work had been sold before Mish Mash received a letter of demand.  Two days after receiving a letter of demand from G-Star, Mish Mash withdrew all the remaining allegedly infringing products from sale.

G-Star sought damages rather than an account of profits for the infringing sales.  G-Star said every sale of a Mish Mash jean was a lost G-Star sale and sought damage for each Mish Mash sale.  However, in support of its claim G-Star did not provide any evidence of:

retail circumstances in which both brands were sold, such as proximity to each other, and types of consumers who purchase the brands;

evidence on the tendency of consumers to make buying choices by reference to brand names, rather than other things like comfort, fabric or style;

any actual confusion that the Mish Mash jeans were G-Star jeans.  In contrast, the court looked at Mish Mash jeans in evidence, noted that the brand “Mish Mash” appeared prominently on the jeans, and thought it was quite improbable that a consumer would think they were G-Star jeans; or

G-Star’s own profit per sale of G-Star jeans.

The court found that the gap in the evidence was too wide to be crossed by the drawing of an inference that every Mish Mash sale was a lost G-Star sale and, in circumstances where no information about G-Star’s profit margin had been put in evidence, the court could not hazard an estimation of loss.

G-Star also sought damages for loss of reputation.  The court rejected this claim on the basis that the infringing logo was not a conspicuous part of the Mish Mash jeans, and also because G-Star did not provide evidence that the logo was associated with a reputation for exclusivity or creativity.

G-Star sought additional damages under section 115(4) of the Copyright Act, and that claim was rejected too.  It was relevant that Mish Mash’s conduct did not amount to flagrant infringement: Mish Mash derived the logo from its Turkish supplier, and there was no evidence Mish Mash itself had any knowledge that the logo had been copied from G-Star’s logo.  That Mish Mash had withdrawn their stock from sale promptly after receiving G-Star’s demands was also relevant.

A decision on whether declaratory or injunctive relief should be awarded against Mish Mash was deferred at Mish Mash’s request.  We will watch for any further decisions, including any decision about liability for costs of the litigation, with interest.

The following trademarks have been opposed as at 9 February 2012.  Click the Trademark for details.

Applicant	Trademark	Opponent	Likely Opponent Mark
Westpac		Penky llc	Intellectual Ventures (IV)
Spanta		Philip Morris
Scoopon	SUPER SCOOPON	Super Koupon