The latest battle in the ongoing IP war between the owners of the INNER HEALTH PLUS and HEALTHPLUS trade marks has been decided in the High Court of Australia.

Health World Pty Ltd, owner of the INNER HEALTH PLUS trade mark, successfully appealed the Federal Court’s ruling that it had no standing to seek rectification of Shin-Sun’s HEALTHPLUS trade mark pursuant to s.88 of the Trade Marks Act 1995 (Cth) (“the Act”) as it was not a ‘person aggrieved’.  Health World had sought rectification of the HEALTHPLUS trade mark pursuant to s.88 on the basis Shin-Shun did not intend to use the mark in Australia and that it had allowed the trade mark to become deceptive or confusing.

In the same decision, the High Court overturned the Federal Court’s ruling that Health World was not a ‘person aggrieved’ pursuant to s.92(1) of the Act and did not have standing to take action against Shin-Shun to remove its HEALTHPLUS registration for non-use. 

The parties have a long, tortuous history with Health World unsuccessfully opposing Shin-Sun’s HEALTHPLUS trade mark (despite a Federal Court appeal) and Shin-Sun opposing but later withdrawing its opposition to the INNER HEALTH PLUS mark.    In addition to the rectification and removal proceedings brought by Health World, Shin-Sun had tried and failed to obtain partial removal of Health World’s INNER HEALTH PLUS trade mark.  In that removal proceeding, the Full Federal Court did not consider Shin-Sun to be a ‘person aggrieved’.  It did not appeal the decision.

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From 12 April 2010 IPONZ will apply standardised formatting to trade mark specifications of goods and services in line with current international best practice.

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In Richwood Creek Pty Ltd v Williams [2010] FCA 196 the Federal Court has reversed a decision of the Patent Office to uphold a patent opposition. The opposition was decided on the ground that the patent applicant alone was not entitled to the grant of a patent. Our commentary on the Patent Office decision is here.

Spender J disagreed that one of the inventors’ rights in the invention vested in his employer. In reaching the decision that the inventor’s (Mr Williams’) invention was not the property of his employer, Spender J was influenced by the inconsistent and insufficient evidence before the Office, for example, there was no written employment contract between Mr Williams and the (alleged) employer. Further, it was significant that the employer did not assert its rights to the invention during the opposition, and Mr Williams did not contest the appeal of the Office’s decision.

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In November 2009 the Australia Government introduced legislation implementing the Agreement between Australia and New Zealand on Trans-Tasman Court Proceedings and Regulatory Enforcement. The Trans-Tasman Proceedings Bill 2010 was passed by both Houses of the Australian Parliament and is now awaiting Royal Assent.

The New Zealand Government introduced parallel legislation on 24 November 2009. The Bill received its first reading on 23 March 2010 and has been referred to a Parliamentary Select Committee. Submissions in the Bill are due by 7 May 2010 and the Select Committee’s Report is due on 29 July 2010.

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The Australian Customs Service has seized 60 pairs of counterfeit Oakley® sunglasses and accessories.

Seizures of the sunnies were made on 30 December 2009 and 6 January 2010, pursuant to the Trade Marks Act 1995 which makes provision for the seizure of goods which bear registered trade marks applied without the trade mark owner’s authorisation.

A trade mark owner must lodge a Notice of Objection with Customs, identifying its registered trade marks to trigger the seizure of allegedly counterfeit goods at the border. The owner must then institute court proceedings within a set period, or the goods will be returned to their owner.

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Kit Kat’s chocolate wafer biscuit is set to become a registered trade mark, after Nestle and Aldi agreed to resolve an appeal from a decision of the Trade Marks Office not register the confectionery’s finger shape as a trade mark. See our report on that here.

Aldi had initially given Nestle ‘the big finger’, successfully opposing registration of the shape mark on the basis it was not capable of distinguishing the food giant’s chocolate-coated wafer biscuits.  Nestle appealed the decision but the parties asked the Federal Court of Australia to allow Nestle’s appeal so the trade mark could be registered (Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218).

It will be interesting to see if Nestle enforces its shape trade mark registration, which has a priority date of 9 Febuary 2000, against others using a similar shape trade mark and if so, the outcome of any infringement action.

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Australian Customs and Border Protection seized 1.1 million counterfeit items in 2009, more than double the 547,000 items seized in 2008.

The Minister for Home Affairs, Brendan O’Connor, released these figures on Friday 19 March and expressed concerns about the serious risks to the health and safety that counterfeit items can pose.

Mr O’Connor recommended consumers be wary of any deals that seem too good to be true and admitted that many fakes are very close copies of the genuine goods, and detecting them can be difficult.

He reaffirmed the commitment of Customs and Border Protection in fighting against counterfeiting and acknowledged the close cooperation with industry through the notice of objection scheme.

This dramatic increase in counterfeit items highlights the work of Australian Customs service and its effective role in stopping the importation of counterfeit items. It also emphasizes that all kinds of products are now copied including electric appliances, batteries, drugs, without the consumer sometimes realising that the items purchased could be fake.

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The decision of Bennett J in Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 highlights the importance of expert witnesses being truly representative of the hypothetical person skilled in the art.

Inverness relied on the evidence of Boscato, “a person who works at a bench in a laboratory rather than being a theoretical researcher. She has designed and made immunoassays, uses them routinely and has a “practical interest” in the subject matter of the invention.” By comparison, MDS relied on the evidence of Sinosich, a person who “has worked in the field of immunoassay development, including immunoassays for a range of fertility, pregnancy and non-pregnancy associated analytes. He has generated both polyclonal and monoclonal antibodies; all of his research activity has been antibody-based.”

A significant issue in the case was the construction to be given to the expression “specific binding reagent” as used in the claims of the patent. Sinosich considered that the adjective “specific” used in relation to a reagent was a term of art meaning that the reagent would preferentially bind to an analyte in the immunoassay with no binding to any other molecule in the sample. Boscato agreed that, in the context of immunoassays, “specificity” meant the ability to measure the analyte without interference from other substances which would cause a false positive response, or interference from other substances causing an inaccurate result but that there was a distinction between the use of “specificity” and “specific”. Boscato considered that the use of “specific” in the phrase “a specific binding reagent for an analyte” meant that the reagent has to be able to bind the analyte of interest in a specific binding reaction, but not necessarily exclusively.

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An Aussie company has triumphed in a legal wrangle with computer giant Apple Inc over registration of its trade mark DOPI. Despite Wholesale Central Pty Ltd’s trade mark, being the reverse of the famous Apple iPod® trade mark and placing emphasis on the letter “i”, the DOPI trade mark was not found to be deceptively similar to the iPod® mark.

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.

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This case involves parties selling similar “enhanced drinking water” products in Australia. Images are available in the judgement (link below).

NutrientWater had not registered its Trade Dress as a trade mark. Thus, it was not able to take action under the Trade Marks Act.

In Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2, NutrientWater alleged that (a) Baco was infringing its common law rights by “passing off” its range of enhanced water as NutrientWater beverages and (b) the actions of Baco were misleading and deceptive and thus infringed the provisions of the Trade Practices Act.

As part of its defense Baco alleged that NutrientWater could not claim any rights to its Trade Dress as it had deliberately changed its own Trade Dress to be similar to the VitaminWater Trade Dress. Baco also referred the Court to a range of other products that had similar Trade Dress.

NutrientWater ultimately lost the case because it was not able to establish that it had accrued a relevant reputation in the Trade Dress features allegedly appropriated by Baco.

This case illustrates how difficult it can be to stop others from copying elements of Trade Dress when only relying on common law trade mark rights.

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