Australian and New Zealand Intellectual Property Law

Online auction giant baying for blood

2010-02-11 09:29:18

eBay has lodged a Federal Court appeal against a decision to allow registration of the trade mark UBAY in Australia.

UBAY Pty Ltd applied for registration of the trade mark UBAY and two UBAY logo trade marks in 2007. The company sought a monopoly in the trade marks in connection with a range of services including operating online marketplaces in respect of goods and services and electronic retailing and online shopping services.
eBay Inc subsequently opposed the registration of the three trade marks however, in a decision by a Delegate of the Registrar of Trade Marks, the UBAY marks were found not to be substantially identical with, or deceptively similar to any trade marks within eBay's family of 12 Australian trade marks. The Delegate said that whilst there were similarities between the marks, he "could not be satisfied that there would be a real tangible danger or likelihood of confusion amongst a substantial number of consumers".

Attempts by eBay to argue against registration of the UBAY marks on the basis the online auction giant had acquired a reputation in Australia, and that because of that reputation use of the UBAY marks would be likely to deceive or cause confusion also failed. It relied in part on evidence of a 2004 US survey showing 58 per cent of respondents would associate a website using the word "bay" within its name or on its website with eBay, to argue deception or confusion between the UBAY and eBay marks was likely to arise. However, the Delegate agreed with UBAY's argument that the 'brand recognition' of eBay reduced the likelihood of confusion between the marks with consumers unlikely to believe eBay would vary its well-known trade mark. The Delegate found use of the UBAY trade marks was not likely to deceive or cause confusion and eBay's opposition failed, which absent the Federal Court appeal, would have resulted in the UBAY trade marks being registered.

A directions hearing is set down for the appeal later this month.

NZ trade mark clarifications

2010-02-09 16:45:44

The Intellectual Property Office of New Zealand� (IPONZ)� has recently issued three new Practice guidelines relating to:

Correct classification of "leasing access time to computer databases"

In line with best international practice, IPONZ had advised that they consider the service description "leasing access time to computer databases" most appropriately classified in class 38.

Major Events Management (World Rowing Championships 2010 ) Order 2009

The Major Events Management (World Rowing Championships 2010) Order 2009 came into force on 18 January 2010. This order provides protection from 18 January 2010 to 30 November 2010 for the emblem and words associated with the World Rowing Championships 2010. This protects major events from ambush marketing.

Series Trade Marks

IPONZ has issued a revised Practice Guideline in relation to Series Trade Marks. It has been stressed by IPONZ that the revised guideline does not reflect any changes in practice, but fleshes out the prior guidelines to provide greater certainty and assistance for applicants and agents.

The kookaburra gets the last laugh

2010-02-09 16:13:04

Larrikin Music's claim of copyright infringement against EMI Songs, EMI Music and two former members of the band Men at Work has been successful in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29.

On 4 February 2010 the Federal Court ruled that copyright in the 1934 round "Kookaburra sits in the old gumtree" was infringed by the well-known Men at Work song "Downunder".

Two bars of the four bar round "Kookaburra" were reproduced in "Downunder" albeit they were in a different key and were separated by the basic "hook" of "Downunder" (or attractive part of the song).

These elements of "Kookaburra" were found in the flute riff of "Downunder" and were found three times in various forms in "Downunder". It was conceded that there was a causal connection between the two works. The main issues were whether there was an objective similarity between the two works and whether what had been taken from "Kookaburra" was a substantial part of that work.

Jacobson J held that there was sufficient objective similarity between the bars of "Kookaburra" and the part where they are heard in "Downunder". The melodies were the same. This was reinforced by the fact that Colin Hay, a former Men at Work member, admitted that the relevant portion of "Downunder" was "unmistakably" the melody of "Kookaburra". Jacobson J considered that nothing turned on the change of key or the difference in rhythm between the two songs. Nor did the difference in harmony make the phrases from "Kookaburra" unrecognisable. Furthermore, Jacobson J did not consider that the separation of the two phrases from "Kookaburra" by the basic hook of "Downunder" prevented a finding of reproduction.

The respondents argued that, if "Kookaburra" and "Downunder" are such icons, and the similarities are so strong, why did it take so long for anyone to recognise the connection. The connection was exposed on the television music quiz program "Spicks and Specks". The judge concluded that whilst "Spicks and Specks" showed that there are difficulties in the recognition of the "Kookaburra" in "Downunder", a sensitised listener can detect the aural resemblance between the two works. One wonders whether the sensitised listener is the true audience when determining an infringement of musical copyright.

Nonetheless, supporting this finding was the fact that it was open to infer that the composer of "Downunder"'s flute riff, who was not called as a witness, deliberately reproduced a part of "Kookaburra" for the purpose of evoking an Australian flavour in the flute riff.

In relation to the question of whether a substantial part of "Kookaburra" was taken, Jacobson J considered that "Kookaburra" was not so simple or lacking in substantial originality that a note for note reproduction of the entire work was required to meet the "substantial part" test. He did, however, place great weight on the fact that one of the respondents, Colin Hay, performed the words of "Kookaburra" when performing "Downunder" from 2002 onwards, to show that a substantial part was taken. This seems strange when Jacobson J accepted Mr Hay's evidence that he was not aware of the appropriation of the bars of "Kookaburra" until the mid 1990s. His Honour did, however, note that 50% of "Kookaburra" had been taken.

This litigation is not yet concluded. The monetary compensation to which Larrikin Music is entitled is still to be determined. Larrikin Music has claimed 40-60% of the income received, which the respondents claim grossly over-reaches its entitlement. That would be an enormous sum for two bars of music.

Commercialisation Australia grants cover IP costs

2010-02-08 10:49:14

The Australian Government's Commercialisation Australia initiative provides grants of up to $50,000 to access specialist business advice and services including intellectual property management.

IP Australia reported today that eligible expenditure include fees for the cost of filing a patent application, patent search and examination fees, and annual patent maintenance fees.

An overview of the scheme is here.

Studios flop in ISP copyright case

2010-02-04 17:00:43

Major film and television studios represented by the Australian Federation Against Copyright Theft (AFACT) have today lost their battle against the third largest internet service provider (ISP) in Australia, iiNet Limited.

This case (Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010] FCA 24) considered whether the ISP authorised the infringement of copyright of its users or subscribers when they downloaded films and television programs in a manner which infringed copyright.� Under Australian copyright law, a person who authorises the infringement of copyright is treated as if they themselves infringed copyright directly.

AFACT conducted investigations into copyright infringement occurring by means of a peer to peer system known as the BitTorrent protocol by subscribers and users of iiNet's services. The information generated from these investigations was then sent to iiNet by AFACT, with a demand that iiNet take action to stop the infringements occurring.
The evidence on infringement in this case showed that the BitTorrent protocol was being used by those accessing the internet through iiNet's facilities to download the applicants' films and television shows. The critical issue in this proceeding was whether iiNet, by failing to take any steps to stop the infringing conduct, authorised the copyright infringement of the iiNet users.

Justice Cowdroy found that iiNet had knowledge of infringements occurring, and did not act to stop them.� However, he decided that iiNet did not authorise the copyright infringement, and commented that the copyright infringements occurred directly as a result of the use of the BitTorrent system, not the use of the internet, and iiNet did not create and did not control the BitTorrent system.� Further, he found that iiNet did not have relevant power to prevent those infringements occurring and did not sanction, approve or countenance the copyright infringement.

His Honour also commented that the result of the proceeding would disappoint the members of the AFACT as the evidence established that copyright infringement was occurring on a large scale. However, he went further to state that this does not necessitate or compel a finding of authorisation, merely because it is felt that 'something must be done' to stop the infringements.

His Honour also commented that the proceeding attracted widespread interest both in Australia and abroad and that as far as he was aware, this trial, involving suit against an ISP claiming copyright infringement on its part due to alleged authorisation of the copyright infringement of its users, is the first trial of its kind in the world to proceed to hearing and judgment.

Dodgy IP register caught by court

2009-12-23 11:37:47

A Florida-based company that issued misleading invoices to patent and trade mark applicants was recently found to have violated the state's Deceptive and Unfair Trade Practices Act.

This serves as a timely reminder that there are several organisations that issue official-looking documents to owners of recently granted (or due for renewal) patents and trade marks. The documents usually look like invoices and solicit payment for a service of no value at all.

Further information on this problem, including a list of organisations engaged in the practice, is here.

Trans-Tasman harmonisation - one step closer

2009-12-18 14:30:18

IP Australia and IPONZ have agreed to undertake a trial to recognise, where appropriate, the previous examination decisions made by each office, not only to further align and enhance the quality and consistency of trade mark examination, but also to assess the feasibility of a future model of mutual recognition in examination between the New Zealand and Australian IP Offices.� IPONZ and IP Australia will commence this trial on 1 February 2010 where each office will recognise prior examination decisions made in the other office (where this is possible having regard to local requirements).

Any applicant who has filed a trade mark in one country who then files an application for the same mark in the other country can opt into the trial.

The end of the "appeal" road for Dura-Post

2009-12-17 15:34:53

Dura-Post (Aust) Pty Ltd's application for special leave to appeal from the Full Federal Court's decision was refused by the High Court of Australia on 11 December 2009.� As reported earlier here, the Full Court of the Federal Court upheld the decision of Justice Gyles including his findings on innovative step.

In reaching its decision, the Full Court confirmed that when considering whether the invention claimed is in respect of an 'innovative step', the Court must compare the invention as claimed with each prior art disclosure and identify whether any variations between the invention and the prior disclosure make a substantial contribution to the working of the invention.
The Full Court also accepted the trial judge's view that "substantial" contribution in the context of section 7(4) means "real" or "of substance" as opposed to distinctions without any real difference.

The High Court's decision to refuse special leave not only confirms the approach taken by Justice Gyles and the Full Court in assessing whether an invention involves an innovative step, but it also reinforces the value of innovation patent system for those inventions that would not otherwise be protectable by reason that they do not involve an inventive step.

Mars loses second battle

2009-12-17 09:57:09

Mars' appeal to the Full Federal Court (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174) has been dismissed with costs.� At paragraphs 25 and 26 the Full Court noted:

"We are of the view that the primary judge was correct in finding that the distinguishing feature of the Maltesers get-up and trade marks, as a whole, is the word "Maltesers".� The other features relied on by Mars, namely the red colour and the pictures of the malt balls product in the whole and cut through, are not distinguishing features of the Mars product.� The colour red and the depiction of the product, both whole and cut through in cross-section, are, on the evidence, commonplace in confectionary packaging.� The features relied upon by Mars to distinguish its product, other than the word "Maltesers", do not alone or in combination do so.

In our view, the overall impression in the imperfect recollection of the consumer of the Mars trade marks is of the word "Maltesers"."
The Court held that "neither the words "Malt Balls", the red colour nor the depiction of the product in the whole and in cut through are used as a trade mark by Sweet Rewards. They are not used to distinguish the malt balls as the goods of Sweet Rewards, nor do they represent that the goods are Maltesers, that they are equivalent to Maltesers or that they are otherwise the goods of Mars.� Further, the words "Malt Balls" have been used by Sweet Rewards on products sold other than under the Delfi brand and have been used on the packaging of a product sold by a confectioner in Melbourne.� The packaging of the latter was in red, described the product as malt balls and showed the product both in the whole and in cross-section.

The distinguishing feature of the Sweet Rewards product is the Delfi trade mark." [28] and [29]

Our report on the initial case is here.

IP Australia now providing Priority Document Access Service

2009-12-14 10:54:39

IP Australia is now providing patent applicants with access to the Priority Document Access Service (DAS) administered by WIPO.

Applicants can request IP Australia to send their priority document to WIPO's digital library. Applications based on the Australian priority document in those countries participating in DAS will meet their obligation to supply a certified copy of their Australian priority document.

Applicants who have filed a patent application with IP Australia relying on foreign priority may also be able to meet any obligations to supply a certified copy of their priority document by providing IP Australia with access to a copy of their priority document through DAS.

This Service cannot be used to meet priority document requirements under the PCT, although this is expected in the near future.