ISSUE 113 – September 2018


Welcome to “the September issue” of Intellectual Property Forum. Readers familiar with fashion will know that for fashion magazines, the September issue is regarded as the most important of the year. It is the issue that forecasts trends for the coming year and attracts the largest readership and hence, advertising revenue. So significant is the September issue of American Vogue that in 2009, RJ Cutler made a film about the magazine’s production, simply called, The September Issue.


In Conversation with the Honourable Justice Stephen Burley by Fiona Phillips

A long time friend of IPSANZ, the Honourable Justice Stephen Burley was appointed to the Federal Court of
Australia in May 2016. He sat down with Fiona Phillips to reflect on his career at the Bar and offer some insights on the practice of intellectual property.



On the Retirement of David Catterns QC

On 4 May this year, an exchange took place in the Federal Court of Australia between Tony Bannon SC and the Honourable Justice Jagot regarding David Catterns QC. The contents of the transcript will come as no surprise to intellectual property lawyers. David recently retired from practice after many years as a leading member of the Intellectual Property Bar. His contribution to our field is widely known and highly regarded.

Peter Banki
Banki Haddock Fiora



The Fearless Girl and the Charging Bull: Does Public Art Wave a Red Flag for Moral Rights?


Although the moral right of integrity incentivises artists to create by offering strong protections in respect of the treatment of their work, it has the potential to censor public discourse and suppress broader public interests. In the context of public artwork, this essay argues that Australia’s moderate enforcement of moral rights should not be strengthened, through a presumption of prejudice or the repeal of existing exceptions, to tip the balance of protection further in favour of the artist.

Bethany Larum
Corrs Chambers Westgarth
Winner John McLaren Emmerson QC Essay Prize 2018


Designs Law and 3D Printing: Global Issues in the Local Context of Australia


The last decade has been characterised by a considerable amount of hype surrounding 3D printing.1 By enabling the decentralised manufacturing of customised goods, this technology bridges the gap between the digital and physical worlds. Unlike a traditional business model involving intricate supply chains, centralised manufacturing and physical distribution, 3D printing facilitates a largely decentralised manufacturing model, supplemented by instantaneous dissemination of the “digital blueprint”. The disruptive potential of this technology has been the subject of significant scholarly debate, particularly in the field of intellectual property law. Considering the ongoing developments of the technology, and the ever increasing availability of consumer 3D printing hardware, the questions surrounding the application and suitability of the current intellectual property system have become increasingly pertinent.

Bram Van Wiele
University of Cape Town



From Fast Fashion to Wearable Technology – the intersection of design, innovation, and the law in New Zealand


This article will focus on the burgeoning wearable technology industry, and the interrelationship between different forms of intellectual property protection available to this new class of products. By considering both the importance of fashion as well as the growing influence of wearable technology, the limitations of traditional forms of intellectual property – patents, designs, and copyright – become apparent. Although New Zealand law has traditionally made a clear distinction between these forms of protection, wearable technology may change this. This article will first review current legal protection and its rationale and will then consider what options are available for more practical protection of wearable technology going forward.

Lauren Butchers
Kensington Swan



Recent Developments in IP in New Zealand – as at June 2018

This is a summary of some of the key recent developments in intellectual property (“IP”) law in New Zealand over the past 12 months, as at June 2018. In this article I discuss a snapshot of some of the more relevant issues and touch on patents, trade marks and passing off, registered designs, the calculation of loss in IP disputes, and mention a couple of the more significant law reform proposals. For convenience, I will refer to the previous Patents Act 1953 (NZ) as the “old act” and the current, Patents Act 2013 (NZ), as the “new act”.

Clive Elliott QC



The Territoriality of Copyright in the Digital Single Market: A Closer Look at the Proposed Broadcaster Regulation

This report looks at the current status of the European Union’s (“EU”) so-called “Proposed Broadcaster Regulation” (sometimes also referred to as the “Proposed Territoriality” or “SatCab” Regulation). This instrument is one of the main components of the copyright legislative package of the EU’s Digital Single Market (“DSM”) strategy. This strategy includes an effort to break down “national silos” in copyright legislation and “modernis[e] copyright rules in the light of the digital revolution and changed consumer behaviour”.

Ted Shapiro
Wiggin LLP



The Patent Cooperation Treaty at 40

Today inventors around the world have access to a system, known as the Patent Cooperation Treaty (“PCT”), which offers a cost-effective way to seek patent protection for their high-value technologies in multiple countries. That system, which has just celebrated its 40th year of operation, has become an essential component of the international patent system.

Matthew Bryan and
Catherine Jewell



Book Review: Cross-Border Copyright Licensing: Law and Practice

by Carlo Scollo Lavizzari and René Viljoen (eds)
[Edward Elgar, 2018, pp.400].

Trade agreements and an increasing demand for content around the world has put a spotlight on international copyright licensing in recent times. This makes Cross-Border Copyright Licensing: Law and Practice a very timely addition to the copyright practitioner’s bookshelf.

Fiona Phillips



Report on INTA Conference 2018 in Sunny Seattle

All of the rumours about Seattle being a rainy city were again unsupported during the International Trademark Association (“INTA”) 140th Annual Meeting in May 2018 held at the Washington State Convention Center. There were only a few splashes of rain on the Saturday evening and sunny and blue skies for the rest of the Conference.
Seattle is an exciting and vibrant city to host the Conference, having close connections with companies well known for fostering innovation and being the home of ground-breaking companies like Amazon, Costco, Starbucks and Alaska Air Group. It was also refreshing that significantly fewer Uber and taxi fares were required for attendees to get around than in Barcelona and Orlando.

Alison McGinn



Current Developments

IP Australia

Dr Dimitrios Eliades


Amanda Caldwell 
Spruson & Ferguson


Public Consultation on Exposure Draft Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018 (Cth)


Amended New Zealand Patents, Trade Mark and Design Regulations enter into force: Published: 5 April 2018

Changes to Patent Manual of Practice & Procedure – 1 August 2018


No recent developments.

Trade Marks

Updates to Examiner’s Manual



Peter Heerey AM QC, Tom Cordiner QC & Alan Nash

ESCO Corporation v Ronneby Road Pty Ltd
[2018] FCAFC 46
[28 March 2018]
Patents – novelty – whether language in claim described the function of integers for a locking mechanism or also specified position – utility – “promise” of the invention – “composite” promises – specification refers to multiple advantages conveyed by the invention – whether promises to be interpreted cumulatively or disjunctively

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited
[2018] FCAFC 71
[10 May 2018]
Patents – pharmaceutical products – paracetamol tablets – description of testing apparatus – reference to a “reciprocating basket” understood by skilled addressee to be in error – whether claims should be construed so as to avoid the error
Patents – fair basis – interpretation of the complete specification – use of common general knowledge to inform interpretation
Patents – best method – level of detail required in describing ingredients in pharmaceutical formulations – relevant of manufacturing and processing information in marketing authorisation approvals

Meat & Livestock Australia Limited v Cargill, Inc
[2018] FCA 51
[9 February 2018]
Patents – method for identifying traits from genetic make-up of cows – manner of manufacture, inventive step, sufficiency, novelty, fair basis, clarity, definition and utility

Davies v Lazer Safe Pty Ltd
[2018] FCA 702
[18 May 2018]
Patents – infringement and validity – safety system used for the detection of obstructions in the path of a moving part of machinery, such as press brakes

Sportsbet Pty Ltd v Crownbet Pty Ltd
[2018] FCA 1045
[11 July 2018]
Trade marks – misleading and deceptive conduct – interlocutory injunction – user of “SPORTSBET” seeks restraint on use of “SPORTINGBET” – characteristics of online betting market – admissibility of focus group report – prima facie case – previous co-existence of rival names – balance of convenience – need to find new name


Naomi Jenkins
Davies Collison Cave, Sydney

Frucor Beverages Limited v The Coca-Cola Company [2018] FCA 993



Winnie Tham and Zachary Foo
Amica Law LLC, Singapore
Correspondents for Singapore

Nanofilm Technologies International Pte Ltd v Semivac International Pte Ltd and others [2018] SGHC 167



John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan

Japan Expands Novelty Grace Period to 12 months



Dr Faye Fangfei Wang
Senior Lecturer in Law, Brunel University London
Correspondent for the European Union

CJEU Judgment on Europe-wide Kit Kat Four-Fingered Chocolate Bar Shape Mark

Christian Louboutin SAS v Van Haren Schoenen BV (Case C-163/16)



Thomas Bouvet and Hatziri Minaudier
Jones Day
Correspondents for France

France enacts Trade Secrets Protection



Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

Canada’s Trade marks Act Amendments to be Proclaimed in Force in 2019



Scott W Cummings, Kevin Greenleaf, Mark L Hogge, Cass W Christenson, Nicholas Jackson, Eric L Sophir, Kamyar Maserrat, Roman Tsibulevskiy
Correspondent for United States of America

Supreme Court rules inter partes reviews are constitutional and expands scope of their review

Supreme Court rules that foreign lost profits are recoverable under 35 U.S.C. §271(f)(2)

USPTO updates guidance leading to more favourable consideration of patent eligibility