ISSUE 114 – December 2018

EDITORIAL – BY FIONA ROTSTEIN AND FIONA PHILLIPS

This issue of Intellectual Property Forum explores the intersection between intellectual property (“IP”) and Indigenous knowledge. Indigenous knowledge includes traditional knowledge (practices, techniques and skills) and traditional cultural expressions (performance, design and words). Safeguarding Indigenous peoples’ traditional knowledge and traditional cultural expressions is acknowledged as amongst the most challenging topics in the IP landscape. However, if strategically used, the IP system can be vital. As noted by Francis Gurry, Director General of the World Intellectual Property Organization (“WIPO”):

The intellectual property system does not provide solutions to all the challenges that
indigenous peoples and local communities face concerning their traditional knowledge and
traditional cultural expressions. However, it does include tools that can be used either to
directly protect traditional knowledge and traditional cultural expressions or to prevent
their misappropriation.

 

In Conversation with Professor Megan Richardson by Fiona Rotstein

Professor Megan Richardson is the Co-Director of the Melbourne Law School’s Centre for Media and Communications Law (“CMCL”) and the Director of the Intellectual Property Research Institute of Australia (“IPRIA”). In an interview with Fiona Rotstein, Professor Richardson discusses her early career in New Zealand, her extensive work in law reform and what she enjoys most about being an academic. She offers valuable insights on privacy, as well as the future challenges of intellectual property law.

 

Articles

Wai 262 | The Long White Cloud Over New Zealand IP Law

Introduction

The history of intellectual property (“IP”) law in New Zealand has been a microcosm of the social history of New Zealand over the last half century.

In 1968 telex machines were the modern means of instant communication, but the New Zealand Post Office did the heavy lifting when it came to keeping in touch. At the heart of every office was the mailroom where letters were opened, sorted and circulated along with their files to the relevant staff member. Records of files were kept in ledger books, the most important of which was the one where due dates were docketed. Every day the due date ledger was reviewed for the urgent files, and for the upcoming dates where overseas clients might need to be reminded for instructions to be received in time.

Doug Calhoun
IP mentor, Wellington, New Zealand

 

 

Protecting Indigenous Cultural Expressions in Australia and New Zealand: Two Decades After the Mataatua Declaration and Our Culture, Our Future

Introduction

In September 2018, I attended the Ngā Taonga Tuku Iho Conference on Maori Cultural and Intellectual Property Rights (the “Ngā Taonga Tuku Iho Conference”) in Nelson, New Zealand. I was invited by Aroha Mead, a Maori woman of Ngāti Awa Ngāti Porou affiliation. Aroha is a recognised world leader in advancing Indigenous cultural and intellectual property (“ICIP”) rights. I met Aroha nearly 20 years when I was working in the Pacific for the World Intellectual Property Organization (“WIPO”) conferences in Noumea in 1990s. Her passion for cultural rights advocacy was obvious when she presented on the Mataatua Declaration on Cultural and Intellectual Property Rights of Indigenous Peoples (“Mataatua Declaration”). This Declaration was the first of its kind to call for rights to intangible cultural heritage. I was influenced by her words and the words in the Declaration when I wrote the report Our Culture, Our Future: Proposals for Recognition and Protection of Indigenous Cultural and Intellectual Property (“Our Culture: Our Future”). This Australian report was a national investigation of what rights Indigenous people wanted and how the law delivered. It recommended legal and non-legal measures for better recognition of ICIP rights. The Mataatua Declaration was an influence on this report. It is also included in the report as an appendix. The Our Culture: Our Future report recommended new law – sui generis law. However, this has not occurred and Indigenous Australians work within existing laws, pushing the boundaries, and using contracts and protocols for rights recognition.

Terri Janke

Terri Janke and Company, Lawyers and Consultants.


 

International Negotiations at WIPO on Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions: Analysis of the Process So Far and Thoughts on Possible Future Directions

Marking 20 years since the World Intellectual Property Organization (“WIPO”) formally launched a dedicated program on intellectual property (“IP”) and genetic resources (“GRs”), traditional knowledge (“TK”) and traditional cultural expressions (“TCEs”), this article briefly describes the issues and how Indigenous peoples and local communities (“IPLCs”), countries and regional and intergovernmental organisations approach them. It then presents an analysis of the negotiations undertaken between 2001 and 2018 by the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (“IGC”). Progress in the IGC has been slow, but the negotiation is uniquely complex, and it has produced several beneficial outputs. The options around a new mandatory disclosure requirement in patent law related to GRs and associated TK are becoming clearer and pressure is mounting for agreement on this question.

Wend Wendland

Director, Traditional Knowledge Division WIPO and Secretary to the WIPO IGC.

 

 

The Conflict between Farmers Rights in the Food and Agriculture Organization (“FAO”) Treaty and Corporate Plant Breeder Laws

Introduction

The Consumers Association of Penang in West Malaysia (the “Association”) has urged the Malaysian Government not to accede to and ratify the International Union for the Protection of New Varieties of Plants (“UPOV”)’s International Convention for the Protection of New Varieties of Plants Act of 1991 (“UPOV Act 1991”). The Malaysian Government has been under increasing pressure to so accede, a move that the Association argues would be against the interests and rights of Malaysian small farmers, and also against the protection of local biodiversity. The Association claims that UPOV Act 1991 would favour developed countries’ corporate plant breeders, at the expense of Malaysian biodiversity, as well as various rights and interests of small farmers of Malaysia. Malaysia already has the Protection of New Plant Varieties Act 2004 (“PNPV Act”), meeting its obligations under the World Trade Organization (“WTO”)’s intellectual property agreement, Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). This was explained in the Guidance for the Preparation of Laws Based on the 1991 Act of the UPOV Convention, adopted by the UPOV Council at its 47th Ordinary Session in October 2013, Geneva. The Association claims that sections in the PNPV Act that would have to be deleted, to join UPOV Act 1991, include those that could protect against biopiracy of Malaysia’s agricultural biodiversity, safeguards allowing small farmers to replant any seed they have saved on their own farms without needing to pay royalties, and preserving farmers’ rights to sell and exchange farm-saved seed without external control.

Gary Lilienthal, Nehaluddin Ahmad and Paul Hodgkinson

 

 

 

Territoriality and Intellectual Property Rights – When Does Online Infringement or Misleading and Deceptive Conduct Occur “In Australia”?

Intellectual property rights are inherently territorial in nature, giving the owner of the intellectual property certain exclusive rights within a territory. Activities online increasingly involve physical elements, actors or actions in multiple jurisdictions. Questions of jurisdiction involving communications that are made in one country and received in another are not new, however, in an era of online communications, those questions are becoming increasingly frequent.

Anna Spies
Barrister

 

 

Reports

Artificial Intelligence and Intellectual Property: An Interview with Francis Gurry

Ahead of the 2018 meetings of WIPO’s Assemblies, WIPO Director General Francis Gurry shares his views on the implications of artificial intelligence (“AI”) for intellectual property (“IP”) law and policy and its use in the administration of IP systems around the world.

 

 

Book Review: The Protection of Traditional Knowledge on Genetic Resources

by Frantzeska Papadopoulou

[Edward Elgar, 2018, pp.370].

Frantzeska Papadopoulou has written an expansive exploration regarding how traditional knowledge on genetic resources (“TKGR”) is accessed, owned and exploited. Her book, The Protection of Traditional Knowledge on Genetic Resources, critically examines the relevant legal institutions in the field, as well as the complex web of divergent principles governing the legal status of TKGR. Hence, TKGR is a challenging area to regulate due to its variety of subject matter and the spectrum of interests it affects. TKGR, according to Papadopoulou, raises an array of issues, “from land rights to human rights, plant genetic resource regulation, environmental laws and IP protection.”

Fiona Rotstein

 

 

IPSANZ Conference 2018 Recap

The 32nd IPSANZ Annual Conference was held in spectacular Queenstown, New Zealand, over the weekend of 7-9 September 2018. The conference venue was situated on the shores of Lake Wakatipu with panoramic mountain views. Leading intellectual property (“IP”) lawyers converged to discuss emerging trends and
topics in IP law.
The conference was a huge success and included an exciting range of speakers, from in-house IP managers to a guest speaker from the United States (“US”) Court of Appeals for the Ninth Circuit, as well as past and present Australian and New Zealand Judges. Conference attendees also heard from New Zealand and Australian barristers and solicitors, providing updates on both IP as well as competition law and damages.

Ann-Kathrin Goller and Daniellé Sharplin

 

 

Current Developments

IP Australia

Martin Friedgut and Roseanne Mannion
Spruson & Ferguson

General

No recent developments.

Patents, Designs, Trade Marks

Exposure Draft of the Intellectual Property Laws Amendment Bill (Productivity Commission Response Part 2 and Other Measures) Bill 2018

 

 

CASES

Peter Heerey AM QC, Tom Cordiner QC & Alan Nash
Barristers

Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109
[27 July 2018]
Abuse of process – consecutive actions for infringement of divisional innovation patents

Honest Reveira v Registrar of Trade Marks [2018] FCA 1122
[7 August 2018]
Trade marks – application for judicial review of decision of the Registrar to extend time for filing notice of intention to oppose application for removal – “circumstances beyond control of the person”

Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204
[14 August 2018]
Patents – invalidity, threatened infringement, relief

Apotex Pty Ltd v ICOS Corporation (No 4) [2018] FCA 1204
[24 August 2018]
Patents – penal notices and injunction against guarantees of supply for Pharmaceutical Benefits Scheme (“PBS”) listing

Red Energy Pty Ltd v Registrar of Trade Marks [2018] FCA 1449
[21 September 2018]
Trade marks – appeal from decision of the Registrar to reject
application on ground of lack of distinctiveness

 

 

Michelle Cooper and Dr Karl Dittko
Davies Collison Cave, Sydney

Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490

Dincel Constructions Systems Pty Ltd v AFS Systems Pty Ltd [2018] FCAFC 157

Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd [2018] FCA 1082

 

 

Dr Dimitrios Eliades
Barrister

Maggie Sottero Designs LLC v Loner [2018] FCA 1151
[3 August 2018]
Application for default judgment – whether final injunction should be granted – whether indemnity costs should be awarded

 

 

NEW ZEALAND

Andrew Brown QC
Auckland
Correspondent for New Zealand

Case Law Developments

Sky Network Television Limited v My Box NZ Limited & Anor
High Court of New Zealand, Smith A J
5 March – 25 October 2018
[2018] NZHC 2768
Importation and sale of set-top boxes (My Box) in New Zealand – defendant vendor (and its founder) representing to purchasers that My Box is lawful and that users should expect to receive access to content broadcast on Sky’s pay TV channels but would avoid Sky’s subscription charges. Claims as to breaches of the Fair Trading Act – summary judgment and injunction sought – defendants complaining that no proper pleading of underlying copyright claim nor showing of standing under the Copyright Act – whether summary judgment could be obtained under Fair Trading Act – strike-out application – damages and other relief

 

 

CHINA & HONG KONG

Dan Plane and Joshua Miller
Simone Intellectual Property Services (“SIPS”) Hong Kong
Correspondents for China & Hong Kong

Combatting Bad Faith Trade Mark Piracy in China

 

 

JAPAN

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

Super Mario infringer crashes out at Tokyo District Court

 

 

SINGAPORE

Winnie Tham, Jason Chan, Dr Eugene Yang and Zachary Foo
Amica Law LLC
Correspondents for Singapore

Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd [2018] SGHC 149

Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd [2018] SGCA 52

 

 

UNITED KINGDOM

Alan Johnson, Partner & Edwin Bond, Associate
Bristows LLP London
Correspondents for the United Kingdom

UK Court of Appeal confirms global licence approach to FRAND in determining SEP disputes

 

 

EUROPEAN UNION

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

3D Printing Technology and EU Legislative Movement

 

 

GERMANY

Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany
Higher Regional Court of Dusseldorf refuses to follow Federal Court of Justice regarding cease and desist obligations in German patent cases
Decision of 30 April 2018, I-15 W 9/18 – Rasierklingeneinheiten

 

 

FRANCE

Thomas Bouvet, Philippe Marchiset and Laura Romestant
Jones Day
Correspondents for France

New measures to be adopted regarding French patents

New developments in the EU regarding the grant of SPCs based on a patent covering a new application of a known product: French court refers questions to the CJEU for a preliminary ruling

The decision of the Court of Appeal of Paris of 9 October 2018

 

 

CANADA

Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

Legislative Amendments to Implement Canada’s Intellectual Property Strategy – Further Amendments to the Trade-marks Act 1985

 

UNITED STATES OF AMERICA

Scott W Cummings and Kevin Greenleaf
Dentons
Correspondent for United States of America

Dismissal of patent infringement complaint without prejudice does not reset inter partes review time bar