Selection of Extracts

ISSUE 122 – December 2020

EDITORIAL – BY FIONA PHILLIPS AND FIONA ROTSTEIN

Well, we have made it to the end of 2020 and the final issue of Intellectual Property Forum for the year. Most of us, we suspect, will be happy to see the back of this year. However, while 2020 has brought many hardships, it has also shown us something of human resilience and ingenuity – the very stuff of intellectual property (“IP”). For example, while we have not been able to meet in
person for most of the year, IPSANZ has brought its members an exciting range of webinars that have kept us both engaged and connected. We hope that this journal is also able to engage, inform and forge a connection amongst the IPSANZ community.


In Conversation with the Honourable Justice Nye Perram
by Fiona Phillips

In keeping with the times, Fiona Phillips met with Justice Nye Perram of the Federal Court of Australia (“Federal Court”) over Zoom, to discuss his Honour’s career, intellectual property (“IP”), the role of the Copyright Tribunal of Australia and the challenges of litigation during a pandemic.

 

Articles

Patents and the Pandemic

Introduction

The global COVID-19 pandemic has dominated almost every aspect of daily life throughout the world during 2020. In addition to the significant impact on public health, the way people work, socialise and learn has been impacted by the pandemic to a greater or lesser extent depending on their circumstances and geographic location. So far, 2020 has been filled with daily headlines regarding the origin, spread and economic impact of the virus. There is extensive coverage of the significant global efforts to develop and distribute treatments and vaccines, which has sparked greater interest and debate as the pandemic continues.

John Lee and Simone Hall
Partner + Lawyer at Gilbert + Tobin. The authors thank Dr Louise Buckingham.

 

The Sound of Silence – the Omission of Moral Rights for the Sound Engineer in New Zealand

Introduction

The sound recording plays a central role in Western music culture. It is the dominant means by which music is transmitted from artist to listener. It is surprising then, that both the culture, and the law that underpins it, have so little regard for the creativity involved in the creation of these works, above and beyond the contributions of composers and performers. What is crucially missing from this picture is the creative force of the modern-day sound engineer and their craft.

Brandon Hayes
Solicitor, Wilson Harle

and

Julius Hattingh
Solicitor, Bell Gully

 

Has the Repealed Limited Exemption for Intellectual Property Rights in sub-section 51(3) of the Competition and Consumer Act 2010 (Cth) Finally Been Put to Rest?

Introduction

After many years of scrutiny, the limited exception contained in the Competition and Consumer Act 2010 (Cth) (“CCA”) Part IV s.51(3) was repealed. The focus had always been on intellectual property rights (“IPR”) in licences and assignments as this was generally the limitation contained in the exemption provision itself.
Contrary to earlier thoughts that IPR and competition law were polarised, the reports and conclusions justifying the repeal were based on theoretical conclusions that IPR and competition law were basically compatible, as they both promoted innovation.
This conclusion has underestimated the nature of IPR, in particular the right to take enforcement action, which will in the circumstances of a common litigation scenario, contravene the cartel provisions.

Dr Dimitrios Eliades
Barrister, Queensland

 

Copyright and Competition: a Complementary Approach to Press Publication Rights

Introduction

The bargaining imbalance between digital platforms and news media businesses threatens the viability of press publications. The solution proposed by the Australian Competition and Consumer Commission (“ACCC”) following the release of the Final Report of the Digital Platforms Inquiry (“DPI Final Report”) involves the development of a News Media and Digital Platforms Mandatory Bargaining Code (“Mandatory Bargaining Code”). The Mandatory Bargaining Code would be implemented through amendments to the Competition and Consumer Act 2010 (Cth) and contains minimum standards, non-discrimination requirements, bargaining rules and compulsory arbitration rules. The bargaining framework is not intended to replicate copyright-based policy approaches pursued in overseas jurisdictions, such as the rights granted to publishers in respect of online uses of their press publications by information society service providers in Article 15 of the European Union’s Directive on Copyright in the Digital Single Market (“Copyright DSM Directive”).

Mary Saywell
Solicitor, MinterEllison Flex

and

Claudia Saywell
Student Commerce/Law at University of New South Wales

 

Proposed News Media Bargaining Code: Why it May Succeed

About the Proposed News Media Bargaining Code

On 31 July 2020, the Australian Competition and Consumer Commission (“ACCC”) released the Treasury Laws Amendment (News Media and Digital Platforms Mandatory Bargaining Code) Bill 2020 (Cth) (“draft News Media Bargaining Code”). Its aim is to address bargaining power imbalances between Australian news media businesses and digital platforms, specifically Google and
Facebook. The draft News Media Bargaining Code, as it currently stands, requires Google and Facebook to negotiate with news media businesses in good faith over all issues relevant to news on digital platform services, including the payment for the inclusion of news on their services. The Code also includes a set of “minimum standards” for providing advance notice of changes to algorithmic ranking and presentation of news; appropriately recognising original news content; and providing information about how and when Google and Facebook make available user data
collected through users’ interactions with news content.

Dr Rita Matulionyte
Senior Lecturer, Macquarie Law School, Macquarie University

 

Reports

Book Review: Protecting Traditional Knowledge: Lessons from Global Case Studies

by Evana Wright
[Edward Elgar Publishing 2020 pp 288. The eBook version is priced from UK£25/AU$46 from Google Play, ebooks.com and other e-Book vendors. While in print, the book can be ordered from the Edward Elgar Publishing website.]

For those engaged in advocacy around the legal recognition of Indigenous traditional knowledge and folklore, progress can seem frustratingly slow. But in recent times we have seen growing awareness and action, with steps both small and large being made around the world. Two new books with contrasting methodologies and perspectives traverse the globe to provide Australian and New Zealand lawyers, policymakers and stakeholders with detailed accounts of the current state of traditional knowledge protection.

Book Review: Traditional Knowledge, Genetic Resources, Customary Law and Intellectual Property: A Global Primer

by Paul Kuruk
[Edward Elgar Publishing 2020 pp 512. The eBook version is priced from UK£25/AU$46 from Google Play, ebooks.com and other e-Book vendors. While in print, the book can be ordered from the Edward Elgar Publishing website.]

Robyn Ayres, CEO, Arts Law Centre of Australia
Lee Elsdon, Solicitor, Arts Law Centre of Australia and
Jack Howard,
Artists in the Black Paralegal, Arts Law Centre of Australia

 

Current Developments

IP Australia

Roseanne Mannion and Martin Friedgut
Spruson & Ferguson

Australia – European Union Free Trade Agreement: Consultation on a possible new Geographical Indication Right

Protecting Indigenous Knowledge

COVID-19 Initiatives

 

 

CASES

Peter Heerey AM QC, Tom Cordiner QC & Melissa Marcus
Barristers

ViiV Healthcare Company v Gilead Sciences Pty Limited (No 2)
[2020] FCA 1455
(9 October 2020)
Patents – strike out application re particulars of lack of utility – discovery re lack of utility

Meat and Livestock Australia Limited v Branhaven LLC
[2020] FCAFC 171
8 October 2020
Patents – amendment of patent application by court – power to order amendment after reasons given as to why patent invalid – section 102, whether narrowing amendments to claims resulted in an invention different from that described in the specification

Monster Energy Company v Mixi Inc
[2020] FCA 1398
1 October 2020
Trade marks – extension of protection in Australia to IRDA for trade mark MONSTER STRIKE in classes 9 and 41 – opposition relying on ss.42(b) and 60 of the Trade Marks Act 1995 (Cth) – appeal from decision of Registrar – reputation of appellant’s marks including M icon and MONSTER ENERGY – whether reliance on s.42(b) and ss.18 and 29 of the ACL adds anything to reliance on s.60

Axent Holdings Pty Ltd t/a Axent Global v Compusign Australia Pty Ltd
[2020] FCA 1373
(25 September 2010)
Patents Act 1990 (Cth) – infringement and validity – variable speed limit signs – whether method or product claims – whether functional limitations were to capabilities or had to be present
at all times – Crown use defence; section 163 – innocent infringement; section 123 – prior use defence; section 119 – lapsed patent defence; sections 143(a) and 223(10) – lack of novelty (and section 24) and inventive step

Boehringer Ingelheim Animal Health USA Inc. v Intervet International BV
[2020] FCA 1333
17 September 2020
Patents – appeal on opposition to grant – pre-“Raising the Bar” – novelty – inventive step – utility

Boehringer Ingelheim Animal Health USA Inc v Intervet International BV (No 2)
[2020] FCA 1433
5 October 2020
Practice and procedure – costs – costs of interlocutory applications to amend patent application

Prodata Solutions Pty Ltd v South Australian Fire and Emergency Services Commission (No 3)
[2020] FCA
21 August 2020
Practice and procedure – application for dismissal of proceedings – failure to file lay affidavits within ordered timeframe – failure to prosecute proceedings with due diligence – failure to make timely application to vary orders progressing matter to trial – consideration of the overarching purpose in s.37M of the Federal Court of Australia Act 1976 (Cth) (“FCA Act”) – application by corporate applicant to dispense with requirement to be legally represented – termination of four successive lawyers

AgBoss Group Pty Ltd v Bainbridge Pty Ltd
[2020] FCA 1200
19 August 2020
Practice and Procedure – pleadings – application for leave to
amend Statement of Claim – leave granted – discovery category
disagreement – orders for discovery

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd
[2020] FCA 1530
22 October 2020


Miriam Zanker, Suzy Roessel and Courtney White

Davies Collison Cave

“Comprising”: A double-edged sword – Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020]
FCA 1477
(14 October 2020)

 

Elizabeth Godfrey and Linda Xu
Davies Collison Cave

Not so sweet victory for wicked business: PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020]
FCA 1078
(30 July 2020)

 

NEW ZEALAND

Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand

Pharmazen Limited V Anagenix IP Limited Court of Appeal of New Zealand (Brown, Dobson and Nation JJ) 29 April 2020, 23 July 2020
[2020] NZCA 306
Intellectual property – trade marks – similar trade marks – registrability – use is likely to deceive or confuse – ss.17(1)(a) and 25(1)(b) – Importing the prerequisite of actual use into s.25(1)(b) ground improper- Trade Marks Act 2002 (NZ). 

 

CHINA & HONG KONG 

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

Partial Judgments and Interim Injunctions in Tandem – a Potential Strategy for Frustrated Victims of IP Infringement in China

 

JAPAN

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

Flames Position Trade Mark Application Extinguished by IP High Court of Japan

 

SINGAPORE

Aaron Thng and Winnie Tham
Amica Law LLC
Correspondents for Singapore

Bad Faith Registration of a Trade Mark: Comite Interprofessionnel du Vin de Champagne v Keep Waddling International Pte Ltd [2020] SGIPOS 10

 

EUROPEAN UNION

Dr Marc Mimler, LL.M. (London)
Senior Lecturer in Law, Bournemouth University
Correspondent for the European Union

“Copyright is for losers, or what?” – The Cancellation Division of the European Union Intellectual Property Office finds Banksy’s Registration for the Figurative Mark of one of his works to be in Bad Faith.
Full Colour Black Limited v Pest Control Office Limited, EUIPO Cancellation Division Cancellation No 33 843

 

FRANCE

Thomas Bouvet and Colin Devinant
Jones Day
Correspondents for France

A New Hope? Recent Decisions of the French Patent Court point to a Brighter Future for Patentees in Pharmaceutical Litigation

 

GERMANY

Christopher Weber and Sören Dahm 
Kather Augenstein
Correspondents for Germany

Change in Jurisdiction on Territoriality? Regional Court of Dusseldorf on Patent Infringement if the steps of a Patented Method are not all done in a Single Country but in Multiple Countries
Regional Court of Dusseldorf, decision dated 28 July 2020, 4a O 53/19

 

NORTH AMERICA – CANADA

Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

Licensed Use of Trade Marks in Canada: A Decision that was a Snap!

 

UNITED STATES OF AMERICA

Greg Lantier, Ben Ernst, Wenbo Zhang and George Manley
WilmerHale
Correspondents for the United States of America

Introduction to Patent Litigation Before Judge Albright in the Waco Division of the Western District of Texas: Standing Orders

 

AFRICA

Dr Chijioke Okorie
Lead Advisor, Penguide Advisory
Correspondent for Africa

South Africa with Kenya and Eswatini seek Waiver of certain provisions of the TRIPS Agreement to Align Intellectual Property Rights with Access to Medicines in the fight against COVID-19

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