ISSUE 124 – June 2021
EDITORIAL – BY FIONA ROTSTEIN
Welcome to Issue 124 of Intellectual Property Forum, marking the half-way point of 2021. Hopefully this year has not been too disruptive so far with snap lockdowns, closed borders and forwent vacations due to COVID-19. Fingers crossed the rest of the year is less stressful now that the vaccine roll-out has begun in both Australia and New Zealand. I look forward to more in-person IPSANZ events in the quarantine-free “Trans Tasman Bubble” as well as interesting webinars to keep us all informed. Similarly, Intellectual Property Forum seeks to immerse IPSANZ members in the latest intellectual property developments. This issue of the Journal examines the changing IP landscape in Australia, New Zealand and internationally. It covers a range of topical issues in a variety of areas, from copyright, patents and designs to trade marks, geographical indications and cybercrime.
In Conversation with Associate Professor Jani McCutcheon by Fiona Rotstein
Associate Professor Jani McCutcheon teaches and researches intellectual property law at the University of Western Australia (“UWA”) Law School in Perth. Jani is also currently the UWA Law School’s Deputy Head of School (Teaching and Learning), and for several years, worked as a solicitor principally in IP. In April 2021, Jani discussed with Fiona Rotstein her career, the relationship between academia and practice in IP law, future challenges in IP law and much more.
Obituary: The Honourable Peter Heerey AM QC
A Final Case Note
There are some into whose sphere of influence we are lucky to be swept. The Honourable Peter Heerey AM QC was such a person for us and, we suspect, many of you.
Peter passed away on 1 May 2021, survived by his wife Sally and sons Ed, Charlie and Tom. Our heartfelt condolences to each of them.
Tom Cordiner QC and Alan Nash
Articles
Dead Weeds?: The NRDC Case Today
A Leading Case?
What qualities merit the appellation of “leading case” to the reasons given for a judicial decision?
The requisite qualities present at several levels. To the practitioner the case may have settled a disputed point of law or mark a significant departure from the general understanding of the law. To the legal scholar the significance may lie in the cogency with which the reasoning is expressed and the depth of learning apparent in that reasoning. To domestic courts and courts in other countries where similar issues arise the decision may offer guidance.
The Honourable William Gummow AC
Professor of Law, University of Sydney, Australian National University; Non-Permanent Judge Hong Kong Court of Final Appeal.
New Zealand’s IP Laws Amendment Bill | A Bit More Than Scratching Some Itches
Introduction
Intellectual property law reform moves in measured and mysterious ways. And when COVID-19 and a general election intervene, the mysterious ways become even more measured than usual. But finally, three days after the October 2020 general election, the Cabinet Briefing Paper (“Cabinet Paper”) authorising the IP Laws Amendment Bill to proceed was released.
Doug Calhoun
IP Mentor, Wellington, New Zealand
Special Difficulty: Volume Builders and Copyright in Architectural Plans
Abstract
The application of Australian copyright law to volume builder or “project home” plans gives rise to a special difficulty: the plans notoriously tend towards sameness, but copying is rife. That difficulty makes the case law a useful tool for examining judicial approaches to the question whether there has been reproduction of a substantial part within the meaning of the Copyright Act 1968 (Cth). Some Australian cases have resolved the difficulty by adopting the proposition that a finding of deliberate copying lowers the degree of objective similarity required to establish reproduction. This article opines that proposition ought not be accepted as correct in Australian law.
Angus Christophersen
Barrister, Victorian Bar
Cybercrime: Targeting Your Intellectual Property
Introduction
Cybercrime is a word becoming more familiar to all sectors of the community. Individuals, businesses, organisations and many governments have fallen victim to the many forms of cybercrime activity, and not all the attacker’s methodologies are sophisticated or particularly technical. The fear of being the victim of a cybercrime brings stress and anxiety to those responsible for protecting their corporate network and intellectual property as the methodologies and tools available to the attacker increases in sophistication and reports of large businesses and governments being successfully hacked have become daily news.
Graeme Edwards
Director, CYBER I Pty Ltd
Sensing the Future of Copyright
Introduction
To date the vast majority of creative works are limited, in their expression, to the visual and auditory senses. Some such creative works can nevertheless indirectly communicate to our other senses as well. A delicious looking burger in a movie may cause the hungry viewer’s mouth to water, and a good book may direct the reader’s imagination to a particular scent by description.
Dr Vladimir Samoylov
Solicitor and recent PhD graduate from Victoria University of Wellington
Reports
Book Review: The Protection of Geographical Indications: Law and Practice, Second Edition
By Michael Blakeney
[Edward Elgar 2019 pp. 640. The eBook version is priced from £156/AU$281 from eBook vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
Melissa Marcus
Barrister, Victorian Bar
Book Review: Copyright and Fundamental Rights in the Digital Age: A Comparative Analysis in Search of a Common Constitutional Ground
Edited by Oreste Pollicino, Giovanni Maria Riccio, and Marco Bassini
[Edward Elgar 2020 pp. 288. The eBook version is priced from £25/AU$45 from eBook vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
Dr Luís Bogliolo
PhD (University of Melbourne) and Teaching Fellow at Melbourne Law School
Current Developments
IP Australia
Roseanne Mannion and Martin Friedgut
Spruson & Ferguson
COVID-19 Initiatives
Upgrade to Online Services
Changes in Patent Cooperation Treaty (“PCT”) Fees
Australian Intellectual Property Report 2021
Delays to Granting of Innovation Patents
CASES
Tom Cordiner QC, Melissa Marcus, Clare Cunliffe and Marcus Fleming
Barristers, Victoria, Western Australia, South
Australia, Tasmania and Northern Territory
The Cultural Intelligence Project Pty Ltd v The Entourage Education Group Pty Ltd
[2021] FCCA 504
26 February 2021
Trade Marks – Infringement – Interlocutory Injunction – Serious issue to be tried – balance of convenience – application granted
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)
[2021] FCA 137
25 February 2021
Consumer Law – whether conduct is in trade or commerce – discussion of “not insignificant number” criterion – relevance of criterion to passing off – effectiveness of disclaimer – copyright – whether copyright licence granted – defence of innocent infringement – inducing breach of contract – limitations on artist’s rights – breach of master agreement by artist – interference with contractual relations – defence of honest and reasonable belief – tort of passing off – trade mark infringement – whether FEARLESS GIRL used as a mark – whether use on services of same description or closely related goods – whether use likely to deceive or cause confusion – defence of good faith
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2)
[2021] FCA 328
9 April 2021
Trade marks – validity (s.41) – infringement – defences (s.122(1)(b)(i); s.122(1)(e)); s.122(1)(fa)
Repipe Pty Ltd v Commissioner of Patents (No 3)
[2021] FCA 31
29 January 2021
Patents – amendment to overcome manner of manufacture objection – whether possible to overcome s.102 – whether the “principle of finality” should prevent iterative amendment applications
UON Pty Ltd v Hoascar [No 3]
[2021] WASC 17
22 January 2021
Patents – transfer of proceedings to Federal Court – overlap in subject matter – risk of inconsistent findings
D’Annunzio v Willunga Projects Pty Ltd
[2021] SADC 36
29 March 2021
Copyright in plan of subdivision – interlocutory injunction application – balance of convenience weighted against grant of injunction
Metricon Homes Pty Ltd v Zac Homes Pty Ltd
[2021] FCCA 394
10 March 2021
Metricon owns the registered mark “LOVE WHERE YOU LIVE” in classes 35, 36, 37, 42 and 44 covering a variety of services relating to building and real estate.
Suzette Pullinger, Lauren Eade and Miriam Zanker
Davies Collison Cave, Sydney
Goodman Fielder Pte Ltd v Conga Foods Pty Ltd
[2020] FCA 1808 (17 December 2020); and [2021] FCA 307 (31 March 2021)
Dr Dimitrios Eliades
Barrister, Queensland
Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd
[2021] FCA 208
12 March 2021
NEW ZEALAND
Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand
Ian James Burden & Plantation Grown Timbers (International) Limited & Anor v ESR Group (NZ) Limited & Ors
High Court of New Zealand, Duffy J
11 June 2020, 23 March 2021
[2021] NZHC 597
Copyright – border enforcement notice – Goods seized by New Zealand Customs pursuant to notice and detained until outcome of trial and appeal – Extensive storage costs paid by plaintiffs at direction of Customs under indemnity – ability of plaintiffs to recover storage costs – special damages – “costs” – recovery of storage costs as disbursements – ss.136, 140, 141A Copyright Act 1994 (NZ) – s.52 Judicature Act 1908 (NZ); High Court Rules 2016 (NZ) rr.14.1, 14.2, 14.12
CHINA & HONG KONG
Dan Plane and Avie Zhao
Simone Intellectual Property Services (“SIPS”) Hong Kong
Correspondents for China & Hong Kong
Update on Latest Developments in Respect of Bad Faith Trade Mark Filings in China
JAPAN
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondents for Japan
Telephone Booth Goldfish Aquarium Copyright Litigation in Japan
SINGAPORE
Aaron Thng and Megan Low
Amica Law LLC
Correspondents for Singapore
The Singapore IP Strategy 2030: Singapore’s 10-year national blueprint for IA/IP management
EUROPE
UNITED KINGDOM
Tim Heaps and Simon Clark
Bristows LLP
Correspondents for Untied Kingdom
UK Court of Appeal rules on whether the UK should go its own way post-Brexit on the communication to the public right: TuneIn Inc v Warner Music UK Ltd and another [2021] EWCA Civ 441
GERMANY
Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany
German Federal Court of Justice clarifies requirements for the protectability of shape marks
FRANCE
Emmanuel Baud, Philippe Marchiset and Marion Argiolas
Jones Day
Correspondents for France
The Paris Court of Appeal adds conditions to the parody exception and fails to apply the balance of interests test
(Paris Court of Appeal, 23 February 2021, No. RG 19/09059 – Koons and others v Davidovici and others)
EUROPEAN UNION
Dr Marc Mimler, LL.M. (London)
Senior Lecturer in Law, Bournemouth University
Correspondent for the European Union
“Elegance is refusal”, said Coco Chanel.
The General Court of the European Union rejects French fashion label Chanel’s claim that Huawei’s trade mark application would conflict with its famous interlocked Cs logo
Case T‑44/20 Chanel v EUIPO – Huawei Technologies, Judgment of the General Court (Fifth Chamber) 21 April 2021
NORTH AMERICA
UNITED STATES OF AMERICA
Timothy Syrett
WilmerHale
Correspondents for the United States of America
US courts are limited in their ability to adjudicate FRAND rates on a global basis