ISSUE 134 – December 2023
EDITORIAL – BY FIONA ROTSTEIN
We have made it to the end of another year! I am pleased to bring you the final issue of Intellectual Property Forum for 2023. This edition covers the broad spectrum of IP, from trade marks and designs to
copyright, patents and trade secrets. There are contributions on a range of important topics, such as gender inequality in the practice of IP law in Australia and New Zealand, plus the complicated (and evolving) relationship between generative artificial intelligence (“AI”) and copyright law.
We begin with my profile of Richard Cobden SC who was called to the New South Wales Bar in 1992 and took silk in 2005. In our conversation, Cobden reflects on his journey from being encouraged by Sir John Kerr and Sir Anthony Mason to study law while working at the Australian National Gallery to appearing in many landmark IP cases. He also shares his thoughts on how the practice of IP law has
changed over the course of his career. When I ask what he views as the key issues in IP currently, Cobden states:
Copyright in computer programs is Procrustean torture. Looking back, it was pure syllogism to say, “Well, they’re written down so they’re literary works” and then to protect not only source code but object code in that way. The lack of logic in doing that, and the statutory contortions that have been layered one upon the other to attempt to accommodate it, are very clear from the recent judgment in Motorola v Hytera.
The Motorola v Hytera appeal is being heard in the Full Court of the Federal Court of Australia (Justices Beach, O’Bryan and Rofe) from 27 to 30 November 2023, so we wait for the Full Court’s view of these issues when the judgment is delivered.
Our first article focuses on women in IP from Australia and New Zealand and their experiences with colleagues and other professions. Associate Professor Jessica C Lai, Dr Ronelle Geldenhuys and Maryam Khajeh Tabari present their findings, having interviewed 107 Australian and New Zealand women in IP. Women working across patents, copyright and trade marks discuss the gender biases, barriers
and discrimination they have faced in their careers. The article is an important reminder of the work that needs to be done in the IP profession given the inappropriate attitudes that are sadly still prevalent. The authors discuss their methodology as well as their hopes for the future. However as they note, “Much of what women experience cannot change until people’s perceptions of women, and gender more broadly, change.”
Next, Brett Doyle considers how Australian applicants and practitioners should seek to register trade marks with little or no inherent adaptation to distinguish. The focus of Doyle’s article is the United Kingdom High Court decision of Justice Jacob (as his Honour then was) in British Sugar PLC v James Robertson & Sons Ltd  RPC 281 (“Treat”) which has been referred to in Australia when assessing signs where the degree of distinctiveness is marginal. Doyle considers what is meant by the term “trade mark use” and assesses the “influence, value and relevance” of Treat on Australian jurisprudence. Doyle reviews a range of judicial and administrative trade mark decisions, including the recent High Court of Australia judgment, Self Care IP Holdings Pty Ltd v Allergan Australia Ltd Pty (2023) 408 ALR 195.
Dr Rita Matulionyte then takes a deep dive into generative AI and copyright. The current legal challenges in Australia and possible reform options are explored. The article details a four-step proposal which seeks to meet the needs of the Australian AI industry and the local creative industries whose works and other copyright subject matter are being used to train generative AI. Under the proposal, “non-creative AI” and “creative AI” modules are differentiated. According to Dr Matulionyte, a remuneration scheme should be created to compensate authors for the use of their copyright material to train “creative AI”. This would best be collected under a statutory licensing scheme. Dr Matulionyte also asks for greater transparency in AI training when copyright material is being used.
In our final article, Guy Yonay compares patent claim construction in New Zealand to the United States of America and the United Kingdom. Yonay analyses three New Zealand appeal judgments: Peterson Portable Sawing Systems Ltd v Lucas  3 NZLR 721; Hammar Maskin AB v Steelbro New Zealand Ltd  NZCA 83; and Doug Andrews Heating and Ventilation Ltd v Wayne James DIL & others  NZCA 122 (“Doug Andrews”). According to Yonay, the New Zealand Court of Appeal’s application of New Zealand’s “invention-centric approach” in Doug Andrews provided an alternative outcome than would have been achieved under the claim construction regimes in the US and the UK. Yonay also considers the doctrine of equivalents under US and UK law and argues that it does not subsist in New Zealand patent law.
We also have three book reviews on three very different topics. First, Dr Sarah Hook reviews A New Framework for Intermediary Liability: Copyright, Causation and Control on the Internet by Australian IP academic Dr Kylie Pappalardo. According to Dr Hook, the book “is a unique conceptual work that really dives in to the “why” of intermediary liability instead of just the “how”.” Next Anthony Middleton reviews Research Handbook on Intellectual Property and Artificial Intelligence. This timely text discusses a range of topical issues regarding the connection between AI and copyright, trade marks, designs, patents and trade secrets. It features contributions from an array of IP experts, including Dr Rita Matulionyte whose article in this issue of the Journal also considers AI and copyright. Then Ben Mee reviews
Improving Intellectual Property: A Global Project – a collection of 46 essays by IP’s leading lights. According to Mee, the book is “an outstanding resource on international IP law and policy”.
Finally, this edition is brimming with updates from Australia, New Zealand and around the world. With regard to local updates, there are analyses of a range of IP judgments from the Federal Court of Australia and the Full Court plus the recent High Court of New Zealand decision on the marathon trade mark case between competitors Bed Bath & Beyond and Bed Bath ‘N’ Table. There are also contributions from China and Hong Kong SAR, Japan, Singapore, the UK, European Union, France, Germany, and the US. These cover a variety of IP issues, including what amounts to use of a trade mark in Singapore, a UK Court of Appeal patents decision regarding the use of confidential information and trade secrets, a long-running dispute over the trade mark of a famous French bread, and the registrability of a design for a bike saddle in Germany. I thank all of the Journal’s regular correspondents for their insightful and interesting updates throughout the year.
I also thank everyone who has contributed to the Journal in 2023. As always, I welcome feedback and emails to editors@ ipsanz.com.au. I wish readers a safe and happy festive season and look forward to a peaceful and productive 2024.
In Conversation with Richard Cobden SC by Fiona Rotstein
Richard Cobden SC was called to the New South Wales Bar in 1992 and appointed silk in 2005. He met with Fiona Rotstein to discuss what led him to the law, some of his career highlights and how his speciality come to be at the point where IP intersects with the music business and entertainment law.
Photo courtesy of Richard Cobden SC
Women in IP from Australia and New Zealand: Experiences with Colleagues and other Professions
It is well traversed that intellectual property is gendered and has gendered outcomes for creators and inventors, and their ability to use the IP system.5 But what about those who practise in IP? Do women in IP related professions have gendered experiences? As those who practise IP play a crucial role in identifying and defining the contours of what is protected,6 it is important that there is equity in who
We interviewed 107 women in IP across Australia and New Zealand to examine the gendered world of IP related professions. The interviews revealed a large variety of themes,
such as trying to navigate a career as a primary caregiver, concerns about having to behave “like a man” or to hide any weakness, or inappropriate conduct. This article focuses on interactions with colleagues and other professions and how they could reflect negative biases. What women say should be sufficient. However, we knew that we had to give their words written form, and speak in numbers, because this is what will be heard. Thus, we rely on the words of our participants where possible, and indicate the proportion of
women who made similar comments.
Associate Professor Jessica C Lai, Associate Professor, Victoria University of Wellington, New Zealand.
This research was made possible by a Victoria University Faculty Strategic Research Grant, as well as a New Zealand Royal Society Rutherford Discovery Fellowship. Thanks to Cody Rei-Anderson,
Prakriti Bhatt and Che Ekaratne for their assistance checking transcripts. This project has ethics approval from Te Herenga Waka— Victoria University of Wellington, No. 0000030583.
In addition, we thank all our participants for their generosity with their time, experiences and insights. This work would not have been possible without that generosity and the frankness of these women.
Dr Ronelle Geldenhuys, Principal, Foundry IP, Brisbane, Australia; and
Maryam Khajeh Tabari, Principal, Chrysiliou IP, Sydney, Australia
Registering Trade Marks with Little or No Inherent Adaptation to Distinguish
he UK decision British Sugar PLC v James Robertson & Sons Ltd  RPC 281 (“Treat”), has been influential in Australia in assessing signs/trade marks bereft of distinctiveness or where the level of distinctiveness is problematically low.
This article considers the words “devoid of any distinctive character” in the Trade Marks Act 1994 (UK), which is significantly different from the Trade Marks Act 1995 (Cth) (“the Act”). Treat considers these words to be “roughly the same” as “lacking any inherent adaptation to distinguish”, terminology from the UK Act of 1938, which are retained in the current Australian Act. Treat also proposes “educating the public” is necessary to establish distinctiveness.
The article traces how Treat has been relied on in Australia. Jacob J’s description of the “illogical assumption” about use equalling distinctiveness, summed up in the slogan “SOAP for soap”, is examined and found to be too simplistic for use as more than a non-contentious basic proposition but not a substitute for close evaluation of evidence. Conclusions are then drawn about the ongoing relevance, precedent value and practicality of Treat in the Australian context.
The threshold question for trade mark law is whether a “sign”, as defined in section 6 of the Act, is a “trade mark” within the meaning of section 17 of the Act. Whether a sign is in fact “used as a trade mark” determines the most crucial operations of the system of registered trade marks, asregulated by the Act. Establishing or “proving” trade mark use becomes critical in a range of circumstances, including whether a trader can achieve registration of a particular sign (section 41); the extent of the monopoly and related benefits accorded to a registered owner (section 20); whether use of a sign by another trader will amount to infringement(section 120); whether there might be grounds to oppose registration of an application that has been accepted for registration (sections 52; 57ff); whether the registration might be removed for non-use (section 92) or be expunged as having been wrongly registered (sections 87–89); and whether non-trade mark use might engage the discretion not to remove an unused trade mark from the Register (section 101); whether the extent of use will support a defensive registration (section185); and in relation to exhaustion of rights (section 122A).
Brett Doyle, BA., LLM., M.A., M.Th., Grad Dip Bioethics. Director, Brands & Trade Marks, Clayton Utz, Sydney.
Generative AI and Copyright: Exception, Compensation or Both?
The emergence of generative artificial intelligence (“AI”) has increased existing concerns and raised new issues both for AI developers and right holders. These include possible copyright infringement when copyright subject matter is used in AI training (including generative AI) modules, absence of viable licensing models, and a lack of transparency around the use of works in AI training. This article proposes a four-step approach that might help mitigate these challenges by taking into account the interests of both AI developers and Australian right holders. It suggests differentiating between the so-called “non-creative AI” and “creative AI” modules. While the former “non-creative AI” modules could be subjected to a new copyright exception, the use of works to train “creative AI” modules should require compensation that could be best collected via a statutory licensing scheme. In addition, the article calls for transparency around the use of works in AI training, which is indispensable for the efficient exercise and enforcement of rights.
The increasing development and adoption of AI technologies has created both opportunities and challenges for copyright industries. Some artists are embracing these new technologies in their creative practices, even if to a different extent. At the same time, they are concerned about the impacts these technologies are causing, or likely to cause, to their revenue streams and jobs.
Works, such as literary texts, works of visual art, photographs, musical works, as well as other copyright subject matter (recordings, recorded performances, broadcasts and cinematographic works) are increasingly being used to train machine learning (“ML”) algorithms, including generative AI modules, both overseas and in Australia. One of theearlier examples that appeared in the media was Google’s use in 2014 of 11,000 romance novels, initially taken from a self-publishing website www.smashwords.com, to train its Google Assistant to be more conversational. More recently, text-to-image apps have appeared such as DALL-E, LensaAI, Stable Diffusion, MidJourney and many others. They all use an open source Stable Diffusion algorithm developed by the CompVis group at LMU Munich, Runway and Stability AI. The Stable Diffusion algorithm was trained using 5.8 billion images collected from online sources without authorisation from right holders. All these images were first compiled into a large LIAON-5B dataset which was then used for AI training purposes. As another example, ChatGPT produces relatively highquality text based on a given instruction (a text-to-text generative AI module). Its underlying GPT-3.5 module was trained using text databases from the internet. This included 570GB of data obtained from books, webtexts, Wikipedia, articles and other pieces of writing on the internet.
Dr Rita Matulionyte
A Comparative Analysis of Patent Claim Construction in New Zealand Versus the UK and the US
The process by which courts interpret the scope of patent protection, for purposes of determining validity and infringement, is known as patent claim construction. Although courts are accustomed to interpreting legal texts such as contracts in commercial cases and statutes in administrative cases, neither contractlaw nor constitutional/administrative law is a perfect mirror to claim construction, as
patents have hybrid characteristics of public and private law.2 In the patent context, the process of claim interpretation, together with application of the doctrine of equivalents (if any), provides the means by which legal systems may strike a balance between the interests of innovators, their competitors, and the public.
Guy Yonay,Partner in the US Litigation Practice Group of Pearl Cohen Zedek Latzer Baratz LLP (New York), and admitted to practice in New York, California, Israel, and New Zealand. This article is a modified version of a paper submitted in partial satisfaction of an LLM degree at Victoria University at Wellington. I wish to extend my gratitude to my academic advisor, Professor Susy Frankel, and to Jane Glover for her invaluable comments. The responsibility for opinions expressed in this article is mine alone.
Book-Review: A New Framework for Intermediary Liability: Copyright, Causation and Control on the Internet
[Edward Elgar 2023 pp 230. The e-Book version is priced from £25/AU$48 from e-Book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>.]
The main argument of this book is that capacity does not equate to responsibility. Dr Pappalardo reasons that theargument that there is a collective responsibility to prevent online copyright infringement is not based on any legal theory or precedent, but is rather a narrative used by copyright owners to exert pressure on intermediaries who may only have the most tenuous connection to end user infringement. The book does this through the lens of a tortbased analysis.
Dr Sarah Hook, Senior Lecturer, Faculty of Law, Western Sydney University
Book Review: Research Handbook on Intellectual Property and Artificial Intelligence
By Anthony Middleton, Barrister, List G Barristers, Melbourne.
Edited by Ryan Abbott
[Edward Elgar Publishing 2022 pp 498. The e-Book version is priced from £48/AU$91 from e-Book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>]
Artificial intelligence (“AI”) is a challenge to the law’s ability to adapt to changing circumstances. In a broad sense, this challenge is nothing new. Judges in the 19th century faced the negative externalities of the Industrial Revolution for the first time and had to grapple with, for example, issues of liability for harm caused by dangerous materials which escaped from people’s land. This posed many difficult
questions for tortious liability and led to the accelerated development of the tort of negligence. Historically, the common law has responded to “human errancy” by imposing legal responsibility which develops “in adaptation to altering social conditions and standards”.
The proposition that the law needs to adapt to changing social circumstances is largely uncontroversial. Exactly how the law adapts will always be the subject of hot debate, particularly in the field of intellectual property law and its response to AI. This debate underlies the chapters in Professor Ryan Abbott’s Research Handbook on Intellectual Property and Artificial Intelligence (“Handbook”).
Book Review: Improving Intellectual Property: A Global Project
By Ben Mee, Barrister, 5 Wentworth Chambers, Sydney.
Edited by Susy Frankel, Margaret Chon, Graeme Dinwoodie, Barbara Lauriat and Jens Schovsbo
[Edward Elgar Publishing 2023 pp 540. The e-Book version is priced from £25/AU$48 from e-Book vendors while in print the book can be ordered from the Edward Elgar Publishing website <www.e-elgar.com>]
It is difficult to imagine that the stakeholders involved in concluding the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”)2 in 1995 could have foreseen the world in which intellectual property laws and institutions operate today (to say nothing of the milieu in which the Paris and Berne Conventions were concluded in 1883 and 1886 respectively).
At a technological level, the internet has fundamentally transformed communication, information gathering and storage, commerce, work, social activity and publishing.
Increasingly powerful (and opaque) artificial intelligence (“AI”) and machine learning models have not only emerged in recent years but are becoming widely accessible to individuals and institutions far beyond the very few that have the immense resources required to build and train them. In biomedical science, breakthrough projects and technologies such as the Human Genome Project and CRISPR-Cas9
gene editing have moved medical research into fieldfields like proteomics, gene therapy and personalised medicine.
Diana Bogunovic, Michelle Catto, Sarah Dixon, Esther Lestrell and Andrea Ruhrmann
Indigenous Business Month and the Indigenous Business Plan
October marked Indigenous Business Month, with this year’s theme being “To gather, together”. IP Australia offers valuable insights and services to help Indigenous businesses understand the protection offered by various intellectual property rights. To facilitate this, IP Australia provides “Yarnline”, a free callback service enabling business owners to engage directly with specialist IP Australia staff. Additionally, the IP Australia website is a source of information on various initiatives supported by the Australian Government to safeguard Indigenous knowledge. For additional information, visit the IP Australia and Indigenous Business Month websites.
The Patents Manual of Practice and Procedure upgrade
A new version of the Patents Manual has been released. The trial period for the beta version has concluded and version 2.0 will now become the official version. This update incorporates new chapter numbers and page references, as well as improved content and language for enhanced readability and user-friendliness. The new Manual can be accessed in the same way as the previous version.
IP Australia to showcase TM Checker on Australia ByDesign: Innovations
IP Australia’s General Manager of Customer Experience Group, Justine Hall, will be joining the judging panel for season six of Australia ByDesign: Innovations, a TV show about Australian innovation and design excellence. IP Australia will be using the opportunity to showcase itsTMChecker innovation, an AI- assisted tool, which makes it easier for businesses and individuals to check the availability
and suitability of a trade mark registration.
Interpretation of “prompt and diligent” ground for extensions of time in trade mark oppositions
In effect from 31 July 2023, the Trade Mark Office will apply a broader interpretation to the “prompt and diligent” ground for extension of time (“EOT”) for filing evidence in oppositions proceedings.
IP Australia’s guidance on classification of emerging technologies
On 10 August 2023, IP Australia published its guidance on the classification of emerging technologies to clarify its practice relating to the classification of goods and services
related to virtual goods, metaverse, non-fungible tokens (“NFTs”), and blockchain in new trade mark applications.
Tom Cordiner KC, Melissa Marcus, Clare Cunliffe, Marcus Fleming and Amy Surkis
Correspondents for Victoria, Western Australia, South Australia, Tasmania and Northern Territory.
This quarter, we reflect with hindsight on the approach to expert evidence in MMD Design and Consultancy Limited v Camco Engineering Pty Ltd, jump across to a successful opposition to “KANGAROO MOTHER” in Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd, see a bright new day shine for REC Solar Pte Ltd as it successfully defended allegations of patent infringement brought by Hanwha Solutions Corporation, consider an unsuccessful attempt to kick people out of the hot tub in Sanofi v Amgen Inc. (No 2), report on a mis-directed appeal in Directed Electronics OE Pty Ltd v Gridtraq Australia Pty Ltd and, for good measure, we also report on one case outside our territory (in NSW), Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No. 3), where Lavazza got a gold star for its successful ownership attack that, subject to any appeal, resulted in Cantarella losing its marks.
MMD Design and Consultancy Limited v Camco Engineering Pty Ltd
 FCA 827
21 July 2023 – Rofe J
It is just shy of three years since the High Court of Australia handed down its decision in Calidad Pty Ltd v Seiko Epson Corporation (2020) 272 CLR 351 (“Calidad”) regarding the “exhaustion doctrine” and the “repair defence” to patent infringement. Since then, the decision has received judicial consideration just three times, but only now substantively by Justice Rofe in this patent dispute between MMD Design
and Consultancy Limited and Camco Engineering Pty Ltd. Her Honour found that the “repair defence” was not available, but the patent in suit was not infringed in any event. Her Honour also found the patent valid and, in the course of doing so, made some interesting observations as tohindsight bias in an expert’s evidence on inventive step.
Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd
 FCA 999
24 August 2023 – O’Callaghan J
The group behind the “MOTHER” energy drink has successfully opposed an application for “KANGAROO MOTHER”. Justice O’Callaghan found that the trade mark application failed for lack of intention to use under s.59 of the Trade Marks Act 1995 (Cth). Although not necessary given his finding under s.59, his Honour also found the opposition would have been successful under ss.44 and 60 on the grounds that “KANGAROO MOTHER” was deceptively similar to the “MOTHER” marks and, in view of “MOTHER’s” reputation, “KANGAROO MOTHER” would be likely to deceive or cause confusion. On the penultimate day of trial, the trade mark applicant made an attempt to improve its position by seeking to amend its trade mark application to remove problematic specified goods. Justice O’Callaghan refused that application by
reference to the rigorous standards and procedures applicable in equivalent circumstances under Australian patent law, including the requirement for full and frank disclosure.
Hanwha Solutions Corporation v REC Solar Pte Ltd
 FCA 1017
29 August 2023 – Burley J
In this case about solar cell technology, Justice Burley concluded that the respondent’s products did not fall within the scope of the claims of the asserted patent, and accordingly none of the asserted claims were infringed. As a result, the Australian Consumer Law (“ACL”) claim also failed and the unjustified threats claim succeeded. Justice Burley also found that claims 9, 12, 16 and 21 of the patent were invalid for want of novelty in the light of one piece of prior art, but that otherwise, the novelty, inventive step, fair basis, utility and clarity grounds failed.
Sanofi v Amgen Inc. (No 2)
 FCA 1156
27 September 2023 – Yates J
Strategic questions surrounding whether, and to what extent, to rely on evidence from the patent opposition proceeding when the matter goes before the Federal Court are always difficult. Often practitioners decide not to rely on the patent office evidence to avoid the issue all together. In this case, Amgen elected to rely on several declarations made by three experts in the patent opposition proceedings, together with
supplementary affidavits from those same witnesses. Sanofi objected to that course and sought to exclude much of that evidence. Sanofi argued, inter alia, that the evidence was “substantially duplicative” in two ways:
(i) there was an overlap between the expertise and evidence of the witnesses (which would lead to an unfair, unbalanced hot tub, relying on Novartis AG v Pharmacor Pty Ltd  FCAFC 58); and
(ii) there was an overlap between the declarations and affidavits of each witness. Justice Yates rejected Sanofi’s application in its entirety and found that the decision in Novartis provided “no useful support” for the orders sought.
Directed Electronics OE Pty Ltd v Gridtraq Australia Pty Ltd
 FCAFC 149
6 September 2023 – Perram, Downes and Button JJ
Appeal from decision to dismiss case against respondents for breach of copyright and misuse of confidential information – whether case advanced in appeal was run at trial
At first instance, Directed Electronics (“DE”) was successful in establishing that all parties except three, the Gridtraq Parties, had colluded to misappropriate its business. DE appealed the copyright infringement and breach of confidence findings in relation to the independent conduct of the Gridtraq Parties. The Full Court dismissed DE’s appeal because no independent case had been run against the Gridtraq Parties at first instance.
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd
 FCA 1258
20 October 2023 – Yates J
Trade mark infringement, use as a trade mark, defences to infringement – trade mark validity – whether marks are capable of distinguishing, doctrine of stare decisis, whether applicant is owner of the mark for the registered goods.
Cantarella Bros Pty Ltd (“Cantarella”), sued the respondents, Lavazza Australia Pty Ltd (“Lavazza Australia”) and Lavazza Australia OCS Pty Ltd (“Lavazza OCS”) (together “Lavazza”), under s. 120(1) of the Trade Marks Act for infringement of two registered trade marks; trade mark No. 829098 (the “098 mark”) and trade mark No. 1583290 (the “290 mark”). Both the 098 mark and the 290 mark are registrations for the
word ORO –in class 30 for “Coffee; beverages made with a base of coffee, espresso; ready-to-drink coffee; coffee based beverages” (the “ORO word mark”).
The acts of infringement included supply of various goods and advertising of the goods on websites.
Kevin Huang and Miriam Zanker
Davies Collison Cave Law, Sydney
Reflex Instruments Asia Pacific Pty Ltd v Globaltech Corporation Pty Ltd
 FCAFC 158
29 September 2023 – Moshinsky, Burley and Kennett JJ
The Patent and the invention
Globaltech Corporation Pty Ltd (“Globaltech”) is the patentee of Australian Standard Patent No 2012297564 titled “Optical device for use with downhole equipment” (the “Patent”). The invention relates to devices enabling data to be transmitted to and from downhole equipment, such as core orientation units and borehole telemetry probes. Core orientation is described in the Patent specification as the process of obtaining and marking the orientation of core samples during drilling operations. Borehole telemetry is described as the process of sensing and transmitting data from equipment that is down a hole.
Andrew Brown KC
Correspondent for New Zealand
Brands Limited & Others v Bed Bath ‘N’ Table Limited & Another
High Court of New Zealand
Hearing: 25 July – 12 August 2022
Judgment: 7 July 2023
 NZHC 1766
This was an interesting Trans Tasman trade mark dispute full of legal issues. The key features were:
1. initial co-existence in New Zealand for some 15 years of two trading rivals in the field of manchester and homewares with similar trade marks i.e. Bed Bath & Beyond and Bed Bath ‘N’ Table. Bed Bath & Beyond (“BBB”) was the first user in New Zealand, but Bed Bath ‘N’ Table (“BBT”) had been using its trade mark in Australia since 1976, only starting in New Zealand in 2007;
2. action taken in Australia by BBT to prevent the New Zealand company BBB from registering its trade mark there on the ground of likely confusion or deception; and
3. the decision then taken by BBB to belatedly attack the validity of BBT’s 2014 registered trade mark in New Zealand for Bed Bath ‘N’ Table and then to sue BBT for trade mark infringement of its BBB trade mark, passing off and breaches of the Fair Trading Act 1986 (NZ).
Ellis J’s decision resulted in a loss for the plaintiff BBB on all causes of action. Standing back from the decision, it is clear that key factors
in the Court’s rejection of the invalidity action (based on sections 25 and 17 of the Trade Marks Act 2002 (NZ)) were that BBB had allowed BBT to use its trade mark in New Zealand from 2007 without complaint. This reflected in findings of honest concurrent use in favour of BBT. Even though there was evidence of confusion or deception between the two marks, the Judge relied on the descriptive
aspects of each trade mark to find that some confusion must be tolerated as the price to be paid for choice of a mark with descriptive features. Further, Ellis J was not persuaded that there was substantial confusion or deception between the two marks.
As to trade mark infringement, once Ellis J upheld the validity of BBT’s registered trade mark, BBT was able to fend off infringement because of section 93 of the Trade Marks Act i.e. the existence of another registered trade mark. Honest concurrent use was also a factor in the Court rejecting infringement and passing off. Even though honest concurrent use was not a defence to the Fair Trading Act, Ellis J regarded it as a discretionary factor against any relief.
A more detailed summary of the decision is as follows.
CHINA & HONG KONG SAR
Dan Plane, Grace Chen and Jeremy Chiu
Simone Intellectual Property Services (SIPS) Hong Kong
Correspondents for China and Hong Kong SAR
PRC IP Enforcement – Recent Court Decisions Regarding Mass
Intellectual property enforcement is viewed by most brand owners as strictly a cost centre – an unavoidable expense for a grudging responsibility. In some cases, however, where the potential rewards of enforcement litigation equal or even exceed the cost of that litigation, the entire IP enforcement paradigm can shift. For this to occur, there is ideally a critical mass of high-quality potential targets as well as laws and practices that make it likely that substantial damages will be awarded – and can be collected. Such programs, if run properly, can partially or even fully fund a brand’s IP enforcement.
In China, where damages awards have traditionally been quite low, and where it can be difficult to collect such awards (even with the increasing use of social credit penalties to force compliance), such programs usually rely on economies of scale, filing dozens or even hundreds of lawsuits, and counting on a large number of small successes to balance out likely failures, refusals by pirates to cooperate, etc. Normally,
the sheer number of lawsuits filed necessarily entails empowering lawyers and their investigators to work on a contingency fee basis. These types of programs are generally referred to in China as “mass litigation” programs.
John A Tessensohn
Board Member, SHUSAKU-YAMAMOTO, Osaka, Japan
Correspondent for Japan
Japan confirms patent infringement of computer server related invention even though server was operating outside of Japan
The Grand Panel of the Intellectual Property High Court of Japan (the “Grand Panel”) in Dwango K.K., v. FC2. Inc. et al. Case 2022 (ne) No. 10046 dated 23 May 20232 (“Dwango”) found that the unauthorised production of a computer system that used a server located outside Japan and user terminals located within Japan constituted patent infringement of a Japanese computer implemented invention.
Many computer implemented inventions use distributed computing systems, because the servers implementing those systems may be located in multiple jurisdictions. Even though end users are located in a jurisdiction covered by a patent, the servers may be outside of that jurisdiction. It was this scenario that the Grand Panel had to address in Dwango. Japanese telecommunications and media company Dwango
K.K. accused FC2 Inc., the third most popular video hosting service in Japan, and Homepage System K.K., of infringing claim 1 of its Japanese patent no. 6526304.
FC2 Inc., is a US-based video distribution company that provides a system in which a server installed in the US transmits a video file and comments on the video to a user terminal from which the comments are transmitted, whereby the video overlaid with the comments is displayed in the browser of the user terminal. The system allows inputs and outputs in Japanese and is accessible from user terminals in Japan.
The Tokyo District Court, in a first instance decision, held that the “production” of a patented invention that constitutes infringement, as set out in section 2(3)(i) of the Patent Law, requires that a product that satisfies all the elements of the patented invention be newly produced in Japan. The Court held that the accused conduct of FC2 and Homepage System K.K. did not satisfy this requirement since the server of FC2
was located outside of Japan. Dissatisfied with this Tokyo District Court decision, Dwango appealed to the IP High Court of Japan. In view of the novel question of patent law, the Grand Panel was convened to review the case.
Melvin Pang, Aaron Thng and Bryan Ong
Correspondents for Singapore
A Whovian trade mark tussle through time
Dr Who Waterworks Pte Ltd v Dr Who (M) Sdn Bhd  SGHC
What amounts to use of a trade mark? In Dr. Who Waterworks Pte Ltd v Dr Who (M) Sdn Bhd  SGHC, the Singapore High Court examined this question. The High Court considered when a sign is used “in a trade mark sense”, how consumers would perceive domain names and meta-titles, and how that all connects to trade mark infringement.
This case centred around a trade mark infringement claim between two parties previously in a commercial partnership. The plaintiff, Dr. Who Waterworks Pte Ltd, was a Singaporean company that registered the “DR.WHO” mark in 2004 in classes 32 and 39 in Singapore.The defendant, Dr Who (M) Sdn Bhd, was a Malaysian company. They developed the DR. WHO quatrefoil mark in 2012. When the commercial partnership deteriorated, the parties agreed to divide the shareholding, directorships, and intellectual property between themselves. The plaintiff would own and use the mark “DR.WHO” in Singapore;
same for the defendant in Malaysia.
Correspondents for the United Kingdom
Court of Appeal considers balancing act between confidentiality and open justice
J.C. Bamford Excavators Limited v Manitou UK Limited (1) and Manitou BF SA (2)  EWCA Civ 840
In this decision, the UK Court of Appeal considered the balancing act that is necessary between the private interest of confidentiality and the public interest of open justice. Although the confidential information of parties to litigation, particularly in patent infringement cases, should be sufficiently protected to enable full disclosure so that the issues can be addressed wholly by the courts, there may be instances where the principle of open justice is more important than keeping that information confidential. However, in this case the Court of Appeal overturned the High Court’s first instance decision that the defendant’s
confidential information should be published in a public judgment, instead ordering that it be redacted. In its judgment, the Court of Appeal runs through the principal authorities regarding confidentiality and trade secrets and provides a useful summary of the various considerations at play for practitioners tackling these issues.
J.C. Bamford (“JCB”) commenced High Court proceedings against its long-standing competitor Manitou, alleging that Manitou had infringed four of JCB’s patents. These patents related to construction vehicles known as telehandlers, which feature a four-wheel chassis, a cab for the operator and an extendable arm which can be raised or lowered. Manitou denied infringement and counterclaimed for revocation of
One of the allegations of infringement related to a control system which was currently in use on the majority of Manitou’s telehandlers, known in the proceedings as “Configuration C”. In the course of the first instance proceedings, Manitou served a product and process description (a “PPD”), as is common in patent infringement proceedings in the Courts of England and Wales, describing the relevant features of
Configuration C (as well as four other configurations – A, B, D and E). Manitou claimed that large parts of the PPD were confidential, as were parts of other documents in the case, such as the statements of case, witness statements, expert reports and skeleton arguments. Before trial, the parties agreed to certain limited people on both sides having access to Manitou’s confidential information in the case through a
At trial, the Judge made an interim order under Civil Procedure Rules (“CPR”) rule 31.22(2) to preserve the confidentiality of Manitou’s information until after judgment. Most of the first instance trial hearing was public, but parts of the hearing took place in private. In its substantive judgment, the High Court held that oneof JCB’s patents, EP 2 616 382, was valid and infringed by one of Manitou’s telehandler control systems, Configuration D, but not by Configuration C or the other configurations. The Judge’s reasons regarding infringement were set out in a confidential annex to the judgment (“the “Confidential Annex”) due to Manitou’s claim to confidentiality. At the form of order hearing after judgment, Manitou sought a permanent order under CPR 31.22 in respect of various documents, including the Confidential Annex, but
JCB disputed that much of Manitou’s information was confidential. The main issue in dispute regarding confidentiality was how to deal with information concerning the way in which Configuration C works, and in particular the key criterion it uses (referred to as “Criterion X”). The first instance Judge decided that, although this information was confidential, the principle of open justice trumped Manitou’s claim
to confidentiality, and therefore the relevant information should be published in unredacted form in the public version of the judgment. Manitou appealed and this publication was stayed pending determination of the appeals.
Professor Phillip Johnson
Professor of Commercial Law, Cardiff University
Correspondent for the European Union
TV on demand and private copying … both are back before the Court of Justice of the European Union
C-426/21 Ocilion IPTV Technologies GmbH v Seven.One Entertainment Group GmbH & Co. KG,
EU:C:2023:564 (Court), EU:C:2022:999 (AG)
The scope of the communication to the public right under the Information Society Directive is something that has come before the Court of Justice of the European Union many times, as has the scope of the private copying exception also found in that Directive. The recent decision in C-426 Ocilion IPTV Technologies GmbH v Seven.One Entertainment Group GmbH & Co. KG (“Ocilion”) takes the law further in relation to both and while it relates to a very specific technical product, there are certain important issues it raises and resolves. To understand the decision, however, it is first necessary to explain the product.
The technology behind Ocilion is a little esoteric. It provided an internet television service in a closed network to commercial customers. These customers or network operators represented a wide range of businesses from stadiums to electricity companies. The product offered was an on-premise product whereby Ocilion made the necessary hardware and software available to its customers (the network providers), but once it was made available it was for the network providers to manage. These providers in turn offered their own (end user) customers access to television over the internet. Ocilion’s services were such that once its product was installed, the original broadcast programmes were received simultaneously and unchanged without it being involved. The Court of Justice was asked to consider whether the provision of this product would constitute communicating to the public the television channels which were received using the product.
Emmanuel Baud and Philippe Marchiset
Correspondents for France
A French judicial saga of bread and trade marks: “Poilâne”
For almost a century, the name “Poilâne” has been one of the most renowned trade marks for bread in the world. Created by Pierre Poilâne during the 1930’s in Paris, the “Poilâne bread”, as it is often referred, designates a round shaped bread made with grey flour. Pierre had two sons, Lionel and Max, who each started their own bakery business in Paris and followed their father’s recipe for bread.
In the 1970’s Pierre and Lionel created an eponymous company which filed a corresponding trade mark. Upon their father’s death, Lionel and Max engaged in endless disputes regarding their father’s estate, its value and the alleged manoeuvres from Pierre to favour Lionel. The rights to use the name “Poilâne” then became the subject of multiple legal disputes. Max argued that his father had clearly favoured his youngest brother by granting him the rights to the mark “Poilâne”, while this name could be regarded as a sort of collective family property.
In a decision handed down in 1992 (4th Chamber, Section A, 9 December 1992, n°91/008936) and confirmed by the Cassation Court (13 June 1995, n°93-15.084):
• the trade mark “Poilâne” filed by the company held by Lionel was considered valid, and
• the rights of Max Poilâne to use his legal name in the course of trade were also acknowledged.
The Cassation Court however required that Max always use his first name and last name on the same line, in the same characters and colours. The name “Max Poilâne” was also always to be associated with the addresses of the points of sale. In a nutshell, the Cassation Court considered that Max Poilâne had the right to use a homonymous sign corresponding to his legal (patronymic) name, including through his company, given that he was acting in good faith.
The ruling derived from an exception provided under French trade mark law and benefiting the bearer of a patronymic name. This exception still exists today, however, it has been limited under the latest EU Directive. Article 14.1 of Directive 2015/2436 which provides: A trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) the name or address of the third party, where that third party is a natural person. The former Directive did not mention that this was limited to natural persons and it was often held that as long as the name bearer occupied a leadership position within the company, the latter could use his name, including as a trade mark.
Christopher Weber, and Sören Dahm
Correspondents for Germany
Christopher Weber, Sören Dahm
Correspondents for Germany
How to use a bike? The protectability of a design for the bottom of a saddle
Federal Court of Justice decision of 15 June 2023, docket number I ZB 31/20
In Germany, an applicant can obtain a registered design for the external appearance or design of a product under the German Design Act (“Designgesetz”). The German Design Act is based on a European Union Regulation. To be eligible for protection, the design must have novelty and an individual character. According to section 2 of the German Design Act, a design is considered new if no identical design has been disclosed before the filing date. Also, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by another design disclosed before the filing date.
Pearl Cohen Zedek Latzer Baratz LLP
Correspondent for the United States of America
Lanham Act Limited to “Use In Commerce” in United States
In Abitron Austria GmbH v Hetronic Int’l, Inc. 600 U.S. 412 (2023), the Supreme Court of the United States clarified that the Lanham Act, the federal law that governs trade mark, trade dress, and certain types of false advertising, has no extraterritorial reach, and is limited to a defendant’s “use in commerce” in the US. Under the facts at issue, the defendant Abitron (the plaintiff’s former licensee) reverse
engineered the plaintiff Hetronic’s products and sold the imitation products in Hetronic’s distinctive black and yellow trade dress. Although most sales were in Europe, Arbitron made some direct and indirect sales into the US. The trial court awarded US$96 million in damages based on Abitron’s worldwide sales and issued a worldwide injunction, on the basis that the US sales sufficed for the Lanham Act to apply
to all sales. The Tenth Circuit limited the countries in which the injunction applied, but otherwise affirmed the ruling.