Selection of Extracts

ISSUE 127 – March 2022

EDITORIAL – BY FIONA ROTSTEIN

Welcome to the first issue of Intellectual Property Forum for 2022. This issue of the Journal features a diverse range of topics covering the gamut of intellectual property law. There is something for everyone: from the patentability of computer-implemented inventions, to the protection of Indigenous cultural intellectual property (“ICIP”), in addition to the interplay between Australian copyright law and non-fungible tokens (“NFTs”). There is also a focus on trade marks, with two articles, two book reviews and several updates from our national and international correspondents examining this ever-changing area of IP law.


In Conversation with Rick Aarons
by Adam Liberman

Rick Aarons is Corporate Patent Counsel at the Commonwealth Scientific and Industrial Research Organisation (“CSIRO”) and has worked in various roles within that Organisation for 20 years. CSIRO provides  a unique exposure in the Australian context to all types of intellectual property issues in both breadth and depth that few people get to experience. Rick discussed with Adam Liberman his career as a solicitor and patent attorney, his roles within CSIRO over those 20 years, particularly as they relate to IP, the importance of IP to CSIRO and much more.

 

Articles

Use as a Trade Mark: Multiple Functions and Balancing Interests – A Review of Recent Australian Decisions

Abstract

“Use as a trade mark” lies at the heart of trade mark law and practice. Without it, there can be no infringement of any registered rights. Understanding when something is used as a trade mark is fundamental not only to assessing infringement, but also in understanding what is worth trying to protect. Determining disputes inevitably involves a balancing of interests, and requires an understanding of the concept of a trade mark and the ways in which words and other signs function when used by traders in relation to their goods and services. As such, careful consideration of the ways Australian courts have approached the issue of “use as a trade mark” is important.

Sean McManis, BSc LLB, Registered Trade Mark Attorney, Sydney

 

Déjà Brew: The Registrability of Non-English Trade Marks Post-Cantarella

Abstract

The High Court of Australia’s decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (“Cantarella”) remains the leading Australian authority for determining the distinctiveness of non-English word trade marks. In the more than seven years since the decision, there remains debate and uncertainty regarding how to apply the majority’s two-step test, particularly in the context of marks comprising non-English word marks. In this article, we look at reported decisions involving non-English word marks that have followed Cantarella and consider what lies ahead.

Dean Gerakiteys, Partner, Clayton Utz, Sydney
and
Natalie Coulton,
lawyer, Clayton Utz, Sydney

 

Patentability of Computer-Implemented Inventions Post-Commissioner of Patents v Aristocrat: A Brave New World or Dystopian Future?

Introduction

Few areas of patent law have received as much recent judicial attention in Australia as the statutory test for patentable subject matter. The decision of the Full Court of the Federal Court of Australia in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) has established a new test for determining whether a computer-implemented invention involves a manner of manufacture within the meaning of section 18(1)(a) of the Patents Act 1990 (Cth) (the “Act”). This article explores that decision, and what might lie ahead in the context of Aristocrat’s application for special leave to appeal the decision to the High Court of Australia.

James Lawrence, Partner, Mills Oakley
and
Paul Mahony, Partner, Blackwattle IP.

 

A National Approach for the Protection of Indigenous Cultural Intellectual Property in Australia: Lessons from International Regimes

Abstract

A glaring gap in Australia’s intellectual property system has been the lack of legislative protection for Indigenous cultural and intellectual property (“ICIP”). In light of IP Australia’s consideration of legislative reforms to protect ICIP, this article examines the approach adopted in New Zealand, India, Peru and South Africa to identify key characteristics that contribute to the implementation of a successful and effective regime for the protection of ICIP.

Katrina Dang, Associate, Bird & Bird

 

Token Value – How do Non-Fungible Tokens Fit into Australian Copyright Law?

Abstract

This article explores the novel art market which has exploded around nonfungible tokens (“NFTs”) and the way in which this new class of digital asset may interact with Australian copyright law. The article addresses the quagmire of copyright ownership and licensing in relation to NFTs, the ability of NFTs to protect digital art from online copyright infringement and the appearance of new revenue streams for digital artists. It is argued that once current uncertainties in the legal framework are resolved, NFT technology and copyright law can work well together, with each able to strengthen the protections against  online copyright infringement that the other provides.

Daniel Anstey, lawyer, Simpsons Solicitors, Sydney.

 

Reports

Book Review: Goodwill in Passing Off: A Common Law Perspective

By Catherine Ng
[Edward Elgar 2021 pp 256. The e-Book version is priced from UK£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>.]
Goodwill Hunting

Dr Louise Buckingham
Knowledge and Innovation Lawyer, Intellectual Property , Gilbert + Tobin, and casual academic in IP and related areas (including in trade marks, patents and copyright) at the University of Sydney.

 

Book Review: Research Handbook on Trademark Law Reform

Edited by Graeme B. Dinwoodie and Mark D. Janis.
[Edward Elgar 2021 pp 456. The e-Book version is priced from UK£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>.]

Jane Rawlings
Barrister and Lecturer in Trade Marks Law, Trade Marks Practice and Copyright Law Intellectual Property Program, Faculty of Law, University of Technology Sydney.

 

Book Review: Feminist Perspectives on Law, Law Schools and Law Reform: Essays in Honour of Professor Jill McKeough

Edited by Kathy Bowrey
[The Federation Press 2021 pp 244. The book is priced from AU$69.95 and can be ordered from The Federation Press website <http://federationpress.com.au>].

Fiona Rotstein

 

Copyright in the Digital Single Market: A Taster

Professor Eleonora Rosati is the author of Copyright and the Court of Justice of the European Union (Oxford University Press, 2019) and Copyright in the Digital Single Market. Article-by-Article Commentary to the Provisions of Directive 2019/790 (Oxford University Press, 2021).

Professor Eleonora Rosati, Professor of Intellectual Property Law and Director of the Institute for Intellectual Property and Market Law, Stockholm University, Sweden.

 

Current Developments

IP Australia

Roseanne Mannion and Ryan Boe
Spruson & Ferguson

Report on Intellectual Property Rights and Enterprise Growth

New Version (Beta) of IP Australia’s New Website

Review of Trans-Tasman Regulation of Patent Attorneys

 

CASES

Tom Cordiner QC, Melissa Marcus, Clare Cunliffe and Marcus Fleming
Barristers, Victoria, Western Australia, South Australia, Tasmania and Northern Territory

Henley Arch Pty Ltd v Henley Constructions Pty Ltd
[2021] FCA 1369
(5 November 2021)
Trade marks – use in the course of trade – substantial identity or deceptive similarity – use of signs in relation to services – s.41 – s.102 – s.122(1)(a)(i) – s.122(1)(fa) – s.124 – Australian Consumer Law –  s.18 – s.29(1)(g) – s.29(1)(h) – joint tortfeasor – aiding and abetting – knowingly concerned

Repipe Pty Ltd v Commissioner of Patents
[2021] FCAFC 223
(8 December 2021)
Patents – manner of manufacture – s.102(1) – s.105

Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand
[2021] FCA 1457
(25 November 2021)
Patents – s.104 amendments – allowability of amendment excluding a compound not specifically mentioned in the specification prior to amendment but generally described – whether parties bound by findings made in substantive s.59 opposition

Biogen International GmbH v Pharmacor Pty Ltd
[2021] FCA 1591
(16 December 2021)
Patents –interlocutory injunction – no prima facie case – invalid extension of term – balance of convenience otherwise finely balanced

Shepparton Partners Collective Operations Pty Ltd V QAD Inc
[2021] FCAFC 206
(19 November 2021)
Copyright Infringement – Compensatory Damages – Additional Damages

Brennan v Foster Blake
[2021] Fed C Fam C2G 261
(3 December 2021)
Intellectual property – copyright – infringement – separate questions

 

Nicholas Butera
Davies Collison Cave

Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd
[2021] FCA 1399

 

Dr Dimitrios Eliades
Barrister, Queensland

Shepparton Partners Collective Operations Pty Ltd v QAD Inc (No 2)
[2021] FCAFC 227
17 December 2021

Geocentric Outdoors Pty Ltd v Nothin But Shorts (International) Pty Ltd
[2021] FCA 1535
7 December 2021

Nagpal v Global Cars Aus Pty Ltd
[2021] FCA 1226
11 October 2021

 

NEW ZEALAND

Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand

Copyright in paintings created by wife – whether copyright is relationship property following separation
Palmer v Alalaakkola
High Court of New Zealand, Isac J
7 September 2021
[2021] NZHC 2330

Genesis Energy Limited v Z Energy Limited
High Court of New Zealand, Muir J
16 September 2021
[2021] NZHC 2423
Colour trade mark – rival electricity companies – claims of trade mark infringement, passing off and breach of Fair Trading Act 1986 arising out of defendant’s use of colour orange in launch advertising for Z Electricity – interim injunction refused.

 

CHINA & HONG KONG SAR

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

2021 Wrap Up – People’s Republic of China IP Developments

 

JAPAN

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

Cost Containment Strategies against 1 April 2022 JPO Official Fee Increases

 

SINGAPORE

Aaron Thng and Clara Nah
Amica Law LLC
Correspondents for Singapore

The Defence of Parallel Importation in Singapore
FUJIFILM Business Innovation Asia Pacific Pte Ltd & Ors v PTC Business Systems Pte Ltd
[2021] SGHC 272

 

EUROPE

EUROPEAN UNION

Professor Phillip Johnson
Professor of Commercial Law, Cardiff University and main author of the Law of Patents (5th Ed, Lexisnexis, forthcoming).
Correspondent for the European Union

Remote Justice at the European Patent Office

 

UNITED KINGDOM

Sara Sefton and Jeremy Blum
Bristows LLP
Correspondents for Untied Kingdom

Oatly AB and Glebe Farm Foods Limited
[2021] EWHC 2189 (IPEC)

 

GERMANY

Christopher Weber and Sören Dahm 
Kather Augenstein
Correspondents for Germany

Higher Regional Court of Düsseldorf has strengthened the recall claim for patent owners
Higher Regional Court of Düsseldorf, decisions dated 20 September 2021, 2 W 18/21 and 24 September 2021, 2 W 19/21

 

FRANCE

Thomas Bouvet and Colin Devinant
Jones Day
Correspondents for France

Entry into force of the Trade Secrets Act 2018

 

NORTH AMERICA

CANADA

Catherine Dennis Brooks
Partner, Miller Thomson LLP
Correspondent for Canada

A House Built on Sand: The Perils of Registering a Trade Mark Without Clearance

 

UNITED STATES OF AMERICA

Mark Selwyn, Timothy Syrett and Alix Pisani
WilmerHale
Correspondents for the United States of America

Skirting FRAND Requirements Under the Guise of Promoting Innovation and Efficiency

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