Selection of Extracts

ISSUE 118 – December 2019


Welcome to the final issue of Intellectual Property Forum for 2019. In this issue, we profile the Honourable Justice David Yates of the Federal Court of Australia (the “Federal Court”). In a conversation with Fiona Phillips, his Honour discusses his career, changes in Federal Court practice over the last decade, the interaction between intellectual property (“IP”) and competition law and the importance of work/life balance for the legal profession.


In Conversation with the Honourable Justice David Yates by Fiona Phillips

A decade on from his appointment to the Federal Court of Australia, Fiona Phillips visited the Honourable Justice David Yates in his Chambers where they discussed his Honour’s career, the intersection between intellectual property (“IP”) and competition law, how the Federal Court of Australia has changed over the last 10 years, the meaning of professionalism and the importance of work/life balance.



Risky Business: Piecemeal Reforms Create Competition Concerns for Intellectual Property Arrangements


The relationship between intellectual property (“IP”) and competition law has always been fraught – laws which, on the one hand, grant exclusivity can be hard to reconcile with laws which seek to promote competition. Until recently, the relationship between the two was managed by a small and generally forgotten provision in Australia’s competition laws. After many years of debate, this provision has now been repealed. But something went a little awry in the process, leaving certain IP arrangements exposed to competition laws in an unprecedented and unintended manner.

Richard Hoad
Partner, Clayton Utz
Alexandra Merrett
Independent competition consultant & Member, Law Council of Australia’s Competition and Consumer Committee


Computer says “no” – is the Australian approach to the patentability of computer-related inventions fit for the future or is it time to reconsider?

The patentability or otherwise of computer-related inventions is hotly contested and approaches differ, subtly albeit importantly, internationally. The technical contribution element as it is applied in Australia justifies the grant of a limited-term monopoly in exchange for the disclosure of an invention and will be fundamental to the development and protection of computer-implemented or generated inventions including those produced by or as a result of artificial intelligence. This article considers the current Australian approach in relation to computer-related technologies, along with the potential impacts for computer- related technologies before suggesting that the “technical contribution” requirement and patentability of such inventions ought to be revisited by the Full Court of the Federal Court so as to ensure Australia is fit for the future of rapid development computer-related technologies.

Anna Harley
Associate, Baker McKenzie


Copyright and Artificial Intelligence: From the Statute of Anne to the Statute of Android?


The common law world’s founding copyright statute in the form of the Statute of Anne 1710, reflected a basic bargain around copyright protection, creativity and monopoly rights. That bargain still has resonance today in the modern Copyright Act 1968 (Cth) (“Copyright Act”). Notably, the High Court in IceTV Pty Ltd v Nine Network Pty Ltd and in other important cases has referred back to the social contract enshrined therein. Likewise, there are numerous judicial references to copyright as a balancing act or as a legislative compromise. All of this draws on a tacit bargain between a creative class and a consuming public.

Dilan Thampapillai
Senior Lecturer, ANU College of Law, Australian National University.


Legislative, administrative and policy approaches to access and benefit sharing (“ABS”) genetic resources: Digital sequence information (“DSI”) in New Zealand and Australian ABS laws


New Zealand and Australia are parties to the Convention of Biological Diversity (“CBD”) but not the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity (“Nagoya Protocol”). Both New Zealand and Australia have a patchwork of ABS measures consistent with their CBD commitments. An overview of the various jurisdictions shows that only Queensland’s ABS legislation currently expressly addresses DSI but not as a resource in its own right. This means that if DSI is to be captured in benefit sharing arrangements under New Zealand and Australian laws as a resource derivative within the ABS transaction, this will need to be specifically addressed in the ABS contracts.

Charles Lawson
Environmental Futures Research Institute, Griffith Law School, Griffith University

Fran Humphries
Law Futures Centre, Griffith Law School, Griffith University


Michelle Rourke
CSIRO Synthetic Biology Future Science Fellow and Law Futures Centre, Griffith Law School, Griffith University




Book Review: The Innovation Society and Intellectual Property

edited by Josef Drexl and Anselm Kamperman Sanders

[Edward Elgar 2019 pp.300].

In 2019, Australia and New Zealand ranked 22 and 25 respectively out of 129 countries on the Global Innovation Index. Intellectual property is an important tool for innovation. However, gone unchecked, it also has the potential to impede innovation. The editors, Josef Drexl and Anselm Kamperman Sanders, explore the complex relationship between intellectual property and innovation in this collection of essays by European academics.

Fiona Phillips



Current Developments

IP Australia

Martin Friedgut and Roseanne Mannion
Spruson & Ferguson


Indigenous Knowledge Consultation Report

Designs Review Project

Changes in PCT Fees
IP Australia Media Release: Encompass – the Full Court of the Federal Court issue decision 19 September 2019
Changes to PCT translations requirements commencing on 25 September 2019




Peter Heerey AM QC, Tom Cordiner QC & Alan Nash

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd
[2019] FCA 1464
(5 September 2019)
Copyright – exclusive rights in respect of commissioned artwork in the US – replica artwork sold by the artist for a similar purpose in Australia
Practice and procedure – separate proceedings in the US arising from same events – obligation to use discovered documents only for the proceeding in which they were originally produced (“Harman obligation”) – circumstances warranting release or modification of the Harman obligation


Rodney Jane Racing Pty Ltd v Monster Energy Company
[2019] FCA 923
(21 June 2019)
Trade marks – opposition – whether applicant “true owner” – marks used by associated company of the applicant – whether marks used under licence – whether likelihood of confusion – reputation in trade marks – relevance of prior use
Practice and procedure – admissibility – admissibility of archived internet documents sourced through the “Wayback Machine” – whether business records


Fonterra Brands Australia Pty Ltd & Anor v Bega Cheese Ltd (No 3)
[2019] VSC 391
(17 June 2019)
Trade mark – trade mark licensing agreement – whether trade mark owner’s plans to brand other products with the licensed mark in breach of the agreement – whether trade mark licensee in breach of agreement
Practice and procedure – discovery – confidentiality – circumstances warranting access limitations additional to the Harman obligation – whether parties “trade rivals” – centrality of documents to issues in the proceeding


Suzette Pullinger, Caitlin Gallacher, Stuart Green and Chris Carter
Davies Collison Cave, Sydney

Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553

Merck Sharp & Dohme Corporation v Wyeth LLC (No 2) [2019] FCA 1615



Dr Dimitrios Eliades
Barrister, Queensland

Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180 (30 July 2019)




Andrew Brown QC
Barrister, Auckland
Correspondent for New Zealand

Zhang & Ors V Sealegs International Limited
Court of Appeal of New Zealand, French, Cooper and Brown JJ,
19 – 20 February, 27 August 2019,
[2019] NZCA 389
Copyright – industrially applied works – claim to copyright in arrangement or collocation of features – prototypes – models – objective similarity – functional similarity – dimensions and geometry – infringement – expert evidence – ideas and their expression – patent vs copyright – Copyright Act 1994 (NZ).




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

Recent developments in Combatting Bad Faith Trade Mark Piracy in China




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

Japan protects “big data” under its revised Unfair Competition Law




Winnie Tham, Aaron Thng and Ong Eu Jin
Amica Law LLC
Correspondents for Singapore

Case Summary of Scotch Whisky Association v Isetan Mistsukoshi Ltd [2019] SGHC 200



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

The Court of Justice of the European Union provides further guidance on the interplay between copyright and design law in works of applied art – Judgment of the Court (Third Chamber) of 12 September 2019 Cofemel – Sociedade de Vestuário SA v G-Star Raw CV Request for a preliminary ruling from the Supremo Tribunal de Justiça Case C-683/17




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

French Courts limit the protection of Petrus wines




Christopher Weber and Sören Dahm
Kather Augenstein
Correspondents for Germany

Federal Court of Justice clarifies criteria for right of private prior use
Federal Court of Justice, decisions dated 14 May 2019, X ZR 95/18




Alan Johnson, Partner and Olivia Henry, Associate
Bristows LLP London
Correspondents for the United Kingdom

From a Gillette defence to an Arrow declaration – a logical addition to the armoury?

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