Selection of Extracts

ISSUE 135 – March 2024


After a quick ocean dip and a refreshing summery break, I’m pleased to welcome readers for another year at Intellectual Property Forum. Gazing into a crystal ball, what IP developments are on the horizon? Twenty four hours after Steamboat Willie’s copyright expired in the United States, some interesting iterations appeared online – casting the earliest Mickey Mouse in slasher flicks, dubstep remixes and non-fungible tokens. All eyes will be on Popeye when the spinach eating sailor enters the public domain in the US on 1 January 2025. The US lawsuit filed by The New York Times on the use of its copyright material in the training and operating of Microsoft and Open AI’s generative AI tools has also caused a splash. The  shootout between the venerable news company and the two tech titans should be a showstopper. Locally, the Commonwealth Attorney-General’s Department is currently considering mandatory safeguards for AI development and deployment in  high-risk settings, whether by  updating existing laws or creating new laws. The Australian Government will be watching if other jurisdictions follow the lead of the European Union and Canada by proposing stand-alone AI legislation.

Looking ahead, we also await various IP judgments by the Full Court of the Federal Court of Australia (“Full Court”). These include the latest Australian Mud Company v Globaltech appeal (heard by Justices Nicholas, Burley and Kennett on
22 and 23 May 2023) which concerns topics including common design and authorisation in the context of patent infringement among other issues; and the Motorola v Hytera appeal (heard by Justices Beach, O’Bryan and Rofe from 27
to 30 November 2023) regarding questions of both patent infringement and validity, as well as copyright infringement. In addition, it will be interesting to see what the future holds for an Australia-European Union Free Trade Agreement.
Talks collapsed after the 15th round of negotiations in July 2023 and discussions are on hold until after the EU elections in June 2024. Thus, the reciprocal protection of geographical indications (“GIs”) for foodstuffs and spirits between the EU and Australia remains to be resolved.

Across the ditch, the European Union Free Trade Agreement Legislation Amendment Bill was introduced to New Zealand Parliament in late January 2024 and the closing date for public submissions to the Bill was 16 February 2024. The
Bill includes amendments to the Geographical Indications (Wines and Spirits) Registration Act 2006 (NZ) to register nearly 2,000 EU GIs in New Zealand. The registration of these GIs was part of the New Zealand-European Union Free Trade Agreement negotiations. In other Kiwi IP news, although the Therapeutic Products Act 2023 (NZ) received  Royal Assent on 26 July 2023 and is currently in force (but many of its provisions will only become effective in 2026), its future is in doubt following the formation of the new coalition Government.6 There will no doubt be more thrills  and spills for the IP profession as the year progresses.

This edition of the Journal canvasses IP issues of both local and international interest. Our authors expertly examine  an assortment of recent IP decisions and developments. The topics of the four articles featured range from patent sufficiency and claim support to the challenges for copyright law raised by the development and use of generative AI. In addition, non-literal patent infringement is explored, as well as recent developments in brand protection litigation. There are also reviews of two recently released but very different IP texts. As usual, the Journal is also jampacked with IP updates that traverse Australia, New Zealand, Asia, Europe and North America.

We begin with my interview of the Honourable Justice Mark Moshinsky who was appointed to the Federal Court of Australia on 2 November 2015. In our conversation, Justice Moshinsky reflects on his career path and why he always had aspirations to be a judge. In addition, his Honour discusses the changes he has seen in IP matters since his appointment to the Federal Court and the IP cases that stand out as having been particularly memorable. When I ask what are the key
issues in IP currently, his Honour replies:
… At present, IP cases (in particular, patent cases) often raise a multitude of issues, not all of which are pursued at the hearing. This creates significant legal cost and means that the cases take a long time to prepare. While the Federal Court can seek to exercise some control over this, there are limits to what the Court can do. As I see, it is in the interests of the profession to streamline the way in which cases are run, as this will make litigation more attractive as a method of resolving disputes, and lead to more cases being brought and resolved. I see this as a joint challenge for the Court, the Bar and solicitors.

If a new year’s resolution could be made for the IP profession, Justice Moshinsky has perfectly put it into words.

In our first article, James Lawrence and John Hogan take a deep dive into Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (“Rattlejack”). The 13 November 2023 decision by the Full Court (Perram, Nicholas and McElwaine JJ) is Australia’s first appellate judgment regarding the post-Raising The Bar amendments to the support and sufficiency requirements in section 40 of the Patents Act 1990 (Cth). Jusand has applied to the High Court of Australia for special leave to appeal the Full Court’s decision and the outcome of that application is expected soon – so the article’s analysis is timely. The authors consider the background to the Raising the Bar amendments and the history of sufficiency in the United Kingdom. The decisions in the Rattlejack trial and appeal are explored in detail, as are the relevant legal principles and ramifications of the appeal judgment. The article thus illuminates a range of issues regarding the vexed topic of sufficiency and claim support in patent law.

Next, Ali Ward, Odette Gourley, Grant Fisher, Rachelle Downie and Sarah Catania consider whether there is a doctrine of non-literal patent infringement in Australia. The authors discuss a variety of design-around cases from both Australia and the UK. The authors use the phrase “designaround cases” to refer to cases where the allegedly infringing product was designed having regard to the patented invention. According to the authors, there is neither a literal nor a non-literal approach to claim construction in Australia. Instead, they contend, local courts must be convinced of infringement or non-infringement on the proper construction of the patent claims. The authors consider the current position in Australia regarding claim  construction, as well as the UK doctrine of equivalents. They then present the findings of their detailed case review, providing a useful overview of the law at present in Australia.

On a completely different note, Associate Professor Evana Wright examines the risks and rewards of using generative AI in legal practice. Wright discusses the different definitions of generative AI and the hazards of generative AI tools  hallucinating”. Her article considers issues of copyright infringement and the copyright ownership of AI generated outputs. Wright also reports on a range of recent copyright decisions and current cases involving generative AI. In addition, Wright explores the capacity of generative AI to produce biased or discriminatory content, the implications for privacy and confidential information, plus the professional responsibilities that should be taken into account when using generative AI in legal practice.

Then, Fiona McNeil analyses a variety of recent Australian judicial decisions to consider some topical issues relating to brand protection. McNeil spotlights three different subjects. First, interlocutory injunctions and the extent to which an alleged infringer’s knowledge of existing IP rights may impact the weighing of the “balance of convenience”. Secondly, how to prepare evidence in chief of conversations and thirdly, party costs orders and litigation funding. McNeil reviews judgments by the High Court of Australia, Full Court and Federal Court of Australia. The wide-ranging decisions relate to patents, trade marks and unfair competition, registered designs, and applications seeking to enforce contractual restraints of trade. McNeil sews together the takeaways from these judgments to provide a valuable primer relating to recent developments in Australian IP litigation.

Next, Alexandra Gassner reviews Founding a Global Human Rights Culture for Trade Marks by Dr Genevieve Wilkinson of the Faculty of Law at the University of Technology Sydney. Dr Wilkison’s thesis is that countries are not responsive enough to the human rights implications of trade mark protection. The book has an international focus but includes analysis of Australian tobacco plain packaging laws that were the subject of High Court of Australia and World Trade Organization decisions and Australian anti-counterfeiting measures. Then, Amy Tesoriero reviews The Exploitation of Intellectual Property Rights: In Search of the Right Balance. The book features contributions from respected IP scholars, including Australians Professor Leanne Wiseman and Associate Professor Kanchana Kariyawasam, who discuss different methods of ensuring that IP contractual and enforcement practices best support the aims of the IP system.

Finally, this edition features IP updates from around the world. Locally, there are reports on Federal Court of Australia and Full Court judgments, plus the successful leave application to the Supreme Court of New Zealand on the scope of the  “issuing to the public” cause of action in copyright. There also updates from our correspondents in China and Hong Kong SAR, Japan, Singapore, the UK, EU, France, Germany and the US. These range from Japanese patent application trends to a recent decision by the Court of Justice of the European Union which held for the first time that certain criminal aspects of IP law come within the scope of EU law. In light of Associate Professor Wright’s article in this issue, it is also interesting to read the contribution by our UK correspondents regarding Getty Images’ UK claims against Stability AI, creator of the deep learning AI model known as “Stable Diffusion”, which required the UK High Court to consider the question of jurisdiction  n the context of AI. I thank all of the Journal’s regular contributors who continue to keep us up to date on the latest IP developments across the globe.

This edition marks my 25th issue and sixth year editing Intellectual Property Forum. In view of the past, I am confident that 2024 will be filled with interesting IP judgments and developments. As the official journal of IPSANZ – the leading organisation of IP professionals in Australasia – contributions are welcome on emerging and key issues across the entire IP spectrum. Indeed, the collegial sharing of knowledge about the evolving IP landscape is a notable feature of the IPSANZ and broader IP community. If inspiration strikes and you wish to contribute to a future issue of the Journal, please email me at

I look forward to hearing from you.

Until then, enjoy the issue!

In Conversation with the Honourable Justice Mark Moshinsky by Fiona Rotstein

On the third last day of 2023, Fiona Rotstein met with the Honourable Justice Mark Moshinsky of the Federal Court of Australia. What followed was an interesting discussion regarding Justice Moshinsky’s career path, legal role models and his Honour’s insights on the practice of IP law.

Photo courtesy of the Federal Court of Australia




Sufficiency and the Patent Bargain Post – Jusand v Rattlejack: How Much Disclosure is Enough?
The recent decision of the Full Court of the Federal Court of Australia in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (“Rattlejack”) confirms the need to ensure that a patent specification has sufficient disclosure to enable the skilled addressee, armed with the common general knowledge (“CGK”), to perform the invention across the entire scope of the claims. The decision does not embrace any radical change to the law of sufficiency in the post-Raising The Bar (“RTB”) patent landscape and we explore the ramifications from both a legal and patent drafting perspective.


In most countries, patent applications are required to “disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art”. This language comes from the Agreement on Trade-Related Aspects of Intellectual Property Rights which sets out the minimum standards for patent rights in World Trade Organization countries. The concept flows from a core principle of patent rights: that a proprietor gains a limited monopoly in exchange for disclosing the invention to the public.

Perhaps no area of patent law has created as much professional, academic and judicial division as sufficiency and claim support. On 13 November 2023, the Full Court of the Federal Court of Australia delivered Australia’s first appellate judgment
concerning the post-RTB amendments to the support and sufficiency requirements in section 40 of the Patents Act 1990 (Cth) (“the Act”). The lead judgment was given by Perram J, with whom Nicholas and McElwaine JJ agreed. Before analysing Rattlejack, it is necessary to revisit the RTB amendments and consider the UK authorities expressly cited in the extraneous materials accompanying the RTB Act.

James Lawrence and John Hogan


Is There a Doctrine of Non-Literal Patent Infringement in Australia? A Survey of Modern Design-Around Cases

This article presents a survey of Australian design-around patent cases that consider claim construction, in light of the applicable principles. The cases show that there is no “literal” or “non-literal” approach to claim construction. Rather, the court must be satisfied as to infringement or non-infringement on the “proper” construction of the claims.

A survey of post-millennium design-around cases does not support the view that there is a doctrine of non-literal infringement in Australia, or equivalence as the doctrine is styled in the UK. Rather, the correct Australian approach to determining  infringement remains a question of “proper” claim construction. By “design-around cases”, we mean cases where the allegedly infringing product was designed having regard to the patented invention.

Ali Ward, Odette Gourley, Grant Fisher, Rachelle Downie and Sarah Catania : Corrs Chambers Westgarth.

Professionals Beware: The Opportunities and Risks of Generative AI in Legal Practice

It has been a little over a year since ChatGPT controversially burst onto the scene in November 2022, promising users a human-like conversational experience that would change the way they live, learn and work. We have witnessed a rapid uptake of generative AI tools, including ChatGPT, Bing CoPilot, Dall-E and Midjourney, for a wide range of use cases: from the innocuous such as writing a poem or creating a recipe, to the more complex, such as drafting documents, reviewing contracts or providing legal advice. These tools have rapidly become more powerful and accurate. For example, the GPT-4 Technical Paper released by OpenAI reported that GPT-4 performed in the top 10 per cent of test takers in a simulated Bar exam compared to the performance of GPT-3.5 which fell into the bottom 10 per cent of test takers. A proliferation of free and enterprise tools that have been released to the market, or incorporated into traditional products, perform a wide range of tasks, with some companies partnering with external service providers to create their own generative AI systems for specific internal use. Generative AI tools have been adopted in the legal profession, performing tasks such as legal research, contract review, and legal drafting.

Associate Professor Evana Wright : Faculty of Law, University of Technology Sydney


Brand Protection Snippets

This article draws on recent Australian cases to highlight some new developments in intellectual property litigation.

It covers three distinct topics. The first concerns interlocutory injunctions and the extent to which an alleged infringer’s knowledge of existing intellectual property rights may affect the weighing of the “balance of convenience”. The second addresses the fraught issue of how to prepare evidence in chief of conversations (and how not to do it). The third relates to third party costs orders and litigation funding.

These topics might be easily overlooked when nestled within judicial reasons dealing with a range of issues. In this article, they are given special attention.

Fiona McNeil, Barrister, 5 Selborne Chambers, Sydney


Book-Review: Founding a Global Human Rights Culture for Trade Marks
Alexandra Gassner  : L
awyer, Allens, Disputes and Investigations team

Genevieve Wilkinson : Founding a Global Human Rights Culture for Trade Marks (Edward Elgar Publishing, 2023) 14.

[Edward Elgar 2023 pp 274. The e-book version is priced from UK£25/AU$48 from eBook vendors while in print the
book can be ordered from the Edward Elgar Publishing website <>.]


Book Review:The Exploitation of Intellectual Property Rights: In Search of the Right Balance
By Amy Tesoriero, Associate to Justice Nicholas of the Federal Court of Australia.

Edited by Jens Schovsbo : (ed), The Exploitation of IP Rights: In search of the right balance

[Edward Edgar Publishing 2023 pp 258. The e-book version is priced from £25.00/AU$48 from eBook vendors while in print the book can be ordered online from the Edward Elgar Publishing website <>.]

The Exploitation of IP Rights: In Search of the Right Balance is the latest International Association for the Advancement of Teaching and Research in Intellectual Property (“ATRIP”) series which presents the fruits of the 39th ATRIP Congress,
held online and hosted by the University of Copenhagen in May 2022. I had the pleasure of presenting at this thought provoking Congress and am pleased to report that the book has effectively communicated the nuanced and novel approaches proposed by the Congress’ contributors to achieve greater balance in IP legal systems at the national, regional and international levels.


Current Developments 

IP Australia

Diana Bogunovic, Michelle Catto, Sarah Dixon, Esther Lestrell and Andrea Ruhrmann
FB Rice

Bringing Industry and Universities Together
IP commercialisation involves transforming innovative ideas and research outcomes into tangible products, services, or technologies for market deployment. Collaborations between researchers and businesses may provide opportunity to leverage  resources, expertise, and networks to expedite the development and commercialisation of IP. IP Australia provides a range of resources to support parties entering into collaborations to consider how new and existing intellectual property will be managed. To facilitate successful collaborations between businesses and universities, the Higher Education Research Commercialisation Intellectual Property Framework offers information and templates for navigating the complexities of IP management in collaborative projects. Links to the Framework and other resources can be found via the IP Australia website.

IP Australia Annual Report
The IP Australia Annual Report for 2022–23 was tabled in Parliament last October and is now available to download or view online via the IP Australia website. The report highlights key achievements of IP Australia in areas such as influence and contribution across the IP ecosystem, customer experience and workforce capabilities.

New Year, New Patent Cooperation Treaty (“PCT”) Fees
Directives adopted by the PCT Assembly in October 2023 see a small increase in some PCT filing-related fees,  including for Electronic filings in PDF and XML format via ePCT, excess pages, and international preliminary handling.

Scams Awareness
“Scams Awareness Week” took place from 27 November to 1 December 2023. IP Australia published a guide on what to look for in correspondence and invoices to identify a scam. Guidance was also provided on what official IP Australia invoices and correspondence look like, to help IP right holders avoid being taken advantage of by third parties pretending to represent the Government. IP Australia warns to be especially wary of invoices, and to carefully check that the email address ends in  “”. The full guide can be found on the IP Australia website.

IP Australia: Inclusive Employer
IP Australia’s recognition that inclusion and diversity are key to innovation, as well as their commitment to increasing diverse representation, visible leadership and engagement and accountability have resulted in IP Australia receiving “Inclusive Employer” status by the Diversity Council Australia. The IP Australia “Diversity and Inclusion Strategy 2023–2026” can be found on the IP Australia website. IP Australia Draft Cost Recovery Statement IP Australia has prepared a draft Cost Recovery
Implementation Statement outlining the proposed fee changes for proposed cost awards in patent, trade mark and design proceedings. The Statement informs on fee use and cost recovery in areas of IP rights administration, Trans-Tasman Attorney administration, and awards for costs in IP proceedings.

The proposed changes do not raise the levels to party/party costs but take into account the rise in actual costs of the parties involved. Feedback on the draft statement has now closed and any changes will take effect in October 2024. The draft Statement and current costs awarded can be viewed on the IP Australia website.

IP Australia is Adopting the Madrid Goods and Services list in 2024
The WIPO Madrid Goods and Services (“MGS”) list is a comprehensive database of classification terms used in the Madrid System. The current IP Australia Trade Marks Goods and Services list (also known as the “picklist”) is expected to be replaced with the MGS list in March 2024.

A semantic search function will also be introduced to assist with the transition from the present picklist terms. The new system aims to reduce the number of issues encountered by Australian applicants filing internationally by aligning the Australian classification standards with international best practice.

Integration of IP Australia APIs
IP Australia is offering and promoting its application programming interfaces (“APIs”) to third party businesses and firms for integration into their system’s software. While  the service is available to everyone, it will likely benefit high volume filers and IP software developers most.



Tom Cordiner KC, Melissa Marcus, Clare Cunliffe, Marcus Fleming and Amy Surkis
Correspondents for Victoria, Western Australia, South Australia, Tasmania and Northern Territory.

The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd
[2023] FCAFC 203
19 December 2023 – Yates, Markovic and Kennett JJ
Trade mark infringement – deceptive similarity – appeal

In Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd (2023) 174 IPR 153 (the “primary judgment”) Justice Jackman held that the word mark THE NORTH AGENCY used by the respondent was not deceptively similar to the second appellant’s registered trade mark. In this decision, the Full Court (Yates, Markovic and Kennett JJ) upheld that decision.

McD Asia Pacific LLC v Hungry Jack’s Pty Ltd
[2023] FCA 1412
15 November 2023 – Burley J
Trade mark infringement – deceptive similarity – consideration of intention to mislead or deceive – removal of trade marks – non-use application – misleading or deceptive conduct

What are the takeaways from McDonald’s’ bunfight with Hungry Jack’s? Justice Burley held that:
(1) reputation continues to be irrelevant to assessing trade mark infringement under section 120(1) of the Trade Marks Act, following Self Care;
(2) Hungry Jack’s use of BIG JACK and MEGA JACK did not infringe McDonald’s BIG MAC or MEGA MAC trade marks, respectively;
(3) the BIG JACK mark was not liable to removal, providing an extra defence to infringement;
(4) McDonald’s MEGA MAC mark was not liable for removal, although the registration should be amended; but
(5) Hungry Jack’s claim that its burgers had 25 per cent more Aussie beef than McDonald’s burgers was misleading or deceptive.

It’s not clear whether the judgment has settled the beef between Australia’s two biggest burger suppliers.


Sean McManis and Kasumi Champion
Davies Collison Cave Law, Sydney

Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited
[2023] FCAFC 175
2 November 2023 – Nicholas, Burley and Cheeseman JJ

Halal Certification Authority Pty Ltd (“HCA”) brought claims for infringement, statutory misleading and deceptive conduct and passing off against Flujo Sanguineo Holdings Pty Limited and its subsidiaries (collectively “Flujo Group”), for allegedly unauthorised use of the device below (the “Trade Mark”):




Bromwich J dismissed those claims in Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd [2021]  FCA 1399 and HCA appealed that decision.

services of third party businesses and individuals as halal – i.e. compliant with Islamic law relating to the preparation and handling of food and beverage products. Part of HCA’s services are to permit use of its Trade Mark to evidence that halal certification had taken place, noting that the Arabic script in the device transliterates as “halal”.


Andrew Brown KC
Correspondent for New Zealand

Burden & Others v ESR Group (NZ) Limited
Application for leave to Supreme Court of New Zealand
Leave granted: 7 December 2023
[2023] NZSC 159

New Zealand Supreme Court gives leave to appeal in copyright case – Issuing copies to the public

The litigation between these parties has been reviewed in Intellectual Property Forum a number of times. Three decisions have been issued by the New Zealand Court of Appeal on issues of liability, on adding a new cause of action at the remedies hearing and lastly on the scope of the “issuing to the public” cause of action in copyright.

Recorded Music New Zealand Limited trade mark application AOTEAROA MUSIC AWARDS
Trade Mark Office of New Zealand
Assistant Commissioner Aldred
[2023] NZIPOTM 39
Trade Mark – acquired distinctiveness as a result of “any other circumstances” – s.18(2) Trade Marks Act 2002 (NZ) – applicant previously proved acquired distinctiveness for NEW ZEALAND MUSIC AWARDS – applicant applying for AOTEAROA MUSIC AWARDS

The applicant Recorded Music New Zealand Ltd (“Recorded Music”) was the music industry body in New Zealand for recorded music. It had hosted and presented the New Zealand  Music Awards since 1965 as the premier music industry
awards for recorded music. In 2014 Recorded Music applied for registration of NEW ZEALAND MUSIC AWARDS in various classes. Evidence filed in support showed that the trade mark had acquired distinctiveness through use and it
was allowed to be registered on that evidence.


Dan Plane, Sherry Li
and Jeremy Chiu
Simone Intellectual Property Services (SIPS) Hong Kong
Correspondents for China and Hong Kong SAR

Increasingly Stricter Examination Criteria for Registrability of Trade Marks in the People’s Republic of China (“PRC”)

In China, the substantive examination of trade mark applications is overseen by the Trade Mark Office (“TMO”) of the China National Intellectual Property Administration (“CNIPA”).

In recent years, CNIPA has become increasingly – and in many cases, unreasonably – strict in its examination of trade mark applications for registrability issues. It is widely suspected that this is, in part, an attempt to reduce the vast number of trade mark filings filed in China yearly, and/or an attempt to raise the threshold for market entry at a national level. Regardless of the motivation behind this shift, CNIPA’s increasingly strict interpretation of registrability criteria has made it more and more difficult to register trade marks in China.

This update will examine the legal basis for such refusals based on absolute grounds, recent changes in CNIPA’s examination practices on these issues, and the risks of using unregistered marks previously refused by CNIPA on absolute grounds.
The impact of CNIPA’s stricter examination practice on existing registrations and doing business in China will also be discussed.

Risks in Using Unregistered Marks

Marks Refused Based on Article 11 Due to Lack of
Legally speaking, marks that are rejected due to non distinctiveness pursuant to Article 11 could, in theory, still be used as unregistered trade marks. They might also  eventually be approved for registration on the basis of acquired distinctiveness. That said, the standard for claiming acquired distinctiveness in China is extremely high. To meet that standard, an applicant needs to provide a large volume of evidence to prove its use of the mark over a long period of time across China.


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

Recent Japanese AI-related Patent Application Trends and Issues
In November 2023, the Japan Patent Office (“JPO”) reported a steady growth in the number of AI-related patent filings from 2015 to 2021 (as shown in Fig.1 below).

Fig. 1





The number of patent applications for AI-related inventions by field
Source: JPO

These Japanese business-related inventions are highly compatible with AI (especially large language models that are trained on massive data sets) and the statistics demonstrate that there were an increasing number of patent applications directed to business problem-solving using AI. Additionally, the number of applications for AI-related inventions in the top four fields shown in Fig. 1 above has been climbing since 2015. The most prominent field is “Administration; Management”, which demonstrates that a number of inventions realising prediction or optimisation of targets by using AI are emerging in the lucrative area of software offerings to businesses.



Anna Toh
Amica Law
Correspondents for Singapore

Resisting the Rampage: Winning Tips from Monster Energy’s Losing Streak
Monster Energy Company v IICOMBINED Co., Ltd.
[2023] SGIPOS 13
Monster Energy Company v YG Entertainment Inc
[2023] SGIPOS 14
In the final days of 2023, the Intellectual Property Office of Singapore (“IPOS”) handed Monster Energy Company (“MEC”) two opposition losses in quick succession. Typically, the ordinary Singaporean barely notices a trade mark opposition.  However, the public sat up for this news: the applicant in one of the oppositions was K-pop giant YG Entertainment, and the opposed mark was the name of their newest girl group BabyMonster, which debuted in November 2023.

Social media, K-pop websites, and traditional news outlets buzzed with news of the BabyMonster opposition. The sudden interest in trade mark procedure led the national newspaper The Straits Times to publish an article titled, “What is a trademark opposition, and can anyone file one?”. We delved into the legal decisions and online chatter to pull out three threads which can help weave a solid brand protection strategy.

How Much Enforcement is Too Much?
MEC’s approach to brand protection is no secret. Recent IPOS decisions involving MEC recount their numerous trade mark oppositions, often including pithy quotes like “not the Opponent’s first rodeo” and “frequent user of this tribunal’s services”. In summary, MEC have filed 52 notices of opposition in Singapore since 2012, with a full hearing held in eight cases:













Toby Headdon
and Kyrana Hulstein
Bristows LLP
Correspondents for the United Kingdom

Getty Images UK claims against Stability AI to proceed to full trial
Getty Images (US) Inc & Ors v Stability AI Ltd
[2023] EWHC 3090 (Ch)
On 3 December 2023, an application for summary judgment required the UK High Court to consider the question of jurisdiction in the context of AI. After examining the parties’ evidence on this point, the judge, Smith J, dismissed the defendant’s application, citing “unanswered questions and
inconsistencies” in the defendant’s evidence.

The Background
Earlier this year, Getty Images (“Getty”), a well-known provider of stock images, initiated proceedings against Stability AI, creator of the deep learning AI model and automatic image generator “Stable Diffusion”, for copyright infringement, database right infringement, trade mark infringement and passing off. In short, Getty alleges that Stability AI scraped millions of images from Getty’s websites, without their consent, and used those images to train and develop Stable Diffusion. Additionally, Getty maintains that the images created by Stable Diffusion (i.e., the outputs) reproduce its  copyright works and/or trade marks. (Getty has filed parallel proceedings against Stability AI in the Delaware federal court and Stability AI is also the subject of other pending lawsuits in the US).


Professor Phillip Johnson
Professor of Commercial Law, Cardiff University
Correspondent for the European Union

Criminal Sanctions, Counterfeiting and Piracy and European Union Competence
C-655/21 G.ST.T, EU:C:2023:791 (Court); EU:C:2023:356 (AG)

The niceties of European Union constitutional law rarely concern intellectual property lawyers. Even so, the Court of Justice of the European Union sometimes hands down what might seem to be an obscure decision, but one which may well turn out to be significant. The Court of Justice’s decision in G.ST.T1 might be such a case as, for the first time, the Court held that certain criminal aspects of intellectual property law (counterfeiting and piracy) fall within the scope of EU law. This is significant as nearly 20 years ago the Commission of the European Communities tried to use criminal enforcement, by way of proposing a Directive, as a “Trojan Horse” to move EU competence into the area of criminal law. However, the project ultimately failed and was withdrawn. This happened in large part because Member States did not want EU competence to creep into criminal law. Now, through the G.ST.T case, this competence has een acknowledged and developed.

In 2016, G.ST.T was accused of committing several counterfeiting offences to the value of BGN 1,404,590 (about AU$1,184,000, priced as original clothing) or BGN 80,201 (about AU$68,000, priced as counterfeit clothing). The goods were seized and destroyed. The trader was charged with criminal offences under the Criminal Code and these offences were largely complimented by administrative offences.9 The minimum sentence under the relevant provision of the Code was five years imprisonment (and a maximum of eight years imprisonment) and a fine between BGN 5,000 and BGN 8,000 (about AU$4,200 and AU$6,700). The referring court asked the Court of Justice various questions about this regime.



Emmanuel Baud and Philippe Marchiset 
Jones Day
Correspondents for France

Can Trade Mark Exhaustion Apply to Free Perfume Samples?
In a decision rendered on 6 December 2023,2 the Cassation Court, the highest judicial court in France, confirmed that the unauthorised sale of free perfume samples amounted to trade mark infringement.

The case involved a trader specialised in the sale of secondhand goods having acquired  various Chanel perfume samples from an individual. The individual obtained the perfume samples directly from a Chanel authorised reseller. Those perfume samples were distributed by the reseller and handed out free to perfume customers. Such samples all bore the phrase “to be only sold by Chanel agreed resellers”.

The main question raised by this matter was to assess whether the trade mark exhaustion principle would apply, therefore preventing the trade mark owner from opposing its trade mark in relation to goods already put on the market with its consent. Article 15 of the EU Directive 2015/2436 of 16 December 2015 on trade mark law provides:
1. A trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Union under that trade mark by the proprietor or with the proprietor’s consent.

This provision is provided in the French Intellectual Property Code as well, and applies to all goods put on the market in the European Union by the proprietor or with the proprietor’s consent.

At the appeal stage, the Rennes Court3 ruled that the resale of the samples by the trader amounted to infringement. Interestingly, the Rennes Court considered that the individual who first obtained them from the authorised reseller and then sold them to the trader was not infringing the trade
mark. The Court held that such acts, committed by a mere individual, did not take place “within the course of trade”. This latter finding on the dismissal of the action against the individual was not questioned before the Cassation Court.

The petition before the Cassation Court therefore mostly criticised the appeal judgment for having ruled that the samples were not put on the market, despite the fact that the samples were handed to consumers by a representative of the trade mark owner.



Christopher Weber, and  Carsten Plaga
Kather Augenstein
Correspondents for Germany

Liability Risks for Patent Proprietors Due to the Enforcement of Preliminary Injunctions and the Sending of Warning Letters in Generics Cases

Düsseldorf Higher Regional Court, decision dated 12 October 2023, docket number 2 U 124/22

Under German law, in urgent cases a patent proprietor can apply for a preliminary injunction in order to obtain legal protection faster than in proceedings on the merits. Preliminary injunctions are often used in cases involving generics, as the German courts are more inclined to grant them in such cases. This is usually justified by the fact that the price of the drug in question falls sharply once generics enter the market.

In order to obtain an ex parte preliminary injunction without an oral hearing and without an opportunity for the generics company to comment), the patent proprietor
(original manufacturer) must first warn the generics company. In principle, this already happens if the generics company has announced its intention to launch a generic product on the market. If the generics company and the patent proprietor conclude a cease-and-desist agreement as a result of the warning letter, the patent proprietor does not have to apply for an injunction.

In view of the fact that in the vast majority of cases third and fourth-generation pharmaceutical patents are declared invalid sooner or later, the question arises as to whether the patent proprietor is liable if it has previously warned generics companies about the patent, or even obtained a preliminary

Guy Yonay

Pearl Cohen Zedek Latzer Baratz LLP
Correspondent for the United States of America

Federal Circuit Clarifies Inter Partes Review Estoppel Statute
In Ironburg Inventions Ltd v Valve Corporation, 64 F.4th 1274 (Fed. Cir. 2023), the Court of Appeals for the Federal Circuit considered the extent to which a defendant is estopped from raising in the District Court invalidity as a defence to patent infringement after the Patent Trial and Appeal Board
(“PTAB”) rejected a challenge to the validity of the patent in an inter partes review.

As part of the America Invents Act overhaul of US patent law in 2012, Congress created the inter partes review (“IPR”) procedure to replace inter partes re-examination as a means by which parties might petition the PTAB to revoke an issued patent based on prior patents and publications. In the years since its creation, IPRs have gained popularity among defendants as a means to “front-load” invalidity defences while deferring the substantial costs (and risks) of District Court litigation.

However, this  convenience to defendants comes at a cost. In order to prevent defendants from making duplicate invalidity claims in the PTAB and District Court, the IPR statute includes an estoppel provision. Section 315(e)(2) states:

The petitioner in an inter partes review … that results in a final written decision … may not assert … in a civil action… that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review … [Emphasis added].

In Ironburg, plaintiff Ironburg sued Valve for infringing US Patent No. 8,641,525 (the “525 patent”), covering a video game controller. During the early stages of the litigation, Valve filed an IPR petition with the PTAB raising several prior art defences. The PTAB, however only partially granted
the petition, and instituted the IPR on the basis of a limited set of prior art raised by Valve. Ultimately, the patent emerged from the PTAB, and the District Court litigation continued. Before trial, the District Court held that Valve was estopped from pressing all prior art invalidity defences
as a consequence of its failed IPR attempt. Accordingly, only the issues of infringement and damages were tried by the jury, which awarded Ironburg more than US$4 million (AU$6.1 million) for wilful infringement. Valve appealed the District Court’s estoppel ruling to the Federal Circuit.

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