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Intellectual Property Bulletin

19 December 2008

In this issue: Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting copyright, patents, trade marks, designs and personal property. We also include important Christmas/New Year closure dates for IP registration services in Australia, New Zealand, Hong Kong and mainland China.

Copyright – Inquiry into copyright restrictions on the parallel importation of books

In brief: The Federal Government's Productivity Commission has released an issues paper outlining the key matters to be addressed in its study into restrictions on the parallel importation of books.

By Miriam Stiel, Partner

The Federal Assistant Treasurer has asked the government's Productivity Commission (the commission) to undertake a study into the provisions currently existing under Australian copyright law that restrict the parallel importation of books and to advise on the potential for reform in this area. The study has arisen in the context of a broader competition reform agenda aimed at enhancing Australia's longer-term growth prospects.

On 26 November 2008, the commission released an issues paper outlining the key matters to be addressed in the study, and has called for submissions from interested individuals and organisations.

The current position

'Parallel importation' refers to the importation for commercial purposes, and without the authority of the Australian copyright holder, of goods that have been legally produced and purchased overseas. The Copyright Act 1968 (Cth) (the Act) originally prohibited all parallel imports. The restrictions against the parallel importation of sound recordings and computer software were lifted under changes to the Act in 1998 and 2003. The 2003 amendments had originally included provisions allowing the parallel importation of books but these were removed in a last-minute deal with the Australian Democrats, who held the balance of power in the Senate at that time.

The current position is that the parallel importation and subsequent commercial distribution of books constitutes copyright infringement, subject to certain limited exceptions. The blanket prohibition was relaxed slightly in 1991, with the introduction of a 'use it or lose it' policy, whereby books can lawfully be imported into Australia if:

  • the book is not available for sale in Australia within 30 days after it has been first published overseas; or
  • the Australian copyright owner does not respond to a written order for the book within seven days, or if the order is not filled within 90 days after being placed.

A single copy of a book can also be imported to fill an order that is for a customer's personal use.

Issues the commission is considering

The commission has been asked to consider whether the current restrictions are justified, having regard to:

  • the extent to which the provisions promote and achieve the objectives of the Act;
  • whether the provisions amount to a restriction on competition and, if so, the costs, benefits and effects of the restriction, and whether the benefits to the community outweigh any costs; and
  • options for reform, including non-legislative approaches, and any transitional arrangements that may be required.

This is the latest in a long line of studies over the past 25 years that have examined Australia's parallel importation restrictions. The issues paper summarises the key arguments raised in the earlier studies. Those in favour of the removal of the restrictions argue that they are anti-competitive, as they restrict supply and inflate prices. Copyright holders argue that the restrictions are important to enhance creative output in Australia, avoid overseas products being dumped on the local market and to combat piracy. The commission is seeking contemporary evidence from stakeholders to support their arguments.

Next steps

Submissions are due by 20 January 2009 and the commission will report its findings to the Federal Government in May 2009.

If you have any queries about the study or would like assistance in making a submission to the commission, please feel free to contact one of our Intellectual Property Partners.

Copyright – Aligning digital culture and copyright

In brief: Federal Court proceedings for authorising copyright infringement have been commenced against Internet service provider iiNet.

By Andrew Wiseman, Partner, and Matt Vitins, Lawyer

A coalition of players in the film and television industries has filed Federal Court proceedings against iiNet, an Internet service provider (ISP). The main issue in these proceedings is whether iiNet is responsible for copyright infringement by its users.  At a more fundamental level, the litigation is the next instalment in aligning digital culture and copyright.

Piracy is common. Network speeds and file-sizes meant the film and television industries had a brief moment to collect themselves before online video piracy reached the 'emergency' levels experienced with music. Inevitably, these industries are becoming affected as broadband speeds accelerate and technical inhibitors are removed. While peer-to-peer file sharing remains the biggest headache for rights owners, new forms of piracy continue to emerge. Audiovisual content is regularly shared (legally and illegally) through social media such as MySpace, Facebook and YouTube.  In Japan, where 3G mobile networks are relatively mature 'mobile piracy' has become an issue. 

Online revolutionaries have taken this to mean that copyright law is incompatible with the remix/cut 'n' paste character of digital culture – they believe rights owners 'just don't get it' and will be swept away by tides of infringement. However, with the revolution still pending, it is unrealistic to expect rights owners simply to abandon their catalogues.  We should expect rights owners to respond to piracy.

There are three points at which control may be asserted over online content:

  • users;
  • online services (websites); and
  • ISPs.

Litigation has been targeted at each of these points.  The action against iiNet is an example of litigation targeted at point three.

The claim against iiNet is being brought in the Federal Court in Sydney by 34 applicants, including Village Roadshow, Universal Pictures, Warner Bros Entertainment, Paramount Pictures, Sony Pictures Entertainment, Twentieth Century Fox Film Corporation, Disney Enterprises, Inc. and the Seven Network. The applicants claim that iiNet has been notified about many thousands of illegal file transfers carried out through its network and that it has done nothing to stop its users from continuing to pirate copyright material.

In the language of the Copyright Act 1968 (Cth) (theCopyright Act ), the issue is whether iiNet has 'authorised infringement'. The Federal Court will need to decide if iiNet had the power to prevent infringement via its network and if it took any 'reasonable steps' to do so. The film and television companies bringing the action claim that iiNet has not taken reasonable steps to prevent piracy. For its part, the Internet Industry Association has argued that ISPs are a 'mere conduit' and should not be responsible for enforcing private rights. 

The Copyright Act creates some defences for ISPs where they do no more than passively transmit content. The statement of claim says iiNet offered encouragement to its users to infringe copyright and also failed to enforce user terms and conditions prohibiting infringement. In short, the argument is that iiNet did something more than merely provide the facilities for its users to engage in piracy.

It will be a test case on ISP liability. The respondent, iiNet, has been ordered to file its defence and the matter is back in court in February 2009.

As an alternative to litigation, 'Notice and Disconnect' schemes have been proposed, in Australia and elsewhere, as a method of enlisting ISPs in preventing online piracy. Music Industry Piracy Investigations (MIPI), an organisation representing rights owners, has for some time been pressing for a notice and disconnect regime to be adopted in Australia. The basic idea behind these schemes is that ISPs have the technical capacity to identify online infringement and should disconnect users who repeatedly pirate copyright material. This would typically involve the relevant copyright owners monitoring online activities and sending notices to the ISP's alerting them to the infringing conduct by their users and requesting that an appropriate Warning Notice be issued to the ISP's customer. Subsequent infringements would result in suspension of the user's account and ultimately, termination of the account.

A similar 'Notice and Disconnect' scheme is being considered in other countries and legislation to implement such a scheme is currently before the French National Assembly.

Copyright – IceTV Update

In brief: The case involving the Nine Network and IceTV will be decided in the High Court, as the question of copyright in factual compilations continues to attract considerable attention on the world stage.

By Katherine McMahon, Lawyer, Miriam Stiel, Partner, and Claire Agius, Vacation Clerk

On 16 October 2008, Nine Network Australia Pty Ltd (Nine) and IceTV Pty Ltd (Ice) reconvened in the High Court for an expedited two-day hearing, less than eight weeks after Ice was granted special leave to appeal the Full Federal Court's decision in Nine Network v IceTV 1. Also appearing at the hearing were Telstra Corporation Ltd and Australian Digital Alliance Ltd, as 'friends of the court'.

The case, which has attracted considerable attention both in Australia and internationally, concerns the issue of copyright in factual compilations.

The earlier proceedings in the Federal Court focused on whether Ice had infringed Nine's copyright by taking and using a substantial part of the TV station's weekly programming schedule (the weekly schedule) to compile an electronic program guide. At this most recent hearing, however, the High Court delivered on its commitment to re-examine the extent to which factual compilations attract copyright protection. See Allens Focus: Intellectual Property – October 2008 for a more detailed analysis of the Full Federal Court's decision.

The primary focus of the High Court hearing was whether the skill and labour invested in making broadcast decisions could be separated from the skill and labour involved in creating the copyright work.

Nine argued that the two sets of skill and labour that went into producing Nine's weekly schedules should not be divided, suggesting that to do so would herald the 'death of copyright law', as it artificially 'fragments the process of creation'. However, in response to repeated questioning, Nine acknowledged on the hearing's second day that the relevant skill and labour used to create the copyright work may not necessarily co-exist with that used to make broadcast decisions, such as the negotiations surrounding the acquisition of a program.

There was also discussion as to who authored Nine's weekly schedules. In contrast to the approach taken by the Full Court, where authorship was essentially assumed, Justice Gummow emphasised that Nine could not be an 'author' of the work, as authorship necessitates human enterprise. He suggested that the issue was that:

there is a commercial enterprise with a number of steps and a number of actors which produces a commercial result. The question is, how is that readily fitted within the structure of copyright when you are trying to find an original work which has an author or joint authors?

 

Nine argued for recognition of joint authorship, nominating several individuals who jointly authored the work in question. In a related matter, the judges pressed Nine to identify the exact nature of the compilation in question. Nine accepted the proposition of Justice Hayne, that the compilation is 'a decision about sequence or relationship of elements once recorded in material form'.

Having identified the nature of the compilation, Nine defended the Full Federal Court's finding in relation to substantiality, noting that Ice's infringing act was the taking of the very elements of the program schedule that could not be predicted.

The High Court's decision can be expected within the next six months. Irrespective of the outcome, the judgment promises a detailed exposition on the requirements for recognition of copyright in factual compilations.

Copyright – Federal Government introduces artist resale rights legislation

In brief: The Federal Government has introduced draft legislation to create a scheme under which visual artists will receive a royalty on commercial resales of their works.

On 27 November 2008, the Resale Royalty Right for Visual Artists Bill 2008 (Cth) was introduced into the House of Representatives. According to the explanatory memorandum for the Bill, the introduction of a resale royalty scheme will 'allow visual artists to share in the commercialisation of their work in the secondary art market'. 

Resale rights, or droit de suite, have been granted to artists in a number of countries in recent years. In 2001, the European Council adopted the Resale Right Directive, implementing the non-mandatory right in article 14ter of the Berne Convention 'to an interest in any sale of the work subsequent to the first transfer by the author of the work'. The United Kingdom promulgated regulations giving effect to the right in 2006.

The Australian Government intends to implement a scheme broadly consistent with the EU Directive and the framework set out in the Berne Convention. Federal Arts Minister Peter Garrett has said that the introduction of the scheme 'will help to address a current imbalance, where visual artists benefit less from copyright than other creators, such as authors and composers' 2. Visual artists are generally unable to exploit one of the principal rights granted to copyright owners, that of reproduction.  While authors of literary, dramatic and musical works reap benefits from multiple reproductions of their works, many visual artists' works are commercialised through the sale and resale of their first original works as chattel property rather than through the commercial distribution of reproductions. Further, visual artists are not afforded an exclusive right to display their works publicly (unlike the exclusive right of public performance given to authors of literary, dramatic and musical works).

The key details of the scheme are as follows:

  • The right will cover artworks, being original works of graphic or plastic art that are created by, or produced under the authority of, an artist or artists. Works of graphic or plastic art include pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs (section 7).
  • Transfers of ownership of the artwork from one person to another for monetary consideration that are subsequent to the first transfer of ownership will be caught (s8(1)).
  • The right will apply to all resales of existing works acquired after the right commences (not only those created after the legislation comes into effect), including works by deceased artists (ss 8 and 11).
  • All resales involving art market professionals, including auctioneers, gallery and museum owners and operators and art dealers, will be liable, although private transactions between individuals will not (s8(2)).
  • The minimum resale price before a royalty is imposed will be $1000 (s10), and royalties will be uncapped and calculated on a flat rate of five per cent (s18).
  • The artist must be an Australian citizen, permanent resident or a national or citizen of a prescribed reciprocating country to qualify for the royalty (s14).
  • Resale royalty payments will be collected by a collecting society (s23).
  • The right will apply to works resold during an artist's lifetime or within 70 years of their death (during which latter period the right will accrue to the artist's estate) (s32).
  • The right will be inalienable and incapable of being waived (ss 33 and 34).

The artist resale right is expected to be in place by 1 July 2009. The minister will call for tenders for an organisation to act as the collecting society.

Copyright – Piracy ruling on Sydney Internet café

In brief: An Internet café that charged customers to view and store pirated material contained on its servers has been fined $82,000 for copyright infringement.

By Jasmine Burns, Lawyer

The owners of the Interville Technology Internet Café pleaded guilty in Sydney's Downing Centre Local Court on 25 November 2008 to 40 charges of copyright infringement.

The café had been charging customers an hourly fee to play copyright-infringing movies, music and television shows on its 60 computers, as well as selling storage devices with up to 60GB of space onto which the customers could copy the infringing material. The café's three servers contained hundreds of thousands of unauthorised music, television and movie titles, some of which were yet to be released in Australia.

The company was charged following a December 2007 raid by the Australian Federal Police, sparked by investigations into the café by Music Industry Piracy Investigations (MIPI) and the Australian Federation Against Copyright Theft (AFACT). In addition to the fine, the company was ordered to pay court costs, and forfeit the computer terminals and servers seized from the café during the raid.

'This is a fantastic result for a significant case in the fight against music piracy,' said Sabiene Heindl, General Manager of MIPI.

'For the first time, an Internet café has been targeted and justly reprimanded for its blatant facilitation of widespread copyright infringement for commercial gain.'

Patents – IP Australia and USPTO sign international patent search and examination arrangement

Under an agreement that came into force on 1 November 2008, IP Australia will act as an international search and examination authority for certain international patent applications filed with the United States Patent and Trademark Office.  This will allow US applicants to choose IP Australia to undertake the initial search and examination of their patent application under the Patent Cooperation Treaty.

This significant development is seen as a powerful endorsement of the quality and robustness of IP Australia's search and examination processes.  IP Australia is already an international search and examination authority for 17 countries, including New Zealand, Singapore, India and Malaysia.

Trade Marks – Rothbury not a geographical indication

In brief: In a recent Australian Trade Marks Office Hearing decision 3, the Deputy Registrar of Trade Marks upheld objections by Rothbury Wines Pty Ltd and determined under the Australian Wine and Brandy Corporation Act 1980 (Cth) that ROTHBURY should not be granted status as a geographical indication.

By Andrew Butler, Partner, and Peter Ryan, Senior Associate

Background

Rothbury Wines Pty Ltd (Rothbury Wines) is located in Pokolbin, in the Hunter Valley in New South Wales, Australia. It owns various Australian trade mark registrations, applications and common law trade marks, including THE ROTHBURY ESTATE and ROTHBURY, and has produced wines under those names for many years. Rothbury Wines therefore has a strong proprietary interest in the term ROTHBURY as an indicator of trade, rather than geographical, origin, and its commercial interests would be adversely affected if ROTHBURY were to be determined as a geographical indication (GI).

In 2002, Mr Murray Tyrrell, Tyrrell's Vineyards Pty Ltd, and Mr Trevor Drayton (Tyrrells) applied to the Geographical Indications Committee of the Australian Wine and Brandy Corporation (AWBC) to have ROTHBURY determined as a GI, on the basis of the geographic location of the Parish of Rothbury in the Hunter Valley. Rothbury Wines lodged an objection in March 2005, including objecting on the basis that determination of ROTHBURY as a GI would cause confusion in Australia, in view of Rothbury Wines' prior trade marks for, and use of, ROTHBURY.

Discussion

Tyrrells submitted that ROTHBURY was a well-known wine region in the Hunter Valley and should be afforded GI status on that basis. Rothbury Wines submitted that the vast number of wine producers referred to their wineries as being located in Pokolbin and not in the administrative Parish of Rothbury, and that, in any case, the name ROTHBURY signified the well-known Rothbury Estate and was not known as a geographical reference.

Having decided that Rothbury Wines had established sufficient use of, and reputation in, the trade mark, ROTHBURY, for wines, the deputy registrar noted that:

In light of this discussion, the question of confusion essentially boils down to 'What is the likelihood that a person would be confused about the trade source or the true place of origin of the goods upon seeing 'Rothbury' used 'as a GI', (or used in any way which a GI could reasonably and fairly be used)? 4

Considering all submissions, the deputy registrar found that:

  • Tyrrells had provided no evidence that ROTHBURY had been used extensively as a GI or had geographic significance in relation to wine production, or that it had been used to promote the origin of wines as coming, in a geographical sense, from the Rothbury region;
  • Rothbury Wines' evidence suggested that ROTHBURY has 'very little force as a geographical word' 5 , and that 'the word "Rothbury" was and is used to refer to a general area, community of people, and its facilities, rather than as a well defined and cohesive agricultural district and consequently used to denote an area of production' 6; and
  • Rothbury Wines had established extensive use and ownership, both domestically and for export, of ROTHBURY as a trade mark for wines, and that ROTHBURY had acquired a secondary meaning in relation to Rothbury Wines, rather than as a geographical reference.

Considering each of the above factors, the deputy registrar found that determination of ROTHBURY as a GI 'would be likely to cause confusion with both the word Rothbury and the expression "THE ROTHBURY ESTATE"' 7 .

Decision

Rothbury Wines therefore made out its grounds of objection,  and the deputy registrar held that ROTHBURY cannot be given GI status without the consent of Rothbury Wines 8 .

Two Men and A Truck Aust Pty Ltd v Three Men & A Truck Removals and Storage Pty Ltd & Anor

In brief: The Federal Magistrates Court's decision in the recent case of Two Men and A Truck Aust Pty Ltd v Three Men & A Truck Removals and Storage Pty Ltd & Anor9, can be added to the growing number of cases in which word or picture marks, despite differing in form to registered trade marks, are nonetheless held to be infringing on the grounds of deceptive similarity.

By Joanne Been, Law Graduate, and Tim Golder, Partner

Background

Two Men and A Truck Australia Pty Ltd (the applicant) and Three Men & A Truck Removals and Storage Pty Ltd & Anor (the respondents) are both engaged in the business of furniture transportation and removalist services. The applicant is the owner of Australian Trade Mark Registration No. 949361 for the words 'Two Men and A Truck' and Australian Trade Mark Registration No. 949362 for the following pictorial representation.10

On 11 May 2007, the respondents adopted the corporate name, 'Three Men & A Truck/Removals and Storage Pty Ltd', under which they carried out the same services in respect of which the applicant's trade marks are registered.11 The respondent's services were extensively promoted by reference to the name, or mark, 'Three Men & A Truck', in the Yellow Pages 12 , online13 , and by way of business cards in the form of the representation below.

In response to the respondent's business activities, the applicant, among other things, sought orders that the respondents had infringed both of their registered trade marks under section 120 of the Trade Marks Act 1995 (Cth) (the Act).

The court

Federal Magistrate Barnes found that the respondents were using not only the above representation as a trade mark, but also 'Three Men & A Truck' as a trade mark. The issue then was whether either of those marks was deceptively similar to (and therefore a trade mark infringement of) either the applicant's registrations for the words, 'Two Men and A Truck', or its pictorial representation.

The determination of whether one mark is deceptively similar to another involves an assessment of whether the impugned mark so nearly resembles the other that it is likely to deceive or cause confusion.14

Judgment

After consideration of the evidence, which included long-standing use by the applicant of the marks the subject of the dispute, Federal Magistrate Barnes stated that he was satisfied both of the respondents' trade marks were deceptively similar to both of the applicant's registrations, on the grounds that:

  • the word marks 'Two Men and A Truck' and 'Three Men & A Truck' are visually and orally similar;
  • the phrase 'Men and A Truck' (or 'Men & A Truck'), contained in both the registered and impugned mark, were approximately the same length and conveyed the same idea of removal services provided by men and a truck;
  • both word marks convey the idea of simplicity and conjure up a similar image, causing customers to wonder whether the difference in number referred to was simply a variation on the number of workers provided by the same source; and
  • although the Trade Mark Registration No. 949362 and the respondents' pictorial representation differ in style and composition, both representations use and convey the same idea, such that 'a comparison of the device mark and the representation of a truck does not remove deceptive similarity.' 15

Federal Magistrate Barnes held that the combined effect of these factors was that a person of ordinary intelligence who saw the respondents' word mark or representation would likely be misled into thinking that these services came from the same source as those of the applicant.

On this basis, he concluded that use by the respondents of 'Three Men & A Truck' infringed the registration for 'Two Men and A Truck' and also infringed the registration by the applicant for its pictorial representation. In addition, Federal Magistrate Barnes held that the respondents' representation infringed both trade mark registrations held by the applicant.

In essence, two pictorial representations were held to be deceptively similar by conveying a similar idea. In addition, a word mark was held to infringe a pictorial representation and vice versa, given that the word marks featured so strongly and the representations were somewhat descriptive of the words.

Designs – Two further Review dress design decisions handed down

In brief: Having obtained damages for infringement of a dress design earlier this year, fashion label Review Australia has had a further win and a loss in two separate cases relating to another of its dress designs.

By Marina Lloyd Jones, Senior Associate, and Miriam Stiel, Partner

Following the report on Review Australia Pty Ltd v Innovative Lifestyle Innovative Investments Ltd 16 in our May 2008 IP Bulletin, a case relating to the infringement of a registered design for a dress by a rival designer and retailer, the Federal Court has handed down two further decisions on design infringement proceedings brought by Review regarding a different dress design registered under the Designs Act 2003 (Cth) (the Act ). These cases were heard at the same time by the same judge, but involved different defendants and separate (though substantially overlapping) judgments.

Infringement

In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd 17, the court held that Review's design for a cross-over or wrap dress (the Review Design) was valid but not infringed by a dress it alleged Redberry had made, imported and sold. In considering whether the Redberry dress was, for the purposes of infringement, substantially similar in overall impression to the Review Design, Justice Kenny considered the appearance of the Review Design as a whole by reference to the standard of the hypothetical 'informed user'. She canvassed the authorities on this person's qualities, concluding that: 

...the assessment must be that of a user of ladies' garments, which would include a potential purchaser, either in retail sales (such as a buyer for a fashion store) or at the ultimate consumer level.  A designer or manufacturer of ladies' garments is not, on account of design or manufacturing knowledge alone, an informed user. The notional user must be informed, in the sense that the user is familiar with ladies' garments. The informed user is not an expert, but must be more than barely informed. The focus for consideration is on eye appeal and not on internal or less visible manufacturing features.

Ultimately, the court decided that, applying an objective test, the Review Design was not infringed.

The style of dress was found to be one that was fairly common and gave limited freedom to innovate. The key 'new' features of the Review Design as opposed to the prior art were the skirt's shape and the dress's pattern, including its colour: the monopoly covered by the design was restricted to these aspects. Justice Kenny held that whether colour makes a material difference will depend on the 'nature of the product and the relative importance of the different visual features of the registered design.' She considered the fact that Review had submitted colour photographs of its design to be relevant. When compared, the Review Design and the Redberry dress had many similarities (which were to be given more weight than their differences 18) but the two differences between them related to those aspects of the Review Design that differentiated it from the prior art. In this context, an informed user would not perceive the Redberry dress as substantially similar in overall impression to the Review Design.

In Review Australia Pty Ltd v New Cover Group Pty Ltd 19, Justice Kenny found the Review Design to have been infringed by New Cover 20. As with the Redberry dress, the colour and pattern of the New Cover dresses were quite different from the Review Design; however, this was all that distinguished them from the Review Design, the skirts being virtually identical. Despite the colour and pattern differences, her Honour found that the informed user would consider the dresses substantially similar to the Review Design. 

Damages

While not required to consider damages in the Redberry case, having not found any infringement, Justice Kenny nevertheless considered each of the heads of damage claimed by Review. Her Honour made the following findings on the damages issue in the two cases:

  • Lost sales – In both cases, Review argued that it would have sold the same number of dresses as the respective respondents had imported. Justice Kenny thought some allowance should be made for the chance that Review would not achieve the same level of sales. In the Redberry case, the chance of a Review customer buying the Redberry dress was considered 'very low' and the nominal lost sales would have been reduced by 90 per cent. By contrast, the chance of a Review customer buying the New Cover dresses was relatively high, and the figure proposed by Review would only have been discounted by about 30 per cent. In both cases, Review was unable to prove that it was selling its dress at the same time as the respondents; therefore, there was no evidence of lost sales.
  • Diminution in value – Justice Kenny awarded $35,000 in damages against New Cover (and would have awarded $3500 in damages against Redberry) for diminution in the value of the Review Design. The reproduction of the Review Design 'under the cheaper...label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design' 21. Review positioned itself as an exclusive brand, sold only through Review stores or concessions in large department stores, and this exclusivity was commercially valuable. 
  • Additional damages –  In claiming additional damages, Review relied, in part, on the alleged business practice of Redberry and New Cover in routinely copying others' designs. Justice Kenny observed that copying per se was not unlawful under designs law and, while evidence of repeated design infringements might be relevant to additional damages, a tendency to copy others' designs was not. She made the interesting comment that:

The nature of the fashion industry and its products as disclosed in the evidence can also be borne in mind. The evidence indicates that copying and adapting the designs of other designers is the accepted modus operandi of designers, including reputable designers, within the industry; and that it is through this process that fashion products are created. 22

Additional damages of $50,000 were awarded against New Cover on the basis of its uncooperative conduct during the trial. While well resourced, it played a very limited role in the proceedings, it discovered no relevant documents, and one of its witnesses failed to attend court, despite being required for cross-examination. New Cover did not lead any evidence about the commercial benefit obtained in selling the infringing dresses, drawing an inference against them that they had made a healthy profit from their infringing activities 23. There was, therefore, a 'very strong possibility that the extent of the infringement [was] underestimated' and that compensatory damages were insufficient 24.

An interesting point arose when Redberry and New Cover attempted to show that their infringement (if any) did not lie in making the garments (primary infringement) but only in their importation and sale (secondary infringement), because they had not been made in Australia.  A finding of secondary infringement would have involved a lower threshold than primary infringement for the respondent to overcome in proving that any damages awarded should be reduced25. Justice Kenny agreed that the garments in each case were made not in Australia, but in China, finding that an article will be 'made' in Australia for the purposes of the Act if a direction to make the garment is given in Australia; however, it will not be made in Australia if an Australian person issues a direction to make a product while travelling overseas. 

Traditionally, most Australian fashion houses have decided against registering designs, as the process has been relatively costly and hasn't kept up with the fast pace of the fashion cycle. Australia's relatively new designs legislation, which came into effect on 17 June 2004, allows designers to apply to register a design and have it published (preventing others from obtaining certification of the same, or a substantially similar, design) without proceeding to registration. While no action can be taken for infringement of the design until it is certified by the Designs Office as a validly registered design, the new scheme has made design registration an increasingly workable and realistic way for fashion designers to protect their work. 

Personal Property – Security over intellectual property – draft bill being considered

In brief: The Federal Attorney-General's Department has released the draft Personal Property Securities Bill 2008 and on 13 November 2008 it was referred for inquiry to the Senate Standing Committee on Legal and Constitutional Affairs. The committee is due to report on its recommendations by February next year.

By Vanessa Kingston, Lawyer

The Federal Government has continued to pursue the previous government's policy to simplify personal property security legislation. If passed into law, the proposed legislation will establish a national electronic register of all personal property securities, including intellectual property rights: that is, copyright, patents, trade marks, designs, plant breeders' rights and eligible layouts. 

Interested parties are also presently providing comments, among them, the Law Council of Australia's Intellectual Property Committee, which has sent submissions to the Federal Attorney-General's Department on several issues relating to the statutory provisions in the suite of intellectual property legislation.

It is expected that the present process of registering security interests with IP Australia will be phased out and replaced with a new national electronic register. 

A relevant article from the June 2006 edition of the Intellectual Property Bulletin can be found at http://www.allens.com.au/pubs/pdf/ip/ipbulljun06.pdf .

We are monitoring this closely and will continue to keep you updated.

Firm News

Allens' Alumnus appointed Director General of WIPO

The World Intellectual Property Organisation (WIPO) has appointed Mr Francis Gurry as its new Director General, for a six-year term effective from 1 October 2008.  Mr Gurry is an Australian national and a 23-year veteran of WIPO, and was previously WIPO's Deputy Director General overseeing patents, the Patent Cooperation Treaty, the WIPO Arbitration and Mediation Centre and global intellectual property issues.  Mr Gurry began his legal career as an articled clerk, then an attorney-at-law, in the Melbourne office of Arthur Robinson & Company (a precursor firm to Allens Arthur Robinson).

Our Patent Team Grows

We have recently welcomed three new members to our patent team, expanding even further our patent and technical expertise. We introduce our new team members:

Linda Govenlock

Linda is a registered patent attorney in Australia and New Zealand and a registered trade marks attorney in Australia. Linda has a BSc(Hons) majoring in chemistry and pharmacology and a PhD in organic chemistry, which allows her to specialise in the chemical and life sciences patent areas, with a particular focus on pharmaceuticals, diagnosis and treatment of diseases, industrial and agricultural chemicals, food technology, and biochemistry.

Linda's services include providing intellectual property advice, particularly drafting patent specifications and prosecuting patent applications throughout the world, gaining extensions of term for pharmaceutical patents, conducting patent oppositions before the Australian and New Zealand Patent Office, and providing advice on the patentability of inventions and the patent landscape.

What Linda enjoys most about her work is the opportunity to meet a wide variety of creative people and help them achieve commercial success for their innovation.

Lester Miller

Lester is a registered patent attorney in Australia and New Zealand, specialising in the engineering field, and is also a registered trade marks attorney in Australia. Awarded an engineering scholarship by the staff of the School of Engineering, Lester studied at the University of Technology, Sydney.

Lester has acted for local and multinational companies in heavy engineering, mining, automotive technology, renewable energy, software, acoustics, and vibration damping and water sports. His technical expertise lies primarily in the mechanical and electro-mechanical fields.
Lester has extensive experience preparing and prosecuting patent specifications in Australia and many overseas jurisdictions. He also provides advice on freedom to operate, patentability and due diligence issues and assists clients with commercialisation advice, and grants and tax assistance for their research and development projects.

Lester enjoys seeing our clients' hard work securely protected so that these organisations can concentrate on growing their business.

Sean Blasdall

Sean is a technical assistant who is training as a patent attorney, and working with our life sciences patent team assisting local and foreign corporate clients to protect their innovations. Sean holds a BSc(Hons) in biochemistry, MAppSc in biopharmaceuticals, and PhD in molecular biology.

Sean has more than 15 years' experience working within the biotechnology industry in clinical, environmental research and in technology transfer roles. He worked as a Business Development Manager - Environmental Life Sciences for a major Australian University for more than four years. Sean's role was to identify, assess and exploit intellectual property developed by the University. Sean has experience in identifying inventions, in the licensing of technology and in the formation of spin-off companies.

Sean enjoys working with researchers to successfully protect and commercialise their innovations.

Christmas and New Year closure dates – Australia, New Zealand, Hong Kong & mainland China
IP Australia, Intellectual Property Office of New Zealand and Allens offices in Australia

IP Australia's State and Canberra offices will be closed from 25 December 2008 to 1 January 2009. All IP Australia offices will re-open on Friday, 2 January 2009.

Any deadlines falling due for patent, trade mark and design matters on the days that IP Australia's offices are closed will automatically be extended to the next business day on which the office is open.

Please also note that the Intellectual Property Office of New Zealand (IPONZ) will close at 5pm on Wednesday 24 December 2008 and reopen on Monday 5 January 2009.   All filings made between 25 December 2008 and 5 January 2009 will therefore receive a filing date of 5 January 2009, and any deadlines occurring during this period will be automatically extended to 5 January 2009.

The Allens offices will be closed on the public holidays, Christmas Day, Boxing Day and New Year's Day. For any matters requiring urgent attention between 29 and 31 December, a reduced number of key Allens staff will be available to assist you.

Where possible, please send us your instructions well in advance of this time. This will assist us in dealing with your matters, particularly where critical deadlines fall due around the Christmas and New Year period.  

Hong Kong Intellectual Property Office, China Trademark Office & China State Intellectual Property Office and Allens IP offices in China & Hong Kong

The Hong Kong Intellectual Property Department (including the Trade Marks Registry, the Patents Registry and the Designs Registry) is closed on Christmas Day, Boxing Day and New Year's Day (Thursday 25 & Friday 26 December and Thursday 1 January 2009 ). The Allens Hong Kong office will also close on these public holidays, but will open on all other days over the Christmas/New Year period. Any deadlines for trade marks, patents and design matters falling on the days when the Intellectual Property Department is closed will automatically be extended to the next business day on which it is open.

The China Trademark Office and the State Intellectual Property Office (for patents & design patents) will close for the New Year holiday on Thursday 1 January and Friday 2 January 2009. To compensate for the additional Friday holiday, Sunday 4 January is a normal business day. All other weekdays during the Christmas/New Year period are regular business days, and Allens Arthur Robinson Intellectual Property (Beijing) Limited will open and close on the same days. Any deadlines falling on New Year's Day or 2 January (or of course Saturday 3 January) will automatically be extended to Sunday 4 January 2009.

We wish each of our clients and colleagues around the world Season's Greetings, and a happy and prosperous New Year. We look forward very much to working with you in 2009 and beyond.

Footnotes
  1. [2008] FCAFC 71.
  2. 'Artists to benefit from Resale Royalty Right', media release, 3 October 2008.
  3. Objection by Rothbury Wines Pty Ltd to determination of geographical indication filed in the names of Murray Tyrrell, Tyrrell's Vineyards Pty Ltd and Trevor   Drayton (2008) ATMO 13 June 2008.
  4. Ibid, at paragraph 96.
  5. Ibid at paragraph 115.
  6. Ibid at paragraph 116.
  7. Ibid at paragraph 168.
  8. Ibid at paragraph 182.
  9. [2008] FMCA 1333.
  10. Both trade marks were registered from 3 April 2003 for 10 years, for services in class 39.
  11. The business name 'Three Men & A Truck' was registered in NSW on 11 November 2005.
  12. In both the online edition and hard copy version.
  13. The respondent registered the domain name 'threemenandatruck.com.au', which it has advertised and promoted on business cards and in the Yellow Pages. The domain name appears on the representation of a truck.
  14. Section 10 of the Trade Marks Act 1995 (Cth).
  15. At 49.
  16. (2008) 75 IPR 289.
  17. [2008] FCA 1588 (24 October 2008).
  18. Section 19(1).
  19. [2008] FCA 1589 (24 October 2008).
  20. Maco Collections Pty Ltd, whose operations were intertwined with New Cover, and Biguang Pan were also named as respondents (and cross-claimants).
  21. At [44] in New Cover.
  22. At [88] in Redberry.
  23. Jones v Dunkel (1959) 101 CLR 298.
  24. Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 ('Aristocrat') at 570 per Black CJ and Jacobson J.
  25. Section 75(2).

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