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Intellectual Property Bulletin

18 December 2009

In this issue: Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments affecting trade marks, copyright, patents and sponsorship/marketing.

Trade Marks – A bing note of caution

In brief: It sounded like a simple case but with the benefit of hindsight it turned out to be deceptively so. Two businesses each claimed trade mark rights in respect of the onomatopoeic word 'bing'. The parties went all the way to the Full Federal Court to resolve their dispute.

By Tim Golder, Partner, and Deborah Jackson, Senior Associate

How does it affect you?

Registered trade marks can be enforced against competitors who use deceptively similar trade marks for the same goods and services (or similar goods or services if there is a likelihood of deception or confusion arising). However, as the Full Federal Court reaffirmed in this case, ordinarily (and unless a registered trade mark is well known) a trade mark cannot be relied upon to prevent the use of a deceptively similar trade mark for goods or services unrelated to those of the registration. Nor should the trade mark law concept of confusion, in the sense of wondering about a common origin, be itself confused with trade practices claims concerning misleading or deceptive conduct. Carefully navigating through the different causes of action so as to preserve both the right to enforce and the freedom to use a trade mark presents a challenge that should always be considered when developing branding strategies.

The decision
Bing! Software sold software primarily to law firms under its registered trade mark covering software and distribution and upgrading services in respect of software.

Bing Technologies was using Bing trade marks in relation to an Internet protocol postal mail service that enabled letters to be routed over the Internet and posted at delivery points closest to the recipients. This service was used particularly by customers who wanted fast delivery of invoices or debt collection notices. Although not essential, enabling computer software was often used (again under the Bing trade mark) with this electronic mail delivery service. The court at first instance found that, by using the trade mark Bing on this enabling computer software, Bing Technologies had infringed Bing! Software's registered trade mark for computer software and related computer distribution and updating services. However, Bing Technologies was free to continue to use Bing trade marks for its electronic mail delivery service since this service was quite unrelated to Bing! Software's products.

Bing! Software appealed, arguing that because the software was such an integral part of the electronic mail delivery service, use by Bing Technologies of the Bing trade marks on its website and in relevant advertising material, by way of example, infringed Bing! Software's trade mark registration. Justice Kenny in the Full Federal Court pointed out that Bing Technologies was not in the software business. If Bing! Software's argument were to be accepted, then 'use of a trade mark related to services not the subject of a registration is use in other relation to goods the subject of a registration' as Justice Greenwood (agreeing with Justice Kenny) observed at par 120. The Full Federal Court did not accept that Bing! Software's monopoly in its registered trade mark extended that far.

The court did allow the appeal in part to slightly expand Justice Collier's orders at first instance (which had been based on an undertaking provided by Bing Technologies early on at the hearing) to include computer distribution and updating services.

The second argument mounted by Bing! Software was that Justice Collier, having found that the trade marks were deceptively similar, should have gone on to conclude that Bing Technologies engaged in conduct likely to mislead or deceive. The Full Federal Court did not agree. Justice Collier had engaged in a contextual analysis of deceptive similarity of the trade marks, as was perfectly permissible in determining trade mark infringement. One should not confuse the inquiries required to make out a trade practices claim with those required to make out trade mark infringement. A business can use a deceptively similar trade mark without engaging in conduct likely to mislead or deceive the public.

The validity of Bing! Software's registration was not in question at any stage of these proceedings. In Australia, it is still possible to register a trade mark for computer software without limitations on its applications. In some other common law countries, such broad descriptions are not permitted. We are left to ponder whether there would have been any difference in the analysis and outcome in respect of trade mark infringement had Bing! Software's registration been limited to the legal applications for which use could be demonstrated. If computer software for use in conveyancing and family court documents was not thought to be the same as computer software enabling electronic mail delivery, the court at first instance would have had to consider (on the basis that the software is similar but not the same) the defence to infringement of whether there was no likelihood of deception or confusion arising in the marketplace. The outcome may well have been the same but not the analysis. Perhaps we would also have had more detailed analysis of the differences in how confusion/deception is assessed in the context of (1) deceptive similarity between trade marks, (2) the relevant defence to infringement, and (3) the trade practices claim. These multilayered considerations are quite critical to an assessment of exposure to legal and commercial risk inherent in branding strategy and need to be considered when the brand is still being selected.

Trade marks – Nokia appeals nominal damages award and the reduction of its costs

In brief: This Full Federal Court appeal1 considered the proper scope to be given to the assessment of damages for the infringement of trade marks, and the court's discretion to order that a party's costs be reduced in circumstances where the damages awarded by the court are less than $100,000. The decision provides guidance on the circumstances that a court may look at in order to reduce a party's costs under the Federal Court Rules.

By David Yates, Partner, Belinda Boulton, Senior Associate, and Sabrina den Braber, Lawyer

Background

On 26 March 2008, Nokia Corporation commenced proceedings against Albert Liu after Customs seized a quantity of mobile phones and accessories bearing 'Nokia' trade marks that were addressed to Mr Liu.

On 4 June 2008, the court made various orders by consent, which included an order that Mr Liu pay Nokia damages for infringement of its trade marks.

At first instance, Nokia contended that, due to the quantity of mobile phones and accessories seized by Customs, Mr Liu was most likely engaged in the importation and sale of counterfeit goods on a commercial scale, resulting in substantial sale losses to Nokia in the region of $50,000 to $100,000. However, the court did not accept Nokia's arguments, stating that the consent orders related to the importation of the items seized by Customs and not the infringement of Nokia's trade marks and therefore the assessment of damages must be limited to Mr Liu's unlawful conduct relating to the importation. The court went further and stated that it could not calculate the damages and therefore place a dollar value on Nokia's losses as Nokia failed to provide any evidentiary basis of its business, in particular, the financial losses suffered each time a sale of a mobile phone was not made.

Nokia was awarded nominal damages in the sum of $10.

Pursuant to Order 62 Rule 36A of the Rules, costs relating to a claim of $100,000 or less will be reduced by one-third of the amount unless otherwise ordered by the court. The court exercised its discretion to reduce Nokia's costs by one-third in this matter on the basis that the case was at the uncomplicated end of the spectrum, Nokia's pleadings were in a 'standard form', and did not involve any degree of complexity. It was for these reasons that the court held that there was no reason to exclude the operation of the Federal Court Rules (the Rules) in this instance, despite Nokia's submission that the Rules were not appropriate in intellectual property cases.

The appeal

On appeal, the Full Federal Court held that the correct approach in determining the scope of assessment of damages was to look at the 'factual matrix', the 'objective setting' or the context in which the consent orders are to be construed and not limit the assessment to the consent orders themselves. The court also discussed the established practice in intellectual property proceedings to split the determination of liability for infringement and the award of damages or account of profits and how the consent orders in this case reflected that practice.

Having regard to the principles of construction of consent orders and the practices in trademark infringement litigation, the court varied the primary judge's orders to widen the scope of damages available to Nokia. Despite this, however, there was no practical benefit to Nokia, beyond the $10 nominal damages already awarded, because Nokia had failed to provide the court at first instance with any evidence to support the losses it was claiming.

The Full Federal Court held that the primary judge's refusal to award costs on the damages assessment was appropriate as Nokia failed to advance evidence to facilitate calculation of damages and ordered Mr Liu to pay Nokia's costs from the date of the consent orders at the reduced one-third rate specified in the Rules.

Trade Marks – Trade marks and security for costs

In brief: In a recent decision2, the Federal Court ordered foreign parties to provide security for costs, having found that the assets in Australia relied on by the foreign parties, including registered trade marks, were not 'readily realisable assets'.

By Tim Golder, Partner, and Laijing Lee, Lawyer

How does it affect you?
  • Persons who are ordinarily resident outside Australia must show that they have 'assets of sufficient liquidity' in Australia in opposing an application for security for costs.
  • Trade marks registered in Australia are not 'assets of sufficient liquidity' in Australia, unless they are shown to be readily convertible into cash by sale as items of property, as distinct from a sale of the underlying business.
Background

Austin, Nichols & Co Inc filed an application to remove the 'WILD GEESE' trade mark registered in the name of Lodestar Anstalt. Austin Nichols, a subsidiary of a French company, Pernod Ricard S.A., conducted the 'WILD TURKEY' business at that time. Rare Breed Distilling LLC, a subsidiary of an Italian company, Davide Campari-Milano S.p.A. (Campari), subsequently acquired the 'WILD TURKEY' business.

The Registrar of Trade Marks' delegate (the delegate) refused the application for removal (except in so far as it related to 'wine, fortified wine and wine based spirits, namely brandy, grappa and cognac' in class 33). Austin Nichols appealed the delegate's decision. Rare Breed was subsequently added as a second applicant and became, in substance, the controlling party in the appeal. This proceeding involved Lodestar's application for security for costs in relation to the appeal.

The applicants' submissions

Justice Lindgren considered the applicants' submissions that they would be likely to satisfy any adverse costs order on the following bases.

Rare Breed's assets in Australia
  • Seventeen trade marks registered in Australia that were assigned by Austin Nichols to Rare Breed – The applicants referred to the USD$581 million paid for the acquisition of the 'WILD TURKEY' business. However, the acquisition comprised not only the 'WILD TURKEY' brand, but also related know-how, stocks of finished products, packaging materials, distilleries and various buildings including warehouses.
  • Justice Lindgren accepted that the trade marks are very valuable. However, his Honour considered that the applicants' evidence was not evidence of a sale of the trade marks as items of property, as distinct from a sale of the underlying business. Accordingly, the applicants failed to show that the bare trade marks would be readily convertible into cash by sale. Justice Lindgren considered that Lodestar might experience considerable difficulty and delay in realising the trade marks if it were to have to take that course.
  • The benefit of a distribution agreement under which Pernod Ricard Pacific distributes Campari products in Australia and pays money to the Campari Group – The applicants referred to the procedure of garnishment that could be used to enforce a costs order. The argument is that the proceeds could be garnisheed as intended for Rare Breed. However, in order for a garnishee order to operate effectively as security on behalf of Rare Breed, it would be necessary for Pernod Ricard Pacific to be indebted to Rare Breed, and not to some other company in the Campari Group. Here, the distribution agreement itself was not in evidence. Moreover, Pernod Ricard Pacific and Rare Breed could render the garnishee process useless by changing their contractual arrangements.
Other bases

The applicants also referred to:

  • the very significant resources of both applicants, particularly Rare Breed, outside Australia;
  • evidence of Rare Breed's intention to enter the Australian market and long-term commitment to doing business in Australia;
  • a record of Austin Nichols satisfying costs orders in overseas litigation with Lodestar; and
  • the availability of reciprocal enforcement mechanisms in the applicants' 'home' jurisdictions in the United States.

Justice Lindgren was satisfied that the applicants would have sufficient funds to satisfy an order of costs if they were unsuccessful. However, his Honour found that the above bases do not overcome the problem that both applicants are foreign corporations who do not have any readily realisable assets in Australia against which an order for costs could be enforced without difficulty or delay. His Honour considered that Lodestar would suffer procedural disadvantage should it have to enforce its costs order in the United States, namely the time, money and complexity that would be involved that would not attend enforcement in Australia.

The court's decision

Given the considerations above, Justice Lindgren ordered the applicants to provide security.

Copyright – Copyright restrictions on the parallel importation of books

In brief: The Federal Government has rejected Productivity Commission recommendations that parallel importation restriction provisions on books be repealed.

By Michelle Freeman, Lawyer

The Productivity Commission released its final research report into copyright restrictions on the parallel importation of books on 14 July 2009, and then released a supplement responding to the Australian Publishers Association's comment on the report on 16 September 2009. The Commission's final report recommended that parallel importation restriction (PIR) provisions be repealed, and that:

  • three years' notice be given to facilitate industry adjustment;
  • current financial assistance for the encouragement of Australian writing and publishing should be reviewed immediately, and any changes implemented before the repeal of PIRs, with such assistance to be reviewed after five years; and
  • the Australian Bureau of Statistics be required to undertake a revised version of the 2003–04 industry survey as soon as possible and update it before the five-year review referred to above.

In a 11 November media release, the Minister for Innovation, Dr Craig Emerson, announced that the Federal Government rejected the Productivity Commission's recommendations. In making this decision, the Government noted that it considers the availability of books in Australia is unlikely to be 'materially' affected by changes to the importation regulations because of existing levels of competition from e-books and online books.

Copyright – Update on ISP liability proceedings

In brief: In our December 2008 Intellectual Property Bulletin, we reported on the commencement of Federal Court proceedings by a coalition of film and television industry players against iiNet, an Australian Internet service provider (ISP). The hearing has now concluded, with the judge reserving his decision. The case will have significant ramifications for ISPs in Australia and is also attracting global attention.

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

After dropping the primary infringement claim at the hearing's commencement, the applicants' remaining claim is that iiNet authorised copyright infringement by failing to prevent its customers from peer-to-peer file-sharing of infringing copies of movies and television programs, despite having been notified that such activities were occurring on its network. iiNet has a term in its customer agreements that its service not be used for copyright infringing purposes. According to the applicants, iiNet included the term in an attempt to gain the protection of the safe harbour provisions of the Copyright Act 1968 (Cth), but is not enforcing it. The safe harbour regime limits ISPs' liability for copyright infringements that occur in the course of carrying out certain activities, so long as they comply with certain conditions, including that the ISP adopts and reasonably implements a policy that provides for termination, in appropriate circumstances, of the accounts of repeat infringers.

iiNet argued that it should not be required to terminate an account merely on the basis of a copyright owner's assertion that a breach occurred, and has accused the film studios of trying to 'outsource' their copyright enforcement to ISPs.

On the last day of the hearing, the judge refused an application by the Internet Industry Association (the IIA) to intervene as an amicus curiae, or 'friend of the court', an application that the applicants contested. The application was dismissed on the basis that the IIA's assistance would not be useful and different from the parties' contribution, because its proposed submissions effectively replicated iiNet's submissions on the relevant issues, although the judge accepted that the limited intervention the IIA sought would not unreasonably interfere with the conduct of the hearing. The fact that the IIA claimed to have a broader perspective than iiNet did not make its intervention useful and different.

The decision is not expected to be handed down for at least six months.

Copyright – Ownership of copyright in international films

In brief: A recent Federal Court decision3 gives insight into the ownership of copyright in relation to international films.

By Nadine Bairle, Lawyer, and Jim Dwyer, Partner

Background

In 2003 and 2004, Television Broadcasts Limited (TVB) and the first applicant, TVBO Production Limited (TVBO), made a television series in Hong Kong, Twin of Brothers. TVB is the world's largest producer and distributor of Chinese language programs.

An episode of the Twin of Brothers series was originally broadcast by an organisation based in China, with the permission and licence of TVBO. That broadcast was, without the permission or license of TVBO, received, intercepted and retransmitted by the fourth respondent, Chinese Satellite Communications, Inc. (CSC), to subscribers of the first respondent's pay television service in Australia. The first respondent in the proceeding was Australian Sky Net Pty Limited (ASN)

The applicants in these proceeding are wholly owned subsidiaries of TVB. They alleged that the respondents had infringed TVBO's copyright in Twin of Brothers. They initially sought declarations, injunctions, delivery up of infringing copies, damages and additional damages under section 115(4) of the Copyright Act 1968 (Cth) (the Act).

Copyright in Twin of Brothers

Hong Kong is a member of the World Trade Organisation and a signatory to the Berne Convention.

Section 184 of the Act states that the regulations made under it may make provision to apply any of the Act's provisions in relation to a country other than Australia. Pursuant to Regulation 4(1) of the Copyright (International Protection) Regulations 1969 (Cth), s90(2) of the Act applies in relation to each episode of Twin of Brothers (a 'cinematograph film') as if each had been made in Australia. Accordingly, the court held that copyright subsisted in each episode.

Owner of the copyright

The applicants tendered in evidence the co-production agreement under which the Twin of Brothers series was made. Pursuant to that agreement, TVB is the owner of the copyright in each film of the Twin of Brothers series in Hong Kong, while TVBO is the owner of the copyright in each film of the Twin of Brothers series for the rest of the world.

The owner of copyright in a film is the maker of that film. Therefore, the court found that:

  • TVBO is the owner of that copyright in Australia; and
  • the only licences TVBO granted in respect of broadcast rights in Australia were those it granted to the third and fourth applicants.
Infringement by CSC

The owner of copyright in a film has the exclusive right to communicate the film to the public. The court held that CSC infringed TVBO's copyright in the relevant episode of the Twin of Brothers series because it communicated by electronic transmission that episode to the public in Australia. The fact that the CSC's transmission emanated from Taiwan did not mean that it avoided liability.

The second respondent's liability

The court held that the second respondent, Mr Wang, a director of both ASN and CSC, played a significant role in the conduct of CSC that resulted in the unlawful transmission. Mr Wang also seemed to be the most senior executive active in the business of CSC.

In the circumstances, the court was prepared to infer for the purposes of s101(1A) of the Act that the Mr Wang authorised the infringement by CSC.

Orders

The court ordered declaratory and injunctive relief against Mr Wang and CSC. The court did not deal with the issue of damages, as the applicants reserved their position in respect of monetary relief.

An unlicensed transmission to the public in Australia of a cinematograph film in which copyright subsists, including a television episode, from a country which is signatory to the Berne Convention, will amount to copyright infringement under Australian law.

Patents – Inquiry into gene patents: is there a threat to biotechnology patents in Australia?

In brief: The Australian Senate Community Affairs Committee is investigating the impact of the granting of patents over human and microbial genes and non-coding sequences, proteins and their derivatives. A diverse range of opinions has been offered, including the restriction of patentable subject matter.

By Trevor Davies, Partner

In late 2008, the Senate asked its Community Affairs Committee to undertake an inquiry into, and report on, the impact of the granting of patents over human and microbial genes and non-coding sequences, proteins and their derivatives, including those materials in an isolated form.

The inquiry was initiated after Genetic Technologies Limited (GTG), the exclusive licensee of the Myriad BRACA gene screening patents in Australia, attempted to control BRACA breast cancer screening in Australia. Although GTG backed down, a number of groups were concerned about GTG's actions in attempting to enforce its patent rights.

Written submissions were received from 72 interested parties, including individuals, clinicians, research institutes, biotechnology companies, professional organisations, politicians and government departments. The Committee held a number of hearings during the year and was exposed to often polarised views.

In its submissions of 18 August 2009, Cancer Council Australia proposed the following broad amendment to the Patents Act 1990 (Cth), to exclude:

Biological materials, including recombinant materials (including but not limited to their components, parts or derivatives, whether isolated or purified or not and regardless of their state and processes used in their production) which are identical or substantially identical, individually or collectively, to those that exist in nature.

Restricting patent protection in Australia, as Cancer Council Australia proposes, is not necessary. It would have an adverse impact on potential commercialisation opportunities, reduce investment in the biotechnology industry, potentially limit the availability of new therapies based on biological materials such as hormones and antibodies, and breach a number of international agreements.

Biological materials (cells, microorganisms, nucleic acids, proteins, peptides, lipids and carbohydrates) will continue to play an important role in medicine, veterinary science, agriculture, industry, food technology and renewable energy. Patentability of inventions relating to biological materials should not be treated any differently from inventions in other technologies. If an invention is novel, involves an inventive step and is useful, it should continue to be patentable in Australia.

Although the Committee was to hand down its report by the end of November 2009, the Senate has extended the reporting time until 18 March 2010. The Committee sought this extension due to the extensive evidence received and the complex nature of many issues associated with this inquiry.

Allens Arthur Robinson will continue to monitor the inquiry and advise its clients on the final report.

Patents – Welcome news to entrants to market – no obligation to 'clear the way'

In brief: The Full Court of the Federal Court of Australia4 lifted an interlocutory injunction previously granted restraining Smith & Nephew from selling its foam-based negative pressure wound treatment system, after finding that the integers of the claim in question together provided no more than a 'mere collocation' of apparatus features.

By Chris Bird, Partner, Louise Brunero, Senior Associate, and Nikki Macor, Lawyer

How does the decision affect you?
  • All of the integers in a claim must combine to collectively produce a result – a mere collocation of integers does not define a patentable invention.
  • Companies intending to introduce a product that potentially infringes a patent will not be placed at any particular disadvantage before a court should they choose to enter the relevant market without first having 'cleared the way' by having the patent revoked.
The facts

Wake Forest University Health Sciences (WFU) owns patents for a negative pressure wound treatment (NPWT) system, comprising a medical apparatus for treating major wounds through the application of negative pressure by suction under a dressing. KCI – also party to the proceedings – produces the apparatus under licence in several countries. Together, WFU and KCI have taken action in several jurisdictions, including Australia, against companies producing similar systems.

Initial grant of injunction

WFU and KCI sought an interlocutory injunction restraining Smith & Nephew from selling its rival system in Australia until the determination of substantive patent infringement proceedings. At first instance, an injunction was granted on the basis that there was a serious question to be tried due to the technical complexity of the competing arguments around the patent's validity.

The primary judge also considered it significant that Smith & Nephew entered the market with 'eyes wide open' to the potential risk of infringement litigation. Before launching the product in Australia, Smith & Nephew had been aware of WFU and KCI's patent, and was fully cognisant of the risk that entry into the market might expose it to an action for patent infringement. It was noted that this risk could have been averted by Smith & Nephew bringing revocation proceedings before entering the market. The primary judge did, however, permit Smith & Nephew to continue to distribute its product for the purpose of evaluation by prospective purchasers or as part of tender processes.

After the grant of the Australian injunction, the UK Court of Appeal lifted an injunction against Smith & Nephew in the UK on the ground that the patent relied on by WFU and KCI was invalid. In light of this, it was not surprising that Smith & Nephew appealed the decision in Australia.

Decision on appeal: 'mere collocation'

On appeal, the Full Court considered the issues of validity of claim 49 of the patent, which had been the focus of argument at first instance and noted by the primary judge as exemplifying the central questions to be litigated at trial. Claim 49 included integers relating to the NPWT apparatus, being 'in an aseptic package'. Interestingly, the six other independent apparatus claims the subject of the proceeding did not include the feature of aseptic packaging.

The Full Court found that the primary judge had failed to consider the issue of validity in its broad sense, having focused only on the issue of novelty. As a separate issue from novelty, a patent claim must satisfy the requirement of 'manner of manufacture' under the Australian Patents Act 1990 (Cth).

WFU and KCI had argued before the primary judge and the Full Court that the feature of the aseptic packaging was an essential integer of the claim, being a part of the apparatus in kit form, and the Full Court approached the construction of the claim on that basis. WFU and KCI sought to adopt before the Full Court a 'fall-back' position that the package was a limitation on the scope of the claimed monopoly – an optional addition. However, the court noted that this was not consistent with the construction advanced, that the packaging was an essential integer.

The three judges of the Full Court held unanimously that the combination of integers of the claim were no more than a 'mere collocation', rather than a true combination of integers combining to produce a result, as the packaging contributed nothing to the result achieved by the NPWT system. While the Full Court acknowledged that it would be beneficial to have sterile packaging for a therapeutic device, the packaging did not interact in any way with the other integers making up the NPWT apparatus, having no effect on the functional result of negative wound pressure.

As a mere collocation is not a 'manner of manufacture' under the principles of Australian patent law, the Full Court held that Smith & Nephew had sufficiently demonstrated that the claim was invalid. Given the likely invalidity of the patent, there was no serious question to be tried and thus no ground for the granting of an interlocutory injunction.

'Eyes wide open'

The Full Court stated that 'it would be an error... to impose on a person who seeks to launch an alleged infringing product, an obligation to "clear the way" by revoking the patent'.5 The fact that a party has entered the market with 'eyes wide open' to the risk that its product might infringe is no more than a factor in the assessment of the many factors relevant to whether to grant an injunction.

However, the Full Court avoided direct criticism of the primary judge's approach, taking the view that the judge had not raised the considerations as to having 'eyes wide open' or 'clearing the way' as propositions of law, nor had he placed too much weight upon them.

Conclusion

This decision will be welcome to entrants to markets in which patents are relevant, as it reverses the perceived introduction of what would be an onerous obligation on new entrants to test the validity of any patent that a new product might infringe.

Patents – Patent and trade mark attorney privilege to be expanded

In brief: The Federal Government has announced it will increase protection for communications between patent and trade mark attorneys and their clients.

By Richard Hamer, Partner, and Joelle Vincent, Lawyer

In Eli Lilly v Pfizer Ireland Pharmaceuticals (No 2)6, the Federal Court stated that patent attorney privilege applies to communications between a client and their patent attorney only when the attorney is registered in Australia. The decision made it clear that client communications with foreign attorneys do not attract the same privilege that applies to client communications with lawyers. In the five years since that decision was handed down, the Intellectual Property Committee of the Law Council of Australia (IP Australia) has made overcoming the effect of Eli Lilly a priority, and has monitored and consulted on the issue.

The Federal Government has now announced that it will amend the Patents Act 1990 (Cth) and the Trade Marks Act 1995 (Cth) to increase the protection for clients of patent and trade mark attorneys. The amendments will make the privilege available for communications between a client and an attorney who is registered in Australia or another jurisdiction, bringing it in line with that applying to communications with legal practitioners. IP Australia has said that it intends the amendments to mirror those recently made to the sections regarding privilege in the Evidence Act 1995 (Cth), particularly in terms of definitions and structure. The amended provisions will apply to professional services including patents, trade marks, designs, plant breeder's rights and any related matters. The amendments are included in a bid for the autumn 2010 sitting of Parliament.

Sponsorship/Marketing – New legislative protection in NSW

The Major Events Act 2009 (NSW) was enacted in late October 2009 and brings NSW in line with Victoria in terms of the legislative protection afforded to the conduct of major sporting and cultural events.

Major events are to be declared by regulation on the recommendation of the Minister. The Act provides a range of practical powers for the facilitation of major events, including the management of roads and traffic, and safety and crowds. The Act also provides 'Commercial and air space controls' that will be of assistance in preventing ambush marketing at major events. It will be possible to control the distribution of unauthorised 'articles' (including advertising material) in identified public places, and prohibit unauthorised advertising on buildings and structures. Unauthorised aerial advertising in the airspace that is within unaided sight of a major event is prohibited, as is ticket scalping and unauthorised photography and audio recording (among other activities).

The anti-ambush marketing powers will be significant for event, sporting body and sporting team sponsors, who should assess whether it is possible for events with which they are associated to be properly declared under the Act such that they are afforded additional protection for their sponsorship investment.

Season's greetings

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 2010 and beyond.

Footnotes
  1. Nokia Corporation v Liu [2009] FCAFC 138.
  2. Austin, Nichols & Co Inc v Lodestar Anstalt [2009] FCA 1228.
  3. TVBO Production Ltd & Ors v Australia Sky Net Pty Ltd & Ors [2009] FCA 1132.
  4. Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142.
  5. [2009] FCAFC 142 at [52].
  6. [2004] FCA 850.

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