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Focus: Patents, Designs and Trade Marks – December 2004

In this issue: Welcome to Allens Arthur Robinson Patent & Trade Marks Attorneys' end-of-year round-up of news, notices and features on all patent, design and trade mark-related matters.

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Patenting exclusion for human beings

In an interesting decision of a deputy Commissioner of Patents, Fertilitescentrum AB and Luminis Pty Ltd [2004] APO 19 (13 July 2004), the Australian Patent Office provided a thought-provoking interpretation of what is considered to constitute a 'human being' under the Australian Patent law.

Subsection 18(2) of the Australian Patents Act 1990 (the Act) provides that human beings, and the biological processes for their generation, are not patentable inventions. Section 107 of the Act provides the Commissioner of Patents power to direct an applicant to amend a specification to remove a lawful ground of objection. Until recently, there has been no judicial consideration, nor any decisions by the Commissioner of Patents, regarding ss18(2).

Inventions that are clearly encompassed by the exclusion provision are totipotent cells or groups of cells that, on their own, develop into a human embryo. Such inventions include human beings, foetuses, embryos or fertilised ova and methods of in vitro fertilisation (IVF) or cloning that generate such things. Human genes, tissues and cell lines are clearly outside the exclusion provision and are therefore patentable, provided that they meet all other statutory requirements. But where is the line drawn between these extremes?

Fertilitescentrum and Luminis Pty Ltd filed a patent application based on a discovery that a substance called 'granulocyte-macrophage colony-stimulating factor' (GM-CSF) 'is effective at substantially increasing the proportion of early embryos that develop to blastocyst and increasing the proportion of those embryos that continue to expanded blastocyst and then hatched blastocyst stages of development'. This substance is apparently present in the natural environment of the fallopian tube and the invention involves ensuring its presence in an IVF environment. Claims in the application directed to the method of growing a human embryo based on this concept were rejected by the Patent Office. At the hearing, the applicants made the argument that a human being was generated at fertilisation, and since the claimed method was applied at a later stage, it could not be deemed to be a process for generating a human being.

The deputy Commissioner decided that the correct interpretation of ss18(2) is reached by recognising the process of generating a 'human being' includes the processes that create a fertilised ovum (or other processes that give rise to an equivalent entity) up until the time of birth. This arises either as a general belief that the status of a human being does in fact arise over a period of time, or as a reflection of the divergent views in society about when a human being comes into existence (with no view being more right than others). The prohibition of `human beings' is therefore a prohibition of patenting of any entity that might reasonably claim the status of a human being, including a fertilised ovum and all its subsequent manifestations, while the prohibition of `biological processes for the generation of human beings' clearly covers all biological processes applied from fertilisation to birth – so long as the process is indeed one that directly relates to the generation of the human being.

The exclusion of biological processes includes the processes of generating the entity that can first claim a status of human being. For example, processes for fertilising an ovum; processes for cloning at the four-cell stage by division; and processes for cloning by replacing nuclear DNA.

As the claims in question were therefore deemed to fall within this interpretation of ss18(2), the applicant was directed to delete the claims.

For a detailed review of the issues involved, please refer to the recent article on this case that appeared in Allens Arthur Robinson's Biotech News on 31 August 2004.

The new Designs Act: an update

As readers will be aware from previous editions of Focus: Patents, Designs and Trade Marks, the new Australian Designs Act 2003 commenced on 17 June 2004, and all applications for design registration filed since this date are subject to the new regime.
In past editions of our publications, we have provided detailed information about the provisions of the new Act and the implications for industry and for design owners, including the March 2004 and April 2003 edition of Allens Arthur Robinson's Intellectual Property Bulletin.

The new legislation has been in place for six months and, although it is too early to determine the precise impact it will have on the substantive issues of registrability and infringement, it is worth looking at a few of the practical differences that applicants are having to consider in seeking protection for their new designs in Australia. It should be noted that a design that was registered before the new Act came into force continues to be governed by the old regime, for the purposes of the term of protection of your registration and in relation to the tests for determining validity and infringement.

The new regime involves a more streamlined registration process. Applications only need to undergo a formalities check to ensure that they conform with formal requirements before proceeding to registration. Design owners can therefore put their rights on public record without having to go through a costly examination process. However, the owner cannot enforce those rights by way of infringement proceedings until a substantive examination has taken place and a Certificate of Examination is issued by the Designs Registry.

Registration or publication?

Under the new application system, applicants are able to request registration or, alternatively, mere publication, the latter option providing a reliable and inexpensive mechanism by which design owners can choose to put their designs on public record, without seeking any registration rights. The deadline for filing a request for registration or publication is the same as the Convention priority deadline, namely six months from the priority date. To avoid any risk of rights being lost, our default procedure is always to request registration at the time of filing an application at the Australian Designs Registry, and we would therefore ask you to let us have your specific instructions if you would like us to defer the request for registration or, alternatively, to request publication only.

Multiple designs

Under the new Act, applications can be filed that contain multiple designs. It is necessary to specify clearly the number of designs as, in the absence of any indication at filing, the Designs Registry will process the application as if there is a single design, and it cannot be guaranteed that this error will be picked up during the formalities checking process before registration. Please therefore provide us with clear instructions if you would like us to apply to register more than one design at a time.

Third-party examination requests

Once a design is registered, the applicant can request examination at any time. If successful, a Certificate of Examination is issued, and a notice to this effect is published in the Official Journal of Designs. However, under the new Act it is also possible for a third party to request examination, and a competitor may choose to do so by bringing prior art to the attention of the Designs Registry in an attempt to have the registration revoked. To avoid this risk, we recommend that you always instruct us to request examination once your design is registered. Once the Certificate of Examination has been issued, a third party cannot apply to the Designs Registry to have your registration revoked, and can only seek revocation through the court.

The MAXCLEAN trade mark case: Colgate v Macleans

Many readers will remember the case of Woolworths Ltd v Registrar of Trade Marks.

In that case, readers will recall that a trade mark consisting of the words WOOLWORTHS METRO was found by the Federal Court not to be deceptively similar to a trade mark consisting of one word METRO, for similar services.

In the recent case of Beecham Group PLC v Colgate-Palmolive (the MAXCLEAN case), Justice Tamberlin appears to have taken a somewhat different approach, although it should be noted that these were interlocutory proceedings and that substantive issues of trade mark infringement were not fully decided.

Beecham Group PLC (Beecham) is the registered trade mark owner for the word MACLEANS in relation to toothbrushes.

The dispute in this case arose because Colgate-Palmolive Pty Ltd (Colgate) commenced selling in Australia a small battery-powered toothbrush with the words COLGATE MAXCLEAN displayed on its packaging. The X was rendered in a stylised form, and so was in different type face from MA...CLEAN. Beecham sought interlocutory relief to restrain Colgate from using or threatening to use the MAXCLEAN mark on the packaging of its toothbrushes.

Colgate offered undertakings that, after a specified date, it would not import any further stocks of the MAXCLEAN toothbrushes into Australia. Beecham argued that such undertakings were insufficient, as in the interim, the value of its trade mark would be significantly diluted in a manner that could not easily be calculated.

Justice Tamberlin decided that notwithstanding the presence of the word COLGATE, the word MAXCLEAN was serving to distinguish one Colgate product from other Colgate products, and so MAXCLEAN was functioning as a trade mark.

His Honour then found that the phonetic and visual similarities between the words MAXCLEAN and MACLEANS were likely to cause a number of persons to wonder whether the two toothbrushes came from the same source.

Further, evidence was presented that Colgate marketing experts were aware of the competing MACLEANS mark and were specifically targeting that mark in their campaign. Justice Tamberlin cited authorities for the proposition that in cases where the element of intention to deceive is present, the court will more readily infer that there has been deceptive conduct.

Justice Tamberlin identified that the real prospect of damage to MACLEANS was the undermining of the association between the MACLEANS trade mark and MACLEANS toothbrush products established over a significant period of time. The difficulty of measuring such damage in monetary terms meant that damages would not be an adequate remedy. Of relevance in this analysis was the conduct of Colgate. Evidence was led that before any approach by Beecham, Colgate Australia was directed by an internal memorandum not to proceed with the COLGATE MAXCLEAN product because of potential legal risks. However, COLGATE MAXCLEAN toothbrushes subsequently arrived in Australia from China.

Moreover, in the proposed undertaking referred to above, Colgate did not reveal its knowledge that a further substantial shipment of MAXCLEAN toothbrushes was anticipated by the date referred to in those undertakings. The application for injunctive relief was therefore granted.

Should the matter proceed to trial, it is likely to provide an interesting comparison to the facts and decision in the WOOLWORTHS METRO case, and will no doubt be watched with much interest.

Amendments to trade mark owner names: the CRAZY JOHN case

This case has implications for owners of Australian trade marks, where amendments have been made to an owner's name on the trade marks Register.

The case concerned the mobile telephone retailers Crazy John's and Crazy Ron's. Crazy John's was originally successful in establishing infringement of a number of its trade marks by Crazy Ron's. Crazy Ron's appealed to the Full Court of the Federal Court, and was successful in establishing that one of Crazy John's trade mark registrations was invalid, and should be removed from the Australian trade marks Register.

The primary reason for the finding of invalidity of Crazy John's trade mark registration was that an amendment made to the trade marks Register was not allowed under the Trade Marks Act. The particular application had been incorrectly filed in the name of one company within the Crazy John group, when another company within the group should have been the applicant. This error was later discovered after the filing of the application, and the applicant's name was subsequently amended on the trade marks Register, based on a particular provision of the Act. However, the court found that the amendment was not permitted under the Act, and therefore the registration was invalid. Crazy Ron's was therefore successful in its appeal, as Crazy Ron's could not infringe an invalid trade mark registration.

This decision therefore has important implications for applicants and owners of Australian trade marks.

Where an amendment to an owner name has been made to the Register either pre- or post-registration, then it is possible that any application or registration so amended may be vulnerable to cancellation on the ground that the amendment was invalid. For example, where an application is erroneously filed in the name of Company A instead of Company B, and an amendment to the application is made so that Company B is substituted as the applicant, the application is at risk of being found invalid.

In such cases, we recommend that a fresh application is filed. Assignment of such applications or registrations does not appear appropriate, as any assignment may in turn be invalid if the original applicant had no intention to use the trade mark at the time of filing.

In other circumstances, however, an assignment may be appropriate. For example, where a company merely changes name but retains its underlying corporate identity (for example, by retaining the same ACN), it should be possible for a valid amendment to be made to the owner's name. In such instances, any change should be permitted under the Act, and the application or registration should be immune from cancellation.

In other cases, where perhaps only a minor error such as a spelling mistake in the applicant's name has occurred at the time of filing, it would seem that a request to amend such an error or mistake should be permitted, and should not invalidate the application.

If you consider that this case may apply to you, or there is any doubt as to the category into which your particular situation falls, please contact us to seek our advice as to whether any action is required for such matters.

If your circumstances are clearly covered by the factual background in the Crazy John's decision, then we would strongly recommend that you consider re-filing application(s) for the trade mark(s) involved.

Colour trade marks: BP v Woolworths

The Full Court of the Federal Court recently considered in detail the issue of colour trade marks in the case of BP v Woolworths.

The case concerned a number of trade mark applications filed by BP for the colour 'green'.

Woolworths is a major Australian food retailer and it opposed a number of BP's trade mark applications, which were broadly for goods and services related to petrol stations.

One of Woolworth's motivations for opposition was that, since around 1996, it had effectively entered BP's market by operating petrol stations under various Woolworths brands. This store branding also featured the colour green.

BP's applications were subsequently refused by the Registrar (notwithstanding their prior acceptance), following Woolworths' opposition. BP appealed to the Federal Court and was successful in establishing that, based on its extensive use in Australia of the colour 'green', its use of that colour on its service stations was trade mark use, and that its green trade mark was distinctive in fact at the date their trade mark applications were filed. The Federal Court therefore directed that BP's applications proceed to registration.

For a detailed review of the issues involved, please refer to our recent article on this case in the Allens Arthur Robinson Focus: Trade Marks, November 2004.

IP awards for AAR: Chambers Global and Asialaw

For the third year in a row, the London-based publication Chambers Global has ranked Allens Arthur Robinson as the leading Intellectual Property Law Firm in Australia.

Moreover, five AAR partners were ranked in the top nine practitioners in the intellectual property field in Australia.

In November this year, Allens Arthur Robinson was short-listed for the award of Australian IP Firm of the Year, at the prestigious Asialaw Intellectual Property Awards for 2004. Only 10 firms from each jurisdiction covered by the awards were selected for nomination, after extensive consultation with various in-house counsel across the Asia Pacific region.

We take this opportunity to thank all those involved in nominating our firm for these intellectual property law rankings and awards.

Christmas closure dates: IP Australia and AAR offices

Please note that IP Australia's State and Canberra offices will be closed for various periods during the Christmas and New Year public holidays.

The Canberra office of IP Australia will be closed from 25 December 2004 to 3 January 2005 inclusive. The State offices of IP Australia will be closed on 27, 28 and 29 December 2004 and on 3 January 2005. All IP Australia offices will re-open on 4 January 2005.

IP Australia's Receiving Offices will therefore operate on Thursday, 30 December and Friday, 31 December 2004, as these days are not public holidays.

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

AAR will be open for business as usual on all days that IP Australia's State offices are open.

Where possible, please ensure you 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.

We wish all our clients and colleagues around the world a very Merry Christmas, and a happy and prosperous New Year. We look forward very much to working with you through 2005 and beyond.

For further information, please contact:

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