Our experienced Intellectual Property legal team regularly publishes articles and updates - the full list of publications appears below. If you'd like to be notified when we add new intellectual property publications to the site, please go to our subscription page to sign up for email alerts or, alternatively, you can subscribe to our RSS feed.
Read about our track record in intellectual property law.
- 08 February 2012
Focus: Government response to gene patenting inquiriesThe Federal Government has releaseda response to three different inquiries relating to the patenting of genes and related biological materials. Partner Sarah Matheson, Senior Associate Tom Reid and Vacation Clerk Lauren John report on the response, which has particular significance to biotech industry participants
- 08 February 2012
Audio: Super Bowl yoghurt ad tastes like John Butler TrioA dispute over the use of a John Butler Trio riff in a US television ad which went to air during the Super Bowl has raised issues over the appropriate use of music. Partner Andrew Wiseman spoke to BRR Media about the lawful use of music in advertising
- 03 February 2012
Client Update: 'TV Now' shifts goalposts on copyright holders' rightsThe Federal Court has held that Optus's 'TV Now', which allows users to record and play back free-to-air television programs on various devices, does not infringe the rights of those who own copyright in the television programs. Partner Andrew Wiseman and Summer Clerk Ashleigh Shand report
- 01 February 2012
Audio: Megaupload lessons for cloud computing usersThe recent closure of the Megaupload site has raised some questions about the use of cloud computing services. Partner Niranjan Arasaratnam spoke to BRR Media about the implications of the case and what businesses using or looking to use cloud computing need to do to make sure their data is secure
- 23 January 2012
Audio: Offensive words as trade marksA decision last week approving the trade mark 'Nuckin Futs' has highlighted some of the issues surrounding registering potentially offensive words as trade marks. Partner Sarah Matheson spoke to Boardroom Radio about the way the law and attitudes have changed in regard to this issue
- 20 December 2011
Focus: IP and the transition to the Personal Property Securities ActCompanies and individuals that own, license or hold security interests in intellectual property should be aware that the Personal Property Securities Register will go live on 30 January 2012, ushering in the reforms implemented by the Personal Property Securities Act 2009. Partner Tim Golder, Senior Associate Tom Reid and Vacation Clerk Geoff McGrath look at the transitional arrangements and the implications of the new regime
- 04 November 2011
Focus: Appeal decision shows new approach to 'fair basis'A recent decision of the Full Court of the Federal Court will have a major flow-on in relation to the issue of patent validity in Australia. Partner Richard Hamer, Senior Associate Louise Brunero and Law Graduate Claire Agius report on the successful appeal by Alphapharm, Generic Health and Sigma that will open the market to products in competition with Pfizer's highly successful anti-depressant, Efexor XR (venlafaxine hydrochloride).
- 18 October 2011
Focus: Google Ads not misleading or deceptiveIn a decision that provides a useful analysis of what constitutes misleading and deceptive conduct in online advertising, the Federal Court recently dismissed the Australian Competition and Consumer Commission's allegations that Google, by publishing 'Sponsored Links' with its search results, had engaged in misleading and deceptive conduct. The ACCC has appealed the court's decision. Partner Miriam Stiel and Lawyer Chris Govey discuss the court's reasons and the possible implications for your business
- 17 October 2011
Focus: Business names registration to be overhauledA new national register for business names is to be established, to replace the inconvenient and costly state-based systems that are currently in operation. Partner Tim Golder and Law Graduate Claire Agius report
- 21 September 2011
Focus: Medical patent fatally wounded by 'fundamental' lack of clarityIn a 'rare case' in patent law, a fundamental lack of clarity concerning the performance and function of an aspect of the claimed invention doomed the relevant claims of the patent to invalidity. Partner Sarah Matheson, Senior Associate Tom Reid and Law Graduate Courtney McLennan report on this recent case
- 16 August 2011
Focus: Coffee appeal grounds upheldThe Full Court of the Federal Court has overturned an earlier decision that servingware maker Bodum's reputation in its 'Chambord' coffee plunger was 'distinctly tied' to its Bodum name. Partner Tim Golder and Senior Associate Anna Thorburn report on this latest decision
- 04 August 2011
Audio: Tablet patent warsA high-stakes patents war between the world's leading smartphone and tablet companies is currently taking place. Partner Chris Bird spoke to Boardroom Radio about the issues surrounding the current battle and what it means for consumers
- 05 July 2011
Client Update: Seafood v Bass - a commonsense approachThe Full Federal Court has unanimously overturned a controversial decision concerning patent infringement, holding that commonsense should prevail when approaching the construction of patent claims. Ordinary words in claims should be given their plain and ordinary meaning, as a person skilled in the art would understand them. Partner Chris Bird and Senior Associate Lester Miller report on a case thatwill be welcome news topatentees
- 01 July 2011
Focus: Wild wild Web - securing prime Internet real estate and protecting pre-existing trade marksEarly next year, the domain name frontier will open up and eligible entities will be able to apply for their own generic top-level domains, presenting significant opportunities and challenges for businesses. Partner Tim Golder, Senior Associate Jesse Gleeson, Trade Marks Attorney Carissa Apps and Law Graduate Andrew Wilcock look at the issues
- 18 May 2011
Client Update: Warning! Your brand may be associated with adult content!xxx domain names will be available for registration in early September. While .xxx domain names are intended for adult content, trade mark holders in other industries will be able to take advantage of a 'sunrise period' to defensively register their trade marks so as to remove the risk of brand-jacking and cyber-squatting. Partner Andrew Wiseman, Senior Associate Jesse Gleeson and Law Graduate Andrew Wilcock look at what is involved
- 05 May 2011
Focus: IceTV's legacy lives on in 'dynamic' copyright caseAlthough recently tested in the High Court, the issue of whether copyright exists in a compilation remains difficult to define and ultimately involves a consideration of intellectual input. Partner Tim Golder and Law Graduate Courtney McLennan look at a case where the Federal Court displayed a certain latitude in finding the existence of originality.
- 05 April 2011
Focus: Major IP reforms under considerationIP Australia is currently considering draft legislation that proposes some major changes to, and developments in, IP protection in Australia. This will include consideration of submissions made by all interested stakeholders over recent weeks. In this article, Partner Trevor Davies and PTA Technical Assistant Sean Blasdall highlight some of the key features covering patents, and Partner Tim Golder and Senior Associate Anna Thorburn highlight some of the key features covering copyright, trade marks and designs
- 04 April 2011
Focus: Final laugh in Kookaburra copyright case?The Full Court of the Federal Court has rejected the appeal from an earlier decision that found Men At Work's hit song Down Under infringed the copyright in the popular folk tune Kookaburra Sits in the Old Gum Tree. EMI's liability for the authorisation of infringement is yet to be determined. Partner Miriam Stiel and Law Graduate Tracy Lu report on this latest decision
- 13 January 2011
Focus: Optical 88v. Optical 88A recent Federal Court decision was a pyrrhic victory for the applicant, whose success in establishing that the respondent's marks were deceptively similar to its registered trade marks was overridden by a number of defences and a successful action by the respondent to have the trade marks removed for non-use. Partner Tim Golder and Lawyer Nadia Guadagno look at a case which is significant as it held that a trade mark may be infringed by taking only an essential element of the mark, and that 'use' of a trade mark may be established by a relatively small amount of promotional activity
- 17 December 2010
Focus: Full Court rules White and Yellow Pages not 'original literary works'In a landmark copyright decision, the Full Federal Court has upheld a decision that copyright in both the White Pages and the Yellow Pages directories was not made out because computer programs, rather than human authors, had done the crucial work of arranging the information and producing the particular form of its expression. Partner Jackie O'Brien and Law Graduate Henry Fraser report.
- 02 December 2010
Audio: Senate Inquiry into gene patentsA Senate committee has released its long-awaited report into gene patents. Partner Trevor Davies spoke to Boardroom Radio about the report's major findings, as well as a Private Member's Bill introduced into the Senate that could have serious consequences for the Australian biotech industry
- 25 November 2010
Focus: .YOURBRAND domain name applications starting soonAs the opening for applications for the new generic top level domain names (eg .YOURBRAND) draws closer, Partner Tim Golder, Senior Associate Jesse Gleeson and Law Graduate Nadia Guadagno look at the proposed final version of the Applicant Guidelines recently released by the Internet Corporation for Assigned Names and Numbers and recommend that companies start preparing now
- 17 November 2010
Focus: New code for pharmaceutical 'wholesalers'Businesses that handle, store and distribute certain medicines at the wholesale level should be aware of new standards about to be released by the Therapeutic Goods Administration. Partner Sarah Matheson, Senior Associate Ric Morgan and Lawyer Harry Evans report on the new Code of Good Wholesaling Practice for Medicines which provides additional guidance for the supply of pharmaceuticals beyond the Code of Good Manufacturing Practice
- 10 November 2010
Focus: Amendments pop cork on new GIs and traditional expressionsRecent amendments to the Trade Marks Act 1995 (Cth) now make provision for the amendment of trade mark registrations affected by the inclusion of new EU geographical indicators and traditional expressions on the Register of Protected Names. Trade Mark Attorney Carissa Apps and Senior Associate Mark Williams report on the effect and implications of these changes
- 25 October 2010
Food Law Bulletin - October 2010In this edition, we look at the issue of the mandatory display of nutritional information on fast food; a new beef labelling system in NSW; misleading claims about extra virgin olive oil; colour as a trade mark on food labelling; and establishing a product's reputation for a successful trade mark opposition
- 19 October 2010
Intellectual Property Bulletin - October 2010Our intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments regarding copyright, trade marks, patents and anti-counterfeiting
- 10 September 2010
Audio: No copyright in headlinesThe Federal Court this week ruled that there is no copyright in newspaper headlines. Partner Miriam Stiel speaks to Boardroom Radio about the implications of this decision for media companies and for those who compile information
- 30 August 2010
Focus: Personal property securities reforms and intellectual propertyThe far-reaching personal property securities reform is due to come into force in May 2011 and companies with significant intellectual property assets will be affected by the sweeping changes the new legislation will bring to Australia's commercial law. Partners Diccon Loxton and Tim Golder, Special Counsel Rebecca Sadleir and Senior Associate Robyn Chatwood report on how the changes will affect IP owners
- 15 July 2010
Focus: The domain name floodgates are about to open!It will soon be possible for companies to register their own generic top level domain names, presenting an unprecedented opportunity for trade mark holders. However, there are significant technical requirements and costs involved and the number of domain name spaces that cybersquatters could use to capitalise on other people's trade marks could be significantly increased. Partner Tim Golder, Senior Associate Jesse Gleeson and Law Graduate Nadia Guadagno report
- 08 July 2010
Focus: Court decision brings cold comfort to franchisorA recent Federal Court decision that a franchisor engaged in unconscionable conduct towards its franchisees provides useful guidance to franchisors. The court found that the franchisor abused its position of strength to impose significant increases in fees payable by its franchisees. The case also examined the legality of a franchisor withholding its consent to assignment of a franchisee's interest unless the new franchisee executed a franchise agreement which gave the franchisor additional benefits. Partner Tim Golder, Senior Associate Robyn Chatwood and Law Graduate Ben Mee discuss the implications of the court's decision
- 07 July 2010
Audio: Men at Work lose 5% over KookaburraThe Federal Court has ordered rock band Men at Work and its record label EMI to pay Larrikin Music 5 per cent of earnings from the iconic song Down Under over the illegal use of a riff from a nursery rhyme. Partner Miriam Stiel speaks to Boardroom Radio about the decision and whether it has created a new precedent for musicians and music labels
- 25 June 2010
Audio: Whiskas purple trade mark allowedMars Australia has recently secured trade mark protection for a particular shade of purple, which it refers to as 'Whiskas Purple', for cat food. Partner Tim Golder speaks to Boardroom Radio about the case and the difficulties and consequences of obtaining trade mark protection of colours
- 22 June 2010
Focus: New Code of Good Manufacturing Practice for therapeutic goodsThe Code of Good Manufacturing Practice applicable to all manufacturers of medicines, including manufacturers of active pharmaceutical ingredients, will be updated from 1 July 2010. Senior Associate Ric Morgan and Law Graduate Saul Lazar look at what this entails
- 10 June 2010
Focus: Synonyms - a shortsighted attempt to avoid copyright infringementThe Federal Court has granted an interlocutory injunction restraining the use and publication of an advertising campaign. The decision is significant as it was held that there can still be copyright infringement where the same expression of ideas has been adopted albeit through the use of synonyms. Partner Tim Golder and Law Graduate Nadia Guadagno look at this important decision.
- 08 June 2010
Client Update: Sun sets on sunrise period for .co domain names.co domain names will soon be available for registration.Until 10 June 2010 some owners of registered trade marks can take advantage of a 'sunrise period' to submit a priority registration application. Partner Tim Golder and Senior Associate Jesse Gleeson look at what is involved.
- 07 June 2010
Focus: Franchising Code of Conduct changesThe Federal Government has released legislation amending the Franchising Code of Conduct that implements many of the Government's Expert Panel recommendations following its examination of franchising and unconscionable conduct provisions in the Trade Practices Act 1974.In short, there will be a greater burden of disclosure on franchisors. Partner Tim Golder and Senior Associate Robyn Chatwood discuss the changes.
- 24 May 2010
Focus: Gallo's Barefoot beats Lion NathanThe High Court recently upheld an appeal against the removal of a word mark from the Trade Marks Register for non-use. Central to the High Court's decision was the finding that for there to be use of a mark in Australia, the owner need not have knowingly projected into Australia the goods to which the mark was applied. Senior Associate Peter Ryan and Lawyer Katherine McMahon look at this important case and its implications.
- 29 April 2010
Focus: Food lawWe look at the consequences of inaccurate product packaging claims in two recent cases; new US fast food nutrition labelling laws and the likelihood that similar legislation will be introduced in Australia; a recent case involving two similarly branded enhanced water products and the last instalment in the Kit Kat shape mark saga
- 15 April 2010
Focus: 'Fast tracking' domain name and trade mark disputesA recent Federal Court 'Fast Track List' decision confirmed that use of a trade mark in a domain name, along with use of the trade mark on associated web sites, can constitute trade mark infringement. This list is an increasingly important part of a trade mark owner's arsenal in dealing with trade mark infringement and misuse of domain names. Partner Tim Golder and Senior Associates Jesse Gleeson and Mark Williams report
- 13 April 2010
Intellectual Property BulletinOur intellectual property lawyers and patent and trade marks attorneys provide an update on the latest cases and legislative developments regarding intellectual property - including passing off, confidential information, patents, trade marks and copyright
- 09 April 2010
Focus: Changes continue for therapeutic goods regulationSome amendments under the Therapeutic Goods Amendment (2009 Measures No. 2) Act 2009 (Cth), the third in a series of legislative measures affecting therapeutic goods legislation, have recently commenced, with others coming into effect on 1 July 2010. The amendments affect scheduling procedures, the inclusion of medical devices in the Australian Register of Therapeutic Goods, advice on genetically modified organisms, and advertising and labelling. Partner Sarah Matheson and Lawyer Nikki Macor report
- 05 March 2010
Focus: Changes to unconscionable conduct laws and Franchising Code of ConductThe Federal Government has released the report of the expert panel appointed to examine proposals for regulation of the unconscionable conduct provisions in the Trade Practices Act 1974 (Cth), and agreed to clarify the provisions, and consider amending the Franchising Code of Conduct to require greater disclosure about franchise agreements and their risks. Partners Carolyn Oddie and Tim Golder and Senior Associates Robyn Chatwood and Alexander Gelis report
- 19 February 2010
Client Update: New tax agent laws may catch franchisors' services to franchiseesNew Federal Government laws, which commence on 1 March 2010, will require franchisors to register as an agent with the Tax Practitioners Board if they provide tax or business activity statement services assisting franchisees to meet obligations under tax laws such as those for GST, PAYG and FBT. Partner Tim Golder and Senior Associates Robyn Chatwood and Marc Johnston report
- 11 February 2010
Focus: Database copyright in turmoil- Judge points to CanberraA single judge of the Federal Court has held that copyright does not subsist in the White Pages and the Yellow Pages. Partner Jackie O'Brien and Lawyer Gary Lo report on a decision that has important ramifications for the copyright in compilations of factual information
- 08 February 2010
Focus: Copyright infringement of well-known musical workA Federal Court ruling that Men At Work's hit song Down Under infringed the copyright of popular folk tune Kookaburra sits in the old gum tree recognises that infringement occurs where a substantial part of a copyright work is reproduced, even if it does not amount to a substantial part of the other work. Partner Jim Dwyer and Lawyer Louise Chau report on the case.
- 08 February 2010
Focus: ISPs off the hook - for nowA highly anticipated Federal Court decision, finding that iiNet had not authorised copyright infringements committed by users of its services, has been handed down. This case has attracted global interest, and is the first in the world of its kind to reach hearing and judgment. Partner Andrew Wiseman and Lawyer Amanda Parks report.
- 04 February 2010
Audio: iiNet wins landmark caseThe Federal Government has handed down a landmark decision today which found that Internet service provider (ISP) iiNet was not liable for copyright infringements that occur when people use their service to download film and television content. Partner Andrew Wiseman speaks to Boardroom Radio about what this decision means for ISPs and content owners
- 18 December 2009
Intellectual Property BulletinOur 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
- 15 December 2009
Client Update: Extensions of term for pharmaceutical patents: the latest wordThe Full Federal Court's recent decision concerning the availability of extensions of term for pharmaceutical patents, particularly those claiming enantiomers, stands, following the High Court's rejection of a special leave application. Senior Associate Alexia Mayer reports
- 06 November 2009
Client Update: Government announces changes to the Franchising Code of ConductThe Federal Government has announced its response to the Report into the Franchising Code of Conduct by the Parliamentary Joint Committee on Corporations and Financial Services, and foreshadowed its changes to the regulation of franchise agreements. Partner Tim Golder and Senior Associate Robyn Chatwood report
