Skip to content.

Home

Allens Arthur Robinson

Intellectual Property Bulletin – April 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 patents, trade marks, designs, copyright and domain names. 

Patents – Micron Technology Inc. v Rambus Inc. Update

In brief: Rambus Inc. is appealing the District Court of Delaware's decision in Micron Technology Inc. v Rambus Inc., which held that the destruction of documents by Rambus rendered the patents in the suit unenforceable against Micron.

By Sarah Matheson, Partner, and Kelly Griffiths, Lawyer

Rambus Inc. (Rambus) has filed an appeal to overturn the decision of Judge Robinson of the District Court of Delaware in Micron Technology Inc. v Rambus Inc. [2009] Civ No. 00-792-SLR, which held that Rambus' patents were unenforceable against Micron Technology Inc. (Micron) because Rambus destroyed evidence relevant to the legal proceedings.

Return to top

The litigation strategy

Rambus is a technology company that sought to expand its business by securing licensing deals in respect of its patented DRAM (dynamic random access memory) technology. To secure licensing arrangements, Rambus devised a litigation strategy to establish a royalty rate and the validity of its patents. At the same time, Rambus implemented a document retention policy and held a number of 'shred days', where documents defined as 'expired' under the document retention policy were destroyed.

Return to top

The Micron proceedings

In response to a demand by Rambus for payment of royalties for alleged infringement of its patents, Micron sought a declaratory judgment that its products did not infringe Rambus' patents. Micron also alleged that Rambus intentionally destroyed documents relevant to the litigation.

The question for the court was whether Rambus intentionally destroyed documents at a time when litigation was reasonably foreseeable and, if so, what sanctions should be imposed to cure any prejudice to Micron. The Judge concluded that litigation was reasonably foreseeable by the time Rambus had articulated the motivation and time frame for the litigation strategy, which included the document retention policy. Accordingly, Rambus knew, or should have known, that a general implementation of the document retention policy was inappropriate because documents destroyed would become material. As such, a duty to preserve potentially relevant evidence had arisen.

The judge found that Micron was materially prejudiced by Rambus' conduct and that the integrity of the litigation process had been impugned.

In determining the sanction, the judge concluded that usual sanctions such as preclusion of evidence were 'impractical, bordering on meaningless', and that the most appropriate course was to declare Rambus' patents unenforceable against Micron.

Rambus has appealed to the US Federal Court of Appeal. Other proceedings in Delaware and California in relation to similar facts involving Rambus and other parties have been stayed, pending the resolution of this appeal.

Return to top

Significance of the Micron case in Australia

The Micron decision does not create precedent under Australian law. However, in Australia, potential litigants are under a duty to retain documents relevant to legal proceedings. The test of relevance is broadly defined as documents which relate to a matter in question in dispute in the proceeding (actual or anticipated). Courts are generally empowered to make orders as the court thinks just and to regulate their own proceedings. The relief that a court may grant for infringement of a patent include an injunction and damages or an account of profits. Such relief is discretionary. Accordingly, it is open to an Australian court to make a similar ruling as in the Micron decision.

No Australian court has yet taken the approach employed in the Micron decision. However, Micron demonstrates the importance of considering the impact of any actual or anticipated litigation when formulating any document policies to ensure the preservation of potentially relevant documents.

Return to top

Patents – Inventorship

In brief: An Australian patent may only be granted to someone who is an inventor, or a person who derives entitlement from an inventor (for example, under the terms of employment, or an assignment)1. Incorrectly designating the inventor(s) can lead to a patent being found invalid2. While such an outcome may please your competitors, loss of a patent is a devastating outcome for ingenuity and innovation. 

By Linda Govenlock, Patent Attorney

Determining inventorship

In Polwood Pty Ltd v Foxworth Pty Ltd3, the Full Court of the Federal Court of Australia affirmed existing general principles for identifying the inventor(s) of an invention that had emerged from decisions of the Australian Patent Office and the Federal Court of Australia. The Full Court also made it clear that when it comes to inventorship, it is a matter of assessing each case on its merits.

For the determination of inventorship, the Full Court applied a two-step approach:

(1) Identify the nature of the invention

The invention is discerned from what is described and claimed in the patent specification. Rather than being elucidated by a rigorous claim-by-claim analysis, the Full Court clarified that the invention or inventive concept is to be identified by reference to the patent specification as a whole, including the claims.

As stated by the Full Court, the body of the specification describes the invention and should explain the inventive concepts involved. While the claims may cover less than the whole of the invention, they define the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept(s) that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements and it may be that different persons contributed to that combination.

(2) Identify the nature of the contribution made by each person

Once the nature of the invention is understood, the next step is to determine those person(s) whose contribution had a 'material effect' on the final concept of the invention4.

Not everyone who contributes to an invention will necessarily be an inventor and not all inventors will necessarily make an equal contribution to the invention. The Full Court observed that the test in this regard is qualitative rather than quantitative, and requires an objective assessment of the nature of the contribution to the invention, rather than an assessment of the inventiveness of the contribution5.

For example, co-inventorship may arise where one person has a general idea for solving a problem but is unable to give effect to the idea, while a second person is able to do so. The relevant question to be asked is whether the invention would have occurred without a person's involvement, the so-called 'but for' test.6  A person may have contributed to a feature of a claim, but they may not be an inventor if the feature is not an essential feature or known from the common general knowledge in the art. Similarly, where a second person's contribution involved merely following the instructions of a first person and required skills well known to those in the art, the second person will not be an inventor.

Return to top

Challenging entitlement

A ground of revocation of a granted patent under the Patents Act 1990 (the Act) is that the patentee is not entitled to the invention7. The Act also provides mechanisms for challenging an applicant's entitlement to an invention disclosed and/or claimed in a patent application prior to grant of the patent.

Section 32 of the Act provides for the resolution of disputes between parties in relation to a patent application before the Patent Office, whereby, following exchange of evidence, the matter is heard by the Commissioner of Patents who may determine in what name(s) the application is to proceed. Under s36 of the Act, a person may seek a declaration from the Commissioner in relation to an invention disclosed in the specification, that the person seeking the declaration is entitled to the invention, or is entitled in conjunction with the current applicant. Under s59 of the Act, a person may oppose the grant of a patent on an application that has been accepted, inter alia, on the grounds that the applicant (i) is not entitled to a grant of a patent for the invention; or (ii) is entitled to the grant of a patent, but only in conjunction with some other person.

There are several avenues available in Australia to challenge an applicant's or patentee's entitlement to an invention disclosed and/or claimed in a patent specification. Correctly identifying and naming inventors on a patent application is vital to establishing rightful entitlement to a patent, and inventorship should be carefully reviewed before filing a patent application. It may also be useful to review inventorship after a patent application has been filed and before a patent is granted, especially if the claims have been amended during the prosecution process.

Return to top

Trade Marks – Nokia Corporation v Liu [2009] FCA 20

In brief: The Federal Court's recent decision in Nokia Corporation v Liu provides an indication of circumstances where the Court may reduce costs orders under the Federal Court Rules in intellectual property cases.

By Nadine Bairle, Lawyer, and David Yates, Partner

Background

In February last year Australian Customs officers seized certain goods bearing 'Nokia' trade marks that had been imported into Australia by Albert Liu. Nokia Corporation (Nokia), was notified of the seizure and subsequently sued Mr Liu for infringement of certain 'Nokia' trade marks (the Nokia Trade Marks) under section 125 of the Trade Marks Act 1995 (Cth).

Nokia claimed that Mr Liu had manufactured (or caused to be manufactured), imported (or caused to be imported), advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Nokia Trade Marks.

In the proceedings, Nokia sought injunctions, declarations, delivery up of all infringing goods and material for destruction, and damages or an account of profits.

Nokia was largely successful and Justice Jessup made various orders by consent against Mr Liu, which included (among others) that he forfeit the goods seized by Customs for disposal; be restrained from infringing the Nokia Trade Marks; deliver up for destruction all infringing goods, catalogues, price lists, brochures and other documents and materials; file and serve an affidavit setting out the full details of the supplier of each product; and pay Nokia nominal damages of $10 for infringment of the Nokia Trade Marks. Nokia was also awarded its costs of the proceedings to date (excluding its costs of the assessment of damages).

Return to top

Nokia's costs of the proceedings

Order 62, rule 36A of the Federal Court Rules provides as follows:

  • If a party is awarded judgment for less than $100,000 on a claim for a money sum or damages, then any costs to be paid will be reduced by one-third of the amount otherwise allowable unless the court or judge otherwise orders: rule 36A(1).
  • If the court or judge declares that a proceeding could more suitably have been brought in another court or in a tribunal, then any costs to be paid will be reduced by one-third of the amount otherwise allowable: rule 36A(2).

Justice Jessup stated that, even though it may be generally accepted that copyright and trade mark cases are appropriately brought in the Federal Court, it is nonetheless within the scope of the policy of rule 36A(1) that costs be reduced in appropriate circumstances, as the principal concern of rule 36A is that small claims should be accompanied by small costs orders.

Taking a broad view of the proceedings, Justice Jessup found that the facts in issue were uncomplicated, Nokia's claims did not involve any degree of complexity, Nokia's pleadings seemed to be in something of a standard form and the proceedings did not throw up any difficult or novel questions of law. As such, and in spite of the fact that Nokia sought remedies other than a claim for a money sum, Justice Jessup refused to exclude the operation of rule 36A(1) and the award for Nokia's costs of the proceedings was reduced by one-third.

Return to top

Trade Marks – BAREFOOT no walk in the park for Gallo and Lion Nathan

In brief: In this appeal8, the Full Federal Court dealt with two key questions: non-use of a trade mark, and whether beer and wine are goods of the same description. The appeal is of significance to trade mark owners generally whose goods are imported into Australia from overseas, and for owners of beer and wine brands more specifically.

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

What it means

It should now be easier for owners of trade mark registrations for wines in class 33 to prevent the use and registration of the same or a similar mark for beer in class 32, and vice versa. It is now also critical for trade mark clearance searching for a wine brand in class 33 to include class 32 marks, and vice versa.

Return to top

The facts and trial judgment

E & J Gallo Winery is the registered owner of the trade mark, BAREFOOT, in class 33 for wines. Michael Houlihan assigned the BAREFOOT registration to Gallo in 2005. Houlihan's USA company, Barefoot Cellars, was licensed to use the trade mark, and sold wines bearing the trade mark to Germany. Wines were imported into Australia from Germany during the non-use period of 7 May 2004 to 8 May 2007 by a third party, without Gallo, Houlihan or Barefoot Cellars' knowledge or direction.

Lion Nathan applied to remove Gallo's BAREFOOT registration on the ground of non-use. Gallo cross-claimed for trade mark infringement based on Lion Nathan's use of BAREFOOT RADLER for a particular 'radler' beer, launched in Australia in January 2008.

At first instance, Justice Flick in the Federal Court found that:

(a) BAREFOOT and BAREFOOT RADLER were deceptively similar trade marks;
(b) Gallo had not used BAREFOOT in Australia during the non-use period, and that the effective date of removal was 27 June 2008;
(c) Lion Nathan's 'radler' beers were not goods of the same description as Gallo's wines; and
(d) Lion Nathan did not infringe Gallo's BAREFOOT registration.

There was no use of BAREFOOT in Australia as the goods from Germany were not 'projected' into Australia by Gallo. Although a number of factors indicating beers and wines are goods of the same description were considered, the trial judge concluded that there were other factors which ultimately meant those goods were not goods of the same description. Even though the marks were of themselves deceptively similar, the trial judge was of the view that consumers were unlikely to be deceived or confused and hence Lion Nathan had a defence to trade mark infringement under section 120(2) of the Trade Marks Act 1995 (Cth).

Return to top

The appeal

Gallo appealed to the Full Federal Court and challenged the trial judge's conclusions at (b), (c) and (d) above. Lion Nathan filed a notice of contention as to (a) and a cross appeal that the effective date of removal of the registration should be 8 May 2007.

On the two broad questions of non-use and whether beer and wine are goods of the same description, the Full Court of Justices Moore, Edmonds and Gilmour found as below, and for the following reasons.

Return to top

Non-use

The Full Court agreed with the trial judge that the question is whether the use in Australia was by the registered owner as a consequence of use by Barefoot Cellars, and that 'projection' of goods into Australia was a key factor. In particular, the Full Court stated:

We think fairly plainly what the Full Court was saying [in Estex v Eastex9 ] was that for there to be use in Australia of the mark by the owner, the owner of the mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade.10

 

No Australian authority was found for the proposition that 'inadvertent, unknown and unintended use' 11 in Australia results in ownership of a mark for the purposes of registration under Australian law.

The Full Court agreed with the trial judge that there had been no 'projection' of Gallo's wines into Australia by the owner of the BAREFOOT trade mark, and hence no use of the trade mark in the course of trade between Gallo and Australia during the non-use period.

Return to top

Goods of the same description

Numerous factors, including the following, were considered relevant, and to 'point convincingly' to the conclusion that beer and wines are goods of the same description:

  • beer and wines are both alcoholic beverages;
  • both goods may be distributed by the same wholesale distributors;
  • radler beer and wines are likely to appeal to the same consumer segment;
  • brewers now market and distribute not only beers but other alcoholic goods; and
  • wine and beer are frequently distributed by the same retailers.

The Full Court considered 'materially less significant' those factors which led the trial judge to conclude that beer and wines were not goods of the same description.

The Full Court therefore disagreed with the trial judge on this issue, and took the view that Lion Nathan's radler beers and wines were goods of the same description.

Return to top

Decision

As the trade marks were deceptively similar and the goods were of the same description, the Full Court took the view that it would be likely that consumers would be deceived or confused by Lion Nathan's use of BAREFOOT RADLER on its radler beers. Lion Nathan could therefore not rely on the defence to infringement under s120(2). The period of infringement was therefore from January 2008 when Lion Nathan launched its radler beers, to the date of removal of Gallo's registration on 27 June 2008. 

Return to top

Designs/Copyright – Full Court dismisses Polo label appeal

In brief: The Full Federal Court late last year dismissed an appeal by Polo/Ralph Lauren against a decision in which an unauthorised importer of genuine Polo t-shirts was found not to have breached copyright in the Polo logo.

By Jim Dwyer, Partner, and Marina Lloyd Jones, Senior Associate

In The Polo-Lauren Co LP v Ziliani Holdings Pty Ltd 12, Polo appealed against the first instance decision of Justice Rares, which was discussed in our May 2008 IP Bulletin. The Full Court dismissed the appeal, finding that the logo was a 'label' and therefore a 'non-infringing accessory' excused from infringement. While not required to do so, the court also considered the applicability of the copyright/design overlap.

Return to top

The label issue

Section 44C of the Copyright Act 1968 (Cth) (the Act) deems there to be no infringement by the unauthorised importation of a copyright work that is, or is on, or embodied in, a non-infringing 'accessory' to an article. Under s10(1), an 'accessory' includes a label affixed to, displayed on, incorporated into the surface of, or accompanying, an article. In determining whether the logo was a 'label' within this definition, the Full Court considered four sub-questions:

Did the trial judge erroneously conclude that 'label' did not include swing and internal tags?

The Full Court rejected Polo's argument that the trial judge, by concluding that the logo was a 'label' because it designated a brand of clothing, had impliedly concluded that swing tags or internal tags could not also fall within the definition. A garment could have more than one type of label.

Must there be a distinction between the label itself and the item labelled?

Polo submitted that the words 'in relation to' in the definition of 'accessory' assumed a conceptual (but not necessarily physical) separation between the label and the article labelled. Conceptual distinctiveness, argued Polo, was not present here as the logo was an 'essential part' of the garments (ie 'A Polo shirt without the Logo is just not a Polo shirt').

The Full Court recognised that the definition of accessory evidenced this assumption in its language, noting the use of the expressions 'affixed to', 'displayed on' and 'incorporated into the surface of' in the definition. The requirement for a conceptual distinction could also be seen in the intention behind the introduction of s44C.

This recognition, however, did not ultimately assist Polo. While the logo was 'very closely associated' with the garments, the two were not 'so inextricably bound up in each other's identity that they have ceased to be distinct'. Proof that the logo was an important element in, or an integral aspect of, the garments was insufficient.

Was the logo primarily decorative or did it perform an identifying function?

Polo argued that a label is generally required to function as a means of identification, and should convey instructions as to the ownership, use or nature of the item. The logo was said not to have this characteristic as its function was primarily decorative. The Full Court disagreed, supporting the primary judge's finding that it had considerable significance in identifying clothing as emanating from the Ralph Lauren group.

Polo also argued that the trial judge had erred in focusing on the 'practical effect' of the logo because it could only have the effect of associating the garments with Polo if consumers first knew of this connection. Without such knowledge, it was merely an image of a rider on a horse with a stick. According to Polo, whether something functioned as a label could not depend on consumers' states of mind.

The Full Court disagreed, finding that a functional test reflected the natural and ordinary meaning of 'label' as it appeared in the Act. While a label could have many functions, at the most basic level it performed an identifying function and, in the context of the Act, would include something that in fact identifies an object. An objective assessment of whether something performed the functions necessary for its characterisation as a label was appropriate, with both the labeller's intention and the understanding of consumers' relevant considerations (though not determinative).

The trial judge had found that the logo in fact identified a connection with Polo and this functional element was sufficient to confirm that the logo was a label for the purpose of the Act.

Did the primary judge err by assimilating a label with a trade mark?

Polo submitted that the trial judge had erroneously equated a label with a trade mark. The Full Court emphasised that the concepts could not have identical meanings, as a label connotes something physical, while a trade mark is an intangible property right. However, there was 'no reason why a label within the meaning of the definition of "accessory" cannot be or contain a trade mark' 13. Where a trade mark was physically incorporated into an article, as the logo had been, it was being used to identify the article with its source and functioned as a label. While trade marks themselves could not be used to prevent the importation of goods where applied with the consent of their owner, where there was copyright in a mark which was physically manifested and incorporated into an article, the copyright work was being used as a label.

Return to top

The Copyright/Design overlap issue

Having deemed the logo a label within the definition of 'accessory', the Full Court considered the parties' submissions on the copyright/design overlap issue, despite not being technically required to do so.

The availability question

Ziliani was alleged to have engaged in secondary copyright infringement, in breach of sections 37 and 38 of the Act, by the unauthorised importation into, and sale in, Australia of articles with actual or imputed knowledge that Polo's copyright would have been infringed had those articles been made in Australia. Polo submitted that the defences available under Division 8 of Part III of the Act (the Overlap Provisions) do not apply to secondary infringement, as sections 37 and 38 are expressed to be '[s]ubject to Division 3', however the Full Court rejected this argument, noting that the word 'only' does not appear after the reference to this division.

Polo also submitted that s77(2) (which relates to the industrial application of a corresponding design) only provides a defence to actual reproduction in, but not importation into, Australia. However, the Full Court held that sections 37 and 38, by requiring that a hypothetical act of manufacture would infringe, deem the importation to have been a making in Australia. All defences to primary infringement were therefore available to secondary infringers.

Return to top

The three-dimensional embodiment question

Polo contended that the statutory history of s74 (which defines a 'corresponding design') reveals that the expression 'visual features of shape or configuration' refers to a three-dimensional design embodied in an article. The Full Court agreed, holding that the amendments effected by the Designs (Consequential Amendments) Act 2003 (Cth) were not intended to alter this position, and that two-dimensional renditions of designs remained outside the scope of the definition.

According to Polo, the logo was neither three-dimensional nor embodied in the garments. Ziliani's submission was that the logo as it appeared on the garments was three-dimensional, being constituted by embroidery that used 784 stitches and protruded slightly from the garment surface.
Ziliani also argued that the words of s74(2) showed that the three-dimensional embodiment could include a design that was 'woven into, impressed on or worked into the product' and that the logo answered that description.

However, the Full Court emphasised that these words did not negate the requirement that the relationship between the corresponding design and the article be one of embodiment rather than application, both because of the language of the section and an absence of any relevant legislative intention. As used in the Overlap Provisions, 'embody' was held to mean to 'give a material or discernible form to an abstract principle or concept' (ie the design). The logo had not been embodied in the garments in the requisite sense (it was unnecessary to consider whether it was also three-dimensional). Had Ziliani failed on the label issue, the court would have found that no defence could be made out under s77.

Polo has sought leave to appeal the Full Court's decision to the High Court.

Return to top

Copyright – Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197

By Megan Nunn, Lawyer, and David Yates, Partner

In brief: The Full Federal Court has found that a clothing design layout may be an original copyright work, rather than a mere idea that cannot be protected under copyright law.

The facts

Elwood Clothing created a t-shirt design known as 'NewDeal' and an associated label known as the 'Vintage Sport Swing Tag'. Both designs were an arrangement of elements that consisted of words, numerals and graphics. Cotton On released a t-shirt and swing tag that were very similar in arrangement to both the 'NewDeal' and 'Vintage Sport Swing Tag' designs. However, the words, numerals, fonts and graphics used in the Cotton On designs were not the same as those used on the 'NewDeal' t-shirt and 'Vintage Sport Swing Tag'.

Return to top

The trial

At first instance, Justice Gordon found that the 'NewDeal' and 'Vintage Sport Swing Tag' designs were drawings that were protectable as artistic, and not literary, works. In doing so, her Honour concluded that the meaning of the designs was visual rather than semiotic.

To determine whether the 'NewDeal' and 'Vintage Sport Swing Tag' designs attracted copyright protection, Justice Gordon considered that the overall layout of the designs was an idea that was not protectable by copyright.

Accordingly, while Cotton On had taken the idea of the layout of the 'NewDeal' and 'Vintage Sport Swing Tag', it had changed the expression of those ideas by changing the words, numbers, colours and fonts. As a result, the Cotton On designs did not make the same visual impression. Justice Gordon concluded, therefore, that Cotton On had taken one integer of a series of integers, where such integers together formed the copyright work. The integer taken was the idea, and this did not constitute a substantial part of the artistic works in the 'NewDeal' and 'Vintage Sport Swing Tag' designs.

Return to top

The appeal

The Full Court disagreed with Justice Gordon's approach. Uncontroversially, perhaps, the preferred approach of the Full Court was to:

  1. identify the work in suit in which copyright subsists;
  2. identify the part taken in the allegedly infringing work; and
  3. determine whether the part taken is a substantial part of the work in suit.

In applying this method in this case, however, the Full Court found that Cotton On had infringed Elwood's copyright in the 'NewDeal' and 'Vintage Sport Swing Tag' designs.

The Full Court upheld Justice Gordon's finding that the designs were artistic works, and accepted her Honour's findings as to which elements of the works had been reproduced by the infringer.

In relation to the issue of substantial part, however, the Full Court noted that the trial judge had erred in excluding what her Honour classified as 'ideas' in determining whether Cotton On had taken a substantial part of the copyright work. Accordingly, the Full Court held that, while Cotton On had changed the words, numbers, devices and fonts, they had taken the layout of the Elwood 'NewDeal' and 'Vintage Sport Swing Tag' designs, which was the expression of the elements that made up the designs. This layout was an important aspect of the original copyright work. Cotton On had, therefore, taken a substantial part of the copyright work.

Return to top

Domain names – WIPO annual report

In brief: The World Intellectual Property Organisation (WIPO) has published its annual report on domain names. The report, released on 16 March 2009, includes a review of disputes in 2008 and outlines some new developments in the cybersquatting arena.

By Rebecca Sadleir, Senior Associate

WIPO administers the Uniform Domain Name Dispute Resolution Procedure (UDRP), a quick and cost-effective dispute resolution procedure for dealing with cybersquatting outside the courts. WIPO's annual report on the UDRP can be found on its website.

New developments
  • Introduction of new gTLDs
    In our Focus: Domain Names of July 2008, we reported on the Internet Corporation for Assigned Names and Numbers' (ICANN's) ambitious plans to launch a large number of new generic top level domains (gTLDs), in what has been described as 'the biggest expansion to the internet in forty years'. These will include brand name gTLDs (eg www.aboutus.brandname), as well as non-brand-specific gTLDs such as .shop, .cars and the contentious .xxx. This has the potential to lead to widespread trade mark abuse, and WIPO has been advising ICANN on ways to safeguard the legitimate interests of brand owners.
    At this stage, WIPO has agreed in principle to administer initial objections to registration of new gTLDs based on trade mark rights. It has also advocated the establishment of a broad-based right for trade mark owners to take action after registration, not only against individual domain name holders, but also against domain name registries whose operation of one of the new gTLDs causes, or materially contributes to, trade mark infringement. ICANN is considering these proposals and we are monitoring developments closely.
  • The 'eUDRP' initiative
    WIPO has also proposed removing the current requirement for parties to file hard copy pleadings, to make the UDRP a completely electronic, paperless process. WIPO anticipates that this will result in significant savings in costs and time, while being environmentally responsible. ICANN is also considering this proposal.

Return to top

Some facts and figures
  • In the 10 years since its launch in 1999, WIPO has received more than 14,000 complaints under the UDRP.
  • Since 1999, an estimated 10 million pages have been filed with WIPO under the UDRP – approximately equivalent to 1000 trees.
  • A record number of complaints – 2,329 – were filed in 2008, representing an 8 per cent increase over 2007.
  • In 2008, almost 30 per cent of cases were settled. Of the remainder, 85 per cent were decided in favour of the applicant, resulting in the disputed domain name being transferred to the trade mark owner.
  • In 2008, domain name disputes under the UDRP took place in 13 languages and involved parties from more than 100 countries. The majority of cases originated from the US and involved .com domain names.
  • 2008 saw disputes across virtually all industries, with the pharmaceutical industry topping the table of number of complaints filed.
  • Overall, Australia lies 9th in the league table of complaints filed, with 270 complaints originating from Australia since 1999. Australia also ranks 8th in the world for numbers of respondents to cybersquatting disputes, with 356 complaints filed against Australian individuals and companies in the past 10 years.

Return to top

Firm news – Dr Dan Wadsworth biography

Allens Arthur Robinson is pleased to welcome Dr Dan Wadsworth to its IP team. Dan is a registered Australian and New Zealand patent attorney and a registered trade marks attorney in Australia. He has a Masters degree (Hons) and a PhD in mechanical engineering, both from the University of Auckland. Dan's PhD thesis investigated the strength of composite aircraft panels subject to in-flight impact damage.

Dan's previous experience includes patent attorney work in two top-tier intellectual property firms in New Zealand and Australia, as well as commercial experience in a company specialising in the field of medical technology.

Dan's focus at Allens is the drafting and prosecution of mechanical-related patent applications for local and overseas clients in the technical areas of mechanical engineering, composite materials, aeronautical and marine engineering, medical devices, and mining technology. Dan also provides advice on a range of other intellectual property rights such as design registration and trade marks, as well as validity and infringement issues as they relate to patent and design matters.

Dan enjoys working with clients to assist in developing strategies for maximising the commercial value of their intellectual property.

Return to top

Firm news – Allens named The Leading Australian Intellectual Property Firm 2009

We are pleased to announce that Allens Arthur Robinson has been named The Leading Australian Intellectual Property Firm 2009 by Managing Intellectual Property at an awards ceremony in London on 31 March 2009.

This follows on closely from Allens being named as the Leading Australian IP Firm 2009 by Chambers Global – The World's Leading Lawyers.

We are delighted to receive such recognition and would like to thank you, our valued clients, for your support throughout the year.

Return to top

Footnotes
  1. Section 15, Patents Act 1990 (Cth)
  2. University of British Columbia v Conor Medystems Inc [2006] FCAFC 154
  3. [2008] FCAFC 9
  4. Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400 [at 405]
  5. JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68
  6. Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241; JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68
  7. Section 138(3)(a) Patents Act 1990 (Cth)
  8. E & J Gallo Winery v Lion Nathan Australia Pty Limited (2009) FCAFC 27 (24 March 2009)
  9. Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1967) 116 CLR 254.
  10. Op cit, Gallo at para 38, page 39
  11. Ibid, at para 47, page 19
  12. [2008] FCAFC 195 per Black CJ, Jacobson and Perram JJ
  13. Para 35

Published 20 April 2009

Return to top

For further information, please contact:

Return to top

Tweet or bookmark with
Tweet this article

What are these?

 

Recent Intellectual Property publications