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Intellectual Property Bulletin – September 2006

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, copyright, domain names and related developments.

 

Patents – Business method patents – pondering the intangibles

In brief: The Full Federal Court's decision in Grant has the potential to impact on patent law in Australia.

By Chris Bird, Partner

We reported in Focus: Patents - July 2006 on the recent Australian Full Federal Court decision regarding the patentability of so-called 'business methods' (Grant v Commissioner of Patents [2006] FCAFC 120).

The question of whether – and in what circumstances – business methods can be validly protected by patent is one which has, over recent years, occupied practitioners, patent offices and courts in many jurisdictions around the world, and which has received extensive media coverage.

The Grant case seemed to make clear that an abstract method relating to a business, commercial or financial scheme cannot satisfy the definition of a 'manner of manufacture', which is a requirement for all inventions sought to be patented under the Patents Act 1990 (Cth). While many may agree with the ultimate outcome in this particular case, denying protection to an invention defined by no more than a series of financial and legal steps to be taken to protect an asset, the decision may well have broader repercussions on validity and patentability of inventions in other areas of business and industry. In particular, before the Grant decision, it was somewhat unclear in Australia whether or not a business method (or indeed any method) had to be embodied in software in order to be considered proper subject matter for a patent.

In our Focus: Patents - September 2006, we examine the potential impact of the Grant decision on patent law in Australia, and draw comparisons with the corresponding regimes in Europe and the United States.

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Patents – Subsequent patents must meet criteria for patentability

In brief: A recent decision by the Full Federal Court of Australia in Merck & Co Inc v Arrow Pharmaceuticals Limited [2006] FCAFC 91 has confirmed an earlier decision that dosing regime inventions must meet all patentability criteria. If an earlier patent covers a therapeutic compound, a later filed dosage regime patent cannot validly claim a way of using the compound for its known properties to treat a particular disease by a known method of administration to bring about the same therapeutic effect disclosed in the earlier patent. 

By Megan Page, Lawyer

The appellant (Merck) was the owner of Australian patent No 741818, entitled 'Method for inhibiting bone resorption' (the patent). The respondent (Arrow) had commenced proceedings under section 138 of the Patents Act 1990 (Cth) (the Act) seeking orders that seven of the claims of the patent be revoked as they were invalid. The primary judge revoked the claims in question.

The appeal was limited to claims 1 to 3. These claims were directed to a method of treating or preventing osteoporosis using alendronate, a drug which was already known to treat the disease. Claims 1 and 2, but not 3, specified a defined dosage of the drug, which was to be orally administered at weekly intervals. Merck asserted that the novel feature of these claims was dosing at weekly intervals.

The appeal was confined to two questions. The first was whether the primary judge erred in finding that the invention was not a patentable invention as the claims did not constitute an invention or a manner of manufacture as required under the Act. The second was whether the primary judge erred in finding that the claims lacked novelty having regard to articles appearing in an industry publication, Lunar News, which was published by a US company that specialised in bone densitometry. The articles referred to the class of drugs, bisphosphonates and, in particular, alendronate.

The Full Court confirmed the primary judge's decision on both issues. On the issue of whether the claims defined a manner of new manufacture, the Full Court held that, because the specification disclosed no new substance, no new characteristic of a known substance, no new use and no new method, there was no manner of new manufacture.

On the issue of whether the claims were anticipated, Merck argued that the articles did not form part of the prior art base, or alternatively, that they did not provide sufficient disclosure of the alleged invention. The Full Court rejected those arguments and held that, despite the apparent harshness of the novelty rule, 'an Australian patent may now be defeated by reason of some publication which, in reality, nobody in Australia had the remotest possibility of being aware of before the priority date'. Further, although the first Lunar News article stated that the particular dosage regime 'needs to be tested', the Full Court held that this did not mean that the disclosure was insufficient. Accordingly, the dosage regime was clearly conveyed in the article.

This decision reinforces the need for applicants to ensure that patents and applications directed to methods of treatment using a known drug meet the criteria of patentability set out in the Act. 

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Patents – Official review of Australian Innovation Patent System

In brief: Following a public consultation process, IP Australia (the government agency responsible for administering patent rights) has recently published a report on its review of the innovation patent system in Australia.

By Chris Bird, Partner and John Landells, Technical Assistant

The system was introduced in 2001 to replace the petty patent system, and was tailored for small-to-medium enterprises by providing a faster and lower-cost mechanism for granting patents with a lower threshold of invention. The shorter term of protection of eight years and a limit to five patent claims was intended to be particularly suited to incremental inventions which may expect a relatively short commercial life. The system owes its speed to the grant of the patent after an initial formalities examination only, with a substantive examination and 'certification' only being necessary to enable the owner to enforce the granted patent.

In general, the IP Australia report concludes that the innovation patent system has been a success. Although it finds the cost difference over the standard patent process to be marginal, the innovation patent system has been found to be significantly faster, and its operation is believed to be largely meeting the original policy intent. Annual applications for innovation patents are double the corresponding numbers for the old petty patent system, with 66 per cent of applications being filed by individuals. The technology areas dominating the filings include consumables, engineering fields (particularly building and mining), information technology and business methods.

Interestingly, the report reveals that about 7 per cent of innovation patent filings appear to represent strategic activities by applicants, probably to obtain speedy patent grant for higher-level inventions while equivalent standard patent applications remain pending.

The report also finds that there appears to be some confusion over the rights provided by an uncertified granted innovation patent, and as a result IP Australia plans to embark on a public awareness program.

In summary, the report recommends to the Federal Government that the innovation patent system should remain unchanged, at least for the time being. It therefore looks likely that Australia will retain its second-tier patent regime. This is a good thing for innovators, both local and overseas, as it provides an additional option for intellectual property protection. For patent practitioners, though, the most interesting aspect will no doubt be the developing case law on precisely what constitutes an 'innovative step' and how this will in practice relate to the well-understood (but still perennially slippery) concept of 'inventive step'.  

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Patents – Episode V: The Lock Strikes Back

In brief: The Lockwood and Doric battle continues. The Australian High Court recently granted special leave and round five of this battle between the door lock duo has just been heard.

By Chris Bird, Partner and Matt Zaba, Articled Clerk

We reported earlier episodes of this matter in Intellectual Property Bulletin - March 2004 and Focus: Patents, Designs and Trade Marks - April 2005.

In the previous High Court challenge, the court found that the claims in Lockwood's patent were fairly based on the specification. After having been sent back to the Full Federal Court, Lockwood received an adverse result on the question of obviousness. Lockwood sought special leave to appeal the Full Federal court's decision in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 3) (2005) 226 ALR 70. Acting Chief Justice Gummow and Justice Crennan granted leave on two grounds. Firstly, visitation of the Full Federal Court's conclusion that that primary judge had failed in his consideration of common general knowledge. Secondly, to determine whether an implied corollary admission gained from the patent specification has the ability to negate inventiveness or not.

We will report further once the decision is handed down.  

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Trade Marks – No 'person aggrieved'

In brief: The recent case of Ostrowski-Meissner v Registrar of Trade Marks [2006] FCA 951 presents an unusual set of circumstances in the context of an appeal from a decision of the Registrar of Trade Marks to remove a trade mark from the Register of Trade Marks on the grounds of non-use. By the time the appeal was heard, there was no longer any person 'aggrieved' by the fact that the mark was registered. In allowing the appeal,  the Federal Court affirmed the fundamental importance of a 'person aggrieved' in an application for removal for non-use.

By Claudia Mackie, Lawyer

Background

Bio-Life Marketing Sdn Bhn had originally applied to have Ostrowski-Meissner's trade mark, BIO-LIFE, removed from the Register on the ground that the mark had not been used in Australia for a continuous period of three years. Ostrowski-Meissner failed to discharge the onus placed on him to show why the trade mark should not be removed from the Register, and as a result the Registrar directed that the BIO-LIFE mark 'be removed from the Register unless within one month from the date of this decision the Registrar is served with a copy of a notice of appeal'.

Ostrowski-Meissner filed a notice of appeal within the time stipulated by the Registrar, however it was one day outside the time stipulated in Order 58 Rule 4(2) of the Federal Court Rules for the filing of a notice of appeal. The appeal was subsequently discontinued, by consent, in so far as it related to Bio-Life Marketing. However, despite the settlement of the dispute between the parties, the Registrar was concerned by the apparent uncertainty raised by the original decision, which remained on record. Accordingly, it was decided that the appeal should proceed.

On appeal

Before considering the grounds of the appeal, Justice Stone commented that the function of the Federal Court in an appeal of this kind was to conduct the appeal as a rehearing of the matter, and to consider the applicant's submissions in relation to the circumstances that presently exist and the evidence presently before the court.

Bio-Life Marketing was, with its consent, no longer a party to the proceedings. Therefore, there is presently no person 'aggrieved' by the fact that the mark is registered. While Justice Stone accepted that the expression 'person aggrieved' has no technical meaning and is to be 'liberally construed', the fact that there was no person presently challenging the appearance of the trade mark on the Register was sufficient basis upon which to uphold the appeal. Further, as the appeal could be resolved on this ground, it was not necessary to consider other grounds. Therefore, the appeal was allowed and the original decision of the Registrar was set aside.

This case demonstrates that an application pursuant to section 92(1) of the Trade Marks Act 1995 (Cth) to have a trade mark removed from the Register for non-use cannot be sustained in the absence of a 'person aggrieved' by the fact that a mark is registered. Interestingly, the proposed changes to the Trade Marks Act (see Legislative Developments in this edition of the IP Bulletin for further details) will remove this requirement for eligibility in non-use applications. 

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Trade Marks – Rocky road for retailers following COLORADO No 2

In brief: Justice Finkelstein's second judgment in Colorado Group Limited v Strandbags Group Limited (No 2) [2006] FCA 880, concerning the use of COLORADO, deals with important issues of proprietorship, goods of the same description, trade channels, and retailing of goods. 

By Tim Golder, Partner, and Peter Ryan, Trade Marks Attorney

Overview

For a detailed review of the original Federal Court decision - Colorado Group Limited v Strandbags Group Limited [2006] FCA 160 - go to Intellectual Property Bulletin - April 2006. In brief, the original decision found the Colorado Group was proprietor of COLORADO for backpacks through use of COLORADO combined with a 'mountain device' (the Combined Mark), and that Strandbags had infringed Colorado Group's Combined Mark by use of COLORADO on backpacks. Issues to be decided were proprietorship and infringement of COLORADO for bags, wallets and purses.

The decision

Justice Finkelstein found that the Colorado Group was not the proprietor of the word mark COLORADO for bags, wallets and purses, by use of the Combined Mark. Neither COLORADO nor the mountain device components created 'separate and distinct' commercial impressions, and so did not function as separate marks. Key questions were when and how Strandbags' use of COLORADO commenced.

Strandbags' use of COLORADO on shopfronts was found not to be trade mark use in relation to the goods sold in its shops. The court found that average consumers would not consider a shop name to be a 'badge of origin' for those goods. However, Strandbags' use of COLORADO on invoices, swingtags, and cards inserted into goods was, or might be, considered trade mark use. That use pre-dated Colorado Group's use of COLORADO alone.

Justice Finkelstein next considered whether bags, wallets and purses are 'goods of the same description' as backpacks. He found that the different nature and uses of the goods meant they were not 'of the same description'. He also commented that, in his view, the test of whether the goods were available through the same trade channels was no longer a very helpful line of enquiry in many cases due to the preponderance of large retailers that stock a niche variety of goods.

Finally, the court considered whether retailing of bags, wallets and purses was a service 'closely related' to goods being backpacks. The court found that as the goods were not 'goods of the same description' as backpacks, the services of selling those different goods were not 'closely related' to backpacks.

Implications

The decision has significant implications for retailers. It questions generally accepted views as to whether the service of selling goods constitutes use of the store name as a trade mark for those goods, and whether the trade channels through which goods are sold should be taken into account when considering if goods are 'of the same description'. 

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Trade Marks – No monopoly in McFamily trade marks

In brief: In McDonald's Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (2 August 2006), the Registrar of Trade Marks dismissed an opposition by McDonald's to the registration of MCBRAT for clothing, finding that McDonald's reputation in its 'family' of 'Mc' marks does not extend to all goods and services.

By Tim Golder, Partner, and Peter Ryan, Trade Marks Attorney

Overview

For background on this case, go to Intellectual Property Bulletin - November 2005. In brief, McBratney commenced sponsorship of the Brisbane Irish Rugby Football Club in 2004. MCBRAT was developed as an abbreviation of McBratney's surname, and appeared on players' shorts. At the time the application was filed there were plans to expand the range of goods on which the mark was to be displayed. McDonald's opposed on a range of grounds, relying on a number of prior registrations for McKIDS and McBABY for clothing, and various unregistered 'Mc' marks.

Reasons for the decision

As the goods were similar to those contained in McDonald's McKIDS and McBABY registrations and McDonald's had earlier registrations and use, the critical question was whether the marks were deceptively similar.

After considering the well-known tests of deceptive similarity and comparisons of marks, the hearing officer found that, despite McDonald's reputation in its family of 'Mc' and 'Mac' marks, there was no real tangible chance of the relevant buying public being confused. Significantly, 'brat' is a pejorative word, whereas 'baby' and 'kid' are not, and hence 'brat' is not part of the same family of 'Mc' and 'Mac' marks. Additionally, the buying public is not likely to see MCBRAT as a member of the family of 'Mc' and 'Mac' marks, particularly as there is sufficient usage in the market of words using the prefix 'Mc' which do not have any direct relevance to McDonald's and so are not likely to be considered connected to McDonald's in the minds of the public. Finally, previous successful oppositions by McDonald's in relation to 'McSalad', 'McFresh', 'McBaby' and 'McChina' were not at odds with the view in this case, as those prior oppositions involved words which consumers would expect to be used by McDonald's. Accordingly, the hearing officer found that the marks were not deceptively similar under section 44 of the Trade Marks Act 1995 (Cth) (the Act).

The hearing officer applied similar considerations in relation to s60 of the Act (dealing with reputation). After reviewing the requirements under that section, the hearing officer concluded that even though McDonald's has a considerable reputation in Australia in its family of 'Mc' and 'Mac' trade marks, that reputation alone was not sufficient to establish that ground. Various other grounds were relied upon by McDonald's, which were also dismissed by the hearing officer.

Decision

As none of the grounds of opposition were established, the hearing officer directed that the application proceed to registration within one month of the date of the decision, in the absence of an appeal by McDonald's. McBratney had previously filed non-use applications against registrations for McKIDS and McBABY, presumably as a defensive action in case their opposition was unsuccessful, and opposed a recent application for McKIDS. Although they raise different issues to those in this opposition, we will monitor those matters and report in future editions.

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Trade Marks – Federal Court doesn't 'go wacko' for Whackos

In brief: In Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767, the Federal Court performed a highly detailed analysis of the aural and visual aspects of competing marks to determine whether a mark should be registered.

By Andrew Cameron, Lawyer

Effem has the registered trade marks SCHMACKOS and DOGS GO WACKO FOR SCHMACKOS. Wandella applied for registration of the mark WHACKOS in the same class as Effem's marks. Effem unsuccessfully objected to registration, claiming Wandella's mark was substantially identical with, or deceptively similar to, Effem's, or that Wandella's mark would be likely to deceive or cause confusion because of the reputation acquired by Effem's marks. Effen appealed the decision to the Federal Court, where it was heard by Justice Moore.

Justice Moore considered whether Wandella's mark was deceptively similar to Effem's, and performed an analysis of the manner in which each word was articulated by the mouth. SCHMACKOS was held to be a more complex sound, based on the composition of the word and the way it is enunciated. SCHMACKOS was also held to be more visually complex. Therefore Wandella's mark was not deceptively similar as it was significantly different aurally and visually notwithstanding the common second element – 'acko'.

Justice Moore then considered Effem's whole registered mark DOGS GO WACKO FOR SCHMACKOS. It was submitted that, in Effem's mark, the total phrase derives the whole of its force from the word WACKO. The word WACKO was said to be a powerful component of Effem's mark, which would be retained in the memory of the relevant consumer and would be recalled when Wandella's mark was seen.

It was held that while there were no common law trade mark rights in GO WACKO (by itself), those words are a significant and distinctive element in Effem's mark. The word WACKO plays an important role by giving colour to the whole expression. One likely way of speaking the phrase is to divide it into two parts, ending the first part with WACKO. Spoken this way, WACKO assumes comparative significance aurally, and would be recalled by consumers as associated with Effem's products.

It was therefore held that Wandella's mark WHACKOS was deceptively similar to Effem's mark DOGS GO WACKO FOR SCHMACKOS. The application to register Wandella's mark WHACKOS was therefore ordered to be refused. 

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Trade Marks – Latest trade mark 'colour case' decision

In brief: Hot off the press is the Full Federal Court's decision in Woolworths Limited v BP plc [2006] FCAFC 132 (4 September 2006), the latest trade mark 'colour case' in which Woolworths successfully appealed the primary judge's ruling that BP could register the colour green as a trade mark.

By Tim Golder, Partner and Rosie Hooper, Articled Clerk

The ruling covers a number of important issues, including the scope of an applicant's ability to amend trade mark applications, prior use of a colour mark to establish distinctiveness and the power of the Appellate Court to rectify the Register of Trade Marks.

See Focus: Trade Marks - September 2006 for detailed coverage of this decision.

For background on this case go to Intellectual Property Bulletin - June 2006 and Focus: Trade Marks - November 2004. 

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Trade Marks – Battle over vodka trade marks

In brief: A significant trade mark matter, part of a worldwide dispute, is currently before the Australian Federal Court.

By Jackie O'Brien, Partner and Carla Degenhardt, Senior Associate

Allens Arthur Robinson is acting on behalf of two Russian entities, the Federal State Enterprise Sojuzplodoimport (FKP) and the Federal Treasury Enterprise Sojuzplodoimport (FGUP), in relation to Federal Court proceedings for the recovery of the trade marks STOLICHNAYA and MOSKOVSKAYA in Australia.

FKP and FGUP have alleged that in 1992, following the collapse of the USSR, a private company was incorporated in Russia as VAO Sojuzplodoimport (VAO), which asserted, incorrectly, that it was the legal successor of a State-owned entity which owned a number of famous Russian vodka trade marks, including STOLICHNAYA and MOSKOVSKAYA. FKP and FGUP have also alleged that VAO succeeded in having a number of trade mark registrations transferred to VAO on the basis of fraud, false suggestion or misrepresentation within the meaning of the Australian Trade Marks Act 1995 (Cth), before assigning those trade marks to a related entity, Spirits International NV.

This matter is part of a worldwide dispute and the outcome will be of great interest, given the value of the marks and the history and nature of the dispute.

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Copyright – Kazaa litigation settles

In brief: Settlement has been reached between the major Australian and international record companies and the operators of the Kazaa peer-to-peer file sharing network, bringing an end to the long running litigation in the Federal Court of Australia. The Kazaa operators also reached a settlement with the major motion picture companies following the decision in the Grokster litigation in the United States.

By Miriam Stiel, Senior Associate

The Australian litigation commenced in February 2004, when authorised representatives of Australian record companies were granted access by the court to enter premises, without notice, to search for and remove documents and other evidence relating to Kazaa's operation in Australia. As reported in our Focus: Copyright – September 2005, Justice Wilcox delivered his judgment in the case on 5 September 2005, finding the operators of Kazaa liable for authorising the infringing acts of users of the Kazaa software in relation to sound recordings. Kazaa's operators were given two months to modify the system to exclude copyright protected recordings from appearing in searches made on the new version of Kazaa software and to place pressure on existing Kazaa users to upgrade to the modified version.

The respondents were granted leave to appeal from Justice Wilcox's decision. The appeal was heard in February this year, but the Full Court had not delivered its judgment when the settlement was announced. The appeal was formally dismissed against the Kazaa operators on 4 August 2006.

Under the terms of the settlement, the company behind the Kazaa system, Sharman Networks Ltd, has agreed to:

  • pay substantial compensation to the record companies (reportedly A$151 million);
  • implement filtering technologies to prevent illegal activity; and
  • enter into licensing arrangements to enable it to legitimately deal with copyright material.

The settlement is considered a major victory in the ongoing battle of the global music and movie industries to prevent piracy.

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Copyright - Government releases draft legislation on technological protection measures

In brief: An exposure draft of the Copyright Amendment (Technological Protection Measures) Bill was released by the Federal Attorney-General's Department on 4 September 2006. The Bill will amend the current provisions of the Copyright Act 1968 (Cth) dealing with technological protection measures to give effect to Australia's obligations under the Australia-United States Free Trade Agreement.

By Miriam Stiel, Senior Associate

Key provisions

The draft Bill:

  • expands the scope of the  technological protection measures (TPM) liability scheme to include devices that control access to protected copyright material (access control TPMs). Civil and criminal remedies will apply where an access control TPM is circumvented;
  • includes a note under the definition of TPM stating that a device, product or component (including a computer program) that is solely designed to control 'market segmentation' is not a TPM. The summary of the draft Bill provided by the Attorney-General's Department lists 'region coding' and spare parts as falling within this carve out;
  • identifies exceptions to the TPM liability scheme to allow for:
    • circumvention which is permitted by the copyright owner or an exclusive licensee;
    • interoperability between computer programs;
    • research into encryption technology;
    • testing the security of a computer, computer system or computer network;
    • the collection or dissemination of information about a person's online activities;
    • acts lawfully done for the purpose of law enforcement, national security or the performance of a statutory function, duty or power by or on behalf of the Commonwealth or a state or territory; and
    • acquisitions by libraries, archiving organisations and educational institutions.

The draft Bill also allows additional exceptions to be prescribed in regulations. This provision is intended to provide greater flexibility and improve the ability of the scheme to respond to changes in technology.

What next?

Comments on the exposure draft must be submitted to the Attorney-General's Department by Friday, 22 September 2006.  The submissions will be published on the Attorney-General's Department website by 3 October 2006 and comments on the submissions can be made by 24 October 2006.

The Federal Government has announced that it will shortly release draft regulations setting out additional exceptions to the TPM liability scheme. The Attorney-General's Department is also conducting a review of even further possible exceptions, following the February 2006 report of the House of Representatives Standing Committee on Legal and Constitutional Affairs into the Review of Technological Protection Measures Exceptions. Submissions supporting additional exceptions must be received by Monday, 25 September 2006.

Australia is required to implement its TPM obligations under the Australia-United States Free Trade Agreement by 1 January 2007. The TPM reforms are expected to be introduced into Parliament in mid-October, at the same time as the broader copyright reforms which were announced on 14 May 2006. 

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Passing Off - Passing off / misleading and deceptive conduct – what's in a name?

In brief: The recent decision of the Supreme Court of Western Australia in Ferrari Furniture & Cabinet Makers Pty Ltd v Ferrari Furniture Pty Ltd [2006] WASC 139 (20 July 2006) considered the right of a person to use their name in conducting a business where another business, of the same or similar name, is already operating with an established reputation.

By Andrew Goatcher, Special Counsel

Overview

The parties each operated furniture businesses, which were totally unconnected, in adjoining suburbs of Perth.

The plaintiff company, Ferrari Furniture & Cabinet Makers Pty Ltd, manufactured furniture, cabinets and shelving. The name of its principal director was Mr Peter Ferrari and the company was generally referred to as 'Ferrari Furniture' by its customers and suppliers.

The defendant company, Ferrari Furniture Pty Ltd, was engaged solely in retail sales of furniture. The name of its principal director was Mr Gavin Ferrari.

The claims

The plaintiff claimed that the similarity between the names of the parties had caused some customers and other people dealing with it to become confused. It sought an injunction to restrain the way in which the defendant conducted its business by claiming that the defendant was:

  • passing itself off as the plaintiff; and
  • engaged in misleading or deceptive conduct in breach of section 52 of the Trade Practices Act.
Use of own name as a defence

The defendant asserted a right to conduct business under the name 'Ferrari Furniture Pty Ltd' on the basis that its business name was based upon the surname of its principal director.

Justice Blaxell found that, while there is ample authority for the proposition that an individual may trade honestly in their own name regardless of the damage this may cause to a competitor with a similar name, the law is more unsettled where a company trades under a name based upon the name of a natural person who is its proprietor.

The applicable principles governing the use of a person's name in these circumstances are that:

  • where a person chooses to carry on business as a company, the claim that the company name comprises or includes the name of an individual will not be a complete defence to an allegation of passing off or misleading and deceptive conduct; and
  • a newly incorporated company may not use a company or business name if that name is deceptively similar to that of another party with an established reputation, notwithstanding that the newly established name is essentially comprised of the name of an individual.

Given the unsettled nature of the law in this area, Justice Blaxell found there was a serious issue to be tried for the purposes of an injunction.

Denial of injunction

In order to obtain an injunction, however, a plaintiff needs to establish, in respect of passing off, a probability of actual or imminent damage to its goodwill and, in respect of s52, conduct that is misleading or deceptive or likely to mislead or deceive. In the present case, Justice Blaxell held that, given the largely separate areas of activity of the two companies, the plaintiff would suffer only from public confusion rather than loss of business and, furthermore, that the defendant would potentially suffer serious detriment if an injunction were to be granted. Thus, on the balance of convenience, Justice Blaxell refused the application for an injunction. 

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Domain Names – Squashing squatters

In brief: The outcome of a recent dispute concerning the www.colespharmacy.com.au domain name shows that the rules of the Australian Domain Name Administrator for registration of a '.com.au' domain name can sometimes be used to produce a quick and effective solution against cybersquatters.

By Laura Colavizza, Lawyer

A person unconnected to Coles Myer had registered the www.colespharmacy.com.au domain name (the domain name), and then offered to sell it to Coles Myer. The Australian Domain Name Administrator (auDA) is responsible for managing disputes and complaints regarding '.com.au' (and other) second level domains. Rather than pursuing a costly and lengthy complaint under the auDA's .au Dispute Resolution Policy, a simple complaint was made by lawyers on behalf of Coles Myer under various auDA policies, alleging that the offer made to sell the domain name was a breach of auDA Policy 2005-05, and that the registrant of the domain name did not have a 'close and substantial' connection to the domain name in breach of auDA Policy 2005-01.

auDA investigated Coles Myer's complaint, and contacted the registrant to determine if, in fact, there had been breaches of the various policies. As the registrant was unable to establish a 'close and substantial connection' to the domain name, the domain name was cancelled. The matter was handled by Allens Arthur Robinson Partner Tim Golder and Lawyer Laura Colavizza.

Regrettably, the 'close and substantial connection' rule, and the restrictions on transfers of Domain Names, do not apply in the .com domain space. Accordingly, with cybersquatters in the .com domain it is necessary to resort to the more formalised dispute resolution procedure managed by ICANN (the Internet Corporation for Assigned Names and Numbers). 

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Related Developments - Legislative developments

In brief: Two intellectual property Bills made their way through Federal Parliament in September. 

By David Yates, Senior Associate

The Trade Marks Amendment Bill 2006, which was passed by the Senate on 17 August 2006, was read a first time in the House of Representatives on 4 September 2006. The Trade Marks Amendment Bill provides for a range of amendments to the Trade Marks Act 1995 (Cth), including:

  • removing the requirement that an applicant for removal of a trade mark under section 92 be 'a person aggrieved';
  • providing an additional ground of opposition to a party whose prior mark, despite being cited in objection to another party's application, was overcome during the application process by evidence of prior use;
  • introducing a ground of opposition that a trade mark application was made 'in bad faith'; and
  • extending the operation of Customs' Notices of Objection from two years to four years.

The Intellectual Property Laws Amendment Bill 2006, which was passed in the House of Representatives on 22 June 2006, was passed by the Senate on 14 September. The Intellectual Property Laws Amendment Bill provides for amendments to various laws relating to intellectual property, including:

  • introducing requirements for confidential treatment of information held in the Trade Marks Office under the Trade Marks Act;
  • adding the availability of 'additional damages' for patent infringement under the Patents Act 1990; and
  • extending the 'springboarding' exceptions to infringement of patents under the Patents Act.

We will continue to monitor the progress of these Bills and update clients accordingly. 

 

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