Latest Intellectual Property Law Updates in Australia for 2024

Two of four KantaTech products found to infringe certain claims of Vald patent for apparatus assessing knee strength (Vald Pty Ltd v KangaTech Pty Ltd (No 5))

Date: 8 April 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgement date: 5 April 2024

Catchwords: PATENTS – patent for apparatus for use in assessing the strength of at least one knee flexor muscle of a subject – claim construction – patent for method of assessing strength of at least one knee flexor muscle using an apparatus – infringement – validity

PATENTS – validity – sufficiency and support – whether patent met requirements of ss 40(2)(a) and 40(3) Patents Act 1990 (Cth) if claim 1 was construed as only requiring one leg to be secured by securing member – whether lack of inventive step

PATENTS – infringement – infringement conceded in relation to original device and later device prior to software modifications – no infringement found in relation to device after software modifications made – whether infringement within meaning of s 117(2)(b) Patents Act 1990 (Cth) – whether instruction or inducement within s 117(2)(c) Patents Act 1990 (Cth)

Abstract:

Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333; BC202403965 involved a dispute over a patent owned by Vald Pty Ltd (Vald) that mainly turned on claims 1 and 18 for an apparatus that assesses knee strength by measuring the hamstring muscles during contraction.

Dates for community engagement sessions for First Nations art added for Queensland, Australian Capital Territory and Western Australia

Date: 12 April 2024
Source: Office for the Arts

Abstract:

As part of the legal reform process to protect First Nations peoples’ traditional knowledge and cultural expressions, dates for public engagement sessions during April and May for Queensland, the Australian Capital Territory and Western Australia have been released.

The Australian Government aims to hear from Aboriginal and Torres Strait Islander peoples on the following topics of discussion regarding Indigenous cultural and intellectual property (ICIP):

• aspects of ICIP that should be protected under the new law;
• rights for Traditional Owners that should be protected;
• key principles and objectives of the new law;
• preferred terms: Indigenous/First Nations/Aboriginal and Torres Strait Islander; Ownership/Custodianship; and Traditional Owner/Traditional Custodian;
• harms caused by breaches of cultural rights;
• acknowledgement of rights;
• communal ownership, ensuring consent and resolving disagreements;
• enforcement by Traditional Owners of their cultural rights; and
• other measures to assist Traditional Owners with protecting their art.

Online sessions to discuss the above will also be held on 3 June, 14 June and 26 June.

World Intellectual Property Day on 26 April 2024

Date: 8 April 2024
Source: World Intellectual Property Organization

Abstract:

World Intellectual Property Day will be held on 26 April 2024 to celebrate global intellectual property (IP) developments and encourage innovative and creative IP efforts to achieve the UN Sustainable Development Goals (SDGs) for peace and prosperity for people and the planet.

The World Intellectual Property Organization (WIPO) promotional materials include an AI-generated video that serves as a call to arms to emphasise the importance of IP and innovation to address SDGs such as reduced inequalities, sustainable cities and communities, and peace, justice and strong institutions.

See WIPO’s website for more information on World Intellectual Property Day here and the United Nations website for more information on the 17 SDGs here.

IP Australia seeks submissions for WIPO Diplomatic Conference on Genetic Resources and Associated Traditional Knowledge

Date: 27 March 2024
Source: IP Australia

The World Intellectual Property Organization (WIPO) will host a Diplomatic Conference on Genetic Resources and Associated Traditional Knowledge (Diplomatic Conference) from 13 to 24 May 2024 at Geneva. The Diplomatic Conference will be the final stage of negotiations before the adoption of an international agreement on patent disclosure to prevent erroneous grants of patents for applications under Genetic Resources and Associated Traditional Knowledge that are not novel or inventive. Submissions to IP Australia on the Diplomatic Conference will be due on 15 April 2024.

The WIPO Diplomatic Conference will discuss international rules aimed to improve the efficiency, transparency and quality of the patent system. If adopted, applicants would need to disclose the source of the Genetic Resources and Associated Traditional Knowledge used in inventions if a country is a member of the treaty. Increased transparency will allow for Australian Genetic Resources and Associated Traditional Knowledge to be more easily identified and will be important to protecting Indigenous Knowledge.

IP Australia is accepting submissions on patent disclosure and examples and collaborations or patents that may require Genetic Resources or Associated Traditional Knowledge to be disclosed.

New laws to tackle fake Indigenous-style art

Date: 27 March 2024
Source: IP Australia

Abstract:

The Office of the Arts has begun consultations for the development of legislation to tackle fake Indigenous-style art under the National Cultural Policy, Revive. The Australian Government is committed to renewing and reviving Australia’s arts, entertainment and cultural sector by protecting the traditional knowledge and cultural expressions of First Nations peoples. Community engagement sessions will continue across Australia until 2 May 2024 and online sessions will be held in June.

The legislation will be delivered in stages to ensure the following are addressed in order:

1. The issue of fake art, merchandise and souvenirs.
2. Broader Indigenous Cultural and Intellectual Property rights and enforcement.

Written submissions can also be provided by 15 June 2024.

See IP Australia’s release here with further details on the community engagement sessions here and the written submissions here. For further information on the National Cultural Policy, Revive, see the Office of the Arts’ website here and the previous Latest Legal Update here.

Moral rights not infringed by statements that an author’s work is “unscientific” and “dishonest” (Hoser v Georges [No 2])

Date: 20 March 2024
Court: Federal Circuit and Family Court of Australia
Judge(s): Judge Manousaridis
Judgment date: 15 March 2024
Catchwords: INTELLECTUAL PROPERTY – moral rights – right of integrity of authorship provided for by s 195AI of the Copyright Act 1968 (Cth) (Copyright Act) – whether statements made about the contents of an author’s literary works (works) and about the author that prejudices the author’s honour or reputation constitute the doing of an act in relation to the works within the meaning of s 195AJ(b) of the Copyright Act and, for that reason, constitute the subjection of the works to derogatory treatment within the meaning of s 195AI(2) and, for that reason, constitute an infringement of the author’s right of integrity of authorship in respect of the works provided for by s 195AI

Abstract:

In Hoser v Georges [No 2], the court dismissed Mr Hoser’s argument that the respondents’ statements about his work being “unscientific” and should never be cited was derogatory treatment s 195AJ of the Copyright Act 1968 (Cth) (Copyright Act).

Aristocrat residual claims not a manner of manufacture (Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3))

Date: 18 March 2024
Court: Federal Court of Australia
Judge(s): Burley J
Judgement date: 8 March 2024

PATENTS — Operation of 23(2)(a) of the Judiciary Act 1903 (Cth) — Approach to be taken by single judge on remitter — Full Court decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 applied.

PATENTS — Manner of manufacture — Innovation patents for Electronic gaming machines and methods for providing feature games — Residual claims not a manner of manufacture within meaning of s 18(1A)(a).

Abstract

In Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (No 3) [2024] FCA 212; BC202402530 His Honour Burley J concluded that none of the residual claims in three patents owned by Aristocrat were a manner of manufacture. In reaching that conclusion, Burley J had to consider the operation of s 23(2)(a) of the Judiciary Act 1903 (Cth); the effect of the remittal order made by the Full Court of the Federal Court of Australia (Full Court) in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd (2021) 163 IPR 231;

Resale royalty — amending regulation commencing 31 March adds list of reciprocating countries

Date: 15 March 2024
Source: Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth)

The Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth), will amend the Resale Royalty Right for Visual Artists Regulations 2021 (Cth) commencing on 31 March 2024, by inserting a new s 6A prescribing a number of countries as reciprocating countries for the purposes of s 14(1)(c) of the Resale Royalty Right for Visual Artists Act 2009. Section 14(1)(c) provides for an individual satisfying the residency test if they are a national or citizen of a reciprocating country.

See the Resale Royalty Right for Visual Artists Amendment (Reciprocating Countries) Regulations 2024 (Cth).

$150K for flagrancy of copyright infringement by competing essential oil company, but confidential information claim fails (Native Extracts Pty Ltd v Plant Extracts Pty Ltd (No 2))

Date: 15 March 2024
Court: Federal Court of Australia
Judge(s): Downes J
Judgment date: 23 February 2024

Catchwords:

INTELLECTUAL PROPERTY – whether information about extraction machine was confidential information owned by company where second respondent was former director – where second respondent was informed about machine by third party on unrestricted basis – where evidence insufficient to establish that information was confidential information owned by company

CONTRACTS – construction – scope of confidentiality clause – whether extended to information about commercially available product – where contract contained restraint of trade clause which permitted return to industry after 12 months

COPYRIGHT – flagrant infringement of copyright – award of additional damages

Abstract:

Native Extracts Pty Ltd v Plant Extracts Pty Ltd (No 2) [2024] FCA 106; BC202401766 involved a dispute between two companies that sold botanical plant extracts that operated within the same warehouse. The court initially made orders by consent for the publication of correction notices under the ACL and declared various breaches of confidence: Native Extracts Pty Ltd v Plant Extracts Pty Ltd [2023] FCA 1265; BC 202314972. In this decision, the court held that allegedly confidential information about the extraction machine was not confidential in nature and had entered the public domain.

Trial judge erred in remedies granted to Hells Angels (Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited) [2024] FCAFC 15

Date: 13 March 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Perram, Nicholas, Burley, Rofe and Downes JJ
Judgement date: 23 February 2024
Catchwords: Intellectual property – remedies – nominal damages – must be small Intellectual property – remedies – additional damages – award of nominal damages is a relevant factor under s126 of the Trade Marks Act 1995 – Intellectual property – remedies – injunction – not available where compliance not possible Intellectual property – remedies – declaratory relief – not necessary where nominal damages made

Abstract:

Redbubble was found at trial to have infringed five trade marks belonging to Hells Angels Australia. The trial judge ordered the payment of nominal damages, additional damages, granted injunctive relief and declaratory relief. On appeal to the Full Federal Court, decisions of the trial judge were overturned in respect of the quantum of nominal damages, the award of additional damages, the framing of the injunctions and the making of declaratory relief.

Nominal damages

On appeal the court held that nominal damages must be small. In this case, an award of $8,250 at trial was not nominal.

No procedural fairness where improbable events are uncritically accepted – Microsoft gets a retrial (Microsoft Corporation v CPL Notting Hill Pty Ltd)

Date: 14 March 2024
Court: Federal Court of Australia (Full Court)
Judge(s): Nicholas, Rofe and Jackman JJ
Judgement date: 4 March 2024

Catchwords: Intellectual property – procedural fairness – uncritical acceptance of improbable events – decision overturned

Intellectual property – procedural fairness – delay between trial and reasons – whether three years is an operative delay

Abstract:

The Full Court of the Federal Court of Australia in Microsoft Corporation v CPL Notting Hill Pty Ltd [2024] FCAFC 20; BC202402250 set aside the decision of the trial judge and ordered a new trial on all issues except for the declarations of copyright infringement and finding of authorisation of infringement in 30 instances. The case at trial concerned copyright infringement, trade mark infringement and misleading and deceptive conduct relating to the wrongful use of Microsoft Windows 7 products by CPL Parties.

Background

It was alleged that CPL parties pre-installed unauthorised versions of Windows 7 onto new computers and supplied these to end users. The trial judge found copyright infringement had been authorised in 30 instances but ruled that claims of infringement in an additional 1467 cases were unsubstantiated.

ATMO decides band members of ‘Taxiride’ unable to seize trade mark for themselves (Jason Singh v Tim Watson & Tim Wild)

Date: 13 March 2024
Court: Australian Trade Marks Office
Delegate: Tracey Berger
Decision date: 22 February 2024 (ASIC)

Catchwords:

Trade marks — opposition under ss 42(b), 43, 58, 50, 62(b) and 62A of the Trade Marks Act 1995 (Cth) pursued — s 58 ground established — trade mark application refused

Jason Singh v Tim Watson & Tim Wild [2024] ATMO 33 involved Taxiride band member Jason Singh’s opposition of the registration of the word trade mark of their band name ‘Taxiride’ by two other band members. The application was successfully opposed as the trade mark, an asset of the partnership between the original band members, was jointly owned by the three of them and could not simply be seized by the two applicants.

Background

The band Taxiride (Band( formed in 1999 and both trade mark applicants are original members of the Band. Active members of the band varied from 1996 to 2023 and the Band continued to perform as ‘Taxiride’.

In 2021, Mr Watson contacted Mr Singh for his availability to perform in anticipation of lifted COVID-19 restrictions.

MSA 4x4 Accessories Pty Ltd patent not infringed by Clearview Easy Glide product – MSA threats unjustified and communications misleading (MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd)

Date: 6 March 2024
Court: Federal Court of Australia
Judge(s): Charlesworth J
Judgement date: 26 February 2024
Catchwords: Intellectual property – trade marks – originating application alleging infringement of trade marks including the plain word mark mercato – whether the respondent has used, as a trade mark, a sign that is deceptively similar to any one of the applicant’s trade marks sued upon

Abstract:

Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138; BC202401917 involved a dispute over several registered trade marks owned by Caporaso Pty Ltd (Caporaso) that included the word “mercato”. The court held that trade marks of Mercato Centrale Australia Pty Ltd (Mercato Centrale) were not deceptively similar to Caporaso’s marks and that “mercato” did not bear an ordinary signification descriptive of goods and services associated with Italian supermarkets. However, one of Caporaso’s trade marks was ordered to be removed from the register of trade marks in connection with certain services in Class 43.

Background

Caporaso operated an Italian themed supermarket, restaurant and wine retail business since 1972 and traded by reference to the trade mark “Imma & Mario’s Mercato” in 2005 and then later under simply “Mercato” from 2011.

MSA 4x4 Accessories Pty Ltd patent not infringed by Clearview Easy Glide product – MSA threats unjustified and communications misleading (MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd)

Date: 7 February 2024
Court: Federal Court of Australia
Judge(s): Downes J 
Judgment date: 24 January 2024

Catchwords:
Patents – validity – lack of novelty,
Patents – validity – lack of inventive step
Patents – infringement – construction of claims
Patents – counterclaims – unjustified threats and false and misleading allegations

Abstract:

MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24 involved a patent dispute with Clearview Towing Mirrors (Clearview) over a mounted, sliding-rail car storage system. The court upheld the patent’s validity and found no infringement by Clearview. MSA’s communications were found to be unjustified threats and misleading and deceptive allegations.

Background:

MSA held a patent for their DropSlide technology of their accessories which allowed consumers to store and transport ‘car fridges’ and tool boxes in their vehicles via mounted sliding rails. MSA argued that the Clearview Easy Slide had infringed their patent due to taking the following features:

• a biasing means allowing the item to shift between two positions;
• the arms that were ‘pivotally connected’; and
• the function and connections of the ‘offset levers’.

Madrid update — 12th edition of Nice Classification now in effect

Date: 25 January 2024
Source: World Intellectual Property Organization

Abstract:

The 12th edition of the Nice Classification, referred to in previous Latest Legal Update ‘Madrid update — new version 12th edition of Nice Classification commences 1 January 2024,’has now come into effect as of 1 January 2024.

See Information Notice No. 35/2023, dated 10 November 2023, for more information.

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IP Australia to replace current Trade Marks Goods and Services list with Madrid Goods and Services list from March 2024

Date: 25 January 2024
Source: IP Australia

IP Australia has announced that it will replace the current Trade Marks Goods and Services list (the AU picklist) with the Madrid Goods and Services (MGS) list in March 2024.

The MGS list is a database of terms that are used to classify goods and services for trade mark applications in the Madrid System. It's used by the World Intellectual Property Organization (WIPO) and has a wider range of terms than the AU picklist.

To make searching the MGS list easier, IP Australia will also add a semantic search function, so terms can be found on the MGS list that have a similar meaning to the term being searched for.

This change aims to reduce the volume of issues for Australians filing trade mark applications internationally.

Read IP Australia’s full media release here.

Defendant pays over $100,000USD in damages after NFT trademark infringement: Hermes International et al v. Rothschild

Date: 23 January 2024
Source: Hermes International Et Al V. Rothschild

Abstract:

A jury in the United States has returned a unanimous verdict against the defendant, an artist who was found liable for trademark infringement, trademark dilution, and cybersquatting after creating ‘MetaBirkin’ NFTs that resembled the plaintiff’s - Hermes International and Hermes of Paris, Inc. (collectively, "Hermes") - intellectual property. Hermes was awarded $133,000USD in damages.

The defendant appealed the decision and briefing is underway before the Second Circuit.

Australian courts are yet to deal with the issue of enforcement within the metaverse. Enforcement can also be difficult given that the real identity of users can be private. Australian courts will need to deal with them when they arise.

Patents and AI – UK Supreme Court confirms inventor must be a natural person

Date: 22 January 2024
Court: Supreme Court, UK
Judge(s): Lord Hodge, Lord Kitchin, Lord Hamblen, Lord Leggatt, Lord Richards
Judgment date: 20 December 2023
Catchwords: PATENTS - inventorship

Abstract:

Thaler was unsuccessful before the Supreme Court regarding his appeal of a Court of Appeal decision that refused to accept the designations of DABUS, an AI machine, as the inventor on two patent applications. On 20 December 2023, the Supreme Court confirmed that an inventor under the 1977 Act must be a natural person.

The Supreme Court potentially opened the door to the granting of a patent where a human and an AI machine work together: “… in this jurisdiction, it is not and has never been Dr Thaler’s case that he was the inventor and used DABUS as a highly sophisticated tool. Had he done so, the outcome of these proceedings might well have been different.”

Read the full text of the court’s judgment here: Thaler v Comptroller General of Patents, Designs and Trade Marks [2023] UKSC 49

ACCC to have increased powers under expanded News Media and Digital Platforms Bargaining Code

Date: 18 December 2023
Source: The Hon Stephen Jones MP

All recommendations made in Treasury’s review of the News Media and Digital Platforms Mandatory Bargaining Code (the Code) will be implemented by the Government, as announced by Government Ministers Michelle Rowland and Stephen Jones.

Treasury made five recommendations to improve the Code’s operation, in response to which the Government will introduce legislative amendments to facilitate the Australian Competition and Consumer Commission (ACCC) preparing periodic reports on the digital platforms that should be covered by the Code. In addition, the ACCC will have compulsory information-gathering powers to assist it to prepare these reports, and to allow scrutiny of commercial deals between the digital platforms and Australian news businesses.

The joint media release from MPs Michelle Rowland and Stephen Jones is available here and the full Government response is available here.

Trade marks - Registration of HFC trade mark proceeds after unsuccessful opposition (KFC THC V Ltd v Grill'd IP Pty Ltd)

Date: 18 December 2023
Court: Australian Trade Marks Office
Judge(s): Delegate Robert Wilson
Judgement date: 27 November 2023

Catchwords: Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – nexus between application and impugned behaviour of applicant considered – trade mark may proceed to registration

Abstract:

KFC THC V Ltd v Grill'd IP Pty Ltd [2023] ATMO 192 was a decision of a delegate of the Registrar of Trade Marks concerning an opposition to the registration of application 2119899 (29, 30) – HFC – in the name of Grill'd IP Pty Ltd. The opposition was unsuccessful and the trade mark was to proceed to registration.

Background:

The Applicant, Grill'd IP Pty Ltd, sought to register TMA 2119899 (Mark) in classes 29 and 30: foodstuffs and beverages.

The Opponent, KFC THC, filed its Statement of Grounds and Particulars nominating grounds of opposition under ss 44, 60 and 62A of the Trade Marks Act 1995 (Cth) (Act).

IP Australia public holidays 2024

Date: 13 December 2023
Source: IP Australia

IP Australia has announced the 2024 public holidays that its Canberra office will be closed on:

• Monday 1 January 2024 — New Year's Day
• Friday 26 January 2024 — Australia Day
• Monday 11 March 2024 — Canberra Day
• Friday 29 March 2024 — Good Friday
• Monday 1 April 2024 — Easter Monday
• Thursday 25 April 2024 — ANZAC Day
• Monday 27 May 2024 — Reconciliation Day
• Monday 10 June 2024 — King's Birthday
• Monday 7 October 2024 — Labour Day
• Wednesday 25 December 2024 to Wednesday 1 January 2025 (inclusive) — Christmas close down

Read the full announcement here.

IP Australia releases 2024-2025 draft Cost Recovery Implementation Statement and Costs Awarded

Date: 11 December 2023
Source: IP Australia

IP Australia has released its 2024-2025 draft Cost Recovery Implementation Statement and Costs Awarded. Public consultation is open until Sunday 21 January 2024 and may be submitted via the public consultation page.

Fee changes will be implemented from 12 am AEST 1 October 2024.

Changes include:

Patents:

• Patent International PCT search request fee will increase from $2,200 to $2,400, the PCT CHII exam request fees will increase from $820 to $900 for a preliminary exam request, and $590 to $650 for a preliminary exam request filed with an Australian International Search Report (ISR).
• Patent application fees fee for both direct route and national phase entry standard applications will increase from $370 to $400, while the fee for filing by “another means” will increase from $570 to $600.
• Patent examination standard fee will increase from $490 to $550, while the exam request with international preliminary report (IPE) will increase from $300 to $350, and the exam request under subsection 44(3) will increase from $100 to $150.

Federal copyright and artificial intelligence group to be established

Date: 06 December 2023
Source: Attorney-General’s office

Abstract:

On 5 December 2023, the Attorney-General Mark Dreyfus KC MP announced that the federal government will establish a copyright and artificial intelligence (AI) reference group. This group aims to prepare for copyright issues arising from the use of AI, including the material used to train AI models and whether AI-generated works should receive copyright protection.

Details surrounding the group were informed by multiple roundtable sessions enabling the government to hear from over 50 peak bodies and other organisations about copyright reform issues. The group will continue to engage with stakeholders to enable Australia to make use of AI opportunities.

The group will be led by the Minister for Industry and Science Ed Husic. Further information will be released on the Attorney-General’s Department’s website following this announcement.

For more information, read the full media release here.

High Court finds infringement of DreamDesk copyright not authorised (Real Estate Tool Box Pty Ltd & Ors v Campaigntrack Pty Ltd & Anor [2023] HCA 38)

Date: 06 December 2023
Court: High Court of Australia
Judge(s): Gageler CJ, Gordon, Edelman, Steward and Jagot JJ
Judgment date: 16 November 2023

Catchwords:

Copyright — Infringement — Authorisation of infringement — Nature of relationship

Abstract:

This matter was an appeal from the Full Court of the Federal Court of Australia dealing with a person’s liability under s 36(1) of the Copyright Act 1968 by authorising another person to do any act which would infringe upon a copyright. The second appellant, Biggin & Scott Corporate Pty Ltd, had instructed the second respondent, Mr. Semmens, “to build a web to print delivery system that does not breach any other companies’ IP or ownership”. This led to the creation of the “Real Estate Tool Box” software (the Software) and the incorporation of the first appellant, Real Estate Tool Box Pty Ltd. The creation of the Software infringed copyright in DreamDesk, owned by Campaigntrack Pty Ltd, as it ”involved a reproduction of a substantial part of the DreamDesk Source Code Works”. The appellants were not aware of this reproduction.

TM — use of BED & BATH not an infringement, but applicant’s reputation leads to a success in claims under the ACL and passing off

Date: 23 November 2023
Court: Federal Court of Australia
Judge(s): ROFE J
Judgment date: 14 December 2023

Catchwords: TRADE MARK INFRINGEMENT – deceptive similarity – independent reputation in “BED BATH” or whether the words are descriptive – relevance of confusion evidence

TRADE MARK DEFENCES TO INFRINGEMENT – s 122(1)(b)(i) good faith defence – defence would not apply if there was infringement

TRADE PRACTICES – well-established reputation of the applicant – wilful blindness of the respondent – elements established of breaches of ss 18 and 29 of the ACL and of passing off

Abstract:

In Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587, Global Retail Brands Australia Pty Ltd, which owns stores and trade marks incorporating the word “House”, was found not to infringe the trade marks comprising the words “BED BATH N’TABLE”, by use of “BED & BATH” in its logo.

Amendments to Olympic Insignia Protection Act, Trade Marks Act and Patents Act under the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 assented to

Date: 23 November 2023
Source: Intellectual Property Laws Amendment (Regulator Performance) Act 2023 and Statute Law Amendment (Prescribed Forms and Other Updates) Act 2023

Abstract:

Recent changes made under the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 amend the Olympic Insignia Protection Act 1987, Trade Marks Act 1995 (Cth) and Patents Act (Cth), including corresponding changes to the Trade Marks Regulations and Patents Regulations.

Additionally, the Statute Law Amendment (Prescribed Forms and Other Updates) Act 2023 has now repealed s 144 of the Patents Act 1990 (Cth) (Patents Act).

Intellectual Property Laws Amendment (Regulator Performance) Act 2023 – assented to on 17 November 2023

Some amendments made by the Act have already commenced, see below.

Madrid update — new version 12th edition of Nice Classification commences 1 January 2024

Date: 22 November 2023
Source: World Intellectual Property Organization

Abstract:

The World Intellectual Property Organization (WIPO) has announced a new version of the twelfth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”) that will enter into force on 1 January 2024.

A new edition of the Nice Classification is published every five years, and since 2013, a new version of each edition is published annually.

See Information Notice No. 35/2023, dated 10 November 2023, for more information.

Madrid – Australia and Finland decrease individual fees

Date: 21 November 2023
Source: World Intellectual Property Organization (WIPO)

Abstract:

From 9 December 2023, the individual fees payable for international applications, subsequent designations, and renewals of international registrations have changed for the following parties to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol):

As of 9 December 2023, the individual fees payable in respect of Australia will be:

• For application or subsequent designation, whether or not the mark is a collective mark
  • For each class of goods or services: 232 CHF (approx. $400 AUD).
• For each class of goods or services: 232 CHF (approx. $400 AUD).
  • For renewal, whether or not the mark is a collective mark

Hungry Jack’s trade mark not deceptively similar to McDonald’s mark, found to breach ACL (McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412)

Date: 20 November 2023
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 16 November 2023
Catchwords: Trade marks – Application for cancellation – Infringement – Deceptive similarity

Abstract:

Mcd Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 involved a trade mark dispute where the Applicants (collectively referred to as McDonald’s) alleged that the Respondent (Hungry Jack’s) infringed upon two registered trade marks through the usage of two deceptively similar marks. Burley J found that the infringement case failed, as BIG JACK and BIG MAC are not deceptively similar; nor were MEGA JACK and MEGA MAC. However, Hungry Jacks was found to have engaged in misleading and deceptive conduct in breach of s 18 of the Australian Consumer Law when it represented its burger contained 25% more Australian Beef.

US Copyright Office extends feedback deadline for AI and copyright inquiry

Date: 20 November 2023
Source: U.S. Copyright Office

Abstract:

The US Copyright Office has extended the deadline for feedback in response to its notice of inquiry regarding artificial intelligence (“AI”) and copyright, published on 30 August 2023 and previously reported on in our Latest Legal Update “US Copyright Office seeks views on AI and Copyright by 30 October 2023.”

To inform the Office’s study and help assess whether legislative or regulatory steps in this area are warranted, the Office seeks comment on these issues, including those involved in the use of copyrighted works to train AI models, the appropriate levels of transparency and disclosure with respect to the use of copyrighted works, and the legal status of AI-generated outputs.

Feedback is now due by 11:59 p.m. eastern time on 6 December 2023.

Read the United States Copyright Office media release here.

Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 awaiting royal assent

Date: 13 November 2023
Source: Parliament of the Commonwealth of Australia

Abstract:

As of 09 November 2023, the Intellectual Property Laws Amendment (Regulator Performance) Bill 2023 (Bill) has passed through both houses and is awaiting royal assent. The Bill was introduced on 22 June 2023 and will amend the Olympic Insignia Protection Act 1987, the Trade Marks Act 1995 and the Patents Act 1990.

The Bill resolves issues regarding the use of the Olympic insignia in response to Australia being selected to host the upcoming 2032 Olympic Games, as well as makes technical improvements to Australia’s IP rights system.

The Bill is divided into six parts with differing commencement dates:

• Schedule 1, Part 1 – Trade marks that contain, or consist of, olympic motto etc;
• Schedule 1, Part 2 – Renewal of registration
• Schedule 1, Part 3 – Revocation of registration
• Schedule 1, Part 4 – Restoration of trade marks to the Register
• Schedule 1, Part 5 – Official Journal etc.
• Schedule 1, Part 6 – Spent provisions

Federal Court dismisses Halal trade mark infringement claim and cancels registration (Halal Certification Authority Pty Ltd v Flujo Sanguineo Holdings Pty Ltd)

Date: 10 November 2023
Court: Federal Court of Australia — Full Court
Judge(s): Nicholas, Burley and Cheeseman JJ
Judgement date: 2 November 2023
Catchwords: Trade Marks – use as a trade mark and subjective intentions - whether primary judge erred in finding that the use of the Trade Mark was likely to deceive or cause confusion – whether primary judge erred in finding that the Trade Mark was not capable of distinguishing the appellant’s services from the services of other persons in relation to the registered services

Abstract:

In an example where the protection afforded was limited by the scope of the registration, which did not cover goods, the Federal Court (Full Court) dismissed an appeal by the Halal Certification Authority Pty Limited (HCA). HCA, a private company that provides halal certification to those engaged in providing halal goods, had appealed a judgement that dismissed its claim for infringement of HCA’s registered trade mark. The Full Court also partially allowed the respondents’ cross-claim by cancelling HCA’s trade mark registration. It also stated that the primary judge was correct not to consider the respondents’ subjective intention on the question of trade mark use.

IP Australia Annual Report 2022-23

Date 9 November 2023
Source: IP Australia

IP Australia has published its Annual Report for 2022-23 (Report). The Report was tabled in Parliament on 18 October 2023.

The Report outlines the work undertaken to achieve IP Australia’s purpose (to ensure Australians benefit from great ideas) and vision (of creating a world leading IP system, building prosperity for Australia). IP Australia seeks to achieve its outcomes through programs regarding IP rights administration, professional registration, education and awareness, advice to the Government, and international engagement.

Some of IP Australia’s key achievements include:

• maintaining administration of high quality and customer-centric IP rights in support of Australian business and innovation;
• increasing influence and contribution across the entire IP ecosystem;
• providing excellent experiences for customers underpinned by contemporary and accessible products and systems;
• focusing efforts on identifying, building and maintaining workforce capabilities to meet the current and future needs of the IP rights system; and
• supporting and enhancing a wide array of digital services that positively influence customer and staff experience.

See IP Australia’s Annual Report 2022-23 here.

IP Australia public holidays 2024

Date: 9 November 2023
Source: IP Australia

The Director General of IP Australia has announced IP Australia’s non-working days for 2024 pursuant to the requirements under s 136A of the Designs Act 2003 (Cth), s 14A of the Olympic Insignia Protection Act 1987 (Cth), s 222A of the Patents Act 1990 (Cth), s 76A of the Plant Breeder’s Rights Act 1994 (Cth), and s 223A of the Trade Marks Act 1995 (Cth).

The IP Australia Canberra office will not be open for business on:

• Monday 1 January 2024 (New Year's Day)
• Friday 26 January 2024 (Australia Day)
• Monday 11 March 2024 (Canberra Day)
• Friday 29 March 2024 (Good Friday)
• Monday 1 April 2024 (Easter Monday)
• Thursday 25 April 2024 (ANZAC Day)
• Monday 27 May 2024 (Reconciliation Day)
• Monday 10 June 2024 (King's Birthday)
• Monday 7 October 2024 (Labour Day)
• Wednesday 25 December 2024 to Wednesday 1 January 2025 (inclusive) (Christmas close down)

See IP Australia’s official notice here.

Updated Trade Marks Manual of Practice and Procedure

Date: 30 October 2023
Source: IP Australia

Abstract:

IP Australia has made several updates to the Trade Marks Manual of Practice and Procedure (Trade Marks Manual). These updates add guidance and up-to-date case law references to the following Parts:

• Part 19: Trade mark use, particularly in relation to:

• the use of a trade mark generally;
• use ‘in the course of trade’;
• use by a predecessor in title or an authorised user;
• use with additions or alterations; and
• the use of multiple marks.
• an applicant’s grounds to respond; and
• evidence of use.

• Part 23: Overcoming rejection grounds under s 41, including:

• Part 24: Effect of a disclaimer on examination;
• Part 27: Overcoming rejection grounds under s 44; and
• Part 28: Honest concurrent use.

Trade marks — FC finding Cantarella not the owner of ORO word marks leads to finding of no infringement

Date: 25 October 2023
Court: Federal Court of Australia
Judge(s): Yates J
Judgment date(s): 7–11 December 2020, 8 June 2021, 6–8 December 2021, 30 May 2022, 20 October 2023
Catchwords: TRADE MARKS — Infringement — Whether the respondents have infringed the applicant’s registered trade marks comprising the word ORO — Whether the respondents can establish the defences under ss 122(1)(b)(i), 122(1)(e) , 122(1)(f) and (fa), and 124 of the Trade Marks Act 1995 (Cth).

TRADE MARKS — Validity — Whether the word ORO is not capable of distinguishing the applicant’s goods by reason of the common use of, or the desire of other traders to use, the word in relation to the registered goods — Whether the applicant is the owner of the trade mark ORO for the registered goods

TRADE MARKS — Cancellation of registered trade marks — Where ground of cancellation established — Whether discretion should be exercised not to cancel the registrations

Abstract:

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 involved a trade mark dispute where Cantarella Bros Pty Ltd (Cantarella) sued Lavazza Australia Pty Ltd and Lavazza Australia OCS Pty Ltd (together, Lavazza) for infringement of two registered trade marks, while Lavazza brought a cross-claim seeking cancellation of the two marks.

Updated Patents Manual of Practice and Procedure

Date: 20 October 2023
Source: IP Australia

IP Australia has released an updated version of the Patents Manual of Practice and Procedure (Patents Manual). Version 2.0 of the Patents Manual is intended to be more streamlined and easier to access and navigate. It has new chapter numbers and page references as well as updated content and wording.

Practitioners are reminded to check the new volume or chapter numbers in the updated Patents Manual to ensure that their correspondence and documentation remains correct.

See IP Australia’s media release here and the updated version of the Patents Manual of Practice and Procedure here.

US Copyright Office seeks views on AI and Copyright by 30 October 2023

Date: 18 October 2023
Source: US Copyright Office

The US Copyright Office has seeks feedback in response to its notice of inquiry regarding artificial intelligence (“AI”) and copyright, published on 30 August 2023. Comments on policy issues raised by AI systems are due by 30 October 2023 (an extension from an initial deadline of 18 October 2023).

To inform the Office’s study and help assess whether legislative or regulatory steps in this area are warranted, the Office seeks comment on these issues, including those involved in the use of copyrighted works to train AI models, the appropriate levels of transparency and disclosure with respect to the use of copyrighted works, and the legal status of AI-generated outputs.

The study follows the issuing of guidance by the Office in March 2023, “Copyright Registration Guidance for Works Containing AI-Generated Materials”. The requirements include the provision of a brief statement in the “Author Created” field that describes the authorship contributed by a human.

In the context of directions hearing, orders should be prepared and distributed to each affected party at least a day in advance of the hearing.

List of terms too broad for classification in IP Australia Trade Marks Manual of Practice and Procedure

Date: 5 October 2023
Source: IP Australia

Further to our Latest Legal Update dated 4 October 2023, IP Australia’s Trade Marks Manual of Practice and Procedure has been updated to include Annex A13 in Part 14 Classification of Goods and Services. Annex A13 sets out the List of terms too broad for classification (List).

For example, an unqualified claim for “jelly” would be too broad to classify. The List clarifies that “jelly” may refer to Class 3: Petroleum jelly for cosmetic purposes, Class 4: Petroleum jelly for industrial purposes, Class 29: Fruit jelly spreads, or Class 30: Flavoured jelly crystals. An applicant would be asked to provide further information, with reference to the precise terminology suggested by the examiner.

The List includes common terms such as “appliances”, “art”, “bands”, “bars”, “caps”, “drinks”, “foil”, among many others.

See IP Australia’s Trade Marks Manual of Practice and Procedure here and new Annex A13 here.

Update to IP Australia Trade Marks Manual of Practice and Procedure – Classification procedures in examination

Date: 4 October 2023
Source: IP Australia

Part 14.4 of IP Australia’s Trade Marks Manual of Practice and Procedure (Manual) has been updated. Generally, classification matters should only be raised in a first report, as opposed to a further report, in limited circumstances. The Manual has been amended to include a new circumstance in which classification matters should be raised in a first report: if the item appears in the List of terms too broad for classification (List).

The List includes common terms that are broad in nature and could be correctly classified in several different classes. The purpose of the List is to:

• better define the scope of protection of a trade mark’s goods or services;
• prevent cluttering on the register, reducing barriers for new entrants;
• reduce section 44 grounds for rejection based on notional conflicts between specifications; and
• align with international practice, reducing irregularities for the benefit of Australian holders seeking international registrations.

If the applicant claims an unqualified term appearing on the List, they will be asked to provide further information and the examiner will provide more precise terminology for the applicant to consider.

Copyright – FCA grants extension of injunction blocking access to illegal streaming sites including ‘Project Free TV’, ‘Torlock’, ‘LosMovies’, etc

Date: 29 September 2023
Court: Federal Court of Australia
Judge(s): Burley J
Judgment date: 29 September 2023

Abstract:

Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders) [2023] FCA 1167 involved two proceedings concerning the operation of s 115A of the Copyright Act 1968 (Cth) (Act), which provides for the grant of injunctive relief restraining access via carriage service providers and online search engines to online locations outside Australia that enable the infringement of copyright. The court extended the site blocking orders made in previous proceedings for a further three years.

Background:

In earlier proceedings, the court granted site blocking orders pursuant to s 115A of the Act (Foxtel Management Pty Limited v TPG Internet Pty Ltd [2017] FCA 1041; 349 ALR 154; Roadshow Films Pty Limited v Telstra Corporation Limited [2020] FCA 507; 151 IPR 449).

Madrid – Amendments to Regulations under Madrid Protocol

Date: 27 September 2023
Source: World Intellectual Property Organization (WIPO)

At its 57th (25th ordinary) session, the Madrid Union Assembly adopted amendments to Rules 17, 18, 32 and 40 of the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regulations) that will enter into force on 1 November 2023. The Madrid Union Assembly also adopted changes to Rules 21, 23bis and 32 of the Regulations that will enter into force on 1 November 2024.

Changes from 1 November 2023

Rule 17 of the Regulations has been amended to require Offices of the designated Contracting Parties to clearly indicate in the notification of provisional refusal the start and end dates of the time limit to file a request for review of, or an appeal against, or a response to, a provisional refusal.

Further amendments to Rule 17 require Contracting Parties to provide holders of international registration with a minimum time limit of two months, or 60 consecutive calendar days, to file a request for review of, or an appeal against, or a response to, the provisional refusal of registration.

Trade marks — Registration of BIN 2 and BIN 8 trade marks refused after successful opposition under s 41

Date: 20 September 2023
Source: Australian Trade Marks Office (ATMO)
Decision date: 29 August 2023
Catchwords: Opposition under section 52 Trade Marks Act 1995 (Cth) — grounds of opposition under ss 41 and 58 – s 41 ground established – registration of each trade mark refused

Abstract:

Endeavour Group Ltd v Southcorp Brands Pty Ltd [2023] ATMO 127 involved an opposition by Endeavour Group Ltd to the registration of TMA 1906783 (class 33) and TMA 1906784 (class 33) (together, TMs) both in the name of Southcorp Brands Pty Ltd. A delegate of the Registrar of Trade Marks found that the ground of opposition in s 41 had been established, and refused registration of each trade mark.

Background:

The Applicant sought to register the trade marks BIN 2 (Word mark) and BIN 8 (Word mark), both as wines in class 33. The Opponent’s Statement of Grounds and Particulars (SGP) nominated ss 41 and 58 of the Trade Marks Act 1995 (Cth) (Act) as grounds of opposition.

Decision:

The Opponent’s SGP alleged, and the delegate agreed, that the TMs were not to any extent inherently adapted to distinguish the Applicant’s goods from the goods of other persons.

Trade marks – Registration of ELEVAGE BarriQ trade mark proceeds after unsuccessful opposition

Date: 20 September 2023
Source: Australian Trade Marks Office (ATMO)
Decision date: 22 August 2023
Catchwords: Opposition under section 52, Trade Marks Act 1995 (Cth) — ss 43, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Abstract:

Direct Barrels Pty Ltd v Elevage Global Pty Ltd as trustee for P & G Steer Family Trust [2023] ATMO 121 was a decision of a delegate of the Registrar of Trade Marks concerning an opposition to the registration of TMA 2051073 (class 20) – in the name of Elevage Global Pty Ltd as trustee for P & G Steer Family Trust (Elevage). The opposition was unsuccessful and the trade mark was to proceed to registration.

Background:

The Applicant, Elevage, sought to register TMA 2051073 (Mark) in Class 20: Staves of wood. Parts or components of wooden barrels namely, cut staves, split staves, cut and split staves, sticks, balls made with staves. The Mark involved the words ‘ELEVAGE BarriQ’ in a tear drop design.

The Opponent, Direct Barrels Pty Ltd, filed its Statement of Grounds and Particulars (SGP) nominating grounds of opposition under ss 43, 58, 60 and 62A considered – none of the Trade Marks Act 1995 (Cth) (Act).

Patents — FCA makes final orders in patents dispute about car park technology

Date: 13 September 2023
Court: Federal Court of Australia
Judge(s): Moshinsky J
Judgment date: 12 September 2023
Catchwords: Patent litigation — form of final orders — costs — where applicant successful in defeating infringement claim and largely successful in unjustified threats claim

Abstract:

In UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 3) [2023] FCA 1079, the Federal Court handed down final orders, including a declaration that certain threats of patent infringement were unjustifiable, injunctive relief and costs, in a patents dispute where both parties supplied technology to car park owners and operators.

Background:

In previous proceedings, the court held that TMA Capital Australia Pty Ltd (TMA) had made unjustified threats of patent infringement proceedings against UbiPark Pty Ltd (UbiPark) within the meaning of ss 128 and 129 of the Patents Act 1990 (Cth) (UbiPark Pty Ltd v TMA Capital Australia Pty Ltd (No 2) [2023] FCA 885).

The court had also found that UbiPark’s technology did not infringe the relevant claims of TMA’s Australian Patent No. 2019213335, dismissing the infringement claim as well as the ACL claim against UbiPark brought by TMA.

Recent Australian Designs Office decisions

Date: 8 September 2023
Source: Australian Designs Office (ADO)

Abstract:

The Australian Designs Office has published three decisions:

Wynnes Patent and Trade Marks Attorneys Pty Ltd v Wamlez Pty Ltd [2023] ADO 3 (31 July 2023)

• Request for examination by Wynnes Patent and Trade Marks Attorneys Pty Ltd (“Wynnes”).
• Design registration 201712220 in the name of Wamlez Pty Ltd, being a driver bit for a fastener.
• A certificate of examination had been issued. Wynnes requested examination pursuant to s 63(3) of the Designs Act 2003 (Cth). The examiner did not raise any grounds for revocation and proposed to issue a certificate of examination. Wynnes requested to be heard.
• The evidence was lengthy, and in some instances irrelevant and the ADO noted that formal requirements for statutory declarations were not met in some documents.
• It was found that there was not a sufficient amount of disclosure in prior art to enable a fair comparison between the designs. In any event, what was disclosed was not substantially similar in overall impression. The material provided did not provide a basis for concluding the design was not new.

John Farnham hit ‘You’re The Voice’ made anthem of referendum’s Yes campaign

Date: 4 September 2023
Source: Yes Campaign

Abstract:

John Farnham’s 1986 hit ‘You’re The Voice’ has been made the official anthem for the Indigenous Voice to Parliament referendum as it soundtracks a new advertising campaign.

“This song changed my life. I can only hope that now it might help, in some small way, to change the lives of our First Nations peoples for the better,” Farnham said.

Some reports state this to be the first time the song has been licenced in a commercial. However, when looking closer at the song’s use this doesn’t ring entirely true. In 2001, it was used in the Australian Electoral Commission’s enrolment ad, in 2009 it was temporarily used by Cadbury in a redub of its iconic drumming gorilla ad and in 2012, it was used by Ford in their TV ad campaign.

It has also been used in the soundtracks of movies, including ‘Hot Rod’, a comedy from 2007.

Even with these cases, Farnham has long been against the use of the song in “negative” cases. For instance, when it became an unofficial anthem for anti-vaccination protests during the pandemic, Farnham voiced his disapproval.