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Beware descriptive terms in trade marks: review of two Trade Mark Office Hearing Cases

Australian IP Bulletin Newsletter - Thu, 11/05/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Binh Rey BAXTER IP
Volume: 33
Year: 2020

The following two cases highlight the importance of avoiding descriptive terms in a trade mark, as well as reinforcing the need to give enough evidence when presenting a case. Australian Black Sheep Pty Ltd v Australian Ugg Pty Ltd (8 July 2020) This matter 1 was an opposition to two trade marks filed ...

Ceramiche Caesar SpA v Caesarstone: the pitfalls to be avoided by raw material manufacturers seeking trade mark protection for use of their marks in relation to final end user products

Australian IP Bulletin Newsletter - Thu, 11/05/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Jacqueline Chelebian and Khajaque Kortian SPRUSON & FERGUSON LAWYERS
Volume: 33
Year: 2020

In the recent decision of Ceramiche Caesar SpA v Caesarstone Ltd [2020] FCAFC 124 (28 July 2020), 1 the Full Court of the Federal Court considered the effect of an amendment during prosecution, expressly excluding goods in a trade mark application, when assessing “honest concurrent use”, and also the level of control required ...

Parallel imports in Australia

Australian IP Bulletin Newsletter - Thu, 11/05/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Chris Round and Olivia Coburn K&L GATES
Volume: 33
Year: 2020

Introduction This article summarises the changes to parallel importation law as it relates to trade marks as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (the Act). Trade mark holders will now find it much more difficult to prevent parallel ...

The Aboriginal Flag

Australian IP Bulletin Newsletter - Thu, 11/05/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Dimitrios G Eliades BARRISTER
Volume: 33
Year: 2020

Introduction Since its design in 1971, the Aboriginal Flag has grown to become a symbol of First Nations peoples’ unity, providing them with deserved national and international identity and providing non-First Nations peoples with an opportunity to pay respect and acknowledge publicly this nation’s first peoples. Since 2018, events involving ...

Trade marks can make or break a distributorship

Australian IP Bulletin Newsletter - Thu, 11/05/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Eric Ziehlke SWAAB
Volume: 33
Year: 2020

Introduction When an overseas principal sets up an exclusive distributorship in Australia, it will generally do all it can to support its exclusive distributor. However, the principal needs to ensure that its own trade mark rights are fully protected. Set out below are two scenarios which highlight how trade marks ...

Coffee capsule conflict: patent claims revoked in Caffitaly System SpA v One Collective Group Pty Ltd

Australian IP Bulletin Newsletter - Sat, 10/10/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Alison Beaumer and Jessie McKenna ALLENS
Volume: 33
Year: 2020

Introduction In an orthodox application of the law on patent infringement and validity, the Federal Court, in Caffitaly System SpA v One Collective Group Pty Ltd , 1 has dismissed an application by Caffitaly System SpA (Caffitaly) for infringement of its coffee capsule patents and revoked the asserted claims for invalidity. ...

Patenting plants at the EPO — more restrictive than in Australia

Australian IP Bulletin Newsletter - Sat, 10/10/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Humphrey Foote DAVIES COLLISON CAVE
Volume: 33
Year: 2020

Following the Enlarged Board of Appeal’s (EBA) decision in the G 0003/19 case earlier this year, 1 plants (and animals) that are exclusively obtained by means of an essentially biological process are no longer patent eligible subject matter at the European Patent Office (EPO). Here we briefly discuss how we got ...

Using copyright to battle trade mark pirates in China

Australian IP Bulletin Newsletter - Sat, 10/10/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Courtney Macintosh and Yijie Zhao SIPS
Volume: 33
Year: 2020

This article examines how foreign rights holders can assert copyright against Chinese pirates who apply to register or use their design trade marks in China. It focuses in particular on a recent case decided by China’s Supreme People’s Court (SPC) that illustrates the protections available and explains the type of ...

Using post-filing data to help establish sufficiency and support

Australian IP Bulletin Newsletter - Sat, 10/10/2020 - 23:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Candace Wu, PhD and Michael Christie, PhD SHELSTON INTELLECTUAL PROPERTY
Volume: 33
Year: 2020

Australia introduced the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) with the aim of aligning Australia’s written description requirements with those in the UK and Europe. The new requirements require the specification to disclose the invention in a manner which is clear enough and complete enough for the ...

Electronic gaming machines come up trumps for Aristocrat

Australian IP Bulletin Newsletter - Thu, 09/03/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Paul Mahony BLACKWATTLE IP
Volume: 33
Year: 2020

Key points • Computer-implemented inventions continue to be patent eligible subject matter in Australia, subject to some important caveats. • Characterisation of the “substance” of an invention is not an assessment of the “inventive concept”. • The role of expert witnesses and common general knowledge is limited to assisting the ...

Let’s get clinical — when will clinical trial documents anticipate?

Australian IP Bulletin Newsletter - Thu, 09/03/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Rebekah Gay, John Lao and Henry Simpson HERBERT SMITH FREEHILLS
Volume: 33
Year: 2020

The recent decision of the Full Federal Court of Australia in Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd ( Mylan v Sun Pharma ) 1 confirmed that documents from a clinical trial can be novelty defeating, even if the disclosure is of matters that are yet to be scientifically ...

Mylan v Sun Pharma: Full Court clarifies test for infringement of Swiss-style claims

Australian IP Bulletin Newsletter - Thu, 09/03/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Angela McDonald 5 WENTWORTH CHAMBERS
Volume: 33
Year: 2020

Introduction A five-judge bench of the Full Court in Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd recently clarified the test for infringement of Swiss-style claims. 1 Key points • In determining infringement of Swiss-style claims, the question which must be answered is: “as the product of the claimed ...

Parody songs under Australian copyright law

Australian IP Bulletin Newsletter - Thu, 09/03/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Miriam Zanker and Lachlan Sadler DAVIES COLLISON CAVE
Volume: 33
Year: 2020

In addition to its far more serious impacts, the COVID-19 pandemic (and, in particular, the accompanying prolonged periods of social isolation) has inspired various aspiring musicians to create imaginative parody songs, from “My Corona” to “Coronavirus Rhapsody”, to riffs on The Beatles’ “Yesterday”. As well as providing some much-needed comic ...

Second time’s a charm: preliminary discovery from ISPs to unmask copyright infringers

Australian IP Bulletin Newsletter - Thu, 09/03/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Daniel Jepson and Jacob Daly HOLMAN WEBB LAWYERS
Volume: 33
Year: 2020

Introduction Over the years, rights holders have tried several different creative ways to identify and prosecute copyright infringers using the internet. One way of doing that is to compel the potential infringer’s internet service provider (ISP) to produce relevant information through preliminary discovery. The recent decision of Siemens Industry Software ...