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Battle between burger brands: In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2)

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Miriam Zanker and Courtney White DAVIES COLLISON CAVE
Volume: 33
Year: 2020

In a Federal Court decision handed down in February 2020, 1 an Australian company operating burger restaurants under the name Down-N-Out was found liable for trade mark infringement, misleading or deceptive conduct and passing off based on the similarity of its mark to the US brand In-N-Out Burger. On 5 June 2020, 2 Katzmann ...

Design of a decade: reform for design regime still planned after nearly 10 years of review

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Christopher Mittiga LEGALVISION
Volume: 33
Year: 2020

Regulatory changes to Australia’s designs ecosystem have been a long time coming, with a review process commencing nearly 10 years ago finally bearing fruit: IP Australia has indicated that later this year, an exposure draft of a proposed Bill to amend the Designs Act 2003 (Cth) (the Act) will be released. ...

Facebook, Inc [2020] APO 19 — further guidance on patent manner of manufacture for computer implemented inventions

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Ryan Boe SPRUSON & FERGUSON
Volume: 33
Year: 2020

Key points • A technical improvement to a computer using generic implementation can be considered patentable subject matter in Australia under s 18 of the Patents Act 1990 (Cth). 1 • Where generic computer implementation directed towards solving a non-patentable (in this case a business) problem is used, it may still ...

Infringing or not infringing? That is the question — reducing infringement risks for pirated foreign brands that wish to manufacture goods in China following the Hondakit decision

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Grace Chen and Dan Plane SIPS
Volume: 33
Year: 2020

The legal standard for determination of trade mark infringement in relation to “Original Equipment Manufacture” (OEM) products has been constantly evolving over the last 20 years in China. Following issuance of the Honda Motor Co, Ltd v Chongqing Hengsheng Xintai Trading Co Ltd and Chongqing Hengsheng Group Co Ltd 1 ( ...

Liability for copyright infringement through streaming and downloading platforms in Boomerang Investments Pty Ltd v Padgett

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Emma Gorrie and Sarah Muller ALLENS
Volume: 33
Year: 2020

Key points • “Sung lyrics” are part of a musical work. • Platforms licensed to authorise streaming or downloading of a copyright work do not infringe by authorising the same conduct for a second work which reproduces a substantial part. Introduction Boomerang Investments Pty Ltd v Padgett (Liability) 1 illustrates potential ...

More to logo trade marks than meets the eye

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Anita Brown PHILLIPS ORMONDE FITZPATRICK
Volume: 33
Year: 2020

Key takeaways • Trade marks comprising of or incorporating artistic works may be protected under copyright legislation. • Should copyright subsist in an artistic work that is also intended to be the subject of a trade mark application, lawyers should advise clients that the artistic work must: — meet the ...

Office decision sees patent applicant ousted from applications following inventorship dispute

Wed, 08/05/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Mattia Pagani and Chris J Carter DAVIES COLLISON CAVE
Volume: 33
Year: 2020

Introduction A decision by the Australian Patent Office (Office) has resulted in a patent applicant losing entitlement to his applications after it was found that he was not the true inventor. Vuly Pty Ltd v Yang 1 involved a dispute between a company and its ex-employee over the ownership of a ...

COVID-19 — patent rights in the time of a pandemic

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Grant Shoebridge and Jennifer Enmon PEARCE IP
Volume: 33
Year: 2020

Introduction The COVID-19 pandemic and the urgent global need for effective treatments and/or a vaccine have implications for Australia’s new Crown use and compulsory licensing patent provisions as well as similar provisions from around the globe. With these provisions, a government and in some cases a third party can access ...

Evaluating proposed reforms of Australia’s IP system to protect indigenous knowledge

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Benjamin John and Madeleine Gandhi BANKI HADDOCK FIORA
Volume: 33
Year: 2020

Key points • IP Australia published the Protection of Indigenous Knowledge in the Intellectual Property System Work Plan 2020-21 1 (Work Plan 2020-21) in December 2019, which contains 10 proposals and action plans arising from consultations undertaken throughout 2018 and 2019. 2 • The proposals aim to resolve existing flaws in Australia’s ...

Freedom to test: patents and genetic diagnostic testing in Australia

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Jane Nielsen and Dianne Nicol UNIVERSITY OF TASMANIA
Volume: 33
Year: 2020

The litigation over the breast cancer gene (BRCA) patents held by Myriad was keenly followed by many, primarily due to the impact it was considered it would have on the availability and cost of genetic diagnostic testing. Our research has indicated that the decision had minimal impact on the availability ...

In case of emergency … exploit rights? A summary of the Crown’s power to exercise intellectual property rights in an emergency

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Daniel Jepson HOLMAN WEBB LAWYERS
Volume: 33
Year: 2020

Introduction Recent events, including the Covid-19 pandemic, have led to calls for governments to use privately owned intellectual property for the public interest. Contact tracing technology, testing kits, potential treatments and research analysis are just a few examples of privately generated inventions and works that may be of incredible public ...

COVID-19 — patent rights in the time of a pandemic

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Grant Shoebridge and Jennifer Enmon PEARCE IP
Volume: 33
Year: 2020

Introduction The COVID-19 pandemic and the urgent global need for effective treatments and/or a vaccine have implications for Australia’s new Crown use and compulsory licensing patent provisions as well as similar provisions from around the globe. With these provisions, a government and in some cases a third party can access ...

Evaluating proposed reforms of Australia’s IP system to protect indigenous knowledge

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Benjamin John and Madeleine Gandhi BANKI HADDOCK FIORA
Volume: 33
Year: 2020

Key points • IP Australia published the Protection of Indigenous Knowledge in the Intellectual Property System Work Plan 2020-21 1 (Work Plan 2020-21) in December 2019, which contains 10 proposals and action plans arising from consultations undertaken throughout 2018 and 2019. 2 • The proposals aim to resolve existing flaws in Australia’s ...

Freedom to test: patents and genetic diagnostic testing in Australia

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Jane Nielsen and Dianne Nicol UNIVERSITY OF TASMANIA
Volume: 33
Year: 2020

The litigation over the breast cancer gene (BRCA) patents held by Myriad was keenly followed by many, primarily due to the impact it was considered it would have on the availability and cost of genetic diagnostic testing. Our research has indicated that the decision had minimal impact on the availability ...

In case of emergency … exploit rights? A summary of the Crown’s power to exercise intellectual property rights in an emergency

Fri, 06/12/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Daniel Jepson HOLMAN WEBB LAWYERS
Volume: 33
Year: 2020

Introduction Recent events, including the Covid-19 pandemic, have led to calls for governments to use privately owned intellectual property for the public interest. Contact tracing technology, testing kits, potential treatments and research analysis are just a few examples of privately generated inventions and works that may be of incredible public ...

Beer glass half empty for trade mark owner — Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd

Fri, 05/29/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Ben Wilson and Kate Andean BANKI HADDOCK FIORA
Volume: 33
Year: 2020

Takeaway points: • An applicant in a trade mark infringement action should be confident in its own rights and understand the risk that it will be attacked by the respondent; are the potential consequences worth it? • It continues to be difficult to obtain monopoly rights in varietal names for ...

China’s commitment to IP protection is upfront in its Economic and Trade Agreement with the US

Fri, 05/29/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Courtney Macintosh SIPS ASIA
Volume: 33
Year: 2020

Phase 1 of the Economic and Trade Agreement between the United States of America and the People’s Republic of China was released on 15 January 2020 (the Agreement). The eight-chapter Agreement covers a range of trade issues. Importantly, intellectual property (IP) (including technology transfer) occupies pride of place in the first two chapters. ...

Commonwealth v Sanofi — Commonwealth’s bid for compensation fails

Fri, 05/29/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Rebekah Gay, Emma Iles and Aaron Hayward HERBERT SMITH FREEHILLS
Volume: 33
Year: 2020

Introduction On 28 April 2020, Nicolas J handed down the long-awaited decision in Commonwealth v Sanofi (formerly Sanofi-Aventis) (No 5) . 1 This is the first case in which the Federal Court has been required to determine the Commonwealth’s claim for compensation under the “usual undertaking as to damages”, for losses arising from an interlocutory ...

Sports data litigation wars loom

Fri, 05/29/2020 - 22:00
Journal/Newsletter: Australian Intellectual Property Law Bulletin (newsletter)
Author: Martin Slattery CARROLL & O’DEA LAWYERS
Volume: 33
Year: 2020

Sports data collection is becoming a valuable asset in the lucrative online gambling market. As major players in this emerging field position for market share with exclusivity deals and the practice of policing stadiums for data scouts, courts are now becoming the arbiters of the legal tension between intellectual property ...