Australia: Intellectual property highlights of 2010

Last Updated: 12 January 2011
Article by Alexia Marinos

By Kimberly Statham of Gadens Lawyers, Sydney

Last year saw a number of interesting developments in the intellectual property space, thanks to some groundbreaking copyright and trade mark Court decisions. As 2011 begins, we thought it would be a good idea to recap on some of the key issues that arose in 2010.

Telstra Corporation & Anor v Phone Directories Company Pty Limited & Ors [2010] FCA 44

In a landmark decision handed down on 8 February 2010, the Federal Court of Australia held that copyright does not subsist in the contents of the Yellow Pages and White Pages telephone directories. The decision reached in this case will no doubt be far reaching and will impact works which are, for example, data compilations, computer generated works, or works which are created through the efforts of different employees in a business.

Gordon J had focussed on three key areas, including the development of the directories, authorship and ownership.

Gordon J found that the authors of the content were unidentifiable, and that no "independent intellectual effort" or "sufficient effort of a literary nature" was able to be identified.

Following this decision, it is important for organisations and businesses to implement new procedures to identify authors that contribute works in order to capture the requirement of identifiable authorship in copyright.

To see the full case, click here.

Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291 (Mantra Case)

The Mantra decision handed down on 26 March 2010, demonstrated the importance of registering trade marks for marketing and advertising purposes by property developers and managers, and all other brand owners in general.

The decision effectively reinforced the importance of registering trade marks to protect your brand from unauthorised use and to take appropriate steps in obtaining authorisation to use trade marks when promoting your goods and services. Developers in particular, should register trade marks for new developments before selling any apartments.

To see our previous update surrounding the facts and outcome of this case, click here.

Budget Eyewear Australia Pty Ltd v Specsavers Pty Ltd (includes Corrigendum dated 24 June 2010) [2010] FCA 507

On 19 May 2010, the Federal Court of Australia granted interlocutory relief, which prevented Specsavers Pty Ltd (Specsavers) from publishing content which was substantially similar to the advertising and marketing content of Budget Eyewear Australia Pty Ltd (Budget Eyewear).

Specsaver's print advertisement contained phrases which were almost identical to the wording used by Budget Eyewear in a similar advertising campaign.

Bennett J had to determine whether copyright subsisted in the works and held that there was sufficient evidence of authorship in the advertisements to warrant its application. Her Honour went further to say that "the fact that the words are commonplace does not mean that the way in which they are put together cannot have a degree of originality".

This decision emphasises the importance of taking extra care when expressing another person's ideas that are in another copyright work. It also makes it clear that whilst it is legally possible to copy an advertising idea of a competitor, the replicated idea or advertising must be substantially different to the original.

To see the full decision, click here.

Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639

In a decision handed down on 22 June 2010, the Federal Court of Australia confirmed that Mars Australia Pty Ltd can register the purple shade used on its' range of Whiskas cat food packaging as a TM.

Bennett J had considered whether the purple colour was capable of distinguishing Whiskas products. She noted that Mars "adopted an entirely new colour as a trade mark and promoted it heavily from the outset with ... the clear intention of giving the colour trade mark significance".

This case further reinforced the need for brand owners to register their colours as trade marks or any other non-traditional trade marks. However, it should be noted that registration of a single colour may not be easily obtained, and it is important to ensure that the trade mark is promoted and used extensively to ensure that the trade mark is distinctive.

To see our previous update surrounding the facts and outcome of this case, click here.

Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 (Fairfax decision)

On 7 September 2010, the Federal Court of Australia found that newspaper headlines are not protected by copyright.

The Federal Court ruling suggests that, in the meantime, there is no way for a publisher to protect its headlines under Australian copyright laws. This principle is likely to extend beyond newspaper and magazine headlines to other media types such as song and book titles.

Interestingly enough, after the Fairfax decision had been delivered, the UK High Court took a comparatively different approach. On 26 November 2010, the UK High Court held in The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2010] EWHC 3099 (Ch (Meltwater case), that newspaper headlines and short extracts from newspaper articles may in fact be protected by UK copyright laws.

Proudman J of the UK High Court had discussed the comments of Bennett J in the Fairfax decision, but said that "the evidence in the present case (incidentally much fuller than the ones being considered by Bennett J in Fairfax), is that headlines involve considerable skill in devising and they are specifically designed to entice by informing the reader of the content of the article in an entertaining manner".

Proudman J went further to state that "in my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate".

To see our previous update surrounding the facts and outcome of the Fairfax decision, click here.

To see the full decision of the Meltwater case, click here.

Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) [2010] FCA 1162 (Sporte case)

On 29 October 2010, the Federal Court of Australia handed down its decision as to whether a license to use trade marks on goods that were to be manufactured in India, also included a right to export those same goods outside of India.

The Court had considered the operation of section 123 of the Trade Marks Act 1995 (Cth), which provides a defence to an infringement where a trade mark is used with the consent of the registered TM owner.

Nicholas J had found that there was no consent to apply the trade marks to goods which were exported outside of India.

The Sporte case reinforces that infringing parties cannot escape liability under section 123 if they have not complied with the express terms of a license agreement.

To see our previous update surrounding the facts and outcome of this case, click here.

What we do

Gadens Lawyers' national intellectual property and technology (IP&T) practice group takes a pragmatic approach to advising clients on the exploitation of technology-based commodities and the protection of IP&T rights.

Increasingly, innovation rather than manufacture is the key to bringing value to a business. Innovators must take early steps to protect their IP rights or risk losing the value of their hard work. Gadens Lawyers assist clients in identifying and securing the IP that is central to their business, helping them to retain their competitive advantage.

Our IP&T group has led the legal field in protecting clients' rights and has been involved in landmark IP&T cases throughout Australia.

Please contact our senior associate, Alexia Marinos, who is an IP&T expert and registered trade marks attorney for further information.

For more information, please contact:


Kym Livesley

t (02) 9931 4894


Alexia Marinos

t (02) 9931 4955

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