Australia: Intellectual Property News

Last Updated: 22 October 2007



Interlocutory injunction granted to restrain infringement of a patent
Sanofi-Aventis (Sanofi), a pharmaceutical company, has been successful in obtaining an interlocutory injunction in the Federal Court, restraining another pharmaceutical company, GenRx Pty Ltd, from infringing their patent. Initially, GenRx brought the proceedings and made an application for revocation of Sanofi's patent. Sanofi, the cross-claimant, in turn made an application for an interlocutory injunction restraining GenRx from infringing the patent. While the Court accepted that GenRx is threatening to import and sell products which infringe Sanofi's patent, it also stated that there is a substantial issue to be tried regarding the validity of Sanofi's patent. The Court noted that the long standing exploitation of the patent, and the fact that GenRx failed to bring the revocation proceedings in a timely fashion supported the grant of an injunction. A decision will be made as to whether to extend the injunction when the matter is next heard.

The decision can be accessed at:

Collins v Northern Territory [2007] FCAFC 152

The Full Federal Court has found in favour of Vincent and Maryann Collins, the owners of a process patent for extracting oil from Cyprus Pine trees, in a dispute against the Northern Territory. The patentees claimed that the Government was liable for contributory infringement of the patent by issuing licences to the Australian Cyprus Oil Company Pty Ltd (ACOC) to enter government land and remove Cyprus Pine Trees. The Court found that the government licences were tantamount to a contract of sale, and that the Cyprus Pine, at least in the Northern Territory, did not constitute a 'staple commercial product' under s 117 of the Patents Act 1990. Therefore the government was liable for contributory infringement for supplying the product to the ACOC. The matter will return to the trial court so that remaining issues can be determined.

The case can be accessed at:


France ratifies the European Patent Convention
The French Parliament has ratified the European Patent Convention, which aims to modernise the procedure of the European Patent Office (EPO) for granting patents. Countries which ratify the convention agree to waive the requirement for translation of the European patents into their national language. This means that applicants will not have to translate the specification of their patents if it is written in one of the three EPO languages, namely, English, French or German. France is the last to ratify the convention, and has exercised strong resistance to the convention in the past. It is expected that the agreement will have a positive impact on the costs involved in the patent system.

Further information can be accessed at:



Federal Court considers copyright subsisting in architectural plans of two project homes
The Federal Court has found in favour of Barrett Property Group Pty Ltd (Barrett), a company which builds project homes, in a copyright dispute against another project home company, Metricon Homes Pty Ltd (Metricon). Barrett contended that Metricon infringed the copyright subsisting in its architectural plans for a home. The Court noted that Barrett's plans were original in that they were different from common place architectural designs in the project home market. The managing director of Metricon admitted he had knowledge that the house designs were derived from Barrett's plans, and the Court found that he authorised the copyright infringement. In addition, the product development manager of Metricon who had control over the designer who copied the plans, was also personally liable for authorising the infringement. The Court held that the elements of the plans copied were qualitatively and quantitatively a substantial part of Barrett's plans, and Metricon was found to have infringed copyright.

The decision can be accessed at:

Copyright continued

ACCC reauthorises PPCA licensing arrangements
On 27 September 2007, the ACCC reauthorised the collective licensing arrangements of the Phonographic Performance Company of Australia Limited (PPCA). The PPCA represents holders of copyright in sound recordings and music video, such as record companies and artists. PPCA is granted a non-exclusive right to license right to recordings by the copyright holders. The PPCA arrangements were first authorised in 1985. The ACCC said that while the pooling of rights might reduce competition compared to copyright owners individually licensing their rights, it believes the collective arrangements will lead to public benefits through reduced costs and facilitation of copyright compliance.

Further information can be accessed at:

Le v The Queen

The Federal Court has, on appeal, upheld the custodial sentence imposed by a Magistrate on Ms Le, who pleaded guilty to six offences under the Copyright Act 1968 for possessing infringing articles for sale or hire and possessing a device for infringing copyright, and five offences under the Trade Marks Act 1995 for possessing goods with falsely applied trade marks. Ms Le argued that the Magistrate erred in failing to consider alternatives to full time imprisonment, and failing to apply a discount for an early plea. On appeal, the Court upheld the 12 month custodial sentence, however the non-release period was reduced from eight months to three months. The Court noted that there is a need to deter future acts of infringement, particularly similar repeat offences.

The decision can be accessed at:


The High Court of New Zealand reserves judgment on Rugby World Cup broadcast dispute The High Court of New Zealand has reserved its decision in a dispute between MediaWorks, the owner of NZ television station TV3, and SkyTV, another NZ television station. MediaWorks claims that SkyTV is infringing its exclusive rights to broadcast the Rugby World Cup, by broadcasting its footage on SkyTV. Earlier this year, MediaWorks signed an agreement with TVNZ and Sky allowing the stations access to the World Cup footage for news purposes. MediaWorks claims that Sky has breached this agreement by illegally broadcasting footage outside the agreement. Sky claims it has a legal right under the Copyright Act to use the footage because it is reporting on a current event. The High Court reserved its decision, and an interim injunction was ordered preventing SkyTV from broadcasting the TV3 World Cup footage on 'The Cup', 'Rugby Highlights' and 'Sport 365 Highlights', pending the decision of the Court.

The article can be accessed at:

Trade marks


European Court of Justice rules on shape marks
The European Court of Justice (ECJ) has made a ruling in relation to a dispute between fashion labels G-star and Benetton, concerning whether the shape, stitching and cut of certain jeans can be trade marked. The dispute began when Gstar sued Benetton for selling jeans which infringed two of G-stars registered marks. Benetton subsequently filed a cross-claim and asked the Court to cancel the marks. Both claims were dismissed by the Amsterdam District Court, however, on appeal, G-star's claim was allowed and Benetton's application for annulment of the trade marks was dismissed. Benetton appealed to the Dutch Supreme Court which called on the ECJ to clarify the rules. The ECJ held that shapes which give substantial value to a product cannot constitute a trade mark according to an interpretation of article 3(1)(e) of the European Community Trade Mark Directive. This is the case even where the shape has become attractive or popular through advertising. The matter will now return to the Dutch Supreme Court.

The decision can be accessed at: click here

UK Intellectual Property Office changes trade mark application system
The UK Intellectual Property Office has changed the way trade mark applications are processed. Trade mark examiners will now simply notify applicants about earlier marks which may conflict with their application. It is then up to the applicant whether they continue with the application, or whether they alter or withdraw their application. If the applicant proceeds and the trade mark is registered, the owners of the earlier conflicting marks will be notified, and may oppose it.

The press release can be accessed at:

Trade marks continued

Google files motion for dismissal of American Airlines case
Google has filed a motion for dismissal in a US District Court to dismiss a lawsuit filed by American Airlines in relation to Google's controversial Adwords advertising system. The trade mark suit filed by American Airlines claims that Google sells, and benefits from, American Airlines trade marked terms because, when the terms are searched, sponsored links to competitor's sites are displayed. Google's application to dismiss the suit follows the settlement of a similar dispute with American Blinds and Wallpaper Factory, on which we previously reported in the September 24 issue.



Russia debates .su and .ru domain name
The Internet Corporation for Assigned Names and Numbers (ICANN) is negotiating with Russian Internet lobbyists over the .su domain same which was assigned to the country in 1990, just before the Soviet Union collapsed. ICANN claims that the domain name is out of date, and wants to abolish it, leaving the .ru domain name which is already assigned to Russia. The .su domain name is popular among businesses, clubs and political groups, and lobbyists are negotiating to keep the .su domain name claiming it is original, and part of the country's history and sense of community. ICANN wish to abolish the .su domain name and promote the .ru domain name as part of its drive to clean the internet of seemingly outdated domain names.

Further information can be accessed at:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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