Australia: Intellectual Property News

Last Updated: 5 February 2008
Article by Charles Alexander

Trade Marks


Federal Court Finds Against Mayne Industries Pty Ltd

The Federal Court has found against Mayne Industries Pty Ltd ('Mayne') in their trade mark dispute with Advanced Engineering Group Pty Ltd ('Advanced Engineering'). Mayne was the registered owner of a trade mark consisting of a rod bent to an S shape registered in relation to 'fence droppers'. Mayne alleged that Advanced Engineering had infringed their trade mark by importing 'fence droppers' which embodied the same shape depicted in Mayne's mark. Advanced Engineering contended that the shape mark served a substantially functional purpose and therefore its use of the shape was not use as a trade mark. The Federal Court agreed with Advanced Engineering's contention, finding that the functional features of the S shape meant its use of the shape was not use as a trade mark. Furthermore, the Court found that the S shape was the only 'commonly known' way to describe or identify the 'fence dropper', and as the mark was formerly exploited under a patent, Mayne was deprived of any exclusive rights to use or authorise others to use the mark. Given the circumstances, the Court exercised its discretion to cancel the registration of Mayne's mark.

Trade Marks Office Finds 'Dirty Kustoms Industries' Deceptively Similar To 'Kustoms'

The Trade Marks Office (TMO) has denied the registration of 'Kustoms' after finding it to be deceptively similar to Pineapple Trademarks Pty Ltd's registered trade mark 'Dirty Kustoms Industries'. The TMO did not believe the two marks were substantially identical as side by side, the differences in meaning and appearance of the marks were greater than the similarities. However, the TMO found that there was a strong likelihood that because the marks were both designed for the same market, buyers would believe that the marks were related. This was especially so as the marks were designed for the youth clothing market which the TMO described as particularly "brand conscious", thus increasing the chance of confusion and making the marks deceptively similar.


UK Launches Trade Mark Fast-Tracking Option

The UK Intellectual Property Office has launched an option for trade mark applicants to cut the waiting period for trade mark examination from over a month to ten days at the cost of Ł300. However, this will not shorten the three month opposition period and respondents to the UK Government's consultation on the plan suggested that the service would only be of limited value as it would not significantly decrease applicants' waiting periods.



Federal Court Finds Infringement Of Copyright In Project Home Plans

The Federal Court has found in favour of house designer, Mr Hille and builders, Atrium Homes, in their action for copyright infringement by Roger Gaunt of their customised project home plans. Atrium Homes had modified Mr Hille's design for Mr Gaunt, who later (through his brother acting under a power of attorney) provided the plans to Beaumonde Homes, a competitor of Atrium Homes. Beaumonde Homes then used the design to build a house for Mr Gaunt. On appeal from the Local Court of Western Australia, the Court upheld the finding that Mr Gaunt's brother had colluded with

Beaumonde Homes to copy the plans and had infringed copyright. Furthermore, the Court found that Beaumonde Homes was to indemnify Mr Gaunt for 50% of his liability for damages and costs. However, the Court overturned an earlier finding that Atrium Homes should be awarded compensation for loss of profit as there had been no agreement for Atrium Homes to construct the house. Accordingly, the award of damages to Atrium Homes was reduced from $15,450 to $9,500.


UK Government Puts Pressure On ISPs To Reach Voluntary Scheme With Music And Film Industries

The UK Minister for Intellectual Property, Lord Triesman, has stated that if Internet Service Providers (ISPs) cannot reach agreement with music and film industries to combat illegal file sharing, he will push for the introduction of legislation forcing the disconnection of illegal file sharers. If settlement is not reached, it appears likely that parliament would approve of such legislation. Triesman also stated that the UK government is working with the French on developing France's anti-infringement legislation, as reported in our 20 December issue.


Federal Court Of Australia Revokes Stack Petty Patent

In the latest judgment in a long-running patent dispute between George Stack, the Brisbane City Council, David Shephard Pty Ltd and others, the Federal Court of Australia has revoked a petty patent owned by Mr Stack relating to "water meter assemblies". The Court found Mr Stack, by his company GS Technologies, was estopped from making certain arguments due to findings made in proceedings as to the relevant parties' lack of entitlement to a related priority document.


Australian Designs Office Refuses Microsoft's 'Type Font' Application

The Australian Designs Office (ADO) has refused Microsoft Corporation's application to register a particular font as a design. Microsoft claimed there was a registrable design associated with the particular appearance of the font, however, the ADO found that the application failed to satisfy the preliminary requirement that an application disclose a product bearing visual features. Instead, the ADO found that the disclosure of a font only disclosed 'a collection of visual features intended to be applied to unspecified products in unspecified arrangements', and therefore could not be registered.


Chinese Government regulates video entertainment web sites

The Chinese Government has issued regulations, scheduled to take effect on January 31, requiring the state to have a controlling interest in any video entertainment web site based in China, such as, one of China's largest video sharing sites. However, analysts believe that China will probably be more lenient on private web sites, allowing them around the strict rules in order to keep foreign investment flowing. Video sharing sites based abroad will not be directly affected by the new rules.

Policy Update

Government Reviews Format Shifting Exceptions For Film And Photos

The Government has released the Issues Paper for the review of the format shifting exceptions for photographs and films introduced into the Copyright Act 1968 in order to determine whether the exceptions were operating satisfactorily. The exceptions, which commenced on 11 December 2006, permit the reproduction of photographs and cinematograph films in a different format for private use, subject to some conditions. Parties can make submissions by 29 February 2008 and the review of the exceptions will be carried out by 31 March 2008.

Australian Tax Office Considers New Rules To Deter Illegal Transfer Pricing

The Australian Tax Office (ATO) is reported to be working on a consultation paper to establish new rules to better address the valuation of transactions whereby companies transfer their IP assets off-shore. In part, it is thought such changes may deter large multinational corporations from transferring their IP to "tax-haven" jurisdictions and thereby depriving the government of tax revenue that might otherwise be collected on royalties paid in Australia.

IP Crime Group Releases UK IP Crime Report

The IP Crime Group (IPCG) has released its annual Intellectual Property Crime Report which aims to accurately measure IP crime within the UK. The Report identifies the internet as one of the key areas of concern in IP crime, due to both the increased use of the internet and a result of criminals using more diffuse methods to reduce the risk of being caught. The Report makes a number of recommendations, including education and co-operation between the UK Intellectual Property Office, IP right owners and enforcers and the development of a web-based resource providing counterfeit product identification guidelines.

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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