Australia: Intellectual Property News

Last Updated: 20 March 2008
Article by Charles Alexander



Rectification and non-use claims dismissed in Federal Court trademark Dispute

The Federal Court has dismissed three actions brought by two parties regarding the trade mark INNER HEALTH PLUS registered by Health World Limited ('Health World') and the trade mark HealthPlus registered by Shin-Shun Australia ('Shin-Shun'). It was held that the trade marks were not deceptively similar and the rectification action brought by Health World was dismissed. Additionally, both parties sought removal of the opposing mark on the ground of non-use. Both non-use claims were dismissed by Jacobson J on the grounds that neither party had a real interest in removal of the trade marks and neither would be 'appreciably disadvantaged in a legal or practical sense' if the marks were to remain on the register. Health World's claims against Shin-Shun of passing off and contravention of the Trade Practices Act 1974 (Cth) were also rejected.

Click here to access the case.


Pharmaceutical re-boxing by importers deemed not damaging to trade Marks

The UK Court of Appeal has ruled that re-branding, re-boxing and de-branding of pharmaceutical products in the European Union by parallel importers is not damaging to the registered trade marks of those products. The latest decision in a series of disputes dating back almost a decade has ruled that acts of re-packaging such as changing the language of the included information leaflets are complicit with regulations and 'have not caused and will not cause damage to the reputation of the claimants' trade marks.' The Court emphasised the importance of proving damage to reputation in making out a successful trade mark infringement claim, identifying this as the relevant test.

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'Famous marks' doctrine considered by US Court of Appeals

The US Court of Appeals for the Second Circuit has upheld summary judgment in a trade mark dispute between the owners of two restaurants over the use of the restaurant name. At trial, Indian conglomerate ITC alleged that Punchgini, owner of New York's 'Bukhara Grill' restaurant chain, had unfairly adopted the name of its popular New Dehli restaurant 'Bukhara'. ITC sued for trade mark infringement and unfair competition under New York state law, but the claim of infringement was rejected on the basis of Punchgini's non-use argument, while ITC's claim of unfair competition was rejected because it relied on the 'famous marks' doctrine, which has not been adopted into US federal trade mark law. This doctrine originates in article 6bis of the Paris Convention (to which Australia is also a contracting party) and states that a mark that is already famous or well-known in one country may be refused or cancelled in another country at the request of an interested party. Additionally, a claim of unfair competition could not be made out without evidence of a primary association with the foreign mark holder.

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UK High Court case clarifies rules on sponsored link advertising

England's High Court has dismissed a trade mark infringement lawsuit brought against internet giant Yahoo! as being 'totally without merit.' Victor Wilson, owner of a London-based catering business specialising in Afro-Caribbean and Halal food, sued Yahoo! UK and its sister company, Overture Services, for infringement of his registered Community trade mark 'Mr Spicy'. Wilson alleged that when the term 'Mr Spicy' was typed into Yahoo's search engine, sponsored links to third parties' websites appeared, and this constituted an infringement of his trade mark. While acknowledging the occurrence of these results, Yahoo! countered that such results were due to the use of matching technology, and that the third party companies in question had simply sponsored the word 'spicy'. The Court held that there was no direct use of the trade mark by Yahoo!, as the search engines were merely responding to keywords entered by members of the public, in this case being the word 'spicy'. Furthermore, even if the term 'Mr Spicy' had been directly used by Yahoo!, this would not constitute use 'as a trade mark'.

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Federal Court rejects allegations of sheep drench patent infringement

The Federal Court has ruled against pharmaceutical manufacturer Nufarm Ltd ('Nufarm') in a patent infringement case brought against rival Jurox Pty Ltd ('Jurox'). Nufarm alleged that Jurox had infringed its patent over an oral sheep drench comprising both composition and method claims by manufacturing and selling its product Q-Drench. Jurox denied that Q-Drench was in possession of each of the essential features of the relevant claims. The Court held that due to the ambiguous language used in the original claims, the actual meaning of the claims would be construed in conjunction with the patent specification, and in light of evidence given by skilled addressees. With regards to these considerations, it was held that Jurox's Q-Drench product did not possess all of the essential elements of the claims, and therefore did not infringe Nufarm's patent.

Click here to access the case.


Qualcomm loses to Nokia in telecommunications patent infringement Case

The High Court in London has ruled in favour of Nokia in a patent infringement case brought by rival telecommunications company Qualcomm. Qualcomm argued that Nokia had infringed two patents that it owned, both relating to methods for controlling power consumption in mobile phones. Nokia denied infringement and crossclaimed for revocation. The Court found that Nokia would have been guilty of infringement had the patents been valid, but held that one patent was invalid on grounds of lack of novelty and obviousness, while the other patent was invalid for lack of inventive step and insufficiency.

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USPTO upholds controversial stem cell patent

The U.S. Patent and Trademark Office ('USPTO') has upheld the validity of three stem cell patents registered by the Wisconsin Alumni Research Foundation ('WARF'). The patents had been revoked in 2006 following a successful challenge on the ground of obviousness by two public interest groups. This decision was appealed by WARF, resulting in the current finding. However, although the patents have been upheld, one has been narrowed so that it only covers stem cells derived from pre-implantation embryos, and not stem cells derived from foetal tissue. A similar appeal is currently pending at the European Patent Office ('EPO') over a related European patent application.

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auDA announces change in domain name transfer policy

The auDA (Australian Domain Name Administrator) Board has announced its intention to relax the Transfers (Change of Registrant) Policy 'to allow a registrant to transfer their domain name licence to another eligible entity, for any reason.' Under the new transfers policy, registrants will be eligible to offer their domain name for sale or transfer six months after the initial registration, and may do so by any means. auDA is yet to finalise the implementation timetable, but aims to introduce the new policy by mid-2008. The Transfers (Change of Registrant) Policy (2004-03) will continue to apply in the meantime. Industry experts predict that the proposed changes will boost the popularity of domain name trading within Australia, but consider it unlikely that prices paid for Australian domain names will ever match the prices paid for domain names in the US.

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Fox News loses WIPO domain name dispute

The World Intellectual Property Organisation ('WIPO') arbitration panel has found against Fox News Network in a domain name dispute arbitration. Worldwide Directory Services ('WDS') registered the domain name '' on the same day that Fox News announced its intention to launch a business news channel, however Fox News did not attempt to register any related trade marks or domain names until five months later. Although the ruling found that WDS's 'hasty domain name registration after the announcement in February 2007 is suspicious', it was held that WDS had prior rights in the term as they had been publishing web pages using the term 'fox business network' since 2002. The WIPO arbitration panel therefore felt that there existed 'sufficient plausible evidence' that WDS legitimately used the name 'fox business network' in business, and that it was therefore entitled to keep the domain name.

Click here to access the ruling.


Industry leaders support planned international anti-counterfeiting Agreement

Representatives from the International Chamber of Commerce's ('ICC') Business Action to Stop Counterfeiting and Piracy ('BASCAP') initiative, including leaders of some of the world's biggest companies and various government representatives, have met in New York to discuss the creation of the Anti-Counterfeiting Trade Agreement ('ACTA'). The Agreement aims to end international trade in fake goods and strengthen IP owners' rights by mirroring enforcement strategies and legal frameworks among contracting parties, which potentially include Canada, the EU, Japan, Korea, Mexico, New Zealand and Switzerland so far. Mooted suggestions for the ACTA include having each member company designate a chief IP enforcement officer, giving Customs authorities greater border security power and addressing the growing issue of counterfeit merchandise on the internet. Mounting a public interest campaign to make consumers aware of the dangers of counterfeiting is also being considered.

Click here for more information.

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