Australia: Intellectual Property News

Last Updated: 2 April 2008



Full Federal Court rejects sweetener patent appeal

In the latest in a series of ongoing cases between Ajinomoto Co Inc ('Ajinomoto') and NutraSweet Australia Pty Ltd ('Nutrasweet'), the Full Federal Court has affirmed that Ajinomoto's patent for a blended sweetener is invalid, on the ground of lack of inventive step. The Court's judgment focused on two principal issues: first, the construction of the legislative expression 'work in the relevant art in [Australia]', and secondly, the admissibility of a relevant piece of prior art as evidence of obviousness as provided in s 18 of the Patents Act. The Court construed the art relevant to the Ajinomoto patent as being the art of blending known sweeteners, and held that work in the relevant art existed in Australia prior to the priority date. Accordingly, the Court did not have to finally decide the question of whether 'work in Australia' required actual work to have taken place or merely contemplated the hypothetical possibility of what work could have taken place. Ajinomoto's argument that, despite this finding, a relevant piece of prior art should not be considered as it would not have 'stood out from the crowd' of all prior art at the priority date was rejected by the Court, which held that a skilled person working in the relevant art would have ascertained, understood and regarded the piece as relevant to work in the relevant patent area, thus satisfying the legislative test.

Click here to access the case.

Federal Court finds road safety barrier patent invalid

The Federal Court has rejected Kinabula Investments Pty Ltd ('Kinabula')'s patent for a road safety barrier system on the ground of lack of novelty, but held that Barron & Rawson Pty Ltd ('Barron')'s 'Guardliner' system would have infringed Kinabula's patent if it had been found to be valid. In finding that Barron's 'Guardliner' system would have infringed Kinabula's patent, the Court relied on expert evidence focusing on the meaning of the terms 'mounted on' and 'overlies' as used in the patent claim. Barron's crossclaim that the patent was invalid was upheld on the ground of lack of novelty by reason of prior publication, although the grounds of inventive step and lack of clarity were not made out. The Court held that the Kinabula patent was anticipated by the US 'Wasserstrom' patent in that both systems aimed to prevent and reduce damage from road collisions through the use of similar structural components.

Click here to access the case.


UK High Court revisits software patents

In the latest of a string of decisions concerning the patentability of software programs, the UK High Court has overturned a decision by the UK Intellectual Property Office (UKIPO) to refuse a patent application by London-based company Symbian because it related solely to a computer program. Justice Patten drew attention to the discrepancy in attitudes between the UK-IPO and the European Patent Office (EPO), with the EPO having already allowed the same patent. The UK-IPO has stated that it intends to appeal the ruling, arguing that Mr Justice Patten failed to apply the 'Aerotel/Macrossan test' established by the Court of Appeal in a preceding case. Pending clarification, the UK-IPO will continue to follow the guidelines set out in its practice notes issued in November 2006 and February 2008 (the latter of which was reported in our February 29 edition.)

Click here to access the UK-IPO press release.

Trade marks


UK-IPO rules weaker marks deserve narrower protection

A UK Intellectual Property Office Hearing Officer has ruled that weaker trade marks, such as those with a descriptive element, should benefit from a narrower scope of protection than highly distinctive marks. The ruling was derived as a result of a dispute between DigiPos Store Solutions and Digi International. Digi International opposed DigiPos's application for the word mark DigiPos on the ground that there was a likelihood of confusion with its own marks, Digi and Digi International. The UK-IP Office Hearing Officer upheld the opposition in May 2007, and last week rejected DigiPos's appeal against the decision. Barrister Daniel Alexander, sitting as a Deputy High Court Judge, made it clear that to overturn the ruling he had to be 'satisfied that there is a distinct and material error of principle in the decision in question or that the Hearing Officer was clearly wrong'. As this was not the case, the ruling was upheld.

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EU trademark agency 'Gmail' decision

The EU trade mark agency 'Office for Harmonization in the Internal Market (Trade Marks and Designs)' ('OHIM'), has handed down its decision in relation to Google Inc's application to register the trade mark Gmail in the EU. It found that the Gmail name is too similar to an existing German trade mark registered by businessman Daniel Giersch in 2000. Mr Giersch operates a mail business that lets users send electronic files and messages through a central email system which has a registered slogan that contains the term 'G-mail', with the 'G' standing for the first letter of his last name.

Click here to access the case.



Digga wins some, loses some in copyright infringement appeal case

Digga Australia Pty Ltd ('Digga') has failed on three grounds of appeal and partly succeeded on one other in a Full Federal Court copyright infringement case against Norm Engineering Pty Ltd ('Norm'). Due to the existence of the design-copyright overlap provisions in s72-77 of the Copyright Act, Digga did not infringe Norm's Copyright by manufacturing its own '4-in-1' bucket. However, the Court followed the trial judge's findings that Digga had, before 17/06/04, infringed Norm's copyright in five engineering drawings relating to the design of the '4-in-1' bucket by 'reverse engineering' Norm's '4-in-1' bucket to produce its own drawings, as a step on the way to developing and manufacturing its own '4-in-1' bucket. However, the Court held that since the commencement of the new s 77A of the Copyright Act on 17/06/04, Digga had not infringed Norm's copyright in the engineering drawings with regards to its own drawings that it had produced as a step on the way to manufacturing its own '4 in 1 bucket'.

Click here to access the case.

Federal Court dismisses Copyright Tribunal licence fee review

The Federal Court has dismissed an application for judicial review of the Copyright Tribunal decision in Phonographic Performance Company of Australia Ltd under s 154(1) of the Copyright Act 1968 (Cth) [2007]. Decisions of the Copyright Tribunal can be reviewed under the Administrative Decisions (Judicial Review) Act 1977 (Cth). Appeals on the merits of Copyright Tribunal decisions are not available. The decision at hand related to the fixing of rates in respect of the use of sound recordings in nightclubs for the purpose of dancing. The Australian Hotels Association ('AHA') applied for the decision be reviewed on the grounds that the evidence presented to and relied upon by the Tribunal 'addressed the question of the value to be attributed to the music of nightclubs simpliciter, as distinct from music for the purpose of dancing.' The AHA argued that the Tribunal had taken into account an irrelevant consideration, and that this amounted to a jurisdictional error. The application was dismissed by the Court, which held that the definition of the term 'nightclub' necessarily indicated a venue which provided music for the purpose of dancing, thus attributing the AHA's complaint to semantic confusion. However, it was also stated that even if some factual or evidentiary error had existed, this would not have amounted to any jurisdictional error by the Tribunal.

Click here to access the case.



Record reported sale for domain name

The domain name '' has been sold for US$9,999,950, the highest sale price ever reported for a domain name sale. The buyer, New York City based public company ' Inc.' has confirmed that the transaction took place in January 2008, and that new content would soon be placed on the site. The sale has topped the previous record amount paid for the domain name '', which sold for US$9.5 million in May 2007.

Click here for further information.

Warner Music and 7 to introduce MP3s without DRM

Warner Music Europe has signed a deal with 7 to offer its music in MP3 format without Digital Rights Management ('DRM'). DRM technology has previously been widely used by the music industry as an attempted strategy against illegal music piracy. The decision to go without DRM is thought to have been provoked by dwindling digital sales, and poses a serious competitive threat to market leader iTunes. Warner Music Europe's president John Reid said in a statement: 'This deal will offer music fans a new level of flexibility in their use of tracks from our world-renowned artists.'

Click here for further information.

Policy Update


Amendments to classification laws

The Classification (Publications, Films and Computer Games) Amendment Assessments and Advertising Bill 2008 (Cth) was introduced into Parliament earlier this year in response to a 2006 Government discussion paper on a proposal to 'update, simplify and clarify the advertising provisions for unclassified material within the National Classification Scheme'. At present, advertising of unclassified films and computer games is prohibited; however, if the Bill is passed the prohibition on advertising will be replaced with an industry based self-assessment scheme which will allow this material to be advertised subject to conditions set out in a legislative instrument. The Bill will also amend the classification procedures for compilations of episodes of television series that have already been broadcast in Australia, allowing applications for classification to be accompanied by a report and recommendation from an assessor to assist the Classification board in making its decision.

Click here to access the Bills Digest.


Japanese ISPs and online copyright infringement

Four ISP associations representing Japan's internet service provider industry have agreed to forcibly cut off the Internet connections of subscribers who are alleged to use file sharing programs to illegally download music and gaming software. Despite concerns that such extreme measures might involve violation of privacy rights and interfere with the free use of communications technology, the associations involved have deemed it both possible and necessary to identify and punish flagrant repeat offenders by suspending, and in some cases cancelling, their accounts. The organisations plan to launch a consultative panel in conjunction with Japanese copyright bodies which will formulate guidelines for dealing with subscribers who infringe copyright. This development is the most recent development in the rights holders' efforts to involve ISPs in the fight against online piracy (see our 29 February 2008 issue for a comparable scheme proposed by the Rudd government.)

Click here for further information

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