Sweet Rewards for Some
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
In a recent Full Federal Court decision, confectionery manufacturer Mars Australia was unsuccessful in its appeal from a June 2009 decision of a single judge of the Federal Court which had rejected Mars’ argument that by selling and distributing chocolate covered “malt balls” in a plastic jar, Sweet Rewards had:
- infringed Mars’ Maltesers trade marks;
- represented to consumers that Sweet Rewards’ malt balls were associated with, or originated from, the same source as Maltesers;
- represented that its malt balls had the approval, sponsorship, same taste, were made according to the same recipes and provided the same taste and sensory experience as Mars’ famous Maltesers chocolate covered malt balls,
The crux of the matter was Sweet Rewards’ label on its plastic jar. The label consisted of:
- a red background;
- the word “Delfi” on the top front centre of the label;
- a logo consisting of a picture of a skier in a circle to the left of the word “Delfi”;
- pictorial representations of malt balls including some with a cross section showing a bright yellow filling; and
- the words “Malt Balls” written in a bold font covering a small portion of the label.
On appeal, Mars argued that the primary judge had erred by holding that the only feature used as a trade mark was the word “Delfi” and the skier symbol, that the words “malt balls” were merely descriptive of the product, and that he had not considered the overall impression conveyed by Sweet Rewards’ label.
However, the Full Federal Court rejected Mars’ argument and unanimously held that:
- red, in various shades, is a predominant and common colour used in relation to confectionery packaging;
- confectionary packaging commonly displays a representation of the product, frequently showing a cross-section or “cut through” of the product;
- it is not unusual for the name of the product to be written on a diagonal, from bottom left to top right;
- the distinguishing feature of Mars’ packaging was the word “Maltesers”;
- the distinguishing feature of Sweet Rewards’ packaging was the word “Delfi”; and
- Sweet Rewards’ use of the words “Malt Balls” on its packaging was descriptive of the goods and did not constitute use as a trade mark.
In dismissing Mars’ appeal, and ordering that it pay Sweet Rewards’ costs of the appeal, the Full Federal Court in effect agreed with the primary judge that Sweet Rewards’ label, when considered as a whole, was not deceptively similar to Mars’ trade marks, did not pass off the Sweet Rewards’ goods as Maltesers and did not contravene section 52 of the Trade Practices Act.
Whilst this decision is not, in the author’s view, surprising, the litigation is a reminder of the need to consider the design of product packaging from an intellectual property and trade practices perspective before the packaging is used. If not, the consequences can be far-reaching and include repackaging, relabelling, recall and legal costs.
Copyright Update: Infringer Sits in the Old Gum Tree
In the recent Federal Court decision of Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29, Jacobson J held that the 1979 and 1981 recordings of Australian band Men at Work’s hit single and iconic Australian anthem “Down Under” infringed the copyright of Larrikin Music Publishing (“Larrikin”) by reproducing 2 bars, being a substantial part of the classic Australian folk song “Kookaburra Sits In the Old Gum Tree” (“Kookaburra”) and that Larrikin was entitled to recover damages from the respondents for breaches of the Trade Practices Act or Fair Trading Act.
The similarity between the flute riff in Down Under and the 2 bars of Kookaburra did not come to the attention of Larrikin until 2007, when the ABC’s popular musical panel quiz television show Spicks And Specks raised the alleged connection.
Under the provisions of the Copyright Act 1968 (Cth), copyright is infringed where a person, without the license of the copyright owner, reproduces a substantial part of the copyright work. In order for there to be a “reproduction”, there must be an objective similarity between the two works and a causal connection between the plaintiff’s work and that of the defendant.
In determining whether there was a sufficient degree of objective similarity between two bars of Kookaburra, written by school teacher Marion Sinclair in 1934, and the flute riff in “Down Under”, Jacobson J noted that the question was one of fact to be determined by the eye and the ear considering the similarity and difference between the musical elements of the two works with the assistance of expert evidence.
In evidence it was adduced that by reproducing the bars from Kookaburra in the flute riff, Greg Ham, who was not one of the copyright holders, was attempting to inject some Australian flavour into the song. His Honour held that the deliberate reproduction of the relevant bars of Kookaburra reinforced the finding of objective similarity despite the fact that Colin Hay, lead singer and songwriter of Men At Work, was unaware of the appropriation of the bars of Kookaburra until the last decade.
It was however, the frank admissions of Colin Hay, recognising a connection between the two melodies, and confirming that on occasion when performing “Down Under” live he had sung the words of Kookaburra where the flute riff would ordinarily be played, that sealed the fate of respondents, assured the finding of the necessary causal connection and resulted in a ruling that a substantial part of that work had been reproduced.
Larrikin is reported to have claimed 40-60% of the income of “Down Under” – an amount disputed by the respondents. But it may be some time before the question as to what percentage Larrikin ought to be paid is determined, as EMI has appealed the Federal Court’s decision. Watch this space.
Take Away
A lesson to be learnt from Jacobson J’s decision is that if you allow others to contribute to the works that you record, reproduce, communicate or perform, you may well be held liable for any infringing elements introduced into your work, even if the fact of infringement was not known to you at the time of the creation, and the infringing element is but one of a number of elements that constitute a multilayered work.
Things get Ugglier for the Ugg Boot InfringersA recent decision by the Federal Court of Australia has highlighted the ability of the Court to award considerable, additional damages for copyright infringement, in circumstances where the behaviour warrants such a penalty.
The decision in Deckers Outdoor Corporation Inc v. Farley (No. 5) [2009] was the latest in a long running battle between Deckers Outdoor Corporation Inc and a group of counterfeiters.
Deckers is the owner of two Australian registered trade marks which contain the word “UGG”. One of the trade marks also includes the word “Australia” and what was referred to in the proceedings as a “sun device” logo. Deckers also successfully claimed to be the owner of the copyright subsisting in the “sun device” logo, as well as the text of the information booklet and care instruction card which accompanies its footwear products.
Deckers first became aware that counterfeit UGG footwear products were being advertised and sold in Australia and overseas in late 2003. Despite various Court orders and settlement agreements, the counterfeit UGG footwear continued to be advertised and sold in Australia and overseas, particularly using the internet.
Having obtained summary judgment in respect of its claim of trade mark infringement at an earlier hearing, Deckers’ action was for infringement of copyright, passing off, misleading and deceptive conduct, as well as breach of the terms of settlement entered into with the counterfeiters in 2004. Deckers also sought further declarations and injunctions and compensatory and additional damages. Deckers was successful on all fronts.
As is typical, the Court used various methods to make a just and fair assessment of the compensatory damages awarded to Deckers. Compensatory damages are those necessary to restore Deckers to the position it would have been in had the counterfeiters not manufactured and sold their counterfeit products.
Using an estimate of sales lost by Deckers, and focusing on Deckers’ lost profit, compensatory damages of $3 million were awarded to Deckers in addition to some $600,000 of damages which had already been awarded against some of the other respondents in this matter. This was judged to represent a fair estimate of Deckers’ loss of profits as a result of the counterfeiting.
Of real interest is the level of additional damages awarded by the Court as a result of the deliberate and flagrant infringement of Deckers’ intellectual property rights.
Under s115(4) of the Copyright Act 1968, the Court may award such additional damages as it considers appropriate in the circumstances, having regard to the flagrancy of the infringement, the need to deter similar infringements, the conduct of the defendant after the infringing acts, any benefits shown to have accrued to the defendant, and all other relevant matters.
One purpose of these types of damages is to punish the offender and deter similar conduct in the future. There does not need to be any particular proportionality between the amount of compensatory damages awarded and the amount of additional damages awarded. The assessment of the amount to be awarded is accepted to be an imprecise exercise, and the Court has an unfettered discretion in fixing an appropriate measure of additional damages.
In this case, the Court noted the conduct of the counterfeiters in “totally disregarding Deckers’ rights and Court orders”. It considered the case to be “one of the worst of its kind to come before the Court” and that it was “probably too generous to describe [the behaviour] as flagrant”. Most of the damage complained of occurred after the counterfeiters were well aware that they were engaged in infringing conduct, and the Court wished to deter the counterfeiters from activities that had earned them millions of dollars. Accordingly, Deckers was awarded $3.5 million in additional damages.
Cases with this level of “flagrancy” do not regularly come before the Court, but it provides a stark reminder to counterfeiters of the penalties that a Court may impose upon them. It should also provide comfort to rights holders that the Court will demonstrate an interest in deterring the conduct of those who engage “in the deliberate and flagrant infringement of…intellectual property rights”.
iiNet struck the first blow in the case
[1] brought against it by the film industry.
The Federal Court dismissed AFACT’s case against iiNet, and held that iiNet did not authorise the infringements of copyright carried out by the users of its internet service.
Proceedings were brought against iiNet by a group of 34 separate applicants, and were conducted on their behalf by the Australian Federation Against Copyright Theft (AFACT). The applicants were amongst the major motion picture studios both in Australia and the United States.
The proceedings were brought on the basis of allegations that iiNet had failed to take reasonable steps to prevent contraventions of the Copyright Act 1968 after being notified by AFACT that some iiNet customers were illegally downloading films and TV programmes using the internet service provided by iiNet.
AFACT investigated the infringement of copyright by iiNet users, who were downloading films and television programmes using a peer to peer system known as the BitTorrent protocol. AFACT provided details of the users’ infringing activities to iiNet, and wanted iiNet to first warn the allegedly infringing subscriber, and if this was not enough to stop the infringement, suspend and ultimately terminate the subscriber’s internet service (commonly known as the “three strikes”). Alternatively, AFACT suggested that iiNet should block certain websites to reduce the opportunity for its subscribers to engage in illegal downloading.
The primary issue was whether iiNet, by failing to take any steps to stop infringing conduct, authorised the copyright infringement of these iiNet users (an infringement under s101(1) of the Copyright Act).
Whilst the Court held that there were iiNet users infringing copyright, that iiNet had knowledge of these infringements, and did not take steps to prevent them, nonetheless iiNet did not authorise these infringements.
The Court had 3 primary reasons for its decision:
- Distinguishing the likes of the Cooper[2] and Kazaa [3] cases, the Court held that by merely providing access to the internet, iiNet was not providing the users of its service with the means of infringement. AFACT’s copyright could not be infringed merely from use of the internet. Copyright was instead infringed through iiNet customers’ use of the BitTorrent system, which iiNet has no control over.
- iiNet did not have the power to prevent the copyright infringement occurring, and that warning subscribers and terminating their accounts based on notices issued by AFACT was not a reasonable step for iiNet to take.
- iiNet had not sanctioned or approved copyright infringement and had done no more than provide an internet service to its users. The facts in this case were again distinguished from those in the Cooper and Kazaa cases, in which a website and software respectively were deliberately structured to assist copyright infringement.
AFACT has appealed the decision but, for now at least, iiNet and other ISPs will take comfort in the view that the Court has unambiguously stated at this point: in merely providing a service allowing subscribers access to the internet, they are not accountable for the activities undertaken by these subscribers. Whether or not this will ultimately be the case remains to be seen.
ISPs will probably also be taking note of the Judge’s comments that a repeat infringer policy actually used by iiNet (which was not precisely documented as it was split between 2 documents, as well as then supplemented by an internal, spoken understanding within iiNet) would have been sufficient for it to have taken advantage of the safe harbour provisions in the Copyright Act if it had needed to have done so.
As the Court acknowledged, the illegal downloading of film and music is rife worldwide. However, the Court expressed the view that the mere provision of a legitimate communication facility not intended or designed to infringe copyright should not put ISPs in the firing line if their subscribers use the facility to access a system which the ISP has no control over, and make use of that system to infringe copyright.
That said, the serious issue of cost effective protection of valuable and legitimate rights in relation to illegal downloads remains.
The main problems for rights holders such as film studios and record companies are the need to identify who can be held liable for infringement of their rights, and the cost of bringing enforcement proceedings individually. For the moment it appears that the Federal Court will not hold ISP’s liable in circumstances such as this case, and, whilst generating publicity, it is simply too costly to try and prosecute each individual infringer. Will companies behind the likes of BitTorrent be next in the firing line (even though such systems have legitimate uses)? Or will rights holders turn their attention to lobbying governments to make laws compelling ISPs to implement the sorts of “3 strikes” policies which appear to be favoured by the industry.
Stay tuned for the next instalment…
[1]Roadshow Films Pty Ltd & Ors v iiNet Ltd (No. 3) [2010] FCA 24
[2]Universal Music Australia Pty Ltd & Ors v Cooper & Ors (2005) 150 FCR 1
[3]Universal Music Australia Pty Ltd & Ors v Sharman License Holdings Ltd & Ors (2005) 65 IPR 289
No Copyright in Phone Directories
In the third big copyright decision so far this year, database owners suffered a setback when the Federal Court found that Telstra did not hold copyright in the Yellow Pages or White Pages [1]. Telstra was apparently unable to overcome difficulties establishing who authored the directories, or that they were original literary works that attracted copyright at all. The decision is a troubling one for companies that have relied on copyright to protect valuable database information.
Telstra had accused Phone Directories Company of reproducing entries from the White and Yellow Pages. In the past, simple factual compilations such as these were often characterised as literary works and given copyright protection. Telstra won such a copyright case about its phone directories in 2001 [2]. But the ground appeared to shift last year when the High Court suggested in the IceTV case [3] that it is the exercise of skill and labour in expressing the literary work that is crucial when examining copyright in compilations, and not the labour and expense which goes into creating the compilation generally.
Unlike IceTV (where IceTVs electronic program guide did not infringe Nine’s TV schedule because it did not substantially reproduce it), Telstra lost because, according to the Federal Court, copyright simply did not subsist in the phone directories.
Justice Gordon found that the directories were not original literary works, because the creation of each work did not involve “independent intellectual effort”, or the exercise of a “sufficient effort of a literary nature”. Essentially, although the creation of the compilations involved labour and expense, it did not require skill and labour of a literary nature.
Telstra also failed because it could not identify the persons that contributed to the work. Even if it could, Justice Gordon held, those contributors were not “authors” for the purposes of the Copyright Act because their contributions lacked sufficient effort of a literary nature.
The case is an important reminder that copyright does not protect the commercial value of the information in question, nor does it protect facts, ideas or information. Rather, copyright law protects the particular expression of that fact, idea or information.
The judgment will raise concerns for those who create, compile, sell, or rely on factual compilations and databases, and there are some important lessons that emerge from it.
Firstly, it is still the case that an author who uses skill and judgment in expressing information is more likely to attract enforceable copyright protection for that work than a person who merely lists facts.
Secondly, database owners must be able to prove who contributed to the database, what they were responsible for, and how their work involved “effort of a literary nature”. Records and documentation may need to do more than establish the identity of the creators of a database; they may be needed to explain how those creators exercised skill, judgment and discretion in expressing it. As is said in the judgment:
“Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original.”
For those who compile, exploit and sell database information, it highlights the importance of having appropriate contracts (terms and conditions) with users or customers to prevent misuse of that information.
For those who rely on private databases, it highlights the importance of keeping those databases secure and confidential.
It must be remembered, however, that whereas copyright would allow you to take action against any infringer, contractual obligations, or obligations of confidence owed by employees, contractors or the like, are only enforceable against the person that owes the obligation. They cannot be used to stop third parties reproducing the database once it is out of the vault.
Telstra has appealed this decision. In the meantime, the judgment will encourage further debate as to whether a European-style database right is a better method of protecting the substantial investment that is made in databases and factual compilations than proceeding under the Copyright Act as it presently stands.
[1]Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44
[2]Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112
[3]IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14
Guarding Against Genericide
The value of a trade mark lies in its ability to distinguish the goods or services of one company from those of its competitors. But what happens when a trade mark becomes part of the common vernacular, and what can trade mark owners do to stop that happening? This article briefly discusses some common sense tactics owners of trade marks can adopt to guard against the “genericide” of their brand.
A trade mark is a “sign” used, or intended to be used, to distinguish the goods or services of one person from the goods or services dealt with or provided by another person. By acting as a “badge of origin” trade marks serve to prevent consumers from being confused as to the origin of particular goods or services.
“Genericide” of a trade mark occurs when a trade mark is adopted as the common word for the goods or services in respect of which the mark is used, and as a consequence, ceases to act as a badge of origin distinguishing one trader’s goods in that class from the goods of other traders in the class. In the words of the Trade Marks Act, the mark “becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.”
Examples of trade marks that were once distinctive and have become generic include ESCALATOR for a moving staircase, THERMOS for vacuum insulated bottles and CELLOPHANE for transparent cellulose sheets.
When a registered mark becomes generic, the owner loses its exclusive rights in the mark, and a Court may cancel the registration of the mark.
Common Sense Hints to Avoid Genericide
The best way in which to avoid having your company’s brands become the victim of genericide is to take pre-emptive action:
Positive action may be required to prevent a trade mark becoming a victim of its own success.
Back in the good old days it was well understood by musicians and their labels alike that one needed at least 2 or 3 hit singles on an album for it to be a success. The advent of the online distribution of music seemed to have forever changed the playing field in that listeners could cherry pick their favourite singles from an album without buying the entire album. Until now…
British rock legends Pink Floyd, the creative force behind such memorable albums as The Dark Side of the Moon and The Wall have recently secured a UK high court victory against their label EMI and the music industry’s seemingly inexorable move towards the disintegration of the album through single song and mobile phone ringtone downloads.
Pink Floyd submitted that EMI had permitted online downloads from the band’s albums and allowed parts of tracks to be used as ringtones, despite a clause in their contract with EMI which expressly prohibited the label from selling songs out of context.
EMI argued that its agreement with Pink Floyd, concluded before the exponential growth of online distribution of music, related exclusively to physical CDs and DVDs but not to online distribution.
The UK high court held that EMI cannot sell the songs from any of Pink Floyd’s albums as single song downloads or mobile phone ringtones.
Something for musicians to think about…
United States computer giant Apple Inc has experienced a setback in its apparent attempts to control the use of the letter “i” in Australia.
In Apple Inc v Wholesale Central Pty Ltd [2010] ATMO 7, Apple opposed the registration of a stylised “DOPI & Sonic Wave Logo” trade mark in respect of accessories for digital devices such as portable computers, mobile phones and music players, including accessories specifically designed for use with Apple’s products in class 9.
Apple had argued that given its substantial reputation in respect of “IPOD”, and as owner of a number of trade mark registrations for “IPOD” and a “family” of other registrations which combined the prefix “I” with another word, a person of ordinary intelligence and memory would be caused to wonder whether the applicant’s DOPI-branded goods originated from Apple.
In dismissing the opposition, IP Australia noted that aside from the obvious differences between the marks, scores of third parties, unrelated to Apple, had registered “i” marks covering the relevant goods in class 9 (for example, iSoft, iSkin, IBOX, iPORT, iJOG, IWAKE, IVISION, iDrive and iListen) - which meant that Apple could not claim a monopoly for “i” marks.
Stuart Green | Associate
T: 61 2 8233 9586
Stopping 'em at the Border: Customs Notices of Objection
As anyone involved in the sale of fast moving consumer products would attest, trade in counterfeit goods is a growing international problem that has the capacity to inflict irreparable damage on the reputation of a brand.
Despite Australia’s tyranny of distance, owners of Australian brands are not immune from the far reaching effects of counterfeiters applying similar or identical trade marks to goods without consent.
Under the Trade Marks Act 1995 (Cth) the owner of a registered Australian trade mark has the opportunity to lodge a Notice of Objection (Notice) with the Australian Customs and Border Protection Service.
Copyright owners should also be aware that a similar system also exists to assist them. The owner of a copyright work may lodge a Notice under the Copyright Act 1968 (Cth). Trade mark-related Notices are far more commonly lodged than copyright-related Notices, however, and therefore this article will concentrate on the lodgement of trade mark-related Notices.
The lodgement of a Notice allows Australian customs officers to search for and seize imported goods that bear a registered trade mark the subject of such Notice. These powers are restricted to seizing infringing goods that are subject to Customs’ control; a Notice cannot operate retrospectively for goods that have already been imported.
Details of known, or suspected, infringers, as well as further information as to the method and point of entry into Australia can also be provided to assist Customs. In order to avoid the seizure of authorised goods, trade mark owners are able to supply Customs with the details of authorised distributors.
To secure a Notice, trade mark owners are required to provide Customs with a Deed of Undertaking in which the trade mark owner undertakes to pay any costs incurred by Customs whilst enforcing that Notice. This obligation should not be lightly entered into, and reinforces that Notices are mainly of most use where you are prepared to take action to enforce your trade marks.
While lodging a Notice is a worthwhile step for trade mark owners to take, the process is, however, by no means fool-proof. It relies on a Customs officer inspecting a particular shipment and identifying the relevant trade marks. The reality is that counterfeit goods do slip through the net. Goods may be disguised or hidden within a larger shipment, or goods may not be accurately of fully described in any shipping documents, so that Customs only become aware of them by undertaking a random search.
For example, if counterfeit Nike-branded shoes were listed on a shipping docket simply as “shoes” or “sports shoes”, this would not immediately draw itself to the attention of Customs, even if they were actively policing the import of Nike-branded shoes. Practically speaking, it is essential to provide Customs with as much information as possible about how, when and by whom the counterfeits may be imported: if the importer is a known infringer, Customs can then direct their attention to the shipment and check the branding of the shoes.
Those seeking to rely upon Notices should be aware that the seizure of counterfeit goods and unauthorised goods by Customs is only the start, not the end of the matter. Once goods have been seized, a trade mark owner has 10 working days after receiving notice from Customs to take legal action. If legal proceedings are not commenced, or if the matter is not otherwise resolved during this period, the shipment will be released to the importer. Customs will not simply deliver up the goods to the party who lodged the relevant Notice.
Given that a Notice is valid for four years and can be renewed indefinitely for a further four year period, lodging a Notice may be a cost-effective and important part of your strategy to protect your brands by stopping goods at the border.
Keeping an Eye on the Prize: Watching your Trade Mark
So you’ve finally achieved registration of your trade mark… that’s it isn’t it? Not quite…
In order to maintain an Australian trade mark registration, a trade mark owner must use their trade mark in relation to the goods/services for which it is registered and the registration must be renewed every 10 years.
Proper use of the mark and regular renewal of the registration enables a trade mark owner to maintain a perpetual monopoly over use of a trade mark in respect of specific goods/services and be in a position to repel third party attacks filed on the basis of non-use.
However, in order to pre-empt potential infringers, it is important for trade mark owners to not only use their mark, but to think strategically about maintaining the rights afforded by their trade mark registration.
Central to this, is keeping track of third party use and having a simple and effective plan ready to implement when a potential threat is revealed.
While many trade mark owners are happy to rely upon objections raised by IP Australia during examination of trade mark applications to prevent the registration by third parties of similar trade marks, it is in a trade mark owner’s interest to regularly check IP Australia’s records to track new applications for identical or similar marks.
This can be done by using a trade mark watch service. A watch service is typically tailored to the particular requirements of a client, but can involve:
DibbsBarker provides tailored watch solutions to meet clients’ needs. Should you have any queries regarding our watch services please contact a member of our team.
Case Watch
A summary of the selected major IP matters in the Courts:
Patents
Alphapharm v H Lundbeck
Special leave to appeal to the High Court was denied on 11 December 2009.
Alphapharm sought leave to appeal in relation to certain specific points about the construction of a patent, and the extent that the specification should inform the reading of the claims. Lundbeck sought special leave to appeal from the Full Federal Court’s decision that any application for an extension of the term of the patent needed to occur within 6 months of the listing of Cipramil on the ARTG, and not within 6 months of the later listing of escitalopram, because Cipramil contains escitalopram molecules. Both special leave applications were unsuccessful. Our previous IP Alert about the Full Federal Court’s decision is available on our website.
Apotex v Sanofi-Aventis
The Full Court has held that the claims of the clopidogrel enantiomer patent were invalid for lack of novelty and obviousness.
Dura-Post (Aust) v Delnorth
Special leave to appeal to the High Court was refused on 11 December 2009. The Full Federal Court’s finding, that an innovation patent is not subject to the “obviousness” test, but rather than an innovative step is required, will remain undisturbed. Our article discussing that previous decision appears in our October 2009 newsletter, available on our website.
University of Western Australia v Gray
Special leave to appeal to the High Court was refused on 12 February 2010. The University of Western Australia has definitively failed in its claim that it owned the rights to the inventions of one of its academics. Our previous IP Alert discussing the Full Federal Court’s decision is available on our website.
Trade Marks
Ebay Incorporated v Ubay
Ebay has appealed to the Full Federal Court against a decision to allow the registration of the trade mark UBAY.
E J Gallo Winery v Lion Nathan
The High Court has heard an appeal in respect of the removal of the BAREFOOT trade mark for non-use, which focused on the question of whether there is use of a trade mark (sufficient to defeat an application to remove the mark for non-use) where the registered owner of the mark does not know that the goods are being imported and sold in Australia. The appeal was heard in early December, and a decision is pending.
Health World v Shin Sun
High Court appeal in respect of standing to seek revocation of a trade mark – what disadvantage is required in order to qualify as a “person aggrieved”? The appeal was heard in early December, and a decision is pending.
Mars Australia v Sweet Rewards
The Full Federal Court has dismissed an appeal, upholding the decision that Sweet Rewards’ Malt Balls packaging does not infringe the Maltesers trade marks and get-up.
Copyright
Larrikin Music Publishing v EMI
The Federal Court held that the flute riff in Men at Work’s song “Down Under” infringed copyright in the folk song “Kookaburra sits in the Old Gum Tree”. An appeal against the decision has been filed.
Roadshow Films v iiNet
The Federal Court has found that the internet service provider, iiNet, did not authorise the infringements of copyright that were carried out by its customers using its service. Our recent IP Alert about the decision is available on our website. An appeal against the decision has been filed.
Telstra Corporation Limited v Phone Directories Company
The Federal Court has ruled that Telstra does not hold copyright in the White Pages or Yellow Pages, because they were not original literary works that attracted copyright protection at all. Our recent IP Alert about the decision is available on our website. An appeal against the decision has been filed.
