Category: IP and Trade Practices

Trade marks – non-use – domain names

Evidence – expert evidence preparation – fact evidence preparation

Defamation – publication – search engine operators – link provided to third party website containing defamatory material – Google not a “publisher” of defamatory matter by providing a hyperlink to the defamatory article found on a third-party website, in response to a search for Mr Defteros’ name

In this case, the Full Court upheld Burley J’s conclusions that three of six batches of Juno Pharmaceutical Pty Ltd’s parecoxib products did not infringe Pharmacia LLC’s patent. Their Honours also upheld Burley J’s conclusions that the other three batches of Juno’s products did infringe and that the patent was valid.

This decision by Justice Rofe relating to marks associated with dishwashing capsules is another example of how difficult it can be to protect a shape mark, particularly when used with other distinctive trade marks and trade indicia.

On the appeal from the decision of the Full Federal Court that Aristocrat’s claim to an electronic gaming machine was not a manner of manufacture as required by s 18 of the Patents Act, the six Justices of the High Court who sat were evenly divided. The result is that the appeal was dismissed, but there is no binding precedent.

Patents – manner of manufacture – s 102(1) – s 105

Intellectual property – copyright – infringement – separate questions

Copyright Infringement – Compensatory Damages – Additional Damages

Patents – interlocutory injunction – weak prima facie case – invalid extension of term – balance of convenience otherwise finely balanced

Patents – s 104 amendments – allowability of amendment excluding a compound not specifically mentioned in the specification prior to amendment but generally described – whether parties bound by findings made in substantive s 59 opposition

Trade marks – use in the course of trade – substantial identity or deceptive similarity – use of signs in relation to services – s 41 – s 102 – s 122(1)(a)(i) – s 122(1)(fa) – s 124 – Australian Consumer Law – s 18 – s 29(1)(g) – s 29(1)(h) – joint tortfeasor – aiding and abetting – knowingly concerned

In this case, the applicants sought certain declaratory and other relief which was, in substance, an application to the Federal Court to overturn orders made by the World Intellectual Property Organization (WIPO) in relation to a dispute in connection with the domain name “cars24.com.au” (Domain Name). The respondents challenged the jurisdiction of the Federal Court to grant the relief sought by the applicants, and filed an interlocutory application seeking dismissal of the proceeding.

Trade Marks – ACL – Passing off – default judgment for failure to comply with court orders