Category: IP and Trade Practices
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Case note on Agapitos v Habibi  WASC 47.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Case note on Caffell & Falcon  FamCAFC 34.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Case noted on Bugatti GmbH v Shine Forever Men Pty Ltd (No 2)  FCA 171.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from Neobev Pty Ltd v Bacchus Distilleries Pty Ltd (Administrators Appointed)  FCA 4, where the assignee of certain rights to an invention used to manufacture clean skin spirits obtained a declaration in the Federal Court that the registered proprietor of the corresponding patent held that patent on trust for itself and the applicant as co-owners in equity.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. AstraZeneca is the patentee of a proton pump inhibitor marketed in Australia as NEXIUM as a treatment for gastric reflux and other stomach acid problems. In late 2013, it sought and obtained pre-action discovery of certain documents submitted by Alphapharm to the Therapeutic Goods Administration in relation to a product, NOXICID, that treats similar conditions. By the present application, AstraZeneca sought pre-action discovery of other documents submitted to the TGA and supporting documentation, and delivery of samples of various NOXICID products.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. The applicants (Damorgold) were the owner and exclusive licensee of a patent for a spring assisted blind mechanism, which had a priority date of 25 August 1999. The issue of the licensee’s right to relief was stayed. Damorgold claimed that JAI Products had infringed a suite of claims of the patent and JAI Products asserted the patent was invalid. In the end, Middleton J found two claims infringed and valid.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. This was a claim of copyright infringement brought by Seafolly in respect of three artistic works printed on fabric used to manufacture various of Seafolly’s swimwear and beachwear. It alleged that certain artwork of a similar nature used by the respondent (trading as City Beach) on its products reproduced a substantial part of those works and that reproduction was not the result of independent creation.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. These were two appeals from decisions by delegates of the Registrar to allow registration by Telstra of the mark YELLOW in respect of, among other things, online and print phone directories. Each of the applicants (respectively PDCA and Yellowbook) was unsuccessful in opposing Telstra’s application before the Registrar. Yellowbook also appealed the delegate’s decision to allow Telstra’s opposition to Yellowbook’s own application for YELLOWBOOK for the same goods and services. Murphy J dismissed all three appeals.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Mr Tyler is a Hawaii based photographer who sells and licenses his works as stock photographs. The respondent is a travel agent whose business is conducted over the Internet. She used one of Mr Tyler’s photographs without obtaining a licence from him, and rather than take down the image when confronted with her conduct sought to blame an unnamed web developer.
Failure to comply with an injunction not to infringe someone’s intellectual property right is not only an infringement of that intellectual property right but also a contempt of court. The sanctions for contempt of court are many including, potentially, fines and imprisonment – even in intellectual property cases. The Full Federal Court has confirmed that imprisonment was the appropriate sanction for Mr Vladimir Vaysman’s repeated breaches of injunctions not to infringe trade mark and copyright, but reduced the sentence from 3 years to 2 years.
Five countries have brought WTO Complaints against Australia’s plain packaging rules for tobacco products. On 25 April 2014, the Dispute Settlement Body under the Dispute Settlement Understanding established panels to determine the complaints brought by Cuba, the Dominican Republic, the Ukraine, Honduras and Indonesia. On 5 May, the Director-General formally announced the 3 member Panel who will hear the disputes: Mr Alexander Erwin (chair); Prof. Francois Dessemontet; and Dame Billie Miller.
Did you know there was a Major Sporting Events (Indicia and Images) Protection Bill 2014? It was introduced into Parliament on 26 March 2014. It is designed to provide protections for certain indicia associated with the upcoming: Asian Football Championships to be held in Australia in 2015; the ICC World Cup to be held in Australia and New Zealand in 2015; and the 2018 Commonwealth Games on the Gold Coast, against ‘ambush marketing’.
Last October, Tracey J found that Shine Forever had infringed Bugatti’s registered trade mark (for BUGATTI) by selling clothing and accessories under the trade mark BUGATCHI and BUGATCHI UOMO. Now Tracey J has ordered that Shine Forever pay Bugatti $551,159.39 plus costs on an indemnity basis. Apart from the magnitude of the amount, the decision illustrates the onus the court places on an infringer, once found to infringe, and the latitude afforded a trade mark owner confronted by a recalcitrant infringer.