Category: IP and Trade Practices

Copyright – Infringement – Innocent infringement – Damages

Patents – infringement – claim construction – validity – novelty – obviousness – misleading or deceptive conduct – unjustified threats – costs

Trade marks – misleading or deceptive conduct – passing off – whether separate reputation in mark – differences in get up – unjustified threats – delay in bringing infringement action – whether claimant acted with due diligence

Patents – complete specification – best method – “performing the invention” – whether feature omitted from specific part of the best method known to the applicant for performing the invention

The Full Court of the Federal Court recently clarified the way in which the “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical.

The clarification occurred in the context of an opposition to the registration of a trade mark pursuant to s 58 of the Trade Marks Act 1995 (Cth) (TMA).  However, the Full Court’s clarification will have broader relevance as the question of whether a mark is substantially identical to another arises in several other sections of the TMA (for example sections 44, 120 and 122).

It has been held that only an owner of a trade mark at the time the application is made can apply for registration, and that an applicant for a trade mark which would otherwise be deceptively or confusingly similar because an existing registered trade mark has a reputation which is confined to one State, cannot avoid that consequence by disclaiming the right to use in that State

Copyright – extension of ex parte freezing order – whether duty of candour requires applicant to identify potential bases to find an implied licence – whether freezing order should cover potential additional damages

Patents – amendment – application to amend – fair basis – whether “discrete, unitary disclosure” of combinations of features necessary United States Gypsum Company v CSR Building Products Ltd  [2017] FCA 595 The applicant...

Patents – amendment – application to amend to avoid inutility claims – applications limited to deletions of positive statements in the specification concerning the utility of the invention – exercise of discretion

Patents – extension of time to extend term – licences to exploit during period of extension of time application and beyond

H. Lundbeck A/S v Commissioner of Patents[2017] FCA 56

Patents – unjustified threats – damages – ultimate findings unsupported, and contradicted by, evidence at trial

Australian Mud Company Pty Ltd v Coretell Pty Ltd [2017] FCAFC 44

Patents – innovation patents – divisional application – infringement – date from which a patentee is entitled to relief – whether from date of parent patent or date of grant of divisional patent

Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54

Trade marks – interlocutory injunction – whether serious question to be tried – whether actual non-monetary harm needs to be shown.

Trade marks – opposition – substantially identical – reputation – use of similar marks in different States – infringement – defences – good faith use of own name – revocation – inherent adaptability to distinguish.