Author: Tom Cordiner KC

Patents – amendment of patent application by court – power to order amendment after reasons given as to why patent invalid – section 102, whether narrowing amendments to claims resulted in an invention different from that described in the specification

Patents – strike out application re particulars of lack of utility – discovery re lack of utility

Trade marks – registration – opposition – appeal under s 56 of the Trade Marks Act against decision of the Registrar of Trade Marks allowing registration of the mark FREEZEFRAME PROTOX – whether a ground of opposition to registration of the marks is established pursuant to ss 42(b), 44, 58, 59, 60 or 62A of the Act

Trade marks – cross-claim for removal from the Register of Trade Marks for non-use pursuant to s 92(4)(b) of the Act – cross-claim for rectification of the Register of Trade Marks to cancel registration of BOTOX trade mark pursuant to s 88(1) of the Act – defensive trade marks

Trade marks – infringement claim under s 120 of the Trade Marks Act 1995 (Cth) – consumer law – misleading or deceptive conduct – torts – passing off – whether director should be held personally liable – Therapeutic Goods Act 1989 (Cth) – whether respondents infringed applicants’ BOTOX marks by using PROTOX as a trade mark

Trade marks – infringement claim under s 120 of the Trade Marks Act – consumer law – misleading or deceptive conduct – torts – passing off – whether director should be held personally liable – cross-claim for removal from Register for non-use – opposition – appeal under s 56 of the Trade Marks Act – BOTOX and PROTOX

Patents – interest granted under patent licensing agreement – whether later-in-time licensee had an effective licence, which breached original licence

Trade Marks – infringement – whether using “Urban Ale” as a trade mark or good faith use – cancellation on various grounds – discretion – groundless threats of trade mark infringement

Patents – amendment – appeal from Commissioner’s decision – whether specification as amended would claim or disclose matter that extends beyond the specification as filed – section 102(1) post Raising The Bar

Trade Marks – admissibility of screenshots of webpages and searches of online databases

Trade Marks – supply of products in shippers bearing the registered mark – whether that use was use “as a trade mark”.

Application for interlocutory injunction – restraint of trade – trade mark infringement

Patent validity – manner of manufacture – whether methods and systems for providing and receiving information for risk management in the field are patentable