Tax law and IP (Part 2)

Teresa Dyson, Partner and Tim Rowe, Lawyer, Blake Dawson Waldron consider the exploitation and realisation of IP, including discussion of recent developments and the impact of GST, and touch on certain international taxation aspects of the process.

Link to Tax law and IP (Part 2)

Tax law and IP (Part 1)

Over two issues, Teresa Dyson, Partner and Tim Rowe, Lawyer, of Blake Dawson Waldron attempt to take you through the life cycle of various IP rights. In Part 1, we address some of the key tax considerations in the development of IP. In Part 2, we will consider the exploitation and realisation of IP and the associated tax treatment, including the impact of GST, and touch on some international aspects of the cycle.

Link to Tax law and IP (Part 1)

AFR - Biotech, pharmaceutical boom spurs poaching

AFR reports that Davies Collison Cave and FB Rice have made a personnel raise on the Melbourne intellectual property section of Blake Dawson Waldron as work in patent and intellectual property law in biotechnology and pharmaceutical products continue to boom.

Bill Pickering of Blake Dawson Waldron Patent Services will move to Daviees Collison Cave. Dr Pickering’s specialty is drafting, filing and the prosecution of patent applications in biotechnology and medicinal chemistry.

Karin Innes and Damian Slizys will move to FB Rice.

Grant Fisher of Blake Dawson Waldron said that “there has been an upswing in litigation in life sciences, particularly pharmaceutical patent litigation … there sem to be more cases between generic and original manufacturers of pharmaceuticals”. Mr Fisher said that “increasing patent litigation reinforced the advantages of having technically knowledgeable patent attorneys in close proximity to legally qualified specialists in intellectual property litigation within one practice”.
AFR - Biotech, pharmaceutical boom spurs poaching (20 July 2007)

Blake Dawson Waldron - IP Bites

Brief news reports from�Blake Dawson Waldron’s IP@BDW publication�

• Rapid rise in domain name dispute resolution - “The World Intellectual Property Organisation (WIPO) Arbitration and Media Centre recently reported that it has handled over 25,000 internet domain name cases since its adoption of the Uniform Dispute Resolution Policy (UDRP) and Specific Registry Policies.” (Sarita Walpola, Lawyer)
• �Dove Summer Glow� campaign misleading�- “In Johnson & Johnson Pacific Pty Ltd v Unilever Australia Limited (No 2) [2006] FCA 1646, handed down on 29 November 2006, the Federal Court found that certain representations made in Unilever�s Dove Summer Glow advertising campaign amounted to misleading and deceptive conduct in contravention of section 52 of the Trade Practices Act 1974 (Cth).” (Georgia Knox, Summer Clerk)
• WIPO registers 900,000th trade mark under Madrid Protocol - “On 27 October 2006 the World Intellectual Property Organisation (WIPO) announced the registration of the 900,000th trade mark under the international registration system established by the Madrid Agreement and Madrid Protocol. At the current rate of trade mark filings, WIPO expects the one million mark will be reached during 2009.” (Sarita Walpola, Lawyer)
• Pfizer successful in trade mark dispute - “Pfizer Products Inc. (Pfizer), owner of the VIAGRA trade marks, has successfully challenged the registration of the marks HERBAGRA, HERB AGRA and HERB-AGRA by Joseph Karam (Karam).� Karam sought to register these marks in respect of the goods in class 5 described as herbal medicines used to aid health, vitality and sexuality.” (Tim Creek, Articled Clerk)
• Kazaa settles 3 US lawsuits -”Kazaa, the Australian-operated peer to peer file-sharing network, has reached an agreement in principle to settle proceedings brought by the US National Music Publishers Association.” (Arthur Artinian, Lawyer)
• Sweet smell of success - “In the UK, L�Oreal has succeeded in a trade mark infringement action against 7 companies that imported and distributed look-alike versions of two of L�Oreal�s products, Tresor and Miracle.” (David Chin, Lawyer)

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Blake Dawson Waldron - Hormel loses bid to register SPAM trade mark in Europe

Hormel loses bid to register SPAM trade mark in Europe - Drew Broadfoot, Articled Clerk, reports on the failed final appeal by Hormel Foods Corporation (the makers of the canned ham SPAM) against the decision by the European Trade Marks examiner’s decision to deny registration of the trade mark SPAM for various information technology services, including services that stop unsolicited emails:

• “This is a prime example of trade e rk “dilution”: a secondary, unrelated meaning has overtaken the meaning intended by the proprietor of the mark”

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Blake Dawson Waldron - Opposition to registration of JUNGLE trade marks

Opposition to registration of JUNGLE trade marks - Arthur Artinian, Lawyer reports on Re JUNGLE Trade Marks (2006) ATMO 30 June 2006:

• “The decision confirms that it can be difficult for a trade mark owner to establish rights to a single component of its mark where that component has not been used as a trade mark and, as a result, does not distinguish the trade mark owner’s goods or services”
• “It also highlights that trade mark owners need to take care to protect aspects of their trade marks where popular phrases are used”

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Blake Dawson Waldron - Court clarifies application of fair dealing defence under the Copyright Act & its application to moral rights

Court clarifies application of fair dealing defence under the Copyright Act & its application to moral rights - Marlia Saunders, Lawyer reports on Ogawa v Spender  [2006] FCAFC 68:

• “The Full Court considered whether the absence of a moral rights provision in the Copyright Act 1968 akin to section 43, which provides a defence to infringement of copyright in relation to anything done for the purposes of a judicial proceedings, means that judges are not immune from suit in relation to moral rights proceedings”
• The Court held that section 43 does not reflect the judicial immunity doctrine but rather is directed to litigants and practitioners who use copyright material in the course of proceedings”

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Blake Dawson Waldron - Scorecard in innovative activity released

Scorecard in innovative activity released - Felicity Dougherty, Lawyer reports on the Department of Industry, Tourism and Resources recently published Intellectual Property Scorecard 2000-2004 on data obtained from IP Australia, the US Patents and Trademark Office and the European Patent Office:

• “The Intellectual Property Scorecard provides some evidence of strong innovative activity by Australians”

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Blake Dawson Waldron - What’s in a name? - infringement of a registered trade mark

What�s in a name? � infringement of a registered trade mark�- Vicki Huang, Lawyer reports on Starr Partners Pty Ltd v Dem Prem Pty Ltd (No 2) [2006] FCA 1269:

• “The Federal Court re-articulated the tests for trade mark infringement under seciton 120(1) of the Trade Marks Act 1995“
• “The case highlights the objective criteria a Court will employ to determine the subjective impression of the ordinary person”

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Blake Dawson Waldron - Schmackos and Whackos trade mark dispute

Schmackos and Whackos trade mark dispute - Jeremy Shirm, Lawyer reports on Effem Foods Pty Ltd v Wandella Pet Foods Pty Limited [2006] FCA 767:

• “The Federal Court of Australia found that Wandella’s trade mark application WHACKOS was deceptively similar to Effem’s registered trade mark DOGS GO WACKO FOR SCHMACKOS within the meaning of section 44 of the Trade Marks Act 1995, and was for the same or similar goods. Accordingly, the Court that Wandella’s mark should not be registered.”
• “In contrast, the Federal Court found that Wandella’s WHACKOS mark was not deceptively similar to Effem’s SCHMACKOS registered mark.”
• “In considering whether the words GO WACKO in DOGS GO WACKO FOR SCHMACKOS were being used as a mark, the Court also set out a useful summary of the considerations relevant to assessing whether words forming part of a composite expression are to be considered a mark at common law.”

Link to Blake Dawson Waldron article