Blake Dawson - Battle over the colour purple goes against Cadbury - Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited (No 8) [2008] FCA 470

Arthur Artinian and Lisa Ritson of Blake Dawson report that Justice Heerey of the Federal Court of Australia has handed down his decision of Cadbury Schweppes Pty Limited v Darrell Lea Chocolate Shops Pty Limited (No 8) [2008] FCA 470 in the long-running dispute between Cadbury Schweppes Pty Ltdand Darrell Lea Chocolate Shops Pty Ltd in relation to the use of the colour purple for chocolate and confectionery. According to Arthur Artinian and Lisa Ritson, Justice Heerey dismissed Cadbury’s claims against Darrell Lea.

Arthur Artinian and Lisa Ritson note that Cadbury has claimed that use of a particular shade of purple in connection with Darrell Lea’s chocolate confectionery business during the Christmas trading period in 2000 – 2004 amounted to actionable passing off at common law, misleading and deceptive conduct, and false representations in contravention of sections 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) (TPA). Arthur Artinian and Lisa Ritson also note that Justice Heerey, who decided the case at first instance, was required to treat the trial as continuing and to reconsider expert evidence adduced by Cadbury which discussed the importance of colours in modern day marketing practices. Although Cadbury had sought a new trial on appeal, Arthur Artinian and Lisa Ritson observed that the Full Court of the Federal Court of Australia held that justice would be served by a further hearing before the primary judge at which Cadbury’s expert evidence would be considered.

According to Arthur Artinian and Lisa Ritson, the decision of Justice Heerey may mark the end of a five year legal battle between Cadbury and Darrell Lea, during which this matter has been heard by his Honour at first instance, by the Full Federal Court of Australia, and again by his Honour in the present decision. However, it has been widely reported in the Australian press that Cadbury intends to appeal the decision, so the battle is clearly not over yet. The decision of Justice Heerey confirms that it remains extremely difficult to enforce rights in relation to non-traditional brand elements such as colours where such elements are used, albeit to a lesser extent, by other traders in the relevant market.

Blake Dawson - Battle over the colour purple goes against Cadbury

Blake Dawson - It was never in the bag: the Colorado Appeal

Melinda Upton, Helen Gill and Lisa Ritson of Blake Dawson report on the decision of Colorado Group Limited v Strandbags Group Limited [2007] FCAFC 184, in which the Full Court of the Federal Court of Australia ordered the cancellation of the COLORADO trade mark registration in respect of backpacks. According to Melinda Upton, Helen Gill and Lisa Ritson, the Full Court of the Federal Court of Australia upheld the primary judge’s view that backpacks are not goods of the same kind as handbags, wallets and purses and ordered the cancellation of the COLORADO trade mark registration in respect of backpacks.

Melinda Upton, Helen Gill and Lisa Ritson note that trade mark owners should keep in mind that “goods of the same description” may be interpreted narrowly for the purposes of deciding ownership. Melinda Upton, Helen Gill and Lisa Ritson also note that trade mark owners should be aware that their trade mark registration may be open to attack on the basis that the mark did not, as at the date of registration, distinguish their goods and services from those of others if, prior to their registration, another trader has also used the mark for the same type of goods or services.

Blake Dawson - It was never in the bag: the Colorado Appeal

Corrs Chambers Westgarth - End of the Line for Trade Mark Oppositions

Corrs Chambers Westgarth reviews a recent decision of the Federal Court of Australia of The Scotch Whisky Association v. Marlon de Witt [2008] FCA 73, which they consider raises a bar to avenues of appeal in unsuccessful trade mark oppositions.

According to Corrs Chambers Westgarth, this case sounds a note of caution for unsuccessful opponents in the Trade Marks Office considering appealing the decision to the Federal Court. This case demonstrates that subsequent appeals, even where there are good grounds for the matter to be reconsidered by the Full Court, may be stymied by an overly strict approach to other traditional requirements for leave. By contrast, an unsuccessful opponent who permits the mark to become registered and then commences cancellation proceedings in the Federal Court has an unfettered right of appeal to the Full Court against the decision at first instance. Accordingly, Corrs Chambers Westgarth notes that this may become the preferred avenue for an unsuccessful opponent before the Trade Marks Office to progress its case in the courts.

Blake Dawson IP

Blake Dawson’s Intellectual Property team comprises the foremost legal experts in this field in Australia. Blake Dawson’s award winning team provides a complete range of contentious and non-contentious specialist intellectual property services. Blake Dawson is one of the few Australian law firms which provide a completely integrated full service intellectual property offering. Their team is able to register, commercialise and enforce any intellectual property (IP) right. Blake Dawson’s technical skills in IP to provide the best strategic advice to local and international companies operating in the pharmaceutical, manufacturing, publishing, food, media, financial services, airline, life sciences, chemistry, electronics, computer engineering, mining and engineering sectors.

Chambers Global, 2007 stated that Blake Dawson’s “team has a strong practice across the board”, while Chambers Global, 2006 commented that “Clients get a lot of attention, no stone is left unturned”. Asia Pacific Legal 500, 2006/2007 also noted Blake Dawson’s strong client base: “The firm acts for a long list of companies, including many globally famous brands, as well as government bodies, life sciences organisations and research institutes”. In the Managing Intellectual Property World IP Survey, 2006 the Blake Dawson IP practice received recognition in all categories: patent prosecution, patent contentious, trade mark/copyright contentious, and trade mark prosecution. They have a first-tier ranking in IP, IT and Communications and Media from Asia Pacific Legal 500, 2006/2007 and in PLC Which Lawyer? Yearbook, 2006. Blake Dawson’s life sciences practice has received particular accolades. They are judged to be a leader in Life Sciences (all categories) in PLC Cross-border Handbooks, 2006/2007. Interviewees for Chambers Global, 2007 singled out the life sciences sector as an area of “overwhelming strength” for our practice.

Blake Dawson is one of only three Australian firms listed in the top 20 IP practices in the Global Intellectual Property Super League Tables, 2006. Three of the firm’s IP partners were named in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2007.
Our perspective

Blake Dawson’s Intellectual Property practice offers Australian and international clients a full range of intellectual property services, including:
* Advising on identification, protection and management of patents, trade marks, designs and plant breeders’ rights, and related services such as drafting, filing, prosecution, opposition and strategic portfolio management
* Negotiating and drafting a full range of IP agreements, including agreements regarding commercialisation, research and development, licensing, distribution, franchising, sponsorship, joint venture and international technology transfer
* Advising on copyright, confidential information, passing off and unfair competition
* Enforcing all IP rights, including conducting IP litigation and alternative dispute resolution and developing anti-counterfeiting strategies.
* Advising on marketing, advertising and promotions and on sponsorship and merchandising agreements
* Advising on food, pharmaceutical, therapeutic goods and agricultural and veterinary chemicals regulation.

Blake Dawson’s recent Intellectual Property experience includes:

* World’s first vaccine against cervical cancer - Blake Dawson acted for CSL Limited in the Federal Court of Australia in a dispute concerning the world’s first vaccine against cervical cancer. The dispute was satisfactorily resolved. CSL subsequently successfully applied to the PBAC and federal government to annually vaccinate all Australian females aged 12 and to conduct catch up vaccinations over a two year period.
* Gambro v Fresenius - Blake Dawson acted for Gambro in its long running patent litigation against Fresenius Medical Care relating to haemodialysis systems and disposables in Australia. We represented Gambro in victories on infringement and validity in the Federal Court at first instance and before the Full Court on appeal. We also successfully defended Fresenius’s application for special leave to appeal to the High Court of Australia. Blake Dawson is currently acting for Gambro in the damages phase of the case.
* Conor Med Systems Inc v Angiotech & UBC - Blake Dawson acted for Conor who sought revocation of patents held by Angiotech Pharmaceuticals, Inc and the University of British Columbia over taxol-coated stents in the Federal Court. This was the first case to consider whether the inclusion of an additional patentee, who has no entitlement to the claimed invention, renders the patent liable to be revoked under section 138(3)(a) of the Patents Act 1990.

IP Partners at Blake Dawson

Peter Chalk
David Clark
Belinda Findlay
Grant Fisher
Ben Miller
Mary Padbury
Lisa Ritson

Senior Associates at Blake Dawson

Annika Barrett
Anita Cade
Karen Gettens
Natalie Hazel
Joanna Lawrence
Nik Ramchand
Kellech Smith
Melinda Upton

Smartcard Television Piracy - Haddad v Foxtel Management Pty Ltd [2008] FCAFC 11

The Full Court decision of Haddad v Foxtell Management Pty Ltd [2008] FCAFC 11 has been delivered by Heerey, Sackville and McKerracher JJ. Their Honours dismissed the appeal with costs and maintained that there was unauthorised use of Foxtel smartcards (through use of ‘pirated’ Foxtel smartcards’. The sole ground of appeal was the argument that Foxtel did not make an ‘encoded broadcast’ within the meaning of section 135AL of the Copyright Act 1968.

Mr Kim Williams AM, Foxtel’s Chief Executive Officer and Managing Director has said that “today’s judgment by the Full Federal Court to dismiss the appeal highlights that STV piracy is a serious issue. In this instance FOXTEL had to pursue the matter privately however under new Federal legislation enacted after the time of the original action has extended what would constitute a criminal offence under Commonwealth law and now includes unauthorised access by end users. The Court’s decision sets a precedent that piracy of STV will not be tolerated. Harsh new criminal penalties will apply to those who engage in the unauthorised use of STV signals in the future. The recent reform of the Commonwealth’s copyright laws has provided a stepping stone for the STV sector to effectively stamp out piracy of both satellite and cable services which we will pursue vigorously. Piracy is theft and should be treated with all the severity that theft receives in other areas of society.”

Foxtel wins appeal in groundbreaking piracy case

Watermark - Conor Medsystems v University of British Columbia (FFC)

Lachlan Wilson of Watermark reports on the Full Court decision on Conor Medsystems, Inc v The University of British
Columbia regarding entitlement:

• “The patents in question had been granted jointly to Angiotech Pharmaceuticals, Inc. and the University of British Columbia (UBC) who each claimed entitlement through assignment from their employee inventors. The preliminary question to be answered was whether the patents in question were liable to be revoked for lack of entitlement pursuant to s138(3)(a) of the Patents Act 1990, if the assumed facts could be established by evidence.
  The assumed facts were that the UBC inventors had made contributions that were not encompassed by the claims as ultimately granted.”
• “In the UBC case the contributions of the UBC employees were not ultimately claimed. A detailed analysis of their contributions would be required to decide whether they may have had a positive material effect on the invention sufficient to be named as inventors. Alternatively, the collaboration between the parties may have been sufficient for UBC to be entitled to grant of the patent even in the absence of their being named as inventors.”
• “It becomes apparent that it is critical to review and document all inventorship and ownership claims prior to filing a patent claim. This identification of inventors must also be continually reviewed during prosecution of the patent family. If subject matter is deleted, any relevant changes to inventorship should also be made.”

Link to Watermark publication

Allens Arthur Robinson - Challenge to entitlement to patents

Challenge to entitlement of patents - Sarah Matheson, Partner and Anna Howard, Articled Clerk reports on the Full Federal Court decision of University of British Columbia and Anor v Conor Medsystems [2006] FCAFC 154:

• “The Full Court held that the facts to be assumed were insufficient, so it was inappropriate to determine the preliminary question, either as originally formulated before Justice Finkelstein or as reformulated for the appeal. The matter will be determined at trial”
• “Should the majority reasoning prevail, it will be important for joint patent applicants to ensure that:
• if deriving title from more than one inventor, each named inventorhas made a contribution to the invention as claimed; and
• when deleting, adding or amending claims prior to grant, each of the named inventors continues to be a person who has made a contribution to the invention as claimed; or
• if not the inventor, they are each otherwise a person who would be on the grant of the patent be entitled to have the patent assigned to them.”

Link to Allens Arthur Robinson article

Justice French - Making your own fun in intellectual property law

Making your own fun in intellectual property law - Justice Robert French provides an entertaining light-hearted look at intellectual property law and its lawyers. Justice French also reveals a few things he learnt as a judge and a practitioner acting for Wray and Associates.

“Last year I presided on a Full Court appeal about the Viagra patent. I was looking forward to an exploration of the ecstasy and mystery of human love. Instead we found ourselves with Pfizer and Eli Lilly on a quest for a “workable erection”. We were accompanied by a host of imaginary but unimaginative PhD graduates. They were keen to show us that, having read about strips of penile tissue relaxing in an organ bath of sildenafil, they knew how to make Viagra without even thinking about it. Not surprisingly, their arguments didn’t get up.”

“Take the Millenium Bug … I am not speaking here of the fin de siecle numerical glitch that was going to spell the end of civilisation as we knew it. No, I am talking about a lolly and its shape which I described in the relevant judgment as ‘… a confectionary of fruit flavoured gelatinous composition. It comprises a central body which resembles a section of a sphere with a curved upper surface and a flat lower surface. There are two oval eyes on the body and three short stylised ‘legs’ on either side of the body symmetrically disposed about the eyes’ It shape as a trade mark was the issue. Was this humble geometrical section “inherently distinctive? And the really big question - was its shape part of the ‘common heritage of mankind”? What a question. In the Full Court of the Federal Court we chewed on it metaphorically speaking.”

Justice French also urged collaboration to “ensure that in Western Australia both the practitioners and the Court can offer a service of national and international excellence”.

December 2006 edition of Intellectual Property Forum

Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd [2006] FCAFC 188

Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd [2006] FCAFC 188 relates to a Full Court judgment in relation to an appeal from the Federal Magistrate. The principal issues on appeal werewhether the magistrate erred in refusing the proposed amendment to the points of defence and limiting cross examination on the legality of the sale of the DVDs; and whether the magistrate erred in his approach to quantification of damages under s 116 and of additional damages under s 115(4) particularly having regard to the content of the works and statutory provisions affecting their distribution and sale.

Finkelstein J also discussed the subsistence of copyright in hard-core pornography and remedies that should be awarded for infringement:

• “This appeal raises what in Australia is a novel and important question about the subsistence of copyright in film recorded on DVDs and in the associated artwork. The films are not the usual kind of commercial film one expects to find on a DVD. A list of the more than 200 titles of the works in suit indicates that they are all hard-core pornography: they are usually referred to as “adult films”. We were not asked to view any of the DVDs. Nonetheless I have proceeded on the basis that the films depict explicit details of actual sexual activity, have little by way of plot and not much dialogue. Ever since Deep Throat, one of the most popular pornographic films ever made, producers of adult films have reaped millions of dollars in profits. There is a price. Linda Lovelace, the “star” of Deep Throat described in great detail the abuse inflicted on her both before and during the production of Deep Throat: see Linda Lovelace�s Ordeal (1980). Many people find these kinds of films obscene. Does that prevent them from attracting copyright? If copyright, is the owner entitled to the usual remedies for infringement?”

Link to judgment

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”

Link to Blake Dawson Waldron article