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Trade mark infringement: who can provide consent?

Robert Cutler and Timothy Webb of Clayton Utz review the Brother Industries Ltd v Dynamic Supply Pty Ltd decision considering establishing consent as a defence to trade mark infringement.

It is a defence to infringement of a registered trade mark if the trade mark is applied to goods or services with the consent of the owner of the trade mark. According to Robert Cutler and Timothy Webb, the Federal Court decision has confirmed that consent must be obtained from the registered owner of the trade mark in Australia. The fact that goods to which a trade mark has been applied have been sourced from a related entity or member of the same corporate group as the Australian registered trade mark owner will not be sufficient to give rise to an implication, for the purposes of the defence, that the importer or seller of the goods has the necessary consent.

Australian Intellectual Property Law Bulletin (2008) 20(7)


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Business method patents in Australia and the US: the difficulties continue

Business method patents in Australia and the US: the difficulties continue - Nicholas Tyacke and Timothy Webb of Clayton Utz review recent Australian and US decisions that show the difficulties that pure business methods are causing patent offices and courts in those jurisdiction.

In Australia, the article refers to Decision of Deputy Commisioner of Patents: Stephen John Grant [2004] APO 11, Grant v Cmr of Patents [2005] FCA 1100 and Grant v Cmr of Patents [2006] FCAFC 120 and the application for special leave to the appeal to the High Court. These cases relate to Stephen John grant’s asset protection method, which involved

  • establishing a trust with a trustee;
  • the owner making a gift of a sum of money to the trust;
  • the trustee making a loan of said sum of money from the trust to the owner; and
  • the trustee securing the loan by taking a charge for said sum of money of the asset.

In USA, the article refers to the seminal decision of State Street Bank 149 F 3d 1368 (Fed Cir 1998) and the dissenting decisions in Laboratory Corp of America Holdings v Metabolite Laboratories, Inc 126 S Ct. 2921 (2006).

Link to Australian Intellectual Property Law Bulletin (Vol 19 No 8, January 2007)


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