Intellectual Property Notes

Topic 1 – Introduction

Intellectual Property Concepts What is the point of Intellectual Property

Patents, copyrights, trademarks and registered industrial designs are in short, incentive devices, designed to elicit more of certain kinds of ‘learning’ or knowledge creation and certain kinds of knowledge processing.

The state creates an incentive for individuals and firms to do more of certain thing by granted them limited rights in intangibles

BENEFITS AND COSTS TO SOCIETY

A better dynamic allocation of resource is the goal, with a larger proportion of productive factors flowing into certain kinds of knowledge production and processing and into associated innovative investments.

Statutory schemes: Intellectual Property legislation is responsibility of the federal government in Australia.

Section 51(xviii) of the Commonwealth Constitution provides the Commonwealth with a concurrent power in respect of ‘copyrights, patents of inventions and designs, and trade marks’.

The structure of our intellectual property regime

INTERNATIONAL o Paris Convention for the Protection of Industrial Property

1883 o International Convention for the Protection of New Varieties

of Plants 1961 o Berne Convention for the Protection of Literary and Artistic

Works 1886 o Rome Convention for the Protection of Producers of

Phonograms, Broadcasting Organisations and Performers 1961

o Washington Treaty on the Protection of Intellectual Property in Respect of Integrated Circuits 1989

o Agreement on Trade-Related Aspects of Intellectual Property Rights 1994

o WIPO (World Intellectual Property Organisation) Copyright Treaty 1996

DOMESTIC o The Trade Marks Act 1995 (Cth) o The Copyright Act 1968 (Cth) o The Patents Act 1990 (Cth)

o The Designs Act 2003 (Cth) o The Plant Breeders Rights Act 1994 (Cth) o The Circuits Layout Act 1989 (Cth) o The Australian Wine and Brandy Corporation Act 1980 (Cth)

General law (ie equity or common law but not statute)

Confidential information o (trade secrets, not studied in this unit)

Passing off (not studied in this unit) When we look at the Acts …

We look at basic provisions: o The rights o Infringement o Exceptions to infringement o Ownership of rights o Duration of rights o Remedies

NB. Acts underpinned by Regulations o Regulations give procedural detail to the statutes

Copyright does not have a registration

3 ideas about IP 1. Codifies a natural property right 2. Is just a statutory monopoly – created for pragmatic purposes

o Gives exclusive rights and dignity that it might not otherwise had o Facilitates ordering the market

3. Codifies a natural right of personality Universal Declaration of Human Rights -- Article 27(2)

Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.

Dominant idea

IP rights are incentives. o Rewards are the ability to monopolize the good for a certain time

They give an exclusive right to profit by

Exploiting product

Selling right to someone else

Licensing right to someone else International system

Rights owner sues under law of country where rights are breached.

Therefore need to ensure that laws in that country are strong.

But this has been resisted by developing countries.

So reciprocal rights

And trade sanctions. Who benefits most from IP?

Europeans? Yes, quite a lot.

Americans? Yes, a LOT.

Australians? Not so much.

Rwandans? Hardly at all.

Why? – IP exporting countries benefit most – income from overseas. Australian Constitution

S51(18) of the Constitution gives Parliament: o Power to make laws for the peace, order and good government

of the Commonwealth with respect to copyrights, patents of inventions and designs and trademarks.

Intellectual property interfaces with telecommunications

How to define intellectual property?

A right over something created

An exclusive right to use and control

A species of incorporeal/immaterial property

Property in an incorporeal thing

Additional Cth powers

External affairs right/ power o Governed in large by international treaties o Party to many treatisies

Posts and telegraphs

Incidental power Treaties

Berne Convention for the Protection of Literary and Artistic Works

Rome Convention on Performances and Phonograms

Paris Convention on Industrial Property

TRIPS (Trade Related Aspects of IP Rights)

WIPO Copyright Treaty

WIPO Performances and Phonograms Treaty o Governs sounds recordings

Also bilateral and regional treaties

– eg US Aust Free Trade Agreement – Transpacific Partnership

Commonwealth departments

– Department of Communications (copyright) – the Hon Mitch Fifield o Copyright is under a different department than the others

– Dept of Industry and Science – the Hon Chrisopher Pyne (patents, designs, tms)

o (these areas administered by IP Australia – ie Industrial Property Australia)

Courts with jurisdiction in IP

– State Supreme Courts o Unusual for IP matters to come to the state courts

– Federal Circuit Court – Federal

o Favored for these matter as the judges have expertise in these matters.

– Full Federal Court o Lots of decisions coming out of the Full Federal Court

– High Court NOTE: Designs, patents and trade marks cases are also likely to start in the Federal Court, with appeal to the Full Federal Court and then the High Court.

Remedies Borrowed from both equity and common law

Injunctions

Account of profits

Damages

Order for delivery up of goods

Declarations

Apologies

Removal of infringing treatment etc Injunctions

Injunction is the main remedy for infringement of an intellectual property.

o May be interlocutory/interim injunction (prior to hearing of main action)

Ex parte interim injunction + notice o In the absence of the other party

Price for injunction? o Doesn’t come totally free of responsibility o Has to pay damages for any losses the defendant suffers due to

the plaintiffs injunction o Burden on the plaintiff is quite heavy

Undertaking to pay damages to D if judgment goes against P Also Alternatives:

– Damages – compensatory – Account of profits – measured by defendant’s gain. – Also criminal penalties under some Acts.

Don’t make threats of legal action!

– If they turn out to be groundless your client may be sued for damages. – Be prepared to make your case in court if you want to threaten legal

action.

Topic 2 – Registrability

Role of Registered Trade Marks What do trade marks do?

Belong to world of

Marketing

Promotion

Protect business environment Registered and Unregistered Trademarks

Like other registration systems trade marks law is about the relationship between marks that are protected and marks that are unprotected.

Unregistered marks are perfectly legitimate and the only pressure on manufacturers and the suppliers of goods and services to bring their marks under the registration system is commercial.

Functions of registered trade marks

Designate source/origin of product/service; (Most important)

Denote quality/standard embodied in product/service;

Identify/differentiate product/service;

Symbolise goodwill of owner

And motivate consumers to buy;

Operate as property (ie material of trade)

And represent advertising investment;

Protect public from confusion/deception;

Allow consumers to buy what they want;

Allow cts (and legislature) to create standards of acceptable business conduct.

How the trade marks system works

How does the system work?

Trade Marks Act 1995 o Distinguishes between ‘registered trade marks’ o And unregistered marks

(just called ‘trade marks’).

IP Australia administers registration. Unregistered trade marks?

Very common

Protect with passing off

Competition action o But they lack:

tm legislative protection A clear legal system Rules laid down in advance Bodies of experts

Using but not registering

Many marks useful

But unregistrable.

COOL CLOTHING

Not a bad marketing tool. Unregistrable? - the colour purple

Application

An application for registration of a mark may be made by, inter alia, a person who claims to be the owner of the mark and is using or intend to use the mark: s. 27

The word person includes both natural and legal persons and even a body of persons, whether incorporate or not: s. 6

Joint ownership is also possible: s. 28

Period of Registration

Initial period of registration is 10 years: s. 72 o At the end of the 10 year period it is necessary to re-new the

mark.

Classes of services – TM Regs Sch 1 35: Advertising; business management; business administration; office functions 36: Insurance; financial affairs; monetary affairs; real estate affairs 37: Building construction; repair; installation services 38: Telecommunications 39: Transport; packaging and storage of goods; travel arrangement 40: Treatment of materials 41: Education; providing of training; entertainment, sporting and cultural activities 42: Scientific and technological services and research and design relating thereto;

industrial analysis and research services; design and development of computer hardware and software.

43: Services for providing food and drink; temporary accommodation 44: Medical services; veterinary services; hygienic and beauty care for human beings

or animals; agriculture, horticulture and forestry services 45: Legal services; security services for the protection of property and individuals;

personal and social services rendered by others to meet the needs of individuals

Priority Date

Meaning the “Date of filing”

Protection runs from this date o S 72 o S 12

Must be registrable as at this date Defeat possible at 3 stages

1. Application stage ss 39-44 2. Opposition stage ss 57-62A 3. After registration – ss 81-90, 92 (cancellation)

Registration can always be challenged Cross referencing between provisions

Limits and disclaimers

Eg use of trade mark is limited to certain goods

Or limited geographically

Or one element of a mark can be disclaimed by the applicant o Eg. Skinny Milk, Milk would be disclaimed as other people would

want to use milk

What types of trade marks are there? 1. Standard 2. Collective 3. Certification 4. Defensive

2. Collective marks Under Part 15 of the Act it is possible to have a collective trade mark.

Used by members of an association

To distinguish their goods/services from those of people outside the association: s. 162

o Can’t be assigned/transmitted. o Owned by assoc. o Used by members. o Assoc takes action.

Eg. Queensland Freemasons

3. Certification marks – Part 16

Shows person certifies goods as being of particular quality/ accuracy/ origin/ material/ mode of manufacture etc.

o Eg woolmark; o Heart foundation tick. o Marks used by ‘approved user’. o Must be use in accordance with rules (filed by the applicant).

4. Defensive marks – Part 17

Designed for famous marks.

Can be regd for goods/services

For which not actually used.

(Normally have to intend to use the mark for the goods.) Part 17, s. 185

If, because of the extent to which a registered trademark has been used in relation to all or any of the goods and services in respect of which it is registered it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods and services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods and services.

Look at likelihood that mark will be taken to indicate connection bet goods and regd owner. If connection likely to be seen

The regd owner can apply for registration of mark for other goods/services.

Examples of a probable connection? o Kellogg’s writing paper? o Nike spas?

Publication

After you file the application, the Registrar has to publish its particulars: s 30

It cannot be rejected unless the applicant has been given an opportunity to be heard: s 33(4)

If the application is accepted, the decision must be advertised in the official Journal: s 34

Opposition

If the registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing notice of opposition: s. 52

Both the opponent and applicant must be given opportunity of being heard: s 54(1)

In the end the Registrar has to decide, in light of the opposition case, whether to refuse the mark or whether to go ahead and register it, with or without conditions or limitations: s 55

Amendment of Application

A trade mark application may be amended under Part 6, but IP Australia warns that after you file your application the goods and services cannot be extended and only very minor amendments are allowed to the trade mark.

Assignment and transmission

A registered trade mark is personal property: s. 21

The registered owner can deal with the mark as its absolute owner: s22

Trade marks can be assigned or transmitted either totally, or partially in the sense that the mark may be assigned with regard to only some of the goods for which the mark is registered, but such an act must be recorded with the Registry: Part 10

Is it a ‘trade mark’? What constitutes a trade mark, according to the Act?

Go to s17 o “ a sign used, or intended to be used, to distinguish goods

and services dealt with or provided in the course of trade by a person from goods and services so dealt with or provided by any other person.”

Key elements of provision o Sign o Used or intended to be used o To distinguish goods/services o Provided in course of trade o By a person o From those dealt with/provided in trade by another person. o Every trade mark contains one or more signs.

What is a sign? s. 6 – one or more of …”

Letter

Word

Name

Signature

Numeral

Device

Brand

Heading

Label

Ticket

Aspect of packaging

Shape

Colour

Sound

Scent

NOTE:

Devices = the picture without the words

Application for registration will, however, be rejected ‘if the trade mark cannot be represented graphically’: s. 40

Shape marks

S 40 – graphic representation o Must be able to be represented graphically (meaning print on

paper) o Ie in pictures or words or symbols.

Sound? Notes plus recording. Or description plus recording.

Scents? Description in words.

Chemical formula? No.

‘The smell of bitter beer’

‘The sound of a dog barking’ Can a tm be the goods themselves?

In Australia, Windeyer said that

a trade mark has to be capable

of being described and depicted

as something apart from the goods to which it is applied. o ‘I do not think that a MERE DESCRIPTION of goods simply by

shape, size or colour can be a TRADE MARK in respect of those goods.’

Followed in Koninklijke Philips. Smith Kline in UK

OK to register a mark that covers the whole visible surface of an article. Philips v Remington - shaver

TM must be separate from goods. Applied in order to identify source.

No TM protection for an aspect that others would need to reproduce in making the same sort of goods.

Shape of coke bottle?

Fine o Goods are in liquid form. o The bottle is just an aspect of packaging. o The shape of the package.

But o Problems if the bottle shape is applied for o As a trade mark for the bottle itself.

Reasons for appearance not being suitable trade mark

Act indicates a distinction between the two

Appearance of goods is just a visual description of them

A description of goods is often not able to act as an indication of origin Summary

No problem with shape being used as a tm.

Eg if shape applied to soap or chocolates.

As long as it is not the necessary shape of the goods.

But you can’t register the necessary appearance of the goods themselves.

It wouldn’t be distinctive.

Used or Intended to be Used The ‘use’ criterion for registrability s 17 ‘used or intended to be used Case law in relation to use or intention to use should be read in conjunction with ss. 7 and 8

The court may decide that a trade mark has been used if it has been used with addition or alterations that do no substantially affect the identity of the trade mark: s. 7(1)

Use of a letter, work, name or numeral mark may consist of an aural representation of the mark: s. 7(2)

Use of the mark in relation goods means use of the mark upon or in physical or other relation to the goods, and in relation to services it means in physical or other relation to them: ss. 7(4) and 7(5)

An authorized use of the trade mark is taken by the owner of the mark: ss 7(3) and 8

Re BATT’s Trademark (1898) o ‘having some o definite and present intention o to deal in certain goods or descriptions of goods’

Intention to use

DUCKERS TRADE MARK o Must be resolve to use in immediate future. o A real intention to use, o Not a problematical possibility. o Resolve or settled purpose.

Consequences of lack of intention to use? o Prima facie unregistrable (but intention is assumed at this stage:

Aston v Harlee); o Grounds for opposition – s 59; o Grounds for application for cancellation – s92 - no intention in

good faith to use.

Intention to use cntd IMPERIAL GROUP V PHILIP MORRIS

Merit – the desired mark o No able of being registered as it is too descriptive

Laudatory epithet praising the good

Nerit – the regd mark = ghost mark o Perfectly distinctive due to the fact that nerit and merit are so

close

If they register Nerit

They have free use of Merit

But was there bona fide intention to use as a trade mark? No. o Lord Shaw suedo registration should not be allowed to clutter

up the register Cancelled the mark and removed from the register

Use of a Trademark

Section 7 – use of tm (1) If the Registrar or a prescribed court, having regard to the

circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

(2) To avoid any doubt, it is stated that, if a trade mark consists of the

following, or any combination of the followineg, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(4) In this Act: use of a trade mark in relation to goods means use of the trade

mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5) In this Act: use of a trade mark in relation to services means use of the trade

mark in physical or other relation to the services. In physical or other relation

s 17 ‘a sign used … in the course of trade’

Would have to be for profit (in the long run)

But could be giving away of samples.

Must draw a line between preliminary activities and trading activities.

Using mark on goods during market research is probably not in course of trade.

o Using mark on goods during advertising process probably is in course of trade. (discussion in Oakley v Franchise China 2003.)

S 41(1) – Is the mark capable of distinguishing?

An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Capable of distinguishing – basic concepts 1. Inherent adaptability to distinguish 2. Factual or acquired distinctiveness (distinctive through use)

If a mark is one of these, it is ‘capable’ of distinguishing These tms are inherently adapted to distinguish – how so?

Capable of distinguishing goods from other goods and services by inherently adapting to distinguish

If not inherently adapted and not factually distinctive …

A mark may be to some extent inherently adapted to distinguish.

Registrar has discretion in deciding

Whether it is capable of distinguishing. o S 41(4)

S 41 Note 1 Redrafted (some case will talk about earlier sections of s.41)

What marks are not inherently adapted?

Mostly marks consisting wholly of sign that is ordinarily used to indicate:

Kind

Quality

Quantity

Intended purpose

Value

Geographical origin or

Some other characteristic

Of goods or services

Or time of production of goods

Or of rendering of services.

Note: may still be registrable. Underlying test

Whether other traders

Are likely

In the ordinary course of business

And without improper motive

To want to use the same or similar mark

In connection with own similar goods or services Clark Equipment – who would want to use the word MICHIGAN?

Wanted registration in relation to power cranes o Was Michigan inherently adapted?

Who is going to want to use it for power cranes and that types of goods?

o Competitors from Michigan’s would obviously want to use that mark in the future

any time in the foreseeable future would suffice o Wasn’t relevant whether they were already producing the goods

there, but the prospect that they might was enough to satisfy that they could not inherently distinguish.

Policy considerations

Law must balance public interest in free use of language

And public interest in protecting the trade mark owner by granting a monopoly

Farah – a geographical name? What about an obscure geographical name

Mark must be interpreted according to the general and popular meaning of the word.

o Magnolia Case was also the name of a town in the USA What is the name of the place to the average man or

woman

Not geographical name just because some place has been called by it. Chifley Tower – is this geographical origin?

Not part of common heritage. Not place name in relevant sense. Would as such be harsh for them not to be able to use it.

Tub Happy Tub Happy – re cotton garments – inherent adaptability

Dixon: Meaning would not occur to person immediately. (MAJORITY) o Language may just convey feeling, attitude. o This is OK – inherently adapted. o Tub Happy conveys ‘gladsome carelessness apropos of the tub’. o It has an emotive tendency o No tangible meaning.

Look at what ordinary person would understand the words to convey o ‘the test must lie in the probability of ordinary persons understanding the words, in their

application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.’

Tub Happy – Williams J o English language = common property o Tub Happy? Cloudy suggestions that all will be well in the washtub, a covert and skillful

allusion. o Not descriptive enough to be a problem.

Devices (together with word marks)

Must be together with words

Scissors for a barber would not be registered o Too descriptive

How distinctive was the spring?

Too descriptive as it shows the actual spring inside the mattress