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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