Trade Mark

At an IP Academics’ conference in early February, I remember Professor Di Nicol asking, rhetorically, ‘where has all the patent reform gone?’. Di pointed out that we’d had any number of ACIP Reports, ALRC Reports (like that on Gene Patenting), and IP Australia Discussion Papers, all with no actual legislation resulting.

No more, it seems.

No doubt many are already aware of the Intellectual Property Laws Amendment (Raising the Bar) Bill. An exposure draft for this Bill was released by IP Australia was released on 3 March, with comments due by Monday next week (4 April). The provisions of the Bill have been discussed at some length elsewhere, too, including some very interesting, thorough discussion of Schedule 1 on the Patentology blog.

I have a few thoughts though, on things that haven’t been discussed much. (more…)

IP Australia has released the IP Laws Amendment (Raising the Bar) Bill for public consultation. It’s huge: it covers patentability standards, a patent research exception; enforcement; oppositions – you name it, it’s in there. Written submissions due by 14 April 2011. More thoughts to come…

IP Australia is reviewing the penalties (criminal offences) and additional damages in trade mark law. Actually, they’ve been reviewing this for a while: we had the ACIP Review, and then an Options Paper (pdf) published by IP Australia back in November; submissions on the Options Paper close this week.

Anyway, I was just reading through the options paper again, and I noticed that IP Australia is proposing to adopt something like the tiered system of liability that we now have in the Copyright Act: or at least, some of it. They are proposing to have indictable offences for intentional trade mark infringement, and summary offences for negligent trade mark infringement. This, of course, is based on the Copyright Act system. And so I thought it was raising the question again: what kind of a silly standard for criminal liability for IP infringement is negligence? (more…)

Wonderful post from Professor Mark Davison on the Australian Trade Marks Blog. ‘Nuff said.

Knowledge Ecology International has published a list of proposals which they say are “the substantive suggestions for provisions of the ACTA that the RIAA [Recording Industry Association of America] sent to the USTR [US Trade Representative] on March 17, 2008″.

The wish list makes for very interesting/scary reading for those interested in what the next generation of bi- or multi-lateral treaties in IP might look like. Of particular interest are the following suggestions relating to secondary liability (liability of intermediaries for copyright infringement): (more…)

Today we had the pleasure of a staff seminar up here at the University of Queensland Law School – by David Lindsay, an old colleague of mine from my melbourne days. David these days is at Monash University Law School.

David’s recently published a book with Hart called International Domain Name Law.

Now, I remember back when I first started teaching ‘cyberlaw’ type subjects at Sydney University back in around 2001-2002, domain names was one of those standard things you did. But people seemed to move on, lose interest; stopped talking about domain names much. But today’s talk was something of a revelation to me: David outlined something of the strange, quasi-common-lawish nature of the domain name decisions, with the gradual development of views on issues of interpretation, the areas of controversy, the splits, the absence of clear principles upfront leading to a gradual ‘feeling around’ – all at internet speed due to the number of decisions being issued. He also revealed some of the more outlandish aspects of this rough-and-ready systems: the application of random bits of national law; the lottery that is panellist appointment. And he elucidated how many of the areas of controversy could be fixed with some clear understanding of the objectives of the system.

It was very clear that david’s really done the hard yards in this book: he really has read the decisions – lots and lots and lots of them – and he’s done the heavy intellectual lifting of trying to make sense of it all. I couldn’t be more enthusiastic in recommending it should you ever need to worry about domain name disputes.

Cadbury purpleI was going to write about the latest decision of the Federal Court on Cadbury’s long, drawn-out battle to prevent Darrell Lea use the colour purple to market its goodies, including chocolate (I’ve written about earlier decisions; see here, here, here).

But then I found this masterful post by TM expert, Mark Davison. Nuff said.

Today I read a paper in the latest IP Forum Magazine on ‘Trade Mark Counterfeiting – the Australian Problem’, by Corrs partner Stephen Stern. I read it in part because just recently, Australia decided to join the negotiations on the Anti-Counterfeiting Trade Agreement (ACTA) (which I’ve discussed here and here). Stern’s article is an interesting read; some of the discussion of ‘counterfeiter techniques’ in particular was interesting. As you can imagine, given that Stephen acts for brand owners, and given the title, the article was in part a plea for movement from the government – a plea, in short, for law reform.

What struck me, however, was the vagueness of the call for reform. And in the general spray of bullets that are the kinds of reforms he discusses, I think there’s some danger of collateral damage. (more…)

If you are interested in IP you may have noticed, around the traps, references to proposals for a “plurilateral anti-counterfeiting treaty”. The proposal comes out of a small group of countries – Canada, the 27-member state European Union, Japan, Korea, Mexico, New Zealand and Switzerland.

According to an IP Watch story a couple of weeks ago,

negotiations will expand upon the enforcement standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and countries would be encouraged to comply with other international IPR agreements. The goal is to set a new, higher benchmark for enforcement that countries can join voluntarily.

Now, the Australian Department of Foreign Affairs and Trade has issued a Discussion Paper on whether Australia should join in negotiations. The discussion paper is available here. Be quick – submissions are due by 3 December. Apparently DFAT are interested in hearing people’s views on:

  1. whether Australia should be part of such negotiations;
  2. whether international standards do need to be heightened in the area, and/or whether standards in Australia need to be heightened
  3. views on the kinds of provisions that should be sought/avoided/etc.

On the weekend, news that Trade Minister Warren Truss announced that Australia would join, as a third party, the dispute resolution brought in the WTO by the United States against China relating to enforcement of intellectual property rights.

[Update: apparently the Labor party (or at least Simon Crean) approves this decision, labelling it a ‘tentative’ step in the right direction.]

Hmmmm. Do you think this (a) a silly move; (b) a considered and sensible way to protect Australia’s interests; (c) another example of Australia doing its ‘me too’ act with the US on intellectual property law regardless of Australia’s own economic interests? Let’s have a think about this. (more…)

Well, well, well: those of us who, in the fine tradition of lawyers everywhere thinking their own area is sexy, had decided that the High Court would take any old IP case that sounded vaguely interesting, will have to revise their views.

Not only did the High Court refuse special leave in the BP colour trade mark case, but now they’ve refused special leave in the Cooper case on authorisation liability (transcript not yet available).

This one, I have to admit, surprised me. I was very critical of the Full Court judgment when it came out late last year. Now we are stuck with it. Despite the fact that it is arguable that Australian authorisation liability for copyright infringement is now more restrictive (ie, more copyright-owner protective) than elsewhere. Certainly Canada is less restrictive – there, our caselaw was explicitly rejected. Arguably things are less restrictive in the UK, too. Interestingly, our law is more copyright owner protective even than the US: and it’s not just me who thinks so: see this paper by acknowledged experts Sam Ricketson and Jane Ginsburg).

David Shavin in the High Court recently:

It is not an overstatement, although some may regard it as slightly melodramatic, to say that there are aspects of trade mark law which can be seen to be inexorably sliding out of control. This Court, and only this Court, can bring it back to its true course. In a series of decisions culminating in the decision in this case, successive Full Federal Courts have failed to appreciate the true nature of a trade mark as defined by section 17 of the Act.

The High Court was not convinced, refusing BP special leave to appeal from the Full Federal Court’s rejection of its trade mark application for green as the predominant colour of service stations. According to Justices Gummow and Hayne, t’o the extent that the applicant seeks to assert that the Full Court made errors of law in the construction of provisions of the Trade Marks Act 1995 (Cth), we are not persuaded that these contentions enjoy sufficient prospects of success to warrant a grant of special leave’. This is interesting, as the Full Court decision certainly isn’t without its critics.

Last week, we all had enormous fun laughing at EMI and it’s amazingly stoopid PR move (as well as highly questionable legal move) of trying to ban the circulation of a cricket songbook that put words to some of the tunes of songs that EMI owns. Fortunately, that little threat went away.

Now, via IPKat, I learn that the Barmy Army have issues too:

As if the England cricket team weren’t doing enough to lower the morale of their put-upon fans, the IPKat learns from DNA India that the England and Wales Cricket Board (ECB) is accusing the ‘Barmy Army’ of die-hard cricket fans of infringing its intellectual property rights. The claim is that merchandise bearing the ECB logo and the word ASHES infringement the ECB’s (presumably trade mark) rights. The ECB has said that it wants to avoid legal action, but hasn’t ruled it out.

What is wrong with these people?  Since when was it a good idea to stop people having fun and supporting their cricket teams? Let’s face it, the English Cricket Team clearly need all the help they can get!

IP Australia has an issues paper out on the new regulations to go with our new Trade Marks Act, which recently passed the various houses of Parliament. You’ll have to be quick though – they want comments by 1 November.

More quick news: the Intellectual Property Laws Amendment Bill passed Parliament yesterday. This won’t really surprise observers: it was pretty clear that while there are plenty of people in the profession jumping up and down about various provisions in the Act, this was always going to pass. A full summary of the effect of the provisions from IP Australia is available here. A quick list is over the fold. (more…)

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