Thursday, March 26, 2015

Lights out on 'springboard' injunction for Streetworx

By Lauren John, Lawyer

When a business supplying streetlights in Australia that infringed a patent, then modified them so that they did not infringe, the patentee applied to the Federal Court for a springboard injunction to stop the subsequent supply of the non-infringing products to two councils. The springboard injunction application failed but the supplier must now undertake to pay the gross margin in respect of the future supply of its streetlights to the councils into a trust account as security for any award of damages or account of profits.

Friday, March 20, 2015

Get the stats: WIPO facts and figures

By Kaelah Ford, Lawyer

There has been an uptick in IP filings worldwide, according to World Intellectual Property Organization (WIPO) statistics released in March, with China leading the way. Inventive activity is increasing, with standard patent applications now at 2.6 million annually, up 9.6 per cent.

Businesses continue to boost protection for their brands, with 7 million trade mark applications filed annually, up 6.4 per cent. 

Close to 1 million utility models (second-tier patent) applications were filed in the most recent year for which we have statistics, up 18.2 per cent. China accounted for 90 per cent of these filings.

Friday, March 13, 2015

IP Reform: 'Proposals to streamline IP processes and support small business' by IP Australia

By Suman Reddy, Associate


On 20 February 2015, IP Australia released the public consultation paper: Proposals to streamline IP processes and support small business– a product of the Government's Cutting Red Tape deregulation agenda.

Following the significant reforms under Raising the Bar in 2012, the Government has set out a number of proposals falling under three headings:


  • Aligning and simplifying
  • Assisting small business
  • Technical fixes

Friday, March 6, 2015

Have we reached the final reel in Dallas Buyers Club, LLC v iiNet?

By Richard Sawyer, Lawyer

Anxious iiNet customers are likely to have to wait until late March to find out if their personal details will be given to a company that claims to own the copyright in the 2013 film Dallas Buyers Club.

Arguments before Justice Nye Perram in the Federal Court wrapped up last week in relation to the application for preliminary discovery made by Dallas Buyers Club, LLC (Dallas) against iiNet and a few other internet service providers (ISPs), with his Honour indicating that a written judgment was likely to take three weeks.

Arguments in the hearing centred around what iiNet considered to be weaknesses in Dallas's prospective case against its customers. However, other critical issues debated by the parties included the significance of ISPs' privacy obligations under the Telecommunications Act 1997 and the soon to be agreed industry code of practice in relation to online piracy.

Tuesday, February 24, 2015

RiRi takes a bow: Topshop loses appeal in passing off case

By Jonathon Adamopoulos, Senior Associate, and Marryum Kahloon, Vacation Clerk

Note: Readers may want to find an umbrella, as the following article may pour up a few too many lyrics for some.

Poor Topshop is not finding a lot of love in a hopeless place after losing an appeal against Justice Birss' decision that it had committed an act of passing off. The company found themselves unable to talk that talk for Lord Justices Richards, Kitchin and Underhill in the Court of Appeal in Fenty & Ors v Arcadia Group Brands Limited & Anor [2015] EWCA Civ 3.

The facts


In 2012, Topshop began selling a sleeveless t-shirt called the RIHANNA TANK. The t-shirt was screen printed with an image of Rihanna that was taken during the music video shoot for her single We Found Love.

Thursday, February 19, 2015

New IP laws coming soon

By Clare Young, Managing Associate

The Intellectual Property Law Amendment Bill 2014 has finally passed both houses and is awaiting royal assent (expected shortly). We say 'finally' as the content of the Bill was introduced back in 2013 and appeared to be passing through Federal Parliament without much objection when the general election was called, causing the Bill to lapse. The Bill was re-introduced in 2014 under the current government.

The Parliamentary Secretary for Industry has said that the Bill will 'reduce red tape for those wishing to obtain or enforce their intellectual property rights and will provide more support for other countries facing health emergencies'. So what will change and who will be affected?

Tuesday, February 17, 2015

High Court to hear appeal from D'Arcy v Myriad Genetics Inc

By Tony Shaw, Associate

We reported here and in our recent Focus article that the Full Federal Court in D'Arcy v Myriad Genetics Inc (D'Arcy) handed down a unanimous judgment confirming the first instance decision of Justice Nicholas in Cancer Voices Australia v Myriad Genetics Inc (Cancer Voices) that 'isolated nucleic acids' (genetic materials in their isolated form) are patentable in Australia.

The judgments in Cancer Voices and D'Arcy have been consistent in the application of Australian patent law in deciding that 'isolated nucleic acids' are patentable subject matter. In the US, the Supreme Court has come to a different conclusion finding that isolation per se is not enough for patent eligibility. In Europe, Directive 98/44/EC on the legal protection of biotechnological inventions provides that isolated biological material is patentable even if it has occurred previously in nature.

On 13 February 2015, the High Court of Australia granted Ms D'Arcy special leave to appeal the Full Court's decision. According to a press release by Ms D'Arcy's lawyers the High Court hearing will take place in April 2015.

Keep an eye on Scintilla and the Allens website for updates on the appeal and our reporting of the High Court's decision.