Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Thursday, May 5, 2016

End of the Road for RPL Central

By Anthony Selleck, Senior Associate 

Earlier this year we reported that RPL Central had applied to the High Court of Australia for special leave to appeal against the decision of the Full Federal Court. Those following the case will recall that the Full Federal Court decided against RPL Central, holding that the claims of its innovation patent were directed to a 'mere scheme', abstract idea or business method, and thus did not constitute patentable subject matter.

Earlier today, the High Court dismissed RPL Central's special leave application with costs. This means that the orders of the Full Federal Court dismissing an appeal from a decision of the Australian Patent Office, will stand. RPL Central has now exhausted its legal options in respect of its innovation patent. The fact that the case was taken through two Federal Court appeals and a special leave application suggests much was at stake for RPL Central in securing patent rights over its technology.

Monday, May 2, 2016

Dramatic IP changes may be in the pipeline with Draft PC Report

By Suzy Roessel, Senior Associate

The Productivity Commission has released a Draft Report on Intellectual Property arrangements in Australia, which may mean drastic changes to the law are coming. Released on Friday, the Draft Report is open for comment by written submission until 3 June 2016, with a final report to be provided to the Australian Government in August this year and published shortly thereafter. The Draft Report follows last year's issues paper and contains 23 draft recommendations, along with a number of draft findings and requests for further information.

The holistic and principled approach of the Productivity Commission is commendable. It is desirable to avoid 'spot fire' legislation adopted quickly to address a particular issue without proper consideration of compatibility with other aspects of the legislation and affected stakeholders.

A weakness of the Draft Report is that the Commission consists of economists and there are, perhaps not surprisingly, gaps in the legal and practical analysis.

The Draft Report proposes a major re-balancing of copyright between copyright owners and consumers and intermediate users through the reduction of geographical barriers and more flexible defences to copyright infringement, including replacing the fair dealing defences with a flexible fair use defence. Many of these changes reflect previous reviews and will be welcomed by consumers but will be controversial with copyright owners.

Please get in touch with our team if you'd like to work with us to prepare a submission on the Draft Report.

Jimmy Choo thwarts knock-off domain names

By Adrian Chang, Associate

Jimmy Choo has expanded its autumn range by picking up four new domain names from cyber squatters.

Using the Uniform Domain Name Dispute Resolution Policy (UDRP) procedure, the fashion house lodged complaints against three individuals (the Registrants) holding between them the following domain names (links are to the respective UDRP decisions):

Tuesday, April 26, 2016

School's out for descriptive marks

By Mark Williams, Managing Associate

A recent decision of the Australian Trade Marks Office again confirms the difficulty of securing registration of trade marks consisting of descriptive words.

The dispute centred around an application by the University of Wollongong ('UOW') for the trade mark SYDNEY BUSINESS SCHOOL in respect of goods and services in classes 16, 35, 41 and 42. UOW, which was established in 1975, commenced use of the name SYDNEY BUSINESS SCHOOL in connection with its Faculty of Commerce in 1999. Despite being initially rejected for a lack of distinctiveness, UOW had managed to secure acceptance of its application by means of evidence of use of the mark demonstrating that the mark had become distinctive of UOW's goods and services as at the filing date of the application. In 2011, the University of Sydney ('UOS'), Australia's oldest University (established in 1850) renamed its Faculty of Economics and Business as 'The University of Sydney Business School'. UOS then opposed UOW's trade mark application.

Wednesday, April 20, 2016

Petition DENIED: SCOTUS declines to hear Authors Guild copyright challenge to Google Books

By Suzy Roessel, Senior Associate

The United States Supreme Court has denied a petition for a writ of certiorari filed by the Authors Guild and other individual authors to challenge a decision of the Federal Circuit in Authors Guild v. Google, Inc., 804 F. 3d 202 - Court of Appeals, 2nd Circuit 2015.


The Supreme Court's refusal to hear the challenge marks the end of the Google Books saga, which began in 2005, and leaves in place the decision of the US Court of Appeals for the Second Circuit. In that case, a unanimous bench said that the case "tests the boundaries of fair use" under US copyright law.

Through Google Books, Google made digital copies of books without permission of rights holders, scanned those copies, and established a publicly available search function whereby an internet user can freely search for content and view snippets of text containing the searched-for terms. Google also allowed participating libraries to download and retain digital copies of books they submit under agreements which commit the libraries not to use their digital copies in violation of the copyright laws.

Monday, April 18, 2016

Court provides clarity on Google AdWords and use 'as a trade mark'

by James Gonczi, Associate

Justice Katzmann's recent decision in Veda Advantage Limited v Malouf Group Enterprises Pty Limited [2016] FCA 255 has provided clarification on whether use of a competitor's trade mark as a Google AdWords search term, and as text in a sponsored link, constitutes use 'as a trade mark' for the purposes of section 120 of the Trade Marks Act. This is an issue which has had scant judicial consideration in Australia, so her Honour's decision provides useful clarification on the rights of advertisers to use their competitor's trade marks in the course of their online advertising.

The applicant (Veda) is a supplier of credit reporting services. Veda owns several trade marks incorporating the word 'Veda', which were registered in, among other classes, class 36 for various financial services, including credit enquiries (the Veda Trade Marks). The respondent (Malouf) operates several businesses which target people with poor credit ratings and assists customers to dispute and apply to have negative listings removed from credit reports compiled and maintained by credit reporting bodies such as Veda.

In the course of advertising its various businesses via Google, Malouf used at least 86 keywords which consisted of, or incorporated, the word 'veda'. The keywords themselves were not visible to consumers who used the Google search engine and located Veda's sponsored links. However, the sponsored links did include the word 'Veda' in conjunction with various other words in the headings of the sponsored links.

Wednesday, March 30, 2016

ACCC v Valve: ACCC Wins

by Adrian Chang

The ACCC has marked another kill against game distribution platforms – this time it has taken down Valve Inc, owner of the legendary Steam software distribution platform.

In a press release, the consumer watchdog said Justice Edelman of the Australian Federal Court has found that Valve made false or misleading representations to consumers in its terms and conditions of three versions of its Steam Subscriber Agreement and two versions of its Steam Refund Policy.

The text of the judgment has yet to be publicly released.

The ACCC says that Justice Edelman found that Valve had represented that:
  • consumers were not entitled to a refund for digitally downloaded games purchased from Valve via the Steam website or Steam Client (in any circumstances);
  • Valve had excluded statutory guarantees and/or warranties that goods would be of acceptable quality; and
  • Valve had restricted or modified statutory guarantees and/or warranties of acceptable quality.