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

Friday, November 20, 2015

Are you affected by the new unfair contract terms legislation?

By Nadia Guadagno, Senior Associate

New legislation has just been enacted which extends unfair contract term protections in the Australian Consumer Law (ACL) and ASIC Act to 'business-to-business' transactions which meet prescribed criteria.

Your contract will be covered by the new law if it satisfies each of the following.

1. It relates to the supply of goods and services, the sale or grant of an interest in land or financial services and products.

2. At least one of the parties to the contract employs fewer than 20 people (including casual employees employed on a regular and systematic basis) at the time the parties enter into the contract. The relevant number of employees is the number of employees of the legal entity that is a party to the contract. If a company has subsidiaries or other related entities the employees of those companies are not included in the head count.

Wednesday, November 11, 2015

TPP comes in at 6000 pages. Here are the key bits.

By Claire McMahon, Associate

It's official – the negotiated text of the TPP has been released by DFAT, one month after the agreement was announced, but is still subject to legal review and authentication in each of the official languages. The agreement runs to more than 6000 pages. Because we know our readers are too busy to pick through that to find out how some of the most topical aspects of the IP chapter were resolved, we've summarised them here for you.

How the negotiations developed

Although the text is largely unchanged since the last WikiLeaks leak which we reported on last month, there has been a raft of changes across the history of the TPP negotiations. Sometimes this was due to shifts of position. In other cases, until the very end, parties stood firm on issues that really mattered, politically or economically. For instance, market access for agricultural products such as rice, dairy and sugar kept Japan, the US, Canada, New Zealand and Australia locked in tight negotiations right down to the line.

Wednesday, October 21, 2015

Cigar parallel importation claims go up in smoke

By Joel Barrett, Senior Associate

As any experienced smoker will tell you, one does not inhale when smoking a cigar. But Scandinavian Tobacco Group Eersel BV (STG for short), a Danish producer of hand- and machine-made cigars, is likely to be taking a few deep breaths after the Federal Court recently dismissed its claims against a parallel importer for trade mark infringement, passing off and contravention of the Australian Consumer Law.

The dispute took place against the somewhat unusual backdrop of Australia's tobacco plain packaging legislative landscape. STG manufactures and packages cigars under the brand names Café Crème, Henri Wintermans and La Paz in Belgium and Holland, and then supplies the goods to its Australian subsidiary for sale in Australia. Under a formal distribution agreement between them, STG appointed the Australian subsidiary as the sole distributor, wholesaler and promoter of the cigars in Australia. However, since 2012, a third party named Trojan Trading Company Pty Ltd has been independently purchasing genuine STG cigars packaged for overseas markets (from a source unknown), importing them into Australia, unpacking and repackaging them so that they comply with the Tobacco Plain Packaging Act 2011 (Cth) and Tobacco Plain Packaging Regulations 2011 (Cth), and selling the cigars to Australian wholesalers and retailers in that new packaging.

Monday, October 19, 2015

IP Australia issues patent examination proposal following Myriad decision

By Trevor Davies, Partner

In light of the recent High Court decision in D'Arcy v Myriad Genetics, in which the High Court unanimously ruled that isolated nucleic acid encoding the mutant BRCA1 polypeptide was not patentable, IP Australia has issued a proposal for patent examination for public comment.

We are pleased to note that IP Australia has taken a pragmatic approach to the Myriad decision and proposes excluding only a limited class of genetic material from patent protection.

Monday, October 12, 2015

Gummy bear fails to take out its rival, the Lindt chocolate bear

By Nadia Guadagno, Senior Associate

The Lindt gold chocolate bear has been saved from destruction thanks to a recent ruling of Germany's highest court.

Nadia Guadagno reports on the ruling, in video and in text:

Haribo, the confectionery maker most well-known for its gummy bears, claimed that Lindt's gold chocolate bear infringed Haribo's word trade marks GOLDBÄR and GOLDBÄREN (meaning 'gold bear' and 'gold bears', respectively) and its 2D image trade mark of a bear.


Haribo's trade marks
Lindt's gold chocolate bear

Haribo sought a wide range of remedies including damages and the withdrawal and cessation of sales and destruction of all gold chocolate bears. What an unbearable thought!

Friday, October 9, 2015

Productivity Commission releases IP system review issues paper

By Claire McMahon, Associate

Just when you thought that there could be no more IP-related news this week, the Productivity Commission has gone ahead and released an issues paper ahead of its review into Australia's IP system. This review will cover all areas of IP: patents and data protection, copyright, trade marks, designs, plant breeder's rights, circuit layout rights and geographical indications, as well as IP enforcement and international obligations.

The Commission has invited submissions on the issues and questions outlined in the issues paper. These submissions are due by 30 November 2015. The Commission will then be required to report to the government by mid-August 2016.

This review comes after the release of the Competition Policy Review, also known as the Harper Review. One of the Harper Review recommendations was that the Productivity Commission be tasked with evaluating the existing IP system. This review will be focusing on, among other things:
  • innovation, cost and competition issues arising from the scope and duration of IP protection in Australia, including problems arising from developments in markets and technology;
  • the principles underlining Australia's position on IP provisions in international treaties; and
  • changes to the IP system that would be beneficial to Australian society, keeping in mind its international trade obligations.
Surely many will see the irony in the fact that an issues paper requesting input on Australia's international treaty obligations and the appropriate negotiation principles for such treaties was released two days after the Trans-Pacific Partnership was finally agreed.

In any case, the Commission states its overarching objective as being 'to maximise wellbeing of Australians'. It aims to achieve this goal by ensuring the system is effective, efficient, adaptable and accountable.

Although the purpose of an issues paper is to provide an overview of key issues and set out the policy areas to be considered, this issues paper does give some insight into the thought process behind the review. For example, the issues paper is concerned about striking the right balance between the rights of creators and those of consumers – not surprising given its competition policy origins – which seems to translate to reducing costs for consumers and limiting IP protection where it is not justified. It highlights the balance of rights in the pharmaceutical area as 'particularly contentious', especially regarding patents in relation to new compounds and biologic drugs.

The issues paper also notes the difficulties facing the copyright system, particularly with the development of technology that has not only made infringement easier and cheaper but has highlighted the inflexibility of the existing system.

The Commission states that it will be examining international approaches to IP enforcement, such as the model adopted by the UK Intellectual Property Enterprise Court. It will also seek input on the impact of Australia's international IP obligations on domestic innovation, production, trade and consumption, and what principles should guide future decision making in this area.

Thursday, October 8, 2015

High Court unanimously finds isolated genetic material not patentable

By Trevor Davies, Partner, and Linda Govenlock, Managing Associate

As the culmination of a hard-fought patent dispute, the High Court of Australia has unanimously ruled that Myriad Genetics' patent claims to isolated nucleic acid coding for the mutant or polymorphic BRCA1 polypeptide are not valid. This emphatic decision in D'Arcy v Myriad Genetics Inc overturns the previous decisions at trial and on appeal before the Full Federal Court, and effectively nullifies the long-standing practice that 'isolation' of material from a natural source was sufficient to meet the patentable subject matter threshold in Australia.

The High Court indicated that it was not concerned in this appeal with 'gene patenting' generally, but with whether the invention as claimed fell within established applications of the concept of 'manner of manufacture' which frames the fundamental issue of patent-eligible subject matter under the Patents Act 1990 (Cth). The High Court criticised the approach of the primary judge and Full Court for applying a 'verbal formula' adapted from the High Court's landmark decision in National Research Development Corporation v Commissioner of Patents to the question of patentable subject matter, namely, that to be patentable it was 'sufficient for a product to result in an ''artificially created state of affairs'', leading to ''an economically useful result'." The High Court found that approach was too narrow.