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






Monday, July 18, 2016

Keep calm and carry on? The effect of Brexit on IP rights

By Natasha Dixon, Law Graduate

The result of the recent British referendum has no doubt been a hot topic around water coolers since, with many questions raised as to the political, legal and economic repercussions of Britain's exit from the EU. While it may not be the first thought that comes to mind, an important implication to consider is what consequences exist in relation to IP rights in the UK and EU following the decision. While current EU legislation continues to apply to the UK until it has formally left the EU, Australian companies who either own or license IP within these regions should consider the long-term impact of Brexit and what, if any, contingencies should be put in place to address the inevitable changes to come.

Friday, July 15, 2016

TPP at risk from 'Hatch(ed)' accusations that Australia's data exclusivity steals US patents

By Sarah Matheson, Partner and Ric Morgan, Special Counsel 

Allens has released a discussion paper, Biologic medicines and biosimilars in the Australian landscape, and the news reports today of the comments of US Senator Orin Hatch on the Trans Pacific Partnership (TPP) trade agreement and biologic medicines make this all the more relevant.

In this most recent skirmish in relation to the TPP and the agreement about how innovation associated with biologic medicines should be protected, the US Senator is insisting on 12 years' data protection and has accused Australia of wanting to 'steal US patents'. Linking the two concepts, and the language of 'stealing patents', is both curious and inflammatory. First, data exclusivity and patents provide separate and distinct protections for innovation that proceed in parallel. Secondly, by asserting that the TPP deal only requires Australia to provide five years of protection, he misstates the requirement imposed by the TPP's agreed text in relation to data exclusivity. This hyperbole blurs the real dispute that does exist about what protections should be afforded to those that bring biologic medicines to market. We have explored this issue in a more detailed white paper developed in support of our discussion paper.

Thursday, July 14, 2016

Inquiry into IP Arrangements: Productivity Commissioners hold public hearings, but are they listening?

By Suzy Roessel, Senior Associate

Earlier this year we reported on a range of dramatic changes proposed by the Productivity Commission in its Draft Report on IP Arrangements. The Productivity Commission has now held public hearings, with authors, publishers, designers, innovators, lawyers, patent attorneys and economists giving submissions over six days in cities across the east coast of Australia. I attended most of the hearings in Melbourne. Here are my thoughts on what transpired.

Monday, July 11, 2016

Wild Geese knocks Wild Turkey off its perch

By Nadia Guadagno, Senior Associate

The tables have turned in the longstanding battle between the owners of Wild Turkey Bourbon* and the owner of Wild Geese Rare Irish Whisky, Lodestar. Lodestar has succeeded in prying the WILD GEESE marks free from Wild Turkey's claws following a significant Full Court decision which has shed light on the meaning of 'authorised use'. This concept is particularly important in applications to have a trade mark removed for non-use where the relevant user of the mark is a licensee (and not the trade mark owner).

Thursday, July 7, 2016

Cigar manufacturer loses another battle in the Trojan war

By Joel Barrett, Senior Associate

Scandinavian Tobacco Group Eersel BV (STG) and its authorised Australian distributor (STG Australia) have been burned again, now that the Full Court has upheld the first instance decision in their dispute with parallel importer Trojan Trading Company Pty Ltd.

As we reported last year, Dutch company STG was incensed to find that Trojan was purchasing genuine STG cigars packaged overseas, importing them into Australia, unpacking and re-packaging them to comply with our tobacco plain packaging laws, and then selling them to Australian wholesalers and retailers in their new packaging – all without STG's permission. STG commenced proceedings in the Federal Court alleging that Trojan was, among other things, infringing the STG-owned trade marks CAFÉ CRÈME, HENRI WINTERMANS and LA PAZ by re-applying them to the products as part of the re-packaging process. At first instance, Allsop CJ held that while Trojan was engaging in prima facie infringement under section 120 of the Trade Marks Act 1995 (Cth), it could rely on the following defence in section 123(1).

Tuesday, July 5, 2016

Government responds to ACIP Review of the Designs System

By Lauren John, Associate

The federal government has (somewhat inconspicuously) released its response to the recommendations proposed by the Review of the Designs System undertaken by the now defunct Advisory Council on Intellectual Property (ACIP).

About four years ago, ACIP was asked to investigate the effectiveness of the designs system - which has been in operation since the commencement of the Designs Act on 17 June 2004 - in stimulating innovation by Australian users as well as the impact of the system on economic growth. We previously discussed the more significant recommendations made by ACIP on Scintilla TV.

In this post, we consider the government's official response to some of the key recommendations.

Thursday, June 9, 2016

A kick in the Uggs, and litigation to boot

By Lev Gutkin, Law Graduate

Deckers Outdoor Corporation has recently commenced legal proceedings against Australian Leather Pty Ltd in the Illinois Northern District Court for alleged infringements of its UGG trade marks, which has re-enlivened the debate in Australia regarding how it is possible for an American company to prevent Australians from calling their classic Aussie winter boots 'Uggs'. According to a Change.org petition to Malcolm Turnbull which was started by Nick Xenophon (and has so far clocked 4826 supporters), Deckers has sought extensive remedies, including punitive damages in the millions of dollars, delivery-up and destruction of Australian Leather Pty Ltd's stock, and transfer of its bank funds to Deckers.

Deckers' Ugg boots connection traces back to a business started by Australian accountant Brian Smith, who, when travelling to California in the 1970s, identified a gap in the footwear market that he thought could be filled by the classic Australian Ugg boot. He built the business over the following years, and in 1995, his business Ugg Holdings Inc, including its US-registered 'UGG' trade mark (No. 1,973,743), was acquired by Deckers.