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






Monday, December 16, 2013

'It’s so good, I put my name on it': the unexpected pitfalls of registering a personal name as a trade mark

by Lawyer Tessa Meyrick

When famous boxer-cum-entrepreneur, George Foreman, sold the rights to his name to the makers of the eponymous 'Lean Mean Fat-Reducing Grilling Machine'  in 1999 for upwards of US$110 million, it's safe to assume the heavy-weight could afford to officially hang up his gloves.

A recent Federal Court judgment reminds us, however, that if you hope to rely on your name to put food on your plate in retirement, you're best to think carefully before prematurely giving away your right to use it.

Thursday, December 12, 2013

Through the looking glass: will 2014 be the year of clarity for software patents?

By Anthony Selleck, Senior Associate and Patent Attorney

We reported in June about the decision of the United States Court of Appeal for the Federal Circuit in CLS Bank v Alice Corporation Pty Ltd, where the court split evenly on the question of whether a computer-implemented escrow service was patentable subject matter. 

Now, in a more recent development, the United States Supreme Court has granted a writ of certiorari and will hear Alice Corporation's appeal against the decision of the Federal Circuit. The question presented to the Supreme Court for decision is whether computer-implemented inventions (including claims to systems, machines, processes and items of manufacture) are directed to patent-eligible subject matter according to US patent law.

The significance of a decision by the United States Supreme Court on this issue cannot be understated. We are also awaiting the result of two decisions (Research Affiliates and RPL Central) of the Australian Full Federal Court that are both concerned with the same question. That means 2014 could very well be the year of clarity for software patents.

Tuesday, December 10, 2013

Method in the madness

The Australian Patent Office has for many years granted patents for methods of medical treatment of the human body. The status quo was recently challenged in a case that was appealed to the High Court.

In a significant decision, the High Court, by a majority of 4:1, has confirmed that methods of medical treatment of the human body and claims to methods of treatment for second or later medical uses of previously known products are patentable inventions in Australia, providing certainty for medical and pharmaceutical inventors that their innovations will continue to be protected.

The High Court also considered the issue of indirect infringement in the context of method claims. The narrow interpretation of indirect infringement may lessen the scope for enforcing valid claims covering methods of treatment.

Allens has produced a Focus article examining this case in greater detail.

Wednesday, December 4, 2013

Fast threads and fine cars

By Kimberley Evans, Trade Mark Attorney

Car lovers know that BUGATTI is a trade mark that is all about cars.

But since at least 1989, apparently it has also been about clothing.

Earlier this year, Bugatti GmbH (Bugatti) brought trade mark infringement proceedings against Shine Forever Men Pty Ltd (Shine Forever) for its sale of men's clothing marked with the BUGATCHI UOMO trade mark in Australia since 2010. The BUGATCHI UOMO goods sold by Shine Forever were manufactured by Bugatchi Uomo Apparel Inc. (BUA) in Canada and imported into Australia by Shine Forever for distribution. BUA is the applicant for the BUGATCHI UOMO trade mark in Australia* and has used the BUGATCHI UOMO trade mark in at least Canada since 1976.