2014 in review: the top three Australian developments in patents, trade marks and copyright

As the year reaches its close, we take a look back at the key Australian developments in intellectual property in 2014, including in patents, trade marks and copyright.

Top 3 trade mark developments

Cantarella Bros v Modena Trading [2014] HCA 48

A High Court decision on trade marks is always going to be at the top of the top three decisions for 2014.   In the High Court’s decision of 3 December 2014, a four judge majority found that CINQUE STELLE and ORO were inherently distinctive in respect of coffee, on the basis that their ordinary signification or meaning had no direct reference to the character or quality of coffee.

The High Court clarified a critical aspect of Australian trade mark law relating to the test for inherent adaptation to distinguish (inherent distinctiveness) under section 41. The High Court held that inherent distinctiveness requires consideration of the “ordinary signification” of any word proposed as a trade mark (English or foreign) to any person in Australia concerned with the goods or services. Only after the “ordinary signification” is established, can the enquiry be made into whether other traders might legitimately need to use the word.

(For more details, see our client alert on the decision here).

Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75

This Full Court decision from June 2014 considered the important question of whether a competitor’s trade mark can be infringed by the use of “search engine optimization” (SEO) methods. The Full Court considered whether a composite device trade mark containing the words “LIFT SHOP” had been infringed by use by a competitor of the key words “lift shop” in SEO. On the facts of this particular case, the Full Court found that this was not use “as a trade mark” and therefore not infringement.

(For more details, see our post on this decision here)

CocaCola Company v PepsiCo Inc (No 2) [2014] FCA 1287

This November 2014 decision from Justice Besanko of the Federal Court is an important shape mark case. Coca Cola brought an action against PepsiCo for trade mark infringement of the “Contour Bottle” trade marks by way of its “Carolina Bottle”.

Coca Cola argued that PepsiCo had used the shape of the Carolina Bottle as a trade mark and that the shape was deceptively similar to the Contour Bottle.   Justice Besanko found that the Carolina Bottle did not infringe the Coca Cola trade mark. First, while PepsiCo was found to have used the overall shape of the Carolina Bottle as a trade mark, his Honour held that consumers would not consider the outline or silhouette alone as a feature used to indicate a connection between the bottles and PepsiCo. Second, the shape of the Carolina Bottle was not deceptively similar to Coca Cola’s trade marks, nor was the outline or silhouette deceptively similar to the trade marks. Justice Besanko noted that the comparison was with the sign that the alleged infringer has used as a trade mark and placed weight on a number of distinctive features of the Carolina Bottle which were not part of the registered trade marks.

(Justice Besanko’s decision is available here).


Top 3 patent developments

D’Arcy v Myriad Genetics Inc [2014] FCAFC 115

In September 2014, the Full Federal Court found that isolated nucleic acid sequences are patentable subject matter under Australian law.  The patentability of gene sequences is an area of great public interest and the decision was highly anticipated.  The invention in this case was for an isolated nucleic acid coding for mutations in the BRCA1 gene.  These mutations are associated with a higher risk of breast and ovarian cancer.

The Full Court found that the invention was a “manner of manufacture within the meaning of section 6 of the Statute of Monopolies”.   The Full Court found that the invention resulted in an artificially created state of affairs when the genetic material was separated from its cellular environment.  In reaching this conclusion, the Full Court emphasised the structural and functional differences between the BRCA1 gene as it occurs in situ with the BRCA1 gene when isolated from the human cell.  The Full Court explained that there is no per se exclusion of “products of nature” from patentability.  The Full Bench’s decision can be contrasted with the 2013 decision of the Supreme Court of the United States, which held that Myriad’s corresponding US patent was invalid to the extent that it claimed isolated nucleic acid sequences.

(For more information, see our blog post here, and stay tuned for an article by our team which is soon to be published in the Bio-science Law Review)

Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

In November 2014, the Full Federal Court considered the patentability of computer implemented business methods.  The Full Court confirmed that use of a computer will not, of itself, transform an idea or method into a patentable invention.

The Full Court emphasised that a Court will focus on the substance of the invention when it is asked to assess whether a claimed invention is patentable.  Where a claimed invention is otherwise unpatentable, a computer must be important, if not integral, to the implementation of the claimed invention.

(For more details, see our client alert on this decision here).

AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99

In August 2014, a majority of the Full Federal Court upheld the first instance finding that two of AstraZeneca’s patents were invalid.  The first patent related to the use of the pharmaceutical compound rosuvastatin for the treatment of high cholesterol.  The second patent related to pharmaceutical compositions containing rosuvastatin as the active pharmaceutical ingredient.  In reaching its decision, the Full Court dealt with a number of important issues in patent law, including liability for indirect infringement and the determination of priority dates.

Perhaps the most important of the issues considered by the Full Court was the appropriate “starting point” for assessing whether a patent embodies an inventive step.  The Full Court has to consider the application of the ‘problem-solution’ approach to consider whether a patent for an invention that comprises a solution to a problem is valid in circumstances where the solution is obvious, but where the problem is neither common general knowledge nor information to which regard may be had pursuant to s 7(3) of the Act.

The Full Court concluded that if the problem was not part of the common general knowledge, nor could be attributed to the person skilled in the art by s 7(3), then it was not permissible to include knowledge of the problem as the “starting point”.  The Full Court made it clear that the information in the specification and the problem addressed in the specification is not necessarily common general knowledge or s 7(3) information.   The Full Court therefore found that the primary judge’s approach to the question of obviousness was incorrect:  knowledge of rosuvastatin and its properties should not be the starting point.

(The Full Court’s decision is available here).


Top 3 copyright developments

ARLC Final Report

In February 2014, the Australian Law Reform Commission’s Final Report on Copyright and the Digital Economy was publicly released. It contains 30 recommendations for reforming Australia’s copyright laws. In summary, those recommendations include:

  • a “fair use” exception to copyright infringement (similar to that used in the United States). In the alternative, if fair use is not introduced, the ALRC recommended a single fair dealing exception containing the existing and some additional categories of fair dealing;
  • the possible repeal of the retransmission scheme for free-to-air broadcasts, or in the alternative, clarifying the scope of the internet transmission exception;
  • the repeal of the statutory licensing scheme for the broadcast of sound recordings, or in the alternative, the repeal of the one percent cap on remuneration; and
  • introducing a provision that would mean that agreements that contract out of certain copyright exceptions will have no effect.

The Government hasn’t yet stated formally whether it intends to implement or reject the ARLC’s recommendations. The Government’s focus during 2014 has instead been on the Online Copyright Infringement Discussion Paper (see below).

(See our client alert on the ARLC final report here).

Online Copyright Infringement Discussion Paper

In July 2014, the Federal Government released an Online Copyright Infringement Discussion Paper, calling for submissions on three proposals to reduce online copyright infringement.

  • The first proposal was to extend liability for authorisation of primary copyright infringements, aimed to alter the state of liability following the High Court’s iiNet decision. This proposal was apparently intended to encourage an industry development of a scheme or arrangement, such as a voluntary graduated response scheme or notice scheme to deal with online infringement.
  • The second proposal was to introduce a “website-blocking” power for the Court. This would enable a rights holder to apply for a court order against an ISP that would require the ISP to block access to a website with the dominant purpose of infringing copyright.
  • The third proposal was to extend the remedial safe harbour provisions in the Copyright Act to all service providers, rather than the existing restriction of the safe harbour to carriage service providers.

(See our client alert on the Online Copyright Infringement Discussion Paper here).

On 10 December 2014, following on from the submission received to the Online Copyright Infringement Discussion Paper, the Government announced new measures that would be introduced to tackle online copyright infringement.   In summary, these are:

  • Industry leaders are required to develop an industry code that includes a process for notification of customers when a copyright bring has occurred and information on how the customer can gain access to legitimate content. The code will be registered by the ACMA under Part 6 of the Telecommunications Act 1997.
  • Failing agreement within 120 days on an industry code, the Government will impose an industry code or industry standard.
  • The Government will also amend the Copyright Act, to enable rights holders to apply for a court order requiring ISPs to block access to a website, operated outside of Australia, which provides access to infringing content.

(For more information, see the press release here).

Dallas Buyers Club

In late 2014, Dallas Buyers Club filed a preliminary discovery proceeding against iiNet and a number of other ISPs. Dallas Buyers Club seeks preliminary discovery from the ISPs of customer details which correlate with particular Australian-based IP addresses that Dallas Buyers Club alleges have been used to download unlicensed copies of the Dallas Buyers Club film.

iiNet has announced its intention to contest the preliminary discovery application. The preliminary discovery hearing has been listed for February 2015 before Justice Perram and reportedly will include questions such as the reliability of the detection methods used by Dallas Buyers Club and whether conditions should be imposed on the use of customer details.


Top 3 other developments

ALRC recommends a tort of serious invasions for privacy

In September, the ALRC released its final report on “Serious Invasions of Privacy in the Digital Era”. This report contains detailed recommendations about the elements of a statutory civil cause of action for serious invasions of privacy. The Government issued a statement in response that it does not support a tort of privacy. (For more information, see our alert here.)

Mandatory data retention bill introduced

In October 2014, the Government introduced a bill to amend telecommunications laws to require providers of certain communications services to retain so-called “metadata” about the communications they carry. (For more information, see our blog post here.)

Competition Policy Review Panel Draft Report

In September 2014, the Competition Policy Review Panel released a Draft Report on Australia’s current competition policy and laws. In relation to IP, the Panel recommended an overarching review of the IP regime, the repeal of IP licensing exceptions to s 51(3) of the Competition and Consumer Act 2010 (Cth) and the removal of any remaining restrictions on parallel imports, unless it can be shown they are in the public interest.

(For more information, see our blog post here.)


About the Author

Anna Spies
Anna is an IP nerd at heart and is a member of the Sydney Team. Anna hopes to communicate to the public some fairly useful and novel thoughts on a substantial part of IP law. On subject matters other than work, Anna enjoys strong grounds of coffee, prepared by a person skilled in the art, but insists on the “must not Berne convention” . She may be seen passing off as a keen skier, although her style is substantially identical in overall impression to an avalanche. Her blogging style is inherently capable of being distinguished by terrible puns, so please accept these with goodwill.
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