Scaffold Final

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The University of Sydney**We aren't endorsed by this school

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LAWS 3479

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Law

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Mar 5, 2025

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Scaffold LIST OF POTENTIAL ISSUES TRADE MARKS  Absolute grounds of refusal (s 41) o Inherent distinctiveness  Geographical and other descriptive terms  Foreign words, neologisms, word combinations  Personal names  Logos and devices  Colours  Shapes o Factual distinctiveness o Prohibited and prescribed signs (s 39) o Graphic representation (s 40) o Scandalous or contrary to law (s 42) o Deceptive or confusing connotation (s 43) o No intention to use the mark (s 59) o Bad Faith  Relative grounds of refusal o Conflict between an applied-for mark and an existing registration (or prior application) (s 44)  Substantial identity and deceptive similarity of marks: Shell v Esso ; BIG MAC v BIG JACK ; Torpedoes  Similarity of goods and services: Southern Cross ; Lion Nathan Australia  Closely related goods and services: Woolworths  Exceptions to s 44: honest concurrent and prior continuous use o Conflict between an applied-for mark and an existing mark that has a reputation (s 60) o Contrary to law (s 42) and deceptive and confusing connotations (s 43) as relative grounds of refusal o Ownership of marks o Bad Faith: s 62A o False Geographical Indications  Infringement: s 20; s 120 o Three tiers of rights o Use of the trade mark in Australia o Use as a trade mark o SI/DS o s 120(3), dilution and 'well-known' marks o Remedies - nominal and additional damages: Redbubble o Accessorial Liability & Joint Tortfeasors o Defences o Parallel importation & second-hand goods  Exploitation of trade marks  Loss of rights o Cancellation (s 88) o Removal on the basis of non-use PASSING OFF  Goodwill/reputation; misrepresentation; damages; remedies ACL  s 18 and s 29(1)(h) PATENTS  Patentable subject matter: manner of manufacture: NRDC o Computer-related inventions and business models o Methods embodying laws of nature o Discoveries and products of nature o Methods of medical treatment o Exceptions/exclusions to patentable subject matter  Patentability criteria/standard (s 18(2) o Novelty - prior disclosure  ss 7, 18(1)(b)(i); 24 o Inventive step - is it obvious ?  ss 7, 18(1)(b)(ii) o Utility - is it useful ?  ss 7A, 18(1)(c), 138(3)(b) o Secret use  ss 9, 18 (1)(d), 138 (3)(b)  Disclosure and claiming requirements; claim construction o Claim construction (s 40) o Post RTB Sufficiency and support  Ownership and inventorship o Employee/employer  Patent infringement o Exclusive rights o Exhaustion of rights o Direct infringement o Authorisation of infringement o Contributory infringement o Exceptions to patent infringement  Defence for Experimental Use  Private and Non-Commercial Use  Use in Medical Treatment  Compulsory Licensing  Crown Use o Remedies for infringement  Alternate forms of protection

Tort of Passing Off Alternatively, [plaintiff] may argue that [fact] constitutes an actionable passing off. For an actionable claim of passing off, the plaintiff must satisfy the 'classic trinity': (1) the subsistence of some goodwill or reputation attached to the good/service by association with the identifying 'get-up', such that the get-up is recognised by the public as distinctive specifically of [plaintiff's] good/service; (2) [defendant] made a misrepresentation to the public leading the public to believe that the good is the plaintiff's good; and (3) [plaintiff] suffers damage by reason of the erroneous belief. Therefore, the issues here are: (1) Have the [plaintiffs] proved that their get-up has been associated in the minds of substantial numbers of the purchasing public specifically and exclusively with the [plaintiff's] good? (2) If the answer to that question is in the affirmative, does the [defendant's] get-up amount to a representation that the good they sell is the [plaintiff's]? (3) If the answer to that question is in the affirmative, is it, on a balance of probabilities, likely that, a substantial number of members of the public will be misled into purchasing the [defendant's good] in the belief that it is the [plaintiff's good]? The question is whether the defendants, in deliberately adopting, out of all the many possible [shapes of container], a [container] having the most immediately striking feature of the plaintiffs' get-up, have taken sufficient steps to distinguish their product from that of the respondents. The purpose of a passing-off action is to vindicate the claimant's exclusive right to goodwill and to protect it against damage ( Irvine v Talksport at [34]) Therefore [defendant] intentionally designed packaging with "sailed too closed to the wind" in its endeavours to gain the benefit of [plaintiff's] goodwill. Remedies - Damages - Injunction in equity - Account on profits in equity

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Trade Marks Absolute grounds of refusal - inherent distinctiveness s 41(3) - post RTB; if trade mark is registered What is the nature of the trade mark?  Descriptive word(s)?  Geographical term?  Foreign word(s)?  Neologism? Coined word(s)?  Personal name?  Colour?  Shape?  Logo? Test pre- Cantarella = Clark Equipment : whether a mark is adapted to distinguish must be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it (Kitto J). Now, two-step test established by Cantarella : whether a trade mark is "inherently adapted to distinguish", as required by s 41(3), requires consideration of the "ordinary signification" of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied (at [70]). (1) Ascertain the "ordinary signification" (ie "ordinary meaning") of the mark; and then (2) Look into whether other traders might legitimately wish to use the mark for the sake of its ordinary signification to distinguish the designated goods and/or services. Relative grounds of refusal  Substantial identical and deceptively similar are separate concepts with different criteria/tests ( Torpedos v Thorpedo at 329) o Identical : are the marks identical?  Substantially identical? : If not actually identical, then determine if substantially identical by looking at the essential features of the marks comparing them side by side and then coming to a 'total impression' .  Deceptively similar then? : If not substantially identical, then determine whether deceptively similar . Not side by side, but by impression left by marks (i.e. the recollection of the marks by ordinary purchaser of the goods/services) Follow McDonald's v Hungry Jack's case - principles and consideration. Trade mark infringement Use as a trade mark 1. Use referred to under s 120 is limited to use of a mark as a trade mark ( Shell v Esso at 422 per Kitto J) Question to ask is whether, in the setting in which the words appear, the mark possesses the character of words which the infringer is using in relation to its goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the infringer and the contents of the package. i.e. Does the mark appear as a mark for distinguishing the infringer's product from other products in the course of trade? Look at McDonald's v Hungry Jack's and Self Care for summary of law on deceptive similarity.

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Patents Work through s 18 methodically for each individual claim An invention will be a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim: 1. Manner of manufacturer within the meaning of s 6 Statute of Monopolies ? 2. When compared with the prior art base as it existed before the priority date of that claim: a. Novel; and b. Involves an inventive step 3. Useful 4. Was not secretly used. Manner of manufacture  For [X]'s invention to be patentable, it must be 'a manner of manufacture within the meaning of s 6 of the Statute of Monopolies (s 18(1)(a) PA). Invention is defined under Sch 1 PA as any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies.  The High Court in NRDC , explained that this enquiry is not one that is based on the meaning of the word "manufacture" as such, but rather the "right question" is whether the claim is to a "proper subject of letters patent according to the principles which have been developed for the application" of s 6.  For a process to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art that its value to the country is in the field of economic endeavour. That is, it requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour. Novelty - copy MLA principles in 15.1.  ss 7, 18(1)(b)(i); 24  For a patentable invention so far as claimed in a claim, the question is whether it is novel when compared with the prior art base before the priority date.  The question is whether the prior publication is sufficient to make the claimed invention apparent to the skilled addressee: Nicaro at 561.  A prior publication will constitute an anticipation if it discloses all of the essential integers of the claim ( SNF v Ciba at [308])  Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention ( Astrazeneca v Apotex at [302]).  See Lundbeck v Alphapharm . Inventive Step - see MLA  ss 7(2)-(3), 18(1)(b)(ii)  Test of obviousness o Base test : 'The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.': Wellcome Foundation v VR Laboratories per Aitkin J at 286. o Combination patents : 'The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent. If this were not so, there could never be a valid patent for a new combination of old integers. The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process, it is rather whether it would have been obvious to a non- inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications.' 3M v Beiersdorf per Aickin J at 293  Common general knowledge - see MLA  Who is the person skilled in the art? o The correct identification of the level of skill of the skilled person, and the common general knowledge that such a person should be taken to possess, may therefore be particularly important where a "squeeze" arises between insufficiency and obviousness. The addressee of the patent must have sufficient skill and knowledge to put the invention into effect, for otherwise the patent will be insufficient. But the higher the level of skill and knowledge of those in the art, the greater the risk that the invention may be considered to be obvious. (Miller et al, Terrell on the Law of Patents, (Sweet & Maxwell, 17th ed, 2010), [8-06])

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