2014
5023LAW Principles of
Intellectual Property
Law
NOTES FROM WEEKEND 2 INTENSIVE CLINIC
ISABELLA FRASER
Contents
Trade Marks ............................................................................................................................................ 4
History of TMs: .................................................................................................................................... 4
Evolved from passing off..................................................................................................................... 4
Why do we have TMs? ........................................................................................................................ 4
International Applications................................................................................................................... 4
Presumption of Registrability ............................................................................................................. 5
Nice Agreement 1957 ......................................................................................................................... 5
Duration of TMs .................................................................................................................................. 5
What is capable of being a TM? .......................................................................................................... 5
Not capable of graphic representation ........................................................................................... 5
Distinctiveness ................................................................................................................................ 6
Prohibited ....................................................................................................................................... 6
Scandalous ...................................................................................................................................... 6
Contrary to the law ......................................................................................................................... 6
Likely to deceive or cause confusion .............................................................................................. 6
Another’s prior reputation .............................................................................................................. 7
Applicant does not intend to use as a TM ...................................................................................... 7
Application was made in bad faith.................................................................................................. 7
3 other types of marks ........................................................................................................................ 7
(1) is it a sign? ..................................................................................................................................... 8
(2) Used or intended to be used ......................................................................................................... 8
(3) Does the sign distinguish goods or services? ................................................................................ 8
In application ...................................................................................................................................... 9
Words that describe the kind or characteristics of the goods ........................................................ 9
Words that indicate geographic origin ........................................................................................... 9
Personal Names .............................................................................................................................. 9
Shapes ............................................................................................................................................. 9
Colours .......................................................................................................................................... 10
Sounds ........................................................................................................................................... 10
Scents ............................................................................................................................................ 10
Substantially Identical/Deceptively Similar ...................................................................................... 10
Removing a TM from the register ..................................................................................................... 11
Infringement ..................................................................................................................................... 12
MORE CASES: .................................................................................................................................... 13
Possible Remedies ............................................................................................................................ 14
TM Case study ................................................................................................................................... 14
Passing Off ............................................................................................................................................ 15
What is Passing Off? ......................................................................................................................... 15
Burford & Sons Ltd. v Mowling & Son (1909) 8 CLR 212, 216 (O’Connor J) ................................. 15
Relationship between passing off and trade mark law (there is some overlap) .............................. 15
The 3-part test (‘classical trinity’) ..................................................................................................... 15
1.
Does the plaintiff have a reputation ..................................................................................... 16
2.
Has the defendant ‘misrepresented’? .................................................................................. 18
3.
Has the Pl suffered, or is likely to suffer, damage?............................................................... 21
Remedies........................................................................................................................................... 21
Statutory Consumer Protection .................................................................................................... 21
Patents .................................................................................................................................................. 22
Objectives: ........................................................................................................................................ 22
What is a patent? .............................................................................................................................. 22
Purpose of the Patent System: ......................................................................................................... 22
Some recent controversies: .............................................................................................................. 22
(December 2010) .............................................................................................................................. 22
Have they gone too far? ................................................................................................................... 22
Gene Patents:................................................................................................................................ 22
Software patents:.......................................................................................................................... 23
Raising the Bar Act 2012 (Cth) .......................................................................................................... 23
Brief History ...................................................................................................................................... 24
Sources of Patent Law in Australia ................................................................................................... 24
Application Process ........................................................................................................................... 24
Type of Applications.......................................................................................................................... 24
Fees ................................................................................................................................................... 25
Typical patenting process: ................................................................................................................ 25
Types of Patents:............................................................................................................................... 25
Grant and Term: ................................................................................................................................ 25
What can be patented? .................................................................................................................... 25
Some key aspects of patent law: ...................................................................................................... 26
Elements of a Valid Patent: ............................................................................................................... 26
Threshold requirement: invention................................................................................................ 26
(2)
Manner of Manufacture ................................................................................................... 27
(3)
Novelty .............................................................................................................................. 28
(5)
Utility ................................................................................................................................. 31
(6)
Secret Use ......................................................................................................................... 32
Internal requirements/objections .................................................................................................... 32
The Patent Specification ................................................................................................................... 32
Parts of a Patent................................................................................................................................ 33
Raising the Bar Act 2012 ................................................................................................................... 33
Sufficiency ..................................................................................................................................... 33
Fair basis ....................................................................................................................................... 33
Express Exclusions ............................................................................................................................. 34
RBA 2012 ........................................................................................................................................... 34
Patent Infringement.......................................................................................................................... 34
Product Infringement........................................................................................................................ 34
Method/Process Infringement ......................................................................................................... 34
Contributory Infringement................................................................................................................ 34
Defences ........................................................................................................................................... 35
Remedies........................................................................................................................................... 35
Searches ............................................................................................................................................ 35
Breach of Confidence ............................................................................................................................ 36
Objectives: ........................................................................................................................................ 36
Overview of Breach of Confidence ................................................................................................... 37
Sources of Confidentiality ................................................................................................................. 37
Equitable doctrine of confidentiality ................................................................................................ 37
Elements of equitable action ............................................................................................................ 37
(1) Quality of confidence............................................................................................................... 38
(2) Circumstances importing obligation........................................................................................ 38
(3) Breach of obligation; unauthorised used of information ........................................................ 39
Defences ........................................................................................................................................... 39
Remedies........................................................................................................................................... 39
Relationship with patents ................................................................................................................. 40
Answering a Cl Question ................................................................................................................... 40
Steps to protect confidential information ........................................................................................ 40
Non-disclosure clauses...................................................................................................................... 40
Trade Marks
o consider, and apply, the requirements of trade mark registration:
o Begin to understand what is capable of being a TM?
o Begin to understand the grounds on which an application for registration of a
TM can be rejected;
o Identify, and discuss, possible trade mark infringement under s 120 TM Act.
o The registration process
 Who can apply?
 Priority date
 Presumption of registrability
o Defences
History of TMs:
-
Shield/coat of arms of 12th century soldiers
Stamps/engraving on pots in ancient Greece
Livestock branding
Racist trademarks
Ethical TMs
Evolved from passing off
-
Problems of passing off include
o Proving reputation
o Proving misrepresentation
Why do we have TMs?
-
Ownership/quality
Identification/distinguish goods or services
Origin
Plus
o Shorthand
o Trademark commodity
TM play an important role in branding; but, a TM is only one part of a brand
-
Character
Image
International Applications
•
•
There are streamlined procedures for the filing and registration of the same TM in multiple
countries: Madrid Protocol
• Need to have a registration in an office in the origin, ie office in Sydney (for Australia
as origin) then register internationally and that gives you protection
However, TMs are not enforceable until the TM is registered domestically, nationally or
regionally
S 27 of TM Act 1995 – get copy for exam
s 6, 12: More relevant for Patents!!!!!!
The priority date for the registration of a trade mark in respect of particular goods or
services is:
(a) if the trade mark is registered--the date of registration of the trade mark in
respect of those goods or services; or
(b) if the registration of the trade mark is being sought--the day that would be the
date of registration of the trade mark in respect of those goods or services if the trade mark
were registered.
Presumption of Registrability
–
–
s 33
The new section 41, clarifies that the presumption of registrability, as provided for in
section 33
If the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that
doubt should be resolved in the applicant’s favour; Registrar of TM v Woolworths [1999] FCA
1020 at [24]; Parliamentary Debates (1995)
Nice Agreement 1957 – international classification of goods and services (renewed every 12
months)
–
–
45 classes, covering a different category of related goods (34) and services (11)
This will need to be mentioned when discussing infringement in an exam/ass.
Duration of TMs
–
–
Potentially unlimited
10 year periods (the importance of ‘use’); renewal fees
®
vs. ™ - using the R is illegal unless you have a registered TM. The TM can be slapped on
something that may get a TM but hasn’t actually got one yet. Basically, it’s just a protection and a
notification that you intend to protect whatever is trademarked.
What is capable of being a TM? – Know in detail!!!
Grounds on which an application for registration of a TM can be rejected (examination and/or
opposition) including: Will also need to know the key cases for each!
•
Not capable of graphic representation (s 40)
•
•
•
•
Technical issue: an application must include a graphical representation of the trade
mark
Shape: perspective or isometric drawing, written description
Sounds
• ‘CLIP CLOP MOO’
• The use of sound files
Scents
• ‘the scent of apple blossoms’
• ‘the smell of roses applied to plastic storage boxes’
• Eucalyptus Radiata for golf tees (Reg No 1241420)
•
•
•
•
•
Distinctiveness (s 41) In more detail further down in notes (INHERENTLY ADAPTED TO
DISINGUISH, NEEDS TO BE USED AS TM, TEST IS CLARK: OTHER TRADERS ARE LIKELY TO
WANT TO USE THAT TM FOR SIMILAR USE)
• The concept of distinctness is central to TM law
• s 41 TM Act:
• provides that a trade mark must be rejected if it is not capable of
distinguishing the applicant’s goods or services from the goods or services of
other persons.
• The key Australian case is Clark Equipment v Registrar of TMs (1964) 111 CLR 511
• at 514 (Kitto J) : 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 connexion with similar goods in any manner which would
infringe a registered trade mark granted in respect of it.
• Clark was adopted in Burger King v Registrar of TM; and a number of other cases
Prohibited (s 39)
• A TM application will be rejected if it is not to be used as a TM (s 39(1))
• E.g. Patent, copyright, registered
• A TM application will be rejected if it is likely to deceive or confuse the public (s
39(2))
• See, for example, applicant 843690
Scandalous (s 42(a))
• A TM application will be rejected if it ‘contains or consists of scandalous matter’
• This goes beyond offensive
• ‘good girls do swallow’
• Cosmetic, Toiletry and Fragrance Association v Fanni Barns (2003) 57 IPR 594;
• ‘Look Good + Feel Good = Root Good’
• This was not scandalous; an explicit use of colloquial language
• It may be bad taste but is unlikely to cause any significant degree of shock
• Assessed objectively, therefore, does not transgress the standard of s 42(a)
• Kuntstreetwear Pty Ltd, Re (2007) 73 IPR 438
• The applicant sort a TM registration of KUNT
• Phonetic equivalent of the English word
• Enough that a substantial number of people are likely to find the word
shocking (but need not be greater that 50%)
• Oxford Dictionary (at [30])
• …highly offensive, obscene
• But KÜNT probably okay
Contrary to the law (s 42(b))
• A TM application will be rejected if its ‘use would be contrary to the law’
• For example: Advantage-Rent-A-Car, and a breach of copyright (reproduction of an
artistic work)
Likely to deceive or cause confusion (s 43)
• Prevent marks that are inherently confusing or deceptive when used in relation to
specific goods or services
•
•
•
•
‘wonderment test’ – a real tangible danger of consumers having a reasonable doubt
or being caused to ‘wonder’
• Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91
CLR 592, 595 (Kitto J)
• For example,
• Confusion as to qualities or characteristics
• ‘Orwoola’ for goods not made of wool
• ‘vitamin’ for soap that does not contain vitamins
• Confusion as to geographical origin
• Confusion as to official approval or licence
• Trade Marks Manual of Practice and Procedure (Part 29, [1.4])
• The character of the goods or services
• The quality or quantity
• The geographical origin
• The intended use or purpose
• The endorsement or licence
• Mount Everest Mineral Water v Himalayan Spring (2010) 89 IPR 542
• TM # 1261293
• ? Connotation that the water would be bottled in, or sourced from, the
Himalayas in Nepal
• ? Connotation that the mineral water will be bottled to the chanting of
Tibetan monks
• Endorsement
• CONTINUED FURTHER IN NOTES
Another’s prior reputation (s60)
Applicant does not intend to use as a TM (s 59)
• In order to be a TM, the owner must use or intend to use a ‘sign’ as a TM
• See slides on ‘use’
• Unconditional (Rawhide)
Application was made in bad faith (s 62A)
Section 17:
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or
provided in the course of trade by a person from goods or services so dealt with or provided by
any other person.
– Sign (s 6)
– Used or intended to be used
– Distinguishing goods or services
3 other types of marks
1. Certification Marks
– s 169: ‘…quality, accuracy or some other characteristic’
– Characteristics or standard
– e.g. National Heart Foundation (Tick of Death, haha)
2. Collective Marks
– Used by members of an association
– E.g. the wool certified mark (100% wool)
3. Defensive Marks
– Already a standard trade mark
– Well-known trade marks
– Coca-Cola and Nike are examples
(1) is it a sign?
•
Inclusive, non-exhaustive, definition in s 6
…includes the following or any combination of the following, namely, any letter,
word, name, signature, numeral, device, brand, heading, label, ticket, aspect of
packaging, shape, colour, sound or scent.
(2) Used or intended to be used
•
•
•
There needs to be unconditional intention to use the trade mark at some point in the future
– Rawhide Trade Mark [1962] RPC 133
• the applicant sought to register “Rawhide” in the hope that the US TV show
would be shown in the UK. The TM was refused because the intention to use
the mark was conditional on the show being shown in the UK
There needs to be a bona fide intention to use the mark
– Imperial Group Ltd v Philip Morris [1982] FSR 72
This is an objective test of intention
– Johnson and Johnson v Unilever Aust [1994] AIPC 91-038
(3) Does the sign distinguish goods or services?
•
•
•
almost anything is a ‘sign’ (s 6)
whether it is used to ‘distinguish’ is critical
– and generates most litigation
This will be discussed, in detail, in relation to s. 41
See text for a discussion of:
– ‘dealt with or provided’
– ‘in the course of trade’
– ‘by a person’
s 41, inherently adapted or use
•
•
•
A trade mark is not capable of distinguishing if either subsection (3) or (4) applies. Trade
marks that are prima facie capable of distinguishing will not fall under the new subsection
(3) or (4).
Trade marks that are not to any extent inherently adapted to distinguish the designated
goods or services will be rejected under the new subsection 41(3) if the applicant has not
used the trade mark before the filing date, to such an extent that the trade mark does in fact
distinguish the designated goods or services as being those of the applicant.
Trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish
the designated goods or services will be rejected under the new subsection 41(4) if the trade
mark does not and will not distinguish the designated goods or services with regard to the
combined effect of:
– the extent to which the trade mark is inherently adapted to distinguish the
designated goods or services;
– the applicant's use or intended use of the trade mark;
– any other circumstances.
•
•
– not something that can be acquired
Generally not descriptive, geographical, laudatory BUT invented words
words that don’t refer to characteristics or qualities
– Nike but not Whopper
• Uncommonly large
– Not REAL for printed material, POPPING CANDY for confectionary (descriptive)
– Not PLUSH for clothing, MINT SLICE for biscuits (qualitative)
In application:
We will look at:
Words that describe the kind or characteristics of the goods
•
•
Descriptive words are the sorts of terms that other traders would want to use to
describe their goods or services (Clark test); and will lack inherent adaption to
distinguish
E.g.
• POPPY CANDY for confectionary
• MESSAGES on hold for recording announcements
Words that indicate geographic origin
•
•
•
•
•
Geographical names are the sorts of terms that other traders may want to use (Clark
test)
For example: SAKATA (a Japanese city): not capable of inherently distinguishing but
the TMO decided that this fell under the ‘old’ s 41(6)
Harbin Brewing Co Ltd (2012) 97 IPR 88; the examiner rejected an application to
register ‘Harbin’ for beer and non-alcoholic drinks (class 32)
Harbin is a city in China, and not, therefore, inherently adapted to distinguish goods.
There was also insufficient use.
Tchen Kil Tchun [2014] ATMO 28
• The word LANCASTER
• A name of a place cannot be adapted to distinguish one person’s goods from
the goods of others, unless there is evidence that there is no connection (or
the possibility of no connection) between the geographical name and the
goods
Personal Names
•
•
This will depend on how common the name is
TM Practice Manual: >750 times
Shapes
•
•
•
•
The main case in Kenman Kandy, where the FFCA held that the ‘bug-shape’ was
prima facie distinctive
• ‘entirely concocted’ at [156]
Kenman Kandy endorsed Philips v Remington – the TM needs to be separate from
the product (not a technical result of the product)
Coca Cola Co v All-Fect Distributors (1999) 47 IPR 481
• Where the shape of a good might lead a consumer to conclude that the
shape suggests a link between the goods and the manufacturer of those
goods, the shape will be registrable
Shape is not essential to and is separate from the function of the goods; the shape is
severable from the goods
•
•
•
Philips v Remington (2000) 100 FCR 90 (argued over the functionality of the
shape of a razor)
• Kenman Kandy (2002) 122 FCR 494 - Full FCA allowed the registration of a
stylised imaginary 6-legged ‘millenium bug’
ALDI Stores v Nestle 2008 ATMO 76
• The shape of a KIT KAT: functional/practical: ...the shape did not designate
origin, but served a purpose
With shape TM’s the examiner should consider a number of things, including
• Whether the shape is commonplace
• Whether the shape has a function
• Whether the shape in invented
Colours
•
Although a colour is a ‘sign’ it will be difficult to show that a single colour is
inherently distinctive; therefore, will have to rely on use
Woolworths v BP (No 2) – the FFCA denied registration of the colour green as shown on
BP’s buildings, pumps etc. The court noted that BP had used green and yellow
Also, see Philmac Pty v Registrar of Trade Marks (2002) 126 FCR 525
Application by Grove Fruit Juice Pty Ltd, Re (2011) 91 IPR 380
o
o
o
o
Applicant sought to register trade mark consisting of white colour of bottle in
respect of fruit juices
Applicant's trade mark lacked any inherent adaptation to distinguish because trade
mark was one which other traders would need to use to indicate purity of fruit juices
and to protect from vitamin destroying effects of UV rays
Evidence did not establish trade mark had become distinctive
Accordingly ground for rejection of trade mark under (CTH) Trade Marks Act 1995 s
41 established
Phone Directories v Telstra Corp [2014] FCA 373, word marks denoting colour
•
•
•
•
FCA held that the word YELLOW was not capable of distinguishing Telstra’s phone
directory
The word and colour could not be ‘cleanly separated’ (descriptive)
Other traders were likely to want to use the word and colour
Insufficient use (use of the word YELLOW by itself)
Sounds
–
–
–
McCain (‘ping’) - #759707
Floor coverings (‘Sproing’)
As long as you can graphically represent them, then you’re fine, e.g. McCain ‘Ping’
(Microwave ping – very distinctive of this class of goods)
Scents
–
Eucalyptus Radiata for golf tees (Reg No 1241420)
Substantially Identical/Deceptively Similar
Trade mark is “substantially identical” with or “deceptively similar” to existing trade marks (s 44)
-
Generally, for s 44:
similarity between the applicant’s mark and earlier registered marks/applications
-
In similar goods and/or services
Note, however, marks can sometimes co-exist
- Prior continuous use
- Honest concurrent use
Substantially identical with:
–
–
–
Side-by-side comparison: visual similarities; the way the trade marks are
pronounced: Shell Co v Esso (1961) 109 CLR 407, 414-415
Emphasis on distinctive aspects
Compare the ‘entirety’ of the two trade marks
Deceptively similar to:
–
–
–
Broader assessment, not based on a side-by-side comparison (more an impression)
s 10
potential effect of the two trade marks on consumers
• Jafferjee v Scarlett (1937) 57 CLR 115: Textbook p 104
Are they similar goods or services?
•
If the two TMs are substantially identical or deceptively similar, you then need to consider:
– If you’re comparing goods with goods; or services with services
• Are the goods similar? Are the services similar?
– If you’re comparing goods with services
• Are the goods – services closely related?
See your text for more...page 106-109
Even if the mark offends s 44(1) or 44(2), registration may be permitted under either:
– Honest concurrent use (s 44(3)); or
– Prior continuous use (s 44(4))
s 44(3) honest or concurrent use
•
•
‘Honest’ = Not seeking to trade off the reputation or goodwill of the existing
registered person: PB Foods
If “honest”, also consider:
• The extent of use of both parties
• The degree of likelihood of confusion
s 44(4) prior continuous use:
•
if the Registrar is satisfied that the applicant has continuously used their TM
on similar goods or closely related services since before the priority date for
the registration of the other mark
Removing a TM from the register
This is not examinable but….there are a number of grounds why a person aggrieved may
apply to cancel a trade mark
– For example, non-use (ss92-105)
• If not used for 3 years (the ‘non-use period’) a TM may be removed after it
has been on the register for 5 years
Infringement
s 120(1)-(3)
s 120(1):
s 120(2):
s 120(3):
OUR FOCUS -- s 120(1): A person infringes a registered trade mark if the person uses as a
trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark
in relation to goods or services in respect of which the trade mark is registered
-
•
•
•
•
•
S 120(1) Substantially identical or deceptively similar
- You will need to consider:
- is the (allegedly infringing) mark substantially identical or deceptively similar
to the registered TM?
- Is the (allegedly infringing) mark being used as a TM?
- Is the (allegedly infringing) mark in the ‘same as’ or ‘closely related’ goods or
services?
- see s 44 (more or less the same tests for infringement as for registration)
- What is the nature of the comparison?
- Substantially identical
- Deceptively similar
Substantially identical with: (if successful here, don’t need to continue, but may as well
check deceptively similar for a solid argument)
– Side-by-side comparison: visual similarities; the way the trade marks are
pronounced: Shell Co v Esso (1961) 109 CLR 407, 414-415
– The emphasis is on the distinctive aspects of the marks
– You (or the court) compares the ‘entirety’ of the two trade marks
Deceptively similar to:
– Broader assessment, not based on a side-by-side comparison (more an impression)
– s 10
– potential effect of the two trade marks on consumers
– Here, market research/surveys are particularly helpful
VIVO INTERNATIONAL CORPORATION PTY LTD v TIVO INC (2012) 294 ALR 661
TiVo Pty Ltd, sold digital television recorders and related products. It was the registered
owner of the trade mark “tivo”. Its trade mark was accepted for registration in mid-July 2000
but it did not begin supplying goods and services using the trade mark in Australia until late
July 2008.
In 2008, Vivo International Pty Ltd, applied to register the trade mark “vivo”. In late April
2009, Vivo had its application for registration accepted in respect of the same classes of
goods and services as TiVo’s trade mark.
The phonetic similarity between the trade marks was sufficient to give rise to a real danger
of confusion among customers: at [78], [80], [81]
As there was evidence before the court that sales staff were confused by the trade marks, it
was a reasonable inference to draw that, if sales staff were confused, there was a
reasonable probability of confusion on the part of consumers: at [91]–[93]
The availability of goods and trade marks for a visual inspection would not dispel confusion
on the part of consumers created by the aural similarity between the trade marks: at [96],
[97], [99]
‘use’ is one of the underlying principles of TM; it is only uses of a sign as a badge of origin (that
is, as a TM) that can amount to an infringement: Shell v Esso
The infringement needs to be in relation to:
• goods and services which are the ‘same as’ or ‘closely related to the registered mark
(s 120(2))
• nature of the goods
• characteristics of the goods
• their origin
• their purpose
• ‘unrelated’ goods or services if the mark is well known in Australia (s 120(3))
•
YOUR ASSESSMENT
• …they will be in the same class of goods (s 120(1))
Acts not constituting infringement:
•
•
Section 122
– Not ‘defences’ as such
For example:
– Good faith
• Use of a name
• Use of a sign
• Used to indicate a purpose
– Comparative advertising
MORE CASES:
Nature’s Blend Pty Ltd v Nestle Australia [2010] FCAFC 117
• Nature’s Blend had applied to register ‘LUSCIOUS LIPS’ as a trade mark
• Nestlé began to develop its range of ‘RETRO PARTY MIX’ lollies which had on the back of the
package:“Up to 7 lolly varieties including...yummy Honey flavoured Bears, Luscious Lips…”
• Nature’s Blend alleged trade mark infringement
• Nestlé argued that the use of the phrase ‘Luscious Lips’ did not constitute ‘use as a trade
mark’
– use had been in good faith as it indicated a descriptive characteristic of the goods
• The court agreed that Nestlé had not, in producing their packaging, used ‘Luscious Lips’ as a
trade mark.
– ask whether the impugned words would appear to consumers as possessing the
character of the brand;
– consider the totality of the packaging, including the way in which the words are
displayed in relation to any other words or marks; and
– to determine the nature and purpose of the words, the court must ask what a
person looking at the label would see and take from it.
Frito-Lay Trading (‘Twisties’) v Aldi Stores
Frito-Lay had a registered trade mark over‘twisties’ and the Trial Judge found that ‘cheezy
twists’ was aurally similar.
On appeal, however, the Full Federal Court found no deceptive similarity between the trade
make ‘twisties’ and the use of ‘cheesy twist’.
This was, in part, because of the nature of Aldi Stores and the expectations of the customers
of Aldi stores (i.e. they were unlikely to be misled or confused).
Possible Remedies (include in discussion, but not too much detail is needed)
•
•
•
•
Injunction (usually 1st step)
Account of profits or damages (s 126)
Anton Pillar (enables you or authorities to claim infringing materials to give to courts)
Delivery Up (enables you or authorities to claim infringing materials to give to courts)
TM Case study
Adidas AG and Another v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905
• trade mark infringement
• s 120(1) A person infringes a registered trade mark if the person uses as a trade
mark a sign that is substantially identical with, or deceptively similar to, the trade
mark in relation to goods or services in respect of which the trade mark is registered
• use as a trade mark
• deceptively similar
Step 1: is there a registered TM?
Yes.
Step 2: find the relevant Legislation:
TM Act 1995 s 120(1)
Step 3: identical or similar?
Not identical because an additional stripe and other minute design details that make it
SIMILAR
Step 4: Shoe 1 – I’d say not similar – 4 stripes, significant extra design on shoe, different type of shoe
Shoe 2 – not similar – stripes more prominent, colour different
Shoe 3 – deceptively similar – same shoe, 4 stripes but same style and shape as adidas
Step 5: is it being used as a TM?
In case of Shoe 3, yes; others, no
Passing Off


You should be able to identity and discuss the tort of passing off
You should be able to be able to ‘apply’ the elements of passing off
What is Passing Off?
•
•
An intentional tort of misrepresentation – the defendant represents that its product
originates or is in some way associated with the plaintiff’s then that is not the case
Passing off pre-dates the registration of trade marks
– Passing off protects reputation and goodwill
– Trade mark protects against the unauthorised use of the register mark
Burford & Sons Ltd. v Mowling & Son (1909) 8 CLR 212, 216 (O’Connor J)
“There is no doubt about the law in such a case. Every trader has primâ facie a right to put
up his goods in any packages which he may think attractive and convenient, and in any
method which he may consider suitable for the carrying on of his trade. But that right is
subject to limitations. He must not use the registered trade mark of another, and he must
not put up his goods in such a form as to be likely to deceive ordinarily intelligent persons
into mistaking his goods for goods known in the market as manufactured, put up, or sold, by
another. “
Relationship between passing off and trade mark law (there is some overlap)
•
•
Relationship to/with Trade Marks Act 1995 (Cth) and Consumer Protection Laws
• …Trade Practices Amendment (Australian Consumer Law) Act 2010 (Cth) – 1
January 2011
– Pre: s 52 Trade Practices Act
– Post: s 18 ACL
Often trade mark and passing off actions are brought together, although lawyers often:
...allege, albeit ‘somewhat faintly’ that there has been passing off (Sackville J, Pepsico
Australia Pty Ltd 135 ALR at 219)
Passing Off
Perry v Trufit (1842): A man is NOT to sell his own goods under the pretence that they are
the goods of another man
...protects against the injury to goodwill built up by the activities of the plaintiff: Campomar
v Nike [108]-[109]; cited in Bodum [211] ff
The 3-part test (‘classical trinity’)
•
Generally, a 3-part test as set out in Reckitt & Colman, and approved in a number of
Australian decisions
•
In ConAgra v McCains (1992), for example, Gummow J referred to the 3-part test as the
‘classical trinity’ of passing off (at 356)
The action of passing off
‘the law of passing off contains sufficient nooks and crannies to make it difficult to formulate
any satisfactory definition in short form’ (Gummow J, ConAgra Inc v McCain (1992))
See, Bodum [212]; referring to Reckitt & Coleman Products:
(classic trinity below)
1. the plaintiff must have goodwill or reputation attached to the goods or services
2. there must be misrepresentation by the defendant, whether intentional or not, which leads
or is likely to lead the public to believe that the goods or services offered by it are those of
the plaintiff
3. the plaintiff must demonstrate that they have, or are likely to, suffer damage by reason of
the erroneous belief engendered by the defendant’s misrepresentation
-
recent example: Bodum v DKSH Australia Pty Ltd (2011) 280 ALR 639; [2011] FCAFC 98, [211]
– [265]
- Bodum had manufactured and sold a coffee plunger with particular design features
known as the Chambord plunger since 1958
- The Bodum coffee plunger:
- Was widely advertised
- Had substantial sales in Australia
- And, thus had a significant reputation
- DKSH began advertising and selling a look-a-like plunger under the Euroline brand
from July 2004
- Sold with no branding
- Large photo on the packaging with ‘Euroline’ name
- Findings of the Full Court:
- The design of goods can acquire a reputation independently of the trade
names
- The majority (Greenwood J, Tracey J) reviewed Bodum’s advertising –
plunger without packaging, focus on the appearance and features of the
product
- Not generic features: therefore, consumers were likely to think that the
DKSH plunger was the Chambord plunger unless labelling or other
differentiating factors told them otherwise
- The reasonable or ordinary consumer would consider the Euroline plunger
to be the Chambord plunger
- NOTE: passing off does not stop companies from copying an unregistered
design of another company’s product, so long as they make it clear –
labelling etc – that the copy does not come from the original company
- Considerations again!!!!
- the plaintiff must establish some reputation or goodwill in its goods or
services;
- there must be a misrepresentation by the defendant, whether intentional or
not, which leads or is likely to lead the public to believe that the goods or
services offered by it are those of the plaintiff; and
- the plaintiff must show that the defendant’s conduct has caused actual
damage or threatened damage to the plaintiff’s reputation or goodwill
Classic Trinity:
1. Does the plaintiff have a reputation
-
The plaintiff has to establish that there was goodwill or reputation attached to their
goods or services prior to the date of the conduct of the defendant; in the mind of
the section of the public who is likely to be affected by the conduct
i. AG Spalding and Bros (1915): a right to the goodwill associated with the
name; not the name itself
1. Sports equipment sold by another company of lower quality. Court
said the goodwill/reputation is attached to the name
ii. Norman Kark Publicaitons [1962] RPC 163:…in the goodwill established
through use of the name in connection with the plaintiff’s goods
Questions of Source
So long as the plaintiff can show that goodwill/reputation has been established, it
does not matter that the plaintiff is personally unknown to the relevant consumers:
Sykes v John Fairfax
Is the reputation in Australia? (Hansen case – yes, despite no sales or marketing in Aus, as
they had a massive online and international presence)
ConAgra Inc v McCain Foods (1991) 106 ALR 465
– ConAgra sold `Healthy Choice' meals in the U.S. an intended to develop the
market for the product in Australia. The Defendant's was aware of the plaintiff's
product and launched its own `McCain's Healthy Choice'.
…it was not necessary for a plaintiff to establish a place of business or a business
presence in Australia. The realities of commercial business meant that goodwill or
reputation could be established without a business presence in the jurisdiction, and
so passing off was available if it could be shown that there is a likelihood of damage
to their reputation which will affect the business that they intend to establish in
some way, or sales, within the jurisdiction.
The real question is whether the owner of the goods has established a sufficient
reputation with respect to his goods within the particular country in order to acquire
a sufficient level of consumer knowledge of the product and attraction to it to
provide custom which, if lost, would likely result in damage to him. This is essentially
a question of fact.
On the evidence: ConAgra could not show the requisite reputation in Australia
Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) FCR 579; 251 ALR 1
One of the issues in the case was whether Hansen had acquired a reputation in the
name MONSTER ENERGY in Australia, despite having made no sales of its product
here.
• The Full Court found that the primary Judge’s approach to determining whether the
appellant’s energy drink has reputation in Australia was incorrect and that Hansen
did have a sufficient reputation in Australia. Therefore, Bickfords had contravened
section 52 of the Trade Practices Act and had passed off its product as Hansen’s
MONSTER ENERGY drink
• An absence of sales in Australia will not preclude a claim under passing off, as
“indirect” marketing activities may be sufficient to establish a relevant reputation.
• Evidence of the effect of marketing activities, that is, to demonstrate recognition of
the brand and reputation in Australia, will be far more persuasive than merely to
describe a marketing strategy that has been employed.
• TAKE HOME LESSON: If possible, you should always register a trade mark
Evidence required to show reputation
–
–
–
–
Time on the market
The nature and amount of promotion
The nature and degree of the sales networks
The volume of sales (quantity and monetary)
Cadbury Schweppes v Pub Squash [1980] 2 NSWLR 851
• The plaintiff argued that they had a reputation in lemon-flavoured soft drink – associated
with ‘country pubs’
• The Pl failed in their passing off action, however, because they could not prove reputation
Other issues of reputation
•
•
•
Who owns the reputation?
Can you have a reputation in descriptive words?
Can a reputation be lost?
2. Has the defendant ‘misrepresented’?
-
-
There must be a misrepresentation, express or (more usually) implied
That is, the defendant ‘passes off’ some connection between the defendant (or their goods)
and the plaintiff
‘The basis of the cause of action lies squarely in misrepresentation, for its underlying
rationale is to prevent commercial dishonesty...It stops persons gaining a commercial
advantage through wrongfully taking the attributes of another’s business if it causes or is
likely to cause that other person’s business some damage.’ Conagra (Lockhart J)
Generally, for conduct to be misleading or deceptive it must lead consumers into error:
Parkdale
- There is no requirement of an intention to mislead. Although this provides
‘evidential value’: Australian Woollen Mills
Types, or kinds, of misrepresentation
-
Generally, misrepresentations might be:
i. Misrepresentation that the def’s goods are those of the pl
ii. Misrepresentation as to association
iii. Misrepresentation as to quality
Misrepresentation as to origin
•
Page 38 Text
Compare:
– AMI Australia: use of the word AMI for goods aimed at men suffering from sexual
dysfunction
– Parkdale: where the Def had chosen an entirely different name for its furniture
•
Page 38-39 Text
–
•
AG Spalding v Gamage: ‘Orb’ footballs
• Court said there was misrepresentation as customer thought it was the
quality branded one and would purchase on that assumption
Page 39 ff Text
–
Camponar v Nike: a Spanish manufacturer stopped from selling its “Nike Sports
Fragrance”
• Court said misrepresentation as a lot of people would assume there was an
endorsement or licence from Nike for the sale and use of the product and
brand
The question of misrepresentation depends on the facts of the case
-
In order for the defendant’s conduct to be misleading or deceptive it must lead
consumers into error (Parkdale)
The court makes an assessment, of the likely consumer reaction, in light of all of the
circumstances including….
– Similarities and differences
– Extent of the Pl’s reputation
– Context in which the goods or services are sold
– The nature of the consumers
– Disclaimers
Examining similarities and differences
–
The courts look at the differences/similarities between the two goods and services
• “GET-UP”
• Paul Hogan cases
– Hogan v Koala Dundee Pty Ltd (1988) 83 ALR 187
– Pacific Dunlop Ltd v Hogan (1989) 87 ALR 14
• AG Spalding and Bros v AW Gamage Ltd [1915]
Other considerations
•
•
•
•
Extent of the Pl’s reputation
– What do you think that this could mean for companies like Apple and CocaCola?
Context in which the goods or services are sold
The nature of the consumers
Disclaimers
Types of evidence
To show that the defendant’s conduct is misleading or deceptive various evidence can be
used:
• Experts in the field
– Marketing
– Consumer behaviour
• Survey evidence
• Individual evidence
Bodum v DKSH Australia Pty Ltd
• a secondary meaning or independent reputation can, as a matter of law, subsist in the
features and shape of an article or the get-up for a product
• “comparative features”
• Bodum vs. DKSH
• (2011) 280 ALR 639, [214]
–
–
–
Features and shape
Differentiation symbol, logo or name
Product vs. Box/Packaging
Mars Australia v Sweet Rewards Pty Ltd (2009) 81 IPR 354
In regards to passing off it was found that consumers (of low priced choc balls, in this kind of
retail outlet) were unlikely to be misled or deceived.
The FCA asked...is the public likely to be confused into believing that the product comes
from one and the same source? [82] – [99]
HELD: no ordinary person could think that the Malt Balls product resembled
Maltesers
Sydneywide Distributors v Red Bull Australia
• Red Bull Australia's "Red Bull" energy drink was in the Australian market since 1997
• Sydneywide Distributors Pty Ltd. (a prior sub-distributor of "Red Bull“ in Australia)
started importing an energy drink called "LiveWire" in 2001.
• Importantly,
– both drinks were sold in 250 ml slimline cans
– similar packaging
• a blue-silver colour combination,
• a right to left diagonal thrust design and
• the respective brand names appearing in red on the front panel of the
can.
• Sydneywide apparently considered that there was advantage in the marketplace in
copying aspects of the Red Bull getup.
• Based on these observations, the Court upheld the trial court's decision that :
– The LiveWire getup was an attempt to misrepresent the product either as being
the same as the Red Bull product or that it was produced by, or with the
approval of Red Bull Australia.
TWENTIETH CENTURY FOX FILM CORPORATION and ANOTHER v SOUTH AUSTRALIAN
BREWING CO LTD and ANOTHER (1996) 34 IPR 225
The necessary misrepresentation arises when it can be established that the public has been
misled into believing that either A's product is genuine promotional material or A's product
is authorised/endorsed by the character's creator
‘There has been a misrepresentation as to the association of the goods with ``The
Simpsons'’, made by breweries in the course of trade, to prospective customers or ultimate
consumers. It is reasonably foreseeable that the business or goodwill of ``The Simpsons'’ and
their licensing and merchandising rights could be adversely affected, particularly in the light
of the policy in relation to alcohol promotion. If the product is permitted to be marketed it
will probably cause actual damage to the producers. There will be loss of licensing fees. Ian
Gaffney, whose company is Gaffney International Licensing Pty Ltd, gave evidence that the
rights retained by the producers are valuable intellectual property rights and any
infringement of those rights would cause harm and damage and would interfere with the
integrity of the licensing and merchandising programs implemented by his company under
licence from the producers. Mr Gaffney was not required for cross-examination.’
‘My conclusion is that the breweries have engaged in a course of conduct calculated to
achieve and exploit a strong association between their use of the name "Duff Beer" and "The
Simpsons", which in fact is deceptive, while at the same time, hoping to avoid legal liability.’
3. Has the Pl suffered, or is likely to suffer, damage?
-
The final element is that the plaintiff must show that it has suffered or is likely to suffer
damage by reason of the defendant’s misrepresentation.
Generally, the courts assume that: ‘the cause of action for passing off is complete as soon as
the relevant misrepresentation is made’ (Pacific Dunlop at 583 (Burshett J))
If more than nominal damages are to be obtained, however, the plaintiff must establish
compensable loss
Damage may take different forms
-
-
-
Loss of sales
i. Reckitt & Coleman: the plaintiff sold fewer Jif Lemons as a result of the
defendant’s deceptively similar product being on the market
Damage/Diluting reputation
i. Spalding v Gamage: consumers would think less of the plaintiff’s
products
ii. Duff Beer Case: Fox was concerned that the Simpsons would be seen to
be sponsoring alcohol (and thus be encouraging kids to drink alcohol)
Loss of opportunity
i. Henderson: the plaintiff’s had lost the opportunity to use their image on
other, similar products
Remedies
•
Anton Pillar orders
– secures evidence of infringement that may otherwise be destroyed
• Delivery Up
• Injunction relief
• Damages or Account of profits
Note: Limitation of Actions Act 1974 (Qld), s 10(1)(a)
• An action in passing off must be brought six (6) years from the date on which the cause of
action accrued
Statutory Consumer Protection
•
Australian Consumer Law (ACL), section 18 of the ACL (which replaced s 52 of the Trade
Practices Act)
– A corporation (PERSON) shall not, in trade or commerce, engage in conduct that is
misleading or deceptive or is likely to mislead or deceive
Patents
Objectives:
•
•
•
•
Some ‘recent’ issues/controversies
Provide an overview of:
– History
– Sources of patent law
– Application Process
Provide details on:**
– Validity of patents (s 18(a) Patents Act 1990)
– The internal requirements
Provide an overview of:
– Infringement; Defences; Remedies; Reform
What is a patent?
•
Generally, a private property right granted by the Crown to the inventor of a product,
method or process in a field of technology: text, p 409-410
Purpose of the Patent System:
•
•
Economic – stimulate the availability of new and useful technologies, by providing a
monopoly of (usually) 20 years
Incentivise innovation - encourage disclosure of inventions
Some recent controversies:
•
patentable subject matter
– ACIP, Patentable Subject Matter, Final Report
(December 2010)
•
•
gene patents
– Senate Inquiry: Report in 2010 by the Community Affairs Reference Committee on
Gene Patents (November 2010)
the requirements of grant (they were too low)
– Raising the Bar Act 2012 (Cth)
Have they gone too far?
Gene Patents:
•
•
Report in 2010 by the Community Affairs Reference Committee on Gene Patents (November
2010)
– Considered the impacts of gene patents on healthcare, medical research and the
health and wellbeing of Australians;
– The evidence did NOT show that gene patents are ‘systematically leading to adverse
impacts in these areas.’;
– Consider an expression prohibition of gene patents;
– 16 recommendations
BRCA1 and BRCA2 gene patent dispute
– BRCA gene patents relate to methods and materials used to isolate and detect
mutations in two genes that may indicate predisposition to certain cancers – breast
and ovarian cancer
–
A Melbourne company, Gene Technologies, write a letter to public laboratories (‘we
will enforce our patent’). They do not, but an action was brought in the Federal
Court by Cancer Voice
– Are ‘isolated genetic materials’ patentable
Later: D'Arcy v Myriad Genetics Inc [2014] FCAFC 115
Raising the Bar Act 2012 (Cth)
– Did not directly dealt with gene patents (e.g. patentable subject matter)
– But…
• Standard of utility
• Defence of experimental use
Software patents:
• Recently, arguments that computer software should not be patentable
RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871, 30 August 2013
• a computed implemented method designed to remove certain barriers in the processes
associated with obtaining qualifications on the basis of Recognition of Prior Learning (RPL) in
the Australian Vocational Education and Training (VET) sector;
• manner of manufacture;
• Middleton J held that the claimed invention was a manner of manufacture and thus
patentable subject matter.
c.f. Research Affilitates [2013] FCA 71, just ‘information’
Raising the Bar Act 2012 (Cth)
•
Six categories (Schedules)
– Raising the quality of granted patents
– Free access to patented inventions for regulatory approvals and research
– Reducing delays in resolution of patent and trade mark applications
– Assisting the operations of IP Australia
– Improving mechanisms for trade mark and copyright enforcement
– Simplifying the IP system
** most of the provision commenced on 15 April, 2013
• Inventive step
• Utility
• Secret Use
• Exclusions
– Regulatory exemption
– Research exemption
• Claims: sufficiency and fair basis
In relation to the Patents Act (i.e. raising the quality of granted patents)
1. Removes restrictions on the information and background when assessing inventive step
2. Add to the ‘useful’ requirement; to prevent ‘speculative’ patents
In relation to access to patented inventions for regulatory approvals and research
1. Draws a line between research and commercial activities; leaving researchers free to
conduct their experiments without worrying about the patent system
2. Introduces an exemption for activities undertaken solely for the purpose of gaining
regulatory approval
Brief History
•
•
•
•
Suspicion of monopolies (even today)
Venice 1474 (exclusive trading privileges in return for disclosure; for 10 years)
– So that devices of ‘utility and benefit’ would be built
– Patent bargain
literae patentae or ‘letters patent’ as a Royal Prerogative
A challenge to monopolies
– Darcy v Allin (1602) 77 ER 1260
• Darcy had been granted the sole right to import foreign playing cards; he
sued Allin for infringing his right by selling cards; monopolies were held to
be generally invalid because they were a restraint of trade
• However, the court noted the need for a ‘valid’ right
– Statute of Monopolies 1624
• Patents for ‘sole working or making of any manner of new manufacture’;
‘the first and true inventor’; 14 – 20 years
• This history provides the basis of much of modern patent law; just add
nearly 400 years of development, evolution and reform
Sources of Patent Law in Australia
•
•
•
Patents Act 1990 (Cth), as amended
– most recently, Raising the Bar Act 2012 (Cth)
– All references (to sections) in these slides at to the Patents Act 1990; unless they
state otherwise
Patents Regulations 1991 (Cth)
Common law
Application Process
•
•
•
•
Patents Act 1990 (Cth); administered by IP Australia
Also, there is the possibility of ‘international applications’. This might be important for
priority dates.
• Paris Convention
• Patent Cooperation Treaty (PCT)
5 main stages of application
• Application
• Publication
• Examination
• Acceptance/Refusal
• Opposition
Who may apply?
• Who may apply?
• Any person can apply: s29(1)
• A patent is only granted to an ‘eligible person’: s 15(1))
Type of Applications
•
•
•
•
Provisional application;
complete application;
convention application;
International application (‘PCT’)
Fees: available at the websites below:
•
•
http://www.ipaustralia.gov.au/get-the-right-ip/patents/time-and-costs/
http://www.ipaustralia.gov.au/get-the-right-ip/patents/time-and-costs/fees/
Typical patenting process:
Types of Patents:
1. Standard patents
– Our focus
2. Innovation patents
– Established in 2001 (previously petty patents)
– ‘Innovative step’, as opposed to an ‘inventive step’
– Plants, animals or essentially biological processes for the generation
of plants and animals are excluded
– Term?
– No. of claims?
3. Patent of addition (standard patent only): ss 80-82
Grant and Term:
•
•
•
20 years (standard): ss 65 & 67
8 years (innovation): ss 65 & 68
Patents for pharmaceuticals
– Patents Act (Cth): Chapter 6, Part 3
– Possible to extend by a single 5-year period (regulatory approval)
– Generally the substance only
What can be patented?
•



Device, machine; industrial, chemical or biochemical product or process, computer hardware
and software; even some business methods...almost anything commercially useful: The
Patents Guide, IP Australia
New inventions that have a practical, commercially useful form
Excluded are artistic works, mere information or discoveries, abstract or mathematical
formulae, printed matter, plans, schemes or ideas that are not technological in nature
Human beings and biological processes for producing human beings are excluded in
Australia; similar types of exclusions exist in other countries

Is quality/usefulness a factor? NOTE: Changes to the utility requirement in 2013
Some key aspects of patent law:
1. The requirements of a valid patent
2. Priority date
3. The importance of patent claims
• Internal requirements
– Patent specification
Requirements of a valid standard patent are set out in ss 18(1)
Human beings, and…
• s 18(2) excludes ‘Human beings, and the biological processes for their generation’ from
patentability
Elements of a Valid Patent:
1) (Threshold requirement) Invention
2) Manner of manufacture
3) Novelty
4) Inventive Step
5) Utility
6) Secret use
When do you access these criteria?
For example...
• Examination
– Manner of manufacture
– Novel
– Inventive step
– Utility (post April 15 2013)
• Opposition
– Manner of manufacture
– Novelty
– Inventive step
– Utility
• the grounds of validity are kept distinct, and should be considered separately
– Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 at
290-1
Elements/Requirements outlined:
Threshold requirement: invention
a. Any manner of new manufacture the subject of letters patent and grant of privilege
within s 6 Statute of Monopolies (Schedule 1, Patents Act 1990 (Cth))
b. NV Philips v Mirabella International (1995) 32 IPR 449 the HCA, by a majority,
considered that it introduced a THRESHOLD TEST independent of the requirements
imposed by the specific paragraphs of s 18
c. but, the minority judgment (Dawson and McHugh JJ) said that there was not a
separate threshold
(2) Manner of Manufacture (s 18(1)(a))
a. The alleged invention, as claimed, must be a manner of manufacture within the
meaning of s 6 of the Statute of Monopolies of 1623
i. This has been subject to a great deal of judicial consideration
ii. Only if this is satisfied is it necessary to move on to the requirements of
novelty, inventive step etc.
b. EARLY APPLICATION:
i. flexible, although initially thought only to apply to PRODUCTS (Crane v Price
(1842) 1 WPC 393)
ii. Morton’s Rules: GEC Application (1943) 60 RPC 1: process leads to a
production, preservation from deterioration, restoration or improvement of
some vendible product to which the process is applied
c. NRDC v Cmr of Patents
i. National Research Development Corporation v Commissioner of Patents
(1959) 102 CLR 252
1. Cmr refused to grant a patent for a method of killing weeds
2. Based on 3 grounds
a. Discovery of a new use of a known substance is not a
manner of manufacture
b. Agricultural and horticultural processes are generally not
patentable manners of manufacture
c. A method/process which does not result in a ‘vendible
substance’ is not patentable
ii. The High Court rejected all three grounds of objection
iii. In determining ‘manner of manufacture’ the High Court pointed out the
breadth of the concept was important, rather than the meaning of particular
words (p. 269)
iv. The High Court held it was a manner of manufacture
v. Patentable inventions have two key qualities:
1. ‘useful arts’ rather than ‘fine arts’;
2. material advantage;
3. field of economic endeavour.
d. Post NRDC
i. Expansion of the scope of patentable subject matter
1. Computer programs (CCOM Pty v Jiejing Pty (1994) 51 FCR 260)
2. Methods of medical treatment for humans (Anaesthetic Supplies Pty
v Rescare Ltd (1994) 50 FCR 1; Bristol-Myers Squibb Co v FH Faulding
& CO Ltd (2000) 97 FCR 524)
3. Business Methods (Welcome Real-Time Catuity (2001) 113 FCR 110;
c.f. Grant v Commissioner of Patents [2006] FCAFC 120)
e. Method of treating the human body
i. Maeder v Busch (1938)
1. Improved process for producing permanent waves in human hair
2. obiter….‘very doubtful’ (Latham CJ)
ii. Joos v Cmr of Patents (1972) 126 CLR 611
1. Process for improving strength and elasticity of human hair and nails
2. Question of ‘cosmetic’ treatments, this was different to human
treatment
iii. Anaesthetic Supplies Pty v Rescare Ltd (1994) 50 FCR 1
1. The human treatment exception was rejected
2. a device and its uses in treating sleep apnoea was patentable
3. Lockhart J (at 19): ‘…there is no justification …to say that simply
because on the one hand substances produce a cosmetic result or a
functional result as opposed to a curative result, one is patentable
and the other is not.’
4. Wilcox J
5. Sheppard J dissented: allowing monopolies over beneficial
treatments was ‘generally inconvenient’
iv. Bristol-Myers Squibb Co v FH Faulding & CO Ltd (2000) 97 FCR 524
1. Methods of human treatment were held to be patentable
2. a method a administering a drug used in cancer treatment was
patentable
3. Black CJ and Lehane J (at 529-530)
v. Apotex v Sanofi-Aventis
1. In relation to ‘manner of manufacture’ of a method or a process for
the medical treatment of human ailments
2. [19]-[28]
3. [20], Anaesthetic Supplies v Rescare; Lockhart J
4. [23], Bristol-Myers v F H Faulding
5. [26], ‘ample opportunity afforded to the parliament’
f. BRAC1 and BRAC2
i. A challenge to the legal validity of patents for BRCA1 and BRCA2, which are
strongly associated with breast and ovarian cancer risk
ii. United States – Myriad decision -Molecular Pathology v Myriad Genetics
iii. Challenge in Australia, landmark decision of Cancer Voices Australia v
Myriad Genetics Inc, handed down on 15 February 2013
iv. D'Arcy v Myriad Genetics Inc [2014] FCAFC 115
1. the Full Federal Court unanimously upheld the Federal Court’s
decision that allowed patents to be granted to isolated, specific
gene sequences
2. This will be discussed in more detail later (Patent Case Study)
g. Business Methods
i. Welcome Real-Time Catuity (2001) 113 FCR 110
ii. The patented invention was a credit ‘smart card’ containing a computer chip
iii. The customer loyalty scheme was patentable
iv. ‘physical effect’
v. Grant v Commissioner of Patents [2006] FCAFC 120; 234 ALR (2006) 230
vi. Structuring a financial transaction with the aim of protecting an individuals’
assets
vii. Not patentable; no artificial state of affairs BUT a mere scheme, an abstract
idea
viii. See, pp 231 [2], 236 [26], 237 [30] of ALR
(3) Novelty (18(1)(b)(i))
a. The invention must be novel as compared with the prior art base as it existed before
the priority date
b. Does not mean ‘new’ but ‘publicly available’
c. Compared with ‘prior art base’ as it existed before the ‘priority date’, and ask
whether the invention has been anticipated by publicly available prior art
information (s 7(1)).
i. Determining a prior date:
1. Comparison between the invention (as claimed) and the information
in the prior art base
2. Determine the priority date and the relevant prior art base
3. Generally, the priority date is the date of filing the specification in
which the invention claimed is first disclosed (PA ss 43(2), 30)
4. Application after 1 April 2002: “prior art base” consists of:
information in a document publicly available anywhere in the world;
info made publicly available through doing of an act anywhere in the
world; and info contained to a specification published after the
priority date.................
5. Eg. published patent specifications, textbooks, technical journals,
internet sites, demonstrations
6. The patent date outlined in s 43 may be vitally important (‘race to
the patent office’)
7. General rule: the date of filing the specification in which the
invention claimed is first disclosed (PA ss 43(2), 30)
8. However, each claim in a complete specification will have a priority
date
9. A PCT application is complete for a standard patent (PA s 88(1))
10. Why do you need to know the priority date?
a. Prior art base (novelty & inventive step)
b. Common general knowledge (inventive step)
c. Skilled person (inventive step)
ii. Comparison of invention with information in prior art base
1. Ask: Does the prior art ANTICIPATE the claimed invention?
2. Anticipation generally occurs through prior publication or prior use
3. The comparison is with information that is disclosed in a single
source: It is not possible to make a ‘mosaic’ for the purposes of a
novelty assessment (Minnesota Mining & Manufacturing Co v
Beirersdorf (Australia) Ltd (1980) 144 CLR 253 at 292-3).
4. Each kind of information must be considered separately (s 7(1)); 2 or
more related documents, or 2 or more related acts if person skilled
in the art would treat them as a single source of that information (s
7(1))
5. Documents: the document must contain..
‘clear and unmistakeable directions to do what the patentee
claims to have invented’ General Tire & Rubber Co v
Firestone Tyre [1972] 457 at 486.
d. Normally referred to as ANTICIPATION of the invention
e. Put simply: anticipation generally occurs through prior publication or prior use
f. Is the Invention Novel?
i. Determine the priority date and the relevant prior art (what constitutes
prior art)
ii. Compare the claimed invention with the information in the prior art base.
1. Asking: Does the prior art ANTICIPATE the claimed invention?
2. Using: the REVERSE INFRINGMENT TEST
iii. Test of Novelty:
1. REVERSE INFRINGEMENT TEST: in Meyers Taylor Pty Ltd v Vicarr
Industries Ltd (1977) 137 CLR 228 at 235 (Aickin J):
2. ‘The basic test for anticipation or want of novelty is the same as that
for infringement and generally one can properly ask oneself
whether the alleged anticipation would, if the patent were valid,
constitute an infringement’
3. That is: all the essential integers must be disclosed clearly and
plainly (Minnesota Mining & Manufacturing Co v Beirersdorf
(Australia) Ltd (1980) 144 CLR 253 at 298
4. See page 462 text
5. Non-prejudicial disclosures:
a. s 24 excludes from the prior art base certain disclosures
b. General ‘grace period’ (s 24(1); reg 2.2(1A))
c. Obligation of confidence;
d. Reasonable trial;
e. Publication before a ‘learned society’.
6. General ‘grace period’ (s 24(1); reg 2.2(1A))
a. Introduced in April 2002
b. To provide protection against inadvertent disclosures
c. It applies to information made publicly available through the
publication or use of the invention on or after 1 April 2002,
and within 12 months before the filing date of the complete
application
(4) (4) Inventive step s 18(1)(b)(ii)
a. Standard patent
b. s 7(2) and 7(3)
i. s 7(2): ... an invention is to be taken to involve an inventive step when
compared with the prior art base unless the invention would have been
obvious to a person skilled in the relevant art in the light of the common
general knowledge as it existed (whether in or out of the patent area)
before the priority date of the relevant claim, whether that knowledge is
considered separately or together with the information mentioned in
subsection (3)
ii. s 7(3)
c. Defining ‘obvious’
i. Qualitative assessment: ‘plain’ or ‘very plain’
ii. The General Fire & Tire Rubber Co v The Firestone Tyre and Rubber Co [1971]
FSR 417, 460
iii. Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 414
1. An invention does not contain an inventive step merely because a
hypothetical person would have been unable to say in advance
which of the possibilities worth trying would provide a solution.
2. The successful negotiation of a maze of possibilities and choices was
not an invention
3. Majority: the appropriate test is that used in Olin Mathieson
Chemical Corp v Biorex Laboratories Ltd [1970] RPC 157
‘Would the notional research group at the relevant date, in
all the circumstances, which include a knowledge of all the
relevant prior art, directly be led as a matter of course to try
one avenue of inquiry in the expectation that it might well
produce a useful result or alternative?’
If answer is yes then no inventive step, thus no Patent
d. Person skilled in the art:
i. s 7(2)
1. Hypothetical skilled person (Wellcome Foundation Ltd v V R
Laboratories (Aust) Pty Ltd (1981) 148 CLR 262
2. A ‘skilled but non-inventive worker in the relevant field of
technology’: Firebelt Pty (2002) 188 ALR 280
e. Common general knowledge:
i. ‘the background knowledge and experience which is available to all [in the
relevant field]...’ ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (1999) 45
IPR 577, 599
ii. For applications after 1 April 2002, the rules against combining documents
and making mosaics have been relaxed (s 7(3))
iii. Standard required:
1. ‘scintilla of inventiveness” (only a small amount is enough)
2. Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228, 249
f. Wm Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2008) 79 IPR 126
i. coating process for chewing gum
ii. Opponent claimed invention lacked inventive step and not novel in light of
common general knowledge.
iii. Held: invention did not lack novelty as documents adduced not publicly
available and did not contain all features of invention
g. Raising the Bar Act 2012
i. Commenced April 15, 2013
ii. Section 7(2) has been amended to remove the territorial limitation; so that
inventive step will be assessed against the common general knowledge in
the art in general
iii. Section 7(3) has been amended to remove the requirement for a prior art
reference (for inventive step purposes) to be ‘information that a skilled
person…be reasonably expected to have ascertained, understood, regarded
as relevant’
(5) Utility s 18(1)(c)
a. The invention must be ‘useful’
b. Traditionally, this meant that the invention must operate as claimed. That is, it must
produce the desired result
c. Utility is a ground for
i. opposition (s 59(b)) and
ii. revocation (ss 138(3)(b))
d. Raising the Bar Act 2012
i. Commenced April 15, 2013
ii. A new utility requirement is introduced that is based largely on the utility
requirement in the USA, as developed by the USTPO
iii. The complete specification must disclose a ‘specific, substantial and credible
use’ for the invention
(6) Secret Use s 18(1)(d)
a. There must not be secret use of the invention by the patentee before the priority
date
b. Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75
i. Before the priority date, the patentee had manufactured 15-20 examples of
a hammer covered by the patent claims
ii. The patentee had received an order, although no sale had taken place
iii. The FFCA, has the patentee obtained a commercial benefit?
iv. Held: No commercial benefit, as no sale
c. Meaning of ‘secret’
i. deliberate concealment of the use of the invention (Bristol-Myers Co v
Beecham Group Ltd [1974] AC 646).
ii. Is there an obligation of confidence on third parties? (Re Wheatley’s
Application (1984) 2 IPR 450).
iii. The manufacturing of goods does not amount to commercial use of the
goods (Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75);
‘has what occurred amounted to a de facto extension of the patent
term? The answer to this will usually depend upon whether the
patentee reaped commercial benefit from what was done before
the priority date’ (at 134)
iv. Manufacture and stockpiling of products before the priority date cannot
amount to use
d. Uses deemed not to be secret:
i. s 9 Patents Act
1. Reasonable trial or experiment only
2. Confidential disclosure
3. By or on behalf of the Cth, a State or a Territory
Internal Requirements
• What does a patent look like?
http://pericles.ipaustralia.gov.au/ols/auspat/pdfSource.do?fileQuery=%99%AD%A2%BB%BA
%7E%AB%B6%AE%B1%A6%A5g%A7%AA%AD%A6%AF%A2%AE%A6%7E%82%96sqrqsqrqxv
%83rsqrrqssuo%B1%A5%A7g%AB%B6%AE%B1%A6%A5%7E%A3%B3%B0%B8%AF
Internal requirements/objections
•
•
s 40 sets out a number of requirements for patent specifications: internal requirements or
internal objections
A complete specification must:
– Describe the invention fully, including the best method known to the applicant of
performing the invention (s 40(2)(a)); and
– End with a claim or claims defining the invention (s 40(2)(b)
The Patent Specification
•
•
‘consideration’ for the grant
Specification =
•
•
•
The body
– Provides a full description
• The claims
– Define the invention in clear and precise terms
section 40 Patents Act
ss 41 and 42: special procedures for inventions based on micro-organisms.
Parts of a Patent
•
•
•
•
•
•
•
•
Title
Field of Invention
Background
Summary of the Invention
Description of Figures
Detailed Description
Claims
• must be:
• Clear (s40(3))
• Lacks ambiguity: Kauzal v Lee (1936) 58 CLR 670
•
succinct (s 40(3))
• Leonard’s Application (1966) RPC 269: one sentence claims not
always possible
• Fairly based on the matter described in the specification (ss 40(3))
• Lockwood Securities v Doric Products
• Relate to one invention only (s 40(4))
• Define the invention
• Set out what others cannot do
• Independent claims stand alone
• Dependent claims reference another claim and import all of its limitations
• Number of claims can determine fees
• It’s an elongate member- not a stick!!
•
Abstract
Raising the Bar Act 2012
•
Commences April 15, 2013
Sufficiency
–
–
The level of disclosure required for a provisional application is to be increased
The disclosure requirement for complete applications will be amended to conform
substantially to the corresponding UK provision – the complete specification must
‘disclose the invention in a manner which is clear enough and complete enough for
an invention to be performed by a person skilled in the relevant art’
Fair basis
–
Currently, a claim needs to be fairly based on matter disclosed in the specification.
This is replaced with a support requirement: (i) there must be basis in the
description for each claim, (ii) the scope of the claims must not be broader that is
justified by the extent of the description, drawings and contribution to the art.
Other areas/consideration in patent law:
Express Exclusions
•
Members of TRIPS are required to make patents available for any inventions in all fields of
technology (Article 27). However, there are 2 areas where there is scope to exclude: ‘ordre
public’; ad medical treatments, plants and animals
– Human beings and the biological processes for their generation (ss 18(2) and (3))
– Plants and animals (innovation patent) – s s18(3), 4
– Contrary to the law – s 50(1)(a)
– Mere Mixtures – s 50(1)(b)
RBA 2012
Access to patented inventions for regulatory approvals and research
• Regulatory exemption (s 119A, pharmaceutical: s 199B, non-pharmaceutical)
Allowing a party to use a patented invention for purposes connected to obtaining an approval
required by law. Pharmaceutical patents are excluded.
• Experimental use exemption (s 119C)
Allowing acts done for experimental purposes relating to the subject matter of the invention.
Acts include, but are not limited to: determining the properties of the invention; improving or
modifying the invention; determining the validity of a patent
Patent Infringement
•
s 13 states that a patent gives the patentee the exclusive rights, during the term of the
patent, to exploit the invention and to authorise another person to exploit the invention
• s 120(4)
Construction of claims
• Pith and marrow
– Clark v Adie (1874) LR 10 Ch App 667
– Literal meaning of the claim – this is what you’d get protection for
• Purposive
– Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
– Fighting over the word ‘vertical’.
– Someone else came along and made a support that was on an angle. They
change the pith and marrow test to the purpose of the claim, rather than the
literal interpretation.
– This is the approach predominantly used in Australia.
Product Infringement
•
•
•
•
Making, hiring, selling
Offering to make, sell, hire
Using or importing the product
Keeping the product for the purpose of doing any of those things
Method/Process Infringement
•
•
•
Exploited by using the method or process
For instance, there is a case where a claim for a patent on the method/process of lowering
cholesterol was successful.
Someone tried to use this and were found to be infringing the patent
Contributory Infringement
•
s 117
•
Supply of products
Defences: (Patent law is very strict)
•
There are very few
– s 163
– s 118
– s 119
– s 123
Remedies
•
•
•
Damages
Account of profits
Injunctive relief (s 122)
On a practical level, look out for:
• Publishing
• Don’t rush to apply
• Consider the possibility of protecting improvement; relying on one patent
• Maintaining patents (or IP more generally) when there is no need to
• Letting IP lapse
• Relationship with employment contracts – inventorship?
Searches:
•
•
Patentability/Novelty/Validity search:
• To locate prior art relevant to novelty/obviousness of invention
• May be carried out prior to filing a patent application
• May be carried out with a competitors patent in mind to locate “knock out” prior art
Freedom to operate search
• To identify potential barrier to commercial entry i.e. infringement
• Focus on claims to see if current product/process captured
• Understand limitations of claims and ascertain if still room to innovate
Breach of Confidence
Also known as…
• Confidentiality
• trade secrets
• confidential information
Objectives:
•
At the end of this part of the course, you should be able to:
• Identity when breach of confidence is relevant
• Discuss (and apply) the main issues in a breach of confidence action
• Begin to understand the importance of, and difference between, contractual and
equitable breach of confidence
• Begin to understand the relationship between patent law and confidentiality
Confidential information is “facts or knowledge that are not in the public domain”
A recent example: Streetscape Projects (Aust) Pty Ltd v City of Sydney (2013) 295 ALR
760
•
•
•
•
•
•
The licence agreement contained detailed confidentiality provisions
The co-existence of contractual and equitable obligations of confidence
[163] The city’s pleaded case was that the whole of the “Intellectual Property”, the
“Confidential Information”, the “Product Manual” and the “Specification” — all as defined
by the licence agreement — was subject to an equitable duty of confidence
The three elements of a breach of an equitable Duty of Confidence identified by Megarry J in
Coco v AN Clark (Engineers) Ltd [1969] RPC 41 at 47, are as follows:
(1) The information must “have the necessary quality of confidence about it;”;
(2) the information must have been imparted in circumstances importing an
obligation of confidence; and
(3) there must have been an unauthorised use of that information to the detriment
of the party who communicated the information.
The NSWSC's conclusion that the circumstances surrounding the agreement as well as the
agreement was of a confidential quality was not supported by the facts of this case.
This was a result of the NSWSC's decision to exclude various paragraphs of the agreement at
trial. However, a possible outcome upon re-trial is that only some part of the totality of
information identified by NSWSC was truly confidential. Accordingly, the consequences of
any breach of duty ultimately found must be determined anew
Another example: Giller v Procopets (2008) 24 VR 1
• From 1990 to 1993, the appellant lived with respondent in de facto relationship
• They continued sexual relationship until 1996
• The appellant sought damages for:
– detinue and conversion,
– breach of confidence, and
– intentional infliction of mental harm
relating to video tape depicting sexual activity between parties (videotape claims)
• the respondent breached his duty of confidence with deliberate purpose, and having the
effect of humiliating, embarrassing and distressing the appellant, it was appropriate to
include a component for aggravation in the award of compensation
•
‘reasonable expectation of privacy’
Overview of Breach of Confidence
•
•
What if you want to communicate information to another person on the understanding that
the information goes no further? What protection do you have? What steps can you take?
Information as a valuable commodity
• Business (eg. Commercial value)
• Government (eg. Sensitive issues)
• Individuals (eg. Reputation)
Sources of Confidentiality
• Contract
• Equitable doctrine
• Sometimes both
Optus Networks Pty Ltd v Telstra Corporation Ltd (2010)
265 ALR 281; the two kinds of
obligation may co-exist
Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011]
FCA 1319 at [119] - “not without difficulty”
Confidentiality and Contract
• Express or Implied term of a contract
• Non-disclosure or confidentiality agreements are common in:
– Employment
– Technology transfer
– Finance
• Drafting
Equitable doctrine of confidentiality
•
•
•
•
Doctrinal (jurisdictional) basis of the action
– contract, tort, property
– action in own right
– equity (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 437
(Deane J))
Privacy
– Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 185 ALR 1,
50
Confidentiality as a possible alternative to patent
So, you’ll need to look for:
– Contractual relationship between the parties
– Equitable doctrine of breach of confidence: Moorgate Tobacco Co Ltd v Phillip
Morris Ltd (No 2) (1984) 156 CLR 414
Elements of equitable action
1. The information has the necessary quality of confidence;
2. The information is imparted in circumstances importing an obligation of confidence; and
3. The defendant has breached that obligation.
Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1963] 3 All ER 413; Coco v A N Clarke
(Engineers) Ltd [1969] RPC 41 at 47; [1968] FSR 415 (Megarry J).
See also Smith Kline & French Laboratories (Australia) Ltd v Secretary, Dept. of Community
Services and Health (1990) 17 IPR 545 (Gummow J).
NB, Some refinement since Coco: eg. Identify the information with specificity, threatened
misuse, and questions about the need for detriment
(1) Quality of confidence
•
•
Not in the public domain (Saltman at 215)
Considerations
– Is the information trivial?
• tittle-tattle (Coco v Clark at 48)
• But…courts reluctant to label information ‘trivial’
– Do you need absolute or relative secrecy
• not material that is in the public domain
• the fact that the information has been disclosed to a number of people does
not necessarily mean that the information is incapable of being treated as
confidential
– cf. patent
– type of information, how many people know about the information,
the ‘kinds’ of people that know about the information etc
– Can immoral information have a quality of confidence?
• careful approach
– Can ideas and vague information have a quality of confidence?
• vagueness and simplicity are not the same (De Maudsley v Palumbo [1996]
FSR 447)
– Reverse engineering
– There are some specific guidelines for business or trade secrets (when asking
whether information has the quality of confidence)
– Ansell Rubber Co v Allied Rubber Industries [1967]
• Extent to which information is known outside the business
• Measures taken to guard secrecy
• Value of the information
• Effort/money in developing the information
Streetscape Projects (Aust) Pty Ltd v City of Sydney (2013) 295 ALR 760
[160] The confidential quality of information does not depend on its being in the
nature of a trade secret. As Campbell JA pointed out in Del Casale (above) at [103],
referring to what was said by Megarry J in Coco (above) at 47:
On Megarry J’s account, the information is “of a confidential nature” if it is not
“public property and public knowledge”, or if it is “constructed solely from materials
in the public domain”, to which “the skill and ingenuity of the human brain” has
been applied (47). This is a fairly undemanding test.
(2) Circumstances importing obligation
•
•
•
•
Pre-existing relationships
Circumstances importing obligation
– Limited purposes
– Improperly obtained information
Bona fide third parties
Surreptitious acquisition
•
Inadvertent eavesdropping
Special Circumstances
• Contract (Agreement; express or implied)
• Employment (what happens when an employee gets another job)
• During employment: duty of fidelity, contract
• After employment ends: three classes of information:
– not confidential;
– know-how;
– trade secrets.
Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617
- question of obligation
- court decided in equity, that while working with someone under
contract, you have obligation and duty of fidelity to keep things
confidential
- but after employment, things get tricky, and is where SPECIAL
CIRCUMSTANCES come into play
(3) Breach of obligation; unauthorised used of information
•
•
•
•
•
BREACH:
– Disclosure of information
– Use information for purpose other than the purpose for which it was given
Scope of obligation
– depends on the facts of the case
– ‘limited purpose test’
Unauthorised use (Saltman)
Threatened use is enough (Smith Kline (1990) 22 FCR 73 at 87 (Gummow J)
Detriment (more clearly for government info)
– Cth v John Fairfax (1980) 147 CLR 39 at 51-2
Third Parties
• Any person who receives the information; constructive notice
• Dishonesty is not needed
Defences
•
•
•
•
•
•
Justified disclosure
– public interest (AG(UK) v Heinemann Publishers Australia (1988) 165 CLR 30)
Compulsion of law
Commercial and personal secrets
Government secrets
Unclean hands
Delay
Remedies
•
•
•
•
Injunction
Anton Piller Orders (search and seize)
Delivery up/Destruction
Account of Profits
•
Damages
Relationship with patents
•
•
Sometimes, a choice is made between patents and confidentiality
– Nature of protection
– Term of protection
– Requirements of patent law
Although, CI sometimes used before applying for a patent (see, ‘secret use’, and grace
periods discussed in the patents section of the course)
Answering a Cl Question
•
•
•
•
•
Remember that CI may be an alternative to patent law
Is there a contract? Equitable Action?
Elements of an equitable action
1. does the information have the necessary quality of confidence?
• Is it in public domain? etc
2. was the information imparted in circumstances importing an obligation of
confidence?
• contract; relationship; circumstances; third parties
3. was there unauthorised use of the information
Defences
Remedies
Steps to protect confidential information
•
•
Keep the information a secret
Make recipients aware that it is confidential in nature
– Restricting access
– Marking documents
– Employee contracts
Non-disclosure clauses
•
•
•
•
•
What information is confidential?
What is the purpose of the disclosure?
What is the permitted use?
Non-disclosure
Duration