IP Trademarks and Patents SCAFFOLDS - StudentVIP

IP Trademarks and Patents SCAFFOLDS:

SCAFFOLD: PASSING OFF ... 8

SCAFFOLD: ACL CLAIM ... 10

SCAFFOLD: ABSOLUTE GROUNDS OF REFUSAL... 28

SCAFFOLD: RELATIVE GROUNDS OF REFUSAL ... 46

SCAFFOLD: CHALLENGING REGISTRATION ... 48

SCAFFOLD: INFRINGEMENT... 60

SCAFFOLD: LOSS OF RIGHTS ... 74

SCAFFOLD: EXPLOITATION OF TRADEMARKS ... 78

SCAFFOLD: MANNER OF MANUFACTURE ... 83

SCAFFOLD: S 18 CRITERIA ... 92

SCAFFOLD: DISCLOSURE AND CLAIM INTERPRETATION... 105

SCAFFOLD: INVENTORSHIP & OWNERSHIP ... 111

SCAFFOLD: INFRINGEMENT... 117

SCAFFOLD: DEFENCES ... 126

SCAFFOLD: REMEDIES ... 131

SCAFFOLD: EXPLOITATION OF PATENTS ... 134

SCAFFOLD: ALTERNATIVE FORMS OF PROTECTION ... 135

INTRODUCTION TO INTELLECTUAL PROPERTY 5

1. I

NTRODUCTION

5

1.1. W

HAT IS

IP? 5

1.2. P

ROTECTION

5

1.3. R

ATIONALE FOR AND AGAINST

IP

PROTECTION

5

1.4. P

ROTECTION OF INTELLECTUAL PROPERTY

5

1.5. I

NTERNATIONAL CONVENTIONS

6

1.6. W

HAT IS A

TM 6

THE LAW OF PASSING OFF 8

2. I

NTRODUCTION TO

P

ASSING

O

FF

8

2.1. H

ISTORICAL ORIGINS OF ACTIONS AGAINST THE MISUSE OF MARKS AND GET

-

UP

11

2.2. T

HE

M

ODERN

T

ORT OF

P

ASSING

O

FF

11

3. R

EPUTATION OR

G

OODWILL

12

3.1. G

ENERALLY

12

3.2. L

OCATION OF

R

EPUTATION

13

3.3. T

EMPORAL

C

ONSIDERATIONS

14

3.4. O

WNERSHIP OF

G

OODWILL

15

3.5. F

RAUD

15

4. M

ISREPRESENTATION

15

4.1. H

OW CONFUSED DO CONSUMERS NEED TO BE

? 15

4.2. T

HE RELEVANCE OF INTENTION TO DECEIVE

16

4.3. C

OMMON FIELD OF ACTIVITY

? 16

4.4. T

YPES OF MISREPRESENTATION

17

5. D

AMAGES AND

R

EMEDIES

20

5.1. W

HAT FORMS OF DAMAGE ARE ACTIONABLE

? 21

5.2. W

HAT REMEDIES ARE AVAILABLE

? 21

THE LAW OF REGISTERED TRADEMARKS 22

6. I

NTRODUCTION TO

T

RADEMARKS

& R

ATIONALES FOR

P

ROTECTION

22

6.1. R

ATIONALES FOR

P

ROTECTION

22

6.2. T

RADEMARK

T

HEORY

: W

HAT IS A TRADEMARK

? T

HE CONCEPT OF A

‘

SIGN

’ &

REGISTRABLE SIGNS

22

6.3. A

PPLICATION PROCESS FOR REGISTRATION OF A TRADEMARK

23

6.4. R

OLE OF THE SPECIFICATION

25

6.5. R

EGULATION OF SPECIFICATION

25

6.6. E

XAMINATION AND AMENDMENT

26

6.7. R

ENEWAL

26

7. A

BSOLUTE

G

ROUNDS OF

R

EFUSAL

(1) 28

7.1. T

HE REQUIREMENT OF DISTINCTIVENESS

:

GENERAL STRUCTURE AND PURPOSE

31

7.2. I

NHERENT DISTINCTIVENESS

:

PARTICULAR EXAMPLES

33

7.3. F

ACTUAL DISTINCTIVENESS AND HOW TO PROVE IT

38

7.4. H

OW DISTINCTIVENESS CAN BE LOST

38

8. A

BSOLUTE

G

ROUNDS OF

R

EFUSAL

(II) 40

8.1. P

ROHIBITED AND PRESCRIBED SIGNS

40

8.2. G

RAPHIC REPRESENTATION

40

8.3. S

CANDALOUS OR CONTRARY TO LAW

40

8.4. D

ECEPTIVE OR CONFUSING CONNOTATION

42

8.5. N

O INTENTION TO USE THE MARK

44

8.6. B

AD

F

AITH

45

9. R

ELATIVE

G

ROUNDS OF

R

EFUSAL

46

9.1. S

ECTION

44:

REGISTRATION V REGISTRATION

49

9.2. S

ECTION

60:

REGISTRATION V REGISTERED OR UNREGISTERED MARK WITH A REPUTATION

56 9.3. C

ONTRARY TO LAW

(

S

42)

AND DECEPTIVE AND CONFUSING CONNOTATIONS

(

S

43)

AS RELATIVE GROUNDS OF

REFUSAL

56

9.4. O

WNERSHIP OF MARKS

56

9.5. B

AD

F

AITH

: S

ECTION

62A 58

9.6. F

ALSE

G

EOGRAPHICAL

I

NDICATIONS

58

10. I

NFRINGEMENT

60

10.1. T

HE STRUCTURE OF S

120 63

10.2. U

SE OF THE TRADE MARK IN

A

USTRALIA

64

10.3. U

SE AS A TRADE MARK

64

10.4. S

UBSTANTIAL IDENTITY AND DECEPTIVE SIMILARITY REVISITED

68

10.5. T

HE S

120(2)

PROVISO

68

10.6. S

ECTION

120(3),

DILUTION AND

‘

WELL

-

KNOWN

’

MARKS

69

10.7. D

EFENCES

70

10.8. P

ARALLEL IMPORTATION

&

SECOND

-

HAND GOODS

71

10.9. I

NFRINGEMENT AND

R

EMEDIES

72

11. L

OSS OF

R

IGHTS

74

11.1. C

ANCELLATION OF REGISTRATION

74

11.2. R

EMOVAL ON THE BASIS OF NON

-

USE

76

12. E

XPLOITATION OF

T

RADEMARKS

78

THE LAW OF PATENTS 80

13. I

NTRODUCTION TO

P

ATENTS

; T

HE

R

EGISTRATION

P

ROCESS

80

13.1. I

NTRODUCTION TO PATENTS

80

13.2. R

EGISTRATION PROCESS

81

13.3. P

ATENT

S

PECIFICATIONS

81

13.4. I

NTERNATIONAL REGIME

82

14. P

ATENTABLE

S

UBJECT

M

ATTER

: M

ANNER OF

M

ANUFACTURE

83

14.1. P

OST

NRDC C

ASES

87

14.2. ‘C

OMBINATION

’ P

ATENTS

90

14.3. M

ORALITY

,

PUBLIC INTEREST AND GENERAL INCONVENIENCE

90

14.4. U

SE CONTRARY TO LAW

90

14.5. I

S THERE A THRESHOLD REQUIREMENT FOR NEWNESS AND INVENTIVENESS

? 90

15. P

ATENTABILITY

C

RITERIA

– S

ECTION

18 92

15.1. N

OVELTY

96

15.2. I

NVENTIVE STEP

99

15.3. U

TILITY

103

15.4. S

ECRET

U

SE

103

16. D

ISCLOSURE AND

C

LAIMING

R

EQUIREMENTS

; C

LAIM

C

ONSTRUCTION

105

16.1. I

NTRODUCTION AND REFORM CONTEXT

106

16.2. C

LAIMS

: R

OLE AND

I

NTERPRETATION

107

16.3. P

RE

-R

AISING THE

B

AR

L

AW

108

16.4. P

OST

-R

AISING THE

B

AR

L

AW

: S

UFFICIENCY AND

S

UPPORT

109

17. I

NVENTORSHIP

& O

WNERSHIP

111

17.1. W

HO IS THE

I

NVENTOR

112

17.2. T

HE

U

NIVERSITY

C

ONTEXT

& F

IDUCIARY

O

BLIGATIONS

115

17.3. T

ERMS

I

MPLIED AS A MATTER OF

F

ACT

116

17.4. E

XAMPLE

Q

UESTION

: L

UCY

& C

HARLIE

(06-05-2020) 116

18. I

NFRINGEMENT AND

D

EFENCES

117

18.1. E

XCLUSIVE

R

IGHTS

119

18.2. E

XHAUSTION OF RIGHTS

121

18.3. D

IRECT

I

NFRINGEMENT

122

18.4. A

UTHORISATION OF INFRINGEMENT

124

18.5. C

ONTRIBUTORY

I

NFRINGEMENT UNDER S

117 / I

NDIRECT INFRINGEMENT

125

18.6. E

XCEPTIONS TO

P

ATENT

I

NFRINGEMENT

126

18.7. R

EMEDIES FOR

I

NFRINGEMENT

131

19. E

XPLOITATION OF

P

ATENTS

134

19.1. A

SSIGNMENT

134

19.2. L

ICENSING

134

19.3. P

ATENT

S

TRATEGY

134

20. A

LTERNATIVE

F

ORMS OF

P

ROTECTION

135

20.1. C

ONFIDENTIAL INFORMATION

135

20.2. T

RADE

S

ECRETS

137

21. E

XAM

T

IPS

138

T HE L AW OF P ASSING O FF

2. I NTRODUCTION TO P ASSING O FF

S

^CAFFOLD

: P

^ASSING

O

^FF

• (1) Consider what action to take:

o Seek interlocutory injunction (see below in remedy) o The common law tort of passing off

o Action under the Trade Mark Act

• (2) Establish what passing off is and the elements:

o Benefits of Passing Off: As a common law tort, it does not require registration of marks. Action therefore can be taken on marks that have not yet been registered – or were never registered.

In order to establish an action in passing off, the elements of the goodwill misrepresentation and damage must be established. This was first laid out in Reckitt & Coleman Products v Borden and later applied in Australia in ConAgra.

• (A) Goodwill in the Indicia of Trade

In order for <the plaintiff> to establish an action in passing off, they must be able to show that there is existing goodwill attached to the <product/business> at the relevant place and time.

o Generally

▪ Consider where the goodwill rests. Does it reside in the name? Or the actual product?

• Unbranded product suggests the goodwill resides in the features or that “a substantial secondary reputation in the features” (Peter Bodum A/S v DKSH Australia)

▪ Passing off does occur through any indicia such as name, sign, device, colour (Cadbury- Schweppes Pty Ltd v The Pub Squash Co) (Sydneywide Distributors Pty Ltd v Red Bull Australia)

▪ Factors:

• Time in Market, Promotion, Sales, Use of Domain Names, Surveys etc…

o Fraud

▪ Fraud is not a necessary element, however it can and should be adduced. (Millington v Fox)

• Fraud goes to sufficient similarity BUT it does not go to the existence of the plaintiff’s reputation

o Location

▪ Test: Is there a sufficient reputation here, based upon knowledge from outside? (ConAgra Inc v McCain Foods)

• It does not matter that the plaintiff does not carry on business in Australia, only that they have a reputation here (Fletcher v Fletcher)

• You can however have foreign companies trying to establish reputation in Australia without selling in Australia (❌ConAgra Inc v McCain Foods) (✅Hansen Beverage Co v Bickfords)

▪ Geo-targeted advertising does not always equal a significant number of persons in that class must be aware of the reputation (Hansen Beverage v Bickfords)

▪ The location of the reputation of the <product/business> is important as it must be where the trade mark is being registered.

▪ If you are trying to trade mark in Australia, the reputation must be in Australia (W and A Gilbey Ltd v Continental Liqueurs)

o Time

▪ An action can be brought pre-emptively if there is an intention to breach (AG Spalding &

Bros v AW Gamage)

▪ There is no requirement of trading

▪ You can have goodwill prior to trading (Fletcher v Fletcher)

▪ Wide publicity of merger created reputation prior to trade

▪ Commencing (Fletcher v Fletcher)

▪ Break in trading (Ad lib Club v Granville)

▪ Seven years after ceasing trading is okay (Ballarat v Farmers Smallgoods) o Collective Goodwill Scenario

▪ This is when a trader is party of a class of traders (e.g. one of many producers of champagne (Bollinger v Costa Brava Wine).

▪ They do not have to be from the same geographical location (ADVOCAAT Case)

• (B) Misrepresentation

<The plaintiff> must also be able to establish that their goodwill has been misrepresented by <the defendant>. To do so the <plaintiff> must show that the conduct of <the defendant> is likely to deceive the relevant consumer into believing that there is a connection between the <goods/services> of <the plaintiff> and <the defendant>.

o The Test: Is there a reasonable probability of deception, in light of how consumers purchase the goods and the class of consumers who would buy it?

▪ There is no requirement that you have to operate in the same field of activity (Henderson v Radio Corporation and approved in Irvine v Talksport)

o (1) What is the misrepresentation?

▪ Origin – where the product is coming from (✅Reddaway v Banham where the Camel Hair Belts name was copied and found to be deceptive)

▪ Get up – the design of the product (✅Sydneywide Distributors Pty Ltd v Red Bull Australia) (✅Apand Pty Ltd v Kettle Chip Company)

▪ Name – Is there anything distinctive about this name to create association?

▪ Product appearance

• Furniture and tags (❌Parkdale Custom Built Furniture Pty Ltd v Puxu)

• Features (✅Peter Bodum A/S v DKSH Australia)

▪ Quality – (✅AG Spalding & Bros v AW Gamage) (✅Diageo v Intercontinental Brands)

▪ Association/Affiliation – Usually when a celebrity lends their name (✅Irvine v Talksport) (❌✅Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia)(✅Fenty v Arcadia)

▪ Inverse Passing Off – Where the D has pretended that the P’s work is their own (🇬🇧✅Bristol Conservatories v Conservatories Custom Built) (✅Testro Bros v Tennant)

▪ Extended Passing Off – Stuff like champagne, Greek yogurt etc…

• 5 Criteria from Diplock L in Erven Warnink BV v J Townend & Sons (Hull) Ltd o (1) misrepresentation (2) by a trader in the course of trade (3) to

prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader, and (5) which causes actual damage to the business or goodwill of the trader bringing the action.

o (2) Who is the affected party/group/consumer?

▪ Identify the individual affected, if not possible isolate “a representative member” of the class (Campomar Sociedad, Limitada v Nike International)

▪ Consumers are ordinary consumers (with imperfect recollection). Would they have impression of connection? (Shell Co v Esso)

o (3) Assess the effects of the misrepresentation by reference to the reaction (or hypothetical reaction) of an individual as a representative member of the class

▪ Marketing scenarios might not have as much logical thinking – more emotive (Hogan v Pacific Dunlop)

▪ Nature of consumers e.g. how and where they would be making purchasing decisions o Consider the following factors:

▪ Intention to deceive is not a necessary element but is of strong evidentiary value (Twentieth Century Fox Film Corp v The South Australian Brewing Co) (Telstra Corporation Ltd v Royal &

Sun Alliance Insurance Australia)

▪ Common field of activity is not a requirement (Henderson v Radio Corporation) (Irvine v Talksport)

• BigMac was passing off in Wine (McWilliam's Wines Pty Ltd v McDonald)

▪ Characteristics of the market and the nature of goods or services as well as the context in which they are sold

▪ Price of the product / relative market price (Henschke & Co v Rosemount Estates Pty)

▪ Similarity of the defendant mark and the strength of association with the plaintiff’s mark

▪ Location and proximity of the businesses

▪ Themes (Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia)

▪ Obvious intentions of the defendant

▪ Factors against confusion such as the presence of disclaimers/tags or parody or any other efforts by the defendant (❌Parkdale Custom Built Furniture Pty Ltd v Puxu)

• (C) Damage

Finally, the plaintiff must show that they <have suffered/will suffer damage> as a result of the defendant’s misrepresentation.

• If you can’t show damage, you can still get an injunction.

• Examples of damage are:

o Loss of existing or potential business through the diversion of trade

▪ E.g. Reckitt where fewer lemons were sold as a result of the actions of the defendant o Harm to reputation

▪ E.g. Spalding where the defendant sold a low quality football asserting it was the new product.

o Loss of an opportunity to exploit reputation

▪ E.g Irvine where the plaintiff missed a change to exploit his own fame

▪ Loss of license fee

▪ Loss of future endorsement (Henderson – loss of opportunity to place approval on other ballroom dancing records)

o Intention to Enter the Market

▪ E.g. ConAgra, this might be enough, but this is a UK case.

• (3) Damages and Remedy

If all can be established, then the plaintiff may seek remedies such as….

• Available Remedies:

o Interlocutory Injunction

▪ The plaintiff must show:

• Sufficient likelihood of success before trial to justify preservation of the existing status quo

• That there is a prima facie case on the merits.

o What is the balance on the merits – inconvenience to the jury v injury to the plaintiff if injunction refused. (Beecham v Bristol)

o Re-stated Beecham as the authority (ABC v O’Niel)

• That it is not too inconvenient:

o Stop selling non-recyclable bottles (Castlemaine Tooheys)

o Close and re-open (if they win) a restaurant (Hermescec v Carcagni)

▪ If successful but then fails at trial, the plaintiff has to undertake to pay the damages sustained by the defendant because of the interlocutory injunction.

o Damages

▪ You do need to show damages.

▪ Rules to Calculation:

• Damages calculate only rom the time that defendant was notified of the plaintiff’s rights

• Exemplary damages are available if defendant blatantly disregarded plaintiff’s rights. (Flamingo Park v Dolly Dolly)

▪ This can be calculated by:

• Where the loss consists of foregone profits, the plaintiff does not have to adduce precise evidence of what sales were lost but if damage can be inferred

compensation will be awarded

• Where passing off has the effect of diminishing the plaintiff’s reputation this loss should be reflected in an award

• Where the plaintiff has been denied an opportunity to charge for their sponsorship, a reasonable fee should be assessed

• Exemplary damages may also be awarded where there has been a particularly blatant disregard for the plaintiff’s rights

o Account of Profits

▪ This could be better than damages in some scenarios.

o Final Injunction

▪ You DO NOT need to show damage if you are seeking an injunction.

▪ The injunction should be specific as to what the defendant should do

• One way is to restrain the use of a particular article or advertisement or something substantially identical

• But this still leaves room to argue if the defendant is in contempt… but at least it provides some certainty

S

^CAFFOLD

: ACL C

^LAIM

Under the Australian Consumer Law (‘ACL’) <plaintiff> may be able to make a claim of deceptive or misleading conduct under s 18(1) as this statutory prohibition extends to signs that mislead consumers as to the origin of the <goods/S>.

s 18(1) = A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Similarities

• A s 18 ACL claim has some overlap with passing off. Both require:

o Establishing reputation/goodwill that would;

▪ BUT the standard of reputation is lower under the AC Hansen Beverage Co v Bickfords. The case of Woodtree Pty Ltd v Zheng even suggest that no reputation is required.

o Mislead a consumer at;

o The detriment of the plaintiff.

Differences

• An ACL claim can be brought by anyone.

• ACL is more concerned with consumer protection

• Damages are calculated for the entire period that the misleading conduct took place

Common law Passing off TPA / ACL

Standing – Who can bring the action

Only owner or co-owner of goodwill/reputation can sue

Action can be brought by anyone.

Goodwill & Concurrent use of the sign

Once a business has traded for long enough, it will be immune from an action for passing off:

Where two parties use the same mark an action under ACL may lie each way (i.e. each might be able to injunct the other)

2.1. H

ISTORICAL ORIGINS OF ACTIONS AGAINST THE MISUSE OF MARKS AND GET

-

UP

• There are 2 primary ways to protect a trade mark:

o (1) The Tort of Passing Off

▪ This tort does not require the plaintiff to have a registered trade mark

▪ Passing off looks to the elements of (Reckitt & Coleman Products v Borden):

• Goodwill/Reputation,

• Misrepresentation, and

• Damage

• But there is no element of fraud required

▪ The tort of passing off was first articulated in the case of Perry v Truefitt (1842) 49 ER 749

▪ Millington v Fox (1838) 40 ER 956 established some of the elements we see today, significantly that fraud if not a vital element.

o (2) The Trade Marks Act 1995 (Cth)

2.2. T

HE

M

ODERN

T

ORT OF

P

ASSING

O

FF 2.2.1. BASIC PRINCIPLES

• No trader may represent their goods or services as those of the plaintiff

o This may not be done by words, symbols, devices, getup or appearances or a combination

• Intention, or lack thereof is no excuse for passing off

• Generally, the remedy sought is an injunction, but because it is a creature of equity, a plaintiff may also seek something like an account of costs.

• The tort is based on a tripartite relationship: the plaintiff, defendant and customer 2.2.2. CASES

i.e. passing off tolerates some possible marketplace confusion where there has been coexistence and investment by both parties in the brand.

Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 6 FCR 289:

concerned two newspapers that started under the same name within a week of each other. Cross-injunctions were granted

How much Goodwill/Reputation is needed

Recognition among significant/substantial proportion of relevant public required.

Standard may be lower: (Hansen Beverage Co v Bickfords).

One case (which may or may not be correct) suggests that no reputation/distinctiveness is required under ACL: Woodtree Pty Ltd v Zheng

Ceased Trading / No Intention to Trade

No action in passing off: plaintiff needs to show they have a continuing reputation and an intention to recommence trade:

(Ballarat Products Ltd v Farmers Smallgoods)

Must be a continuing reputation (to support argument that conduct is misleading) but need not have an intention to start trading again: (Mark Foys Pty Ltd v TVSN)

Liability of third parties

Liability may arise from a person who is a

‘joint tortfeasor’. Whether this is the same as ACL tests depends on the breadth of the interpretation of joint tortfeasorship. Some cases talking about joint tortfeasorship are narrowly stated (in terms of a joint design to commit the relevant conduct). Others seem to be more broadly stated, eg ‘“so personally involved in the commission of the unlawful act that it is just that he should be rendered liable”.

ACL has extended liability: under s 232 you can get an injunction against a person who has aided, abetted, procured or induced a contravention, and against any person who has ‘been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention’.

And damages may be awarded against any person ‘involved in’ the contravention: s 236

Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354

Red Bull Case / Close enough in design / colour may be enough for passing off – look to the confusion of the customers ISSUE:

• Was it okay that different words were used?

HELD:

• Passing off was established

• Considerations:

o The colour and get up of the cans was most striking

o It would most likely be a quickly purchased in a supermarket shelf where there may be confusion o There was also evidence that suggested the

defendant was deliberate in copying

Reckitt & Coleman Products v Borden Inc [1990] RPC 341 at 343 (‘Jif’ case)

3. R EPUTATION OR G OODWILL

3.1. G

ENERALLY

• In order for there to be passing off, there must first be good will or reputation attached to the product

o It is the one thing which distinguishes an old-established business from a new business at its first start (Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901])

• Factors when determining goodwill:

o Time in market, promotion, sales network and volumes, geographical extent of the business, use of domain name, surveys etc

Lemons / Establishes test of Passing Off FACTS:

• See the image for comparisons

• The defendant said they would change their design but it’s pretty much the same again

HELD:

• The HOL established passing off

• Considerations:

o Different names will not necessarily escape passing off

SIGNIFICANCE:

• Fraud is not an essential element – it may be evidence though

• This case establishes the Test:

o Establish Goodwill or Reputation

▪ (1) Is there a reputation or good will?

▪ (2) Has the defendant done enough to distinguish its rival product from the original?

• Must be attached to the goods in question

• It can be anything such as the get-up, mark, name, features etc…

• Factors considered are: Volume of sales, advertising extent/expenditure, time trading, geographical extent, distinctiveness of ‘mark;

o Demonstrate misrepresentation

▪ There must be misrepresentation to the public/target audience

▪ It does not have to be intentional o Demonstrate damage

▪ It must be shown that the public has or will (in a quia timet injunction) suffer damage by reason of erroneous belief engendered by the D’s misrepresentation

AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273

Orb Balls / Pre-emptive suits / no need for fraud / no need for actual breach, it can be pre-emptive.

SUMMARY:

• A department store was selling old Spading footballs by representing them as the new Version 2 footballs

• This action was passing off

o The footballs were used as an instrument of deception SIGNIFICANCE:

• This case established in the House of Lards that the law of passing off was based on goodwill o “the business or goodwill likely to be injured by the misrepresentation”

o I.e. in this case there was a potential harm to the goodwill of the plaintiff.

• There does not have to be an actual breach – just an intention to o This case was heard before the footballs were actually sold

• Fraud is not a necessary element in equity nor in passing off

Cadbury-Schweppes Pty Ltd v The Pub Squash Co Pty Ltd [1981] RPC 429 SUMMARY:

• SOLO advertised themselves as "those great lemon squashes that pubs used to make"

• The defendant made a drink named ‘Pub Squash’

o They used similar marketing techniques, same sized and coloured cans and a similar medallion logo

• The NSWSC said that they were not similar enough and people would realise their mistake at the shops

• The Privy Council established that:

o Passing off did not need a name, sign, device etc… it could be any other indicia of the plaintiff’s business

▪ The tort has moved on from its limitations

• Still, there was no passing off established.

SIGNIFICANCE:

• The test applied by the PC:

o Whether the product has derived from the advertising a distinctive character which the market recognizes.

17. I NVENTORSHIP & O WNERSHIP

S

CAFFOLD

: I

NVENTORSHIP

& O

WNERSHIP Inventors

• An inventor is the person who performs the intellectual and practical work in the development of an invention (Stack v Davies Shepherd (2001))

o The contributions cannot be merely contributions of practice/perfection/repetition. Such actions would not even give rise to co-ownership

o But if undergrad solves a problem a post doc had not even thought about, then they may be considerd a co-inventior

• S 15 grants the patent for an invention to the (1)(a) inventor, (b) someone entitled to have the patent assigned (c) someone who derives title (d) legal representative of a deceased.

Co-Ownership

• Co-inventors hold rights as tenants in common and whole equal rights to the invention. (s 16(1)).

• Determining Co-Ownership (Kafataris v Davis):

o (1) Analyse the inventive concept of the claimed patent

▪ Apply an objective assessment of ∆’s contributions

o (2) Explore the contribution of the claimant and if these claimed contribution shad a material effect on the inventive content

▪ Consider:

▪ Was the addition more to the form or substantive?

• ❌In Kafataris v Davis idea that the system could be applied to black jack did not bring about a change to the invention

▪ Has the contribution beneficially affected the final concept of the claimed invention?

(Upham v Commissioner of Patents)

▪ Would final conception would have been less efficient without his contribution? (Ibid)

▪ Would the invention would have occurred without the claimant's involvement? (Ibid) Employee Inventions

• To determine if an employee is covered under s 15, ask:

o (1) Is there an express contract that binds the employee?

▪ Does the invention fall inside the scope of the contract?

▪ BUT the courts do not have to always enforce the clause (Electrolux v Hudson)

• The clause is that case was too broad. Hudson ran the warehouse and was not paid to invent.

• Courts are generally more supporting of the rights of the employer and will imply a condition if there is not one explicit in the contract, but this condition is

dependent and confined to the nature of the work of the employee.

o (2) Are the terms implied?

▪ By law? (University of Western Australia v Gray)

• The law here tends to favour the employer

▪ In fact?

o (3) Is there a fiduciary duty?

▪ Should the invention be held on trust for the employer?

• Requirements to show that the employer owns the invention (Sterling v Patchett):

o (1) The invention was made ‘within [the employee’s] duty to make o (2) ‘[The employee] holds his interest in the invention

o (3) Then the resulting patent will be held on trust for the employer

• Examples:

o Warehouse Manager owned his inventions, despite his contract claiming to own the inventions (Electrolux v Hudson)

o Salesman again not paid to invent: It was not the work that Collins had been employed to do. (Spencer Industries v Collins)

o Production engineer originally employed to make arms invented some home goods was deemed to be within the scope of employment. (Sterling v Patchett)

The University Context

In a University contexts, the primary question becomes if the employee has a contractual obligation to pursue invention.

This however becomes complicated when it comes to to academic researchers who research, administrative work, teaching etc…

• Question (University of Western Australia v Gray):

o (1) Can the employer show that the employment contract was of a type in which the employee was under an obligation to invent?

▪ If no > Electrolux type scenario where inventing falls out of scope of employment

▪ If yes > Continue below

o (2) Can the terms as agreed between the parties negate the implied term?

▪ The onus here is on the employee to negate that implied term

• Factors (University of Western Australia v Gray):

The Patent Act s 15 – Who may be granted a patent?

• (1) Subject to this Act, a patent for an invention may only be granted to a person who:

o (a) is the inventor; or

o (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

o (c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or o (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

• (2) A patent may be granted to a person whether or not he or she is an Australian citizen.

s 16 – Co‑ownership of patents

• (1) Subject to any agreement to the contrary, where there are 2 or more patentees:

o (a) each of them is entitled to an equal undivided share in the patent; and

o (b) each of them is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the others; and

o (c) none of them can grant a licence under the patent, or assign an interest in it, without the consent of the others.

• (2) Where a patented product, or a product of a patented method or process, is sold by any of 2 or more patentees, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the patentees.

• (3) This section does not affect the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships.

s 22A – Validity not affected by who patent is granted to

• A patent is not invalid merely because:

o (a) the patent, or a share in the patent, was granted to a person who was not entitled to it; or o (b) the patent, or a share in the patent, was not granted to a person who was entitled to it.

s 138 – Revocation of patents in other circumstances

• (3) A patent can be revoked if (a)that the patentee is not entitled to the patent;

17.1. W

HO IS THE

I

NVENTOR

• An inventor is the person who performs the intellectual and practical work in the development of an invention (Stack v Davies Shepherd (2001))

o s 15 PA grants exclusive rights to the inventor and allows them to exploit their property

▪ Exploit is defined in Sch 1 as including, the sale, hire etc…

• Scenarios:

o ∆’s contributions are merely contributions of practice/perfection/repetition – they will not be a co- inventor – there is no added material effect and no addition to the inventive concept.

▪ i.e. think about a post-doc working under a famed professor

▪ BUT if ∆ solves a problem that the professor could not solve or had no thought about, then

∆ may be considered to be a co-inventor as they have identified a problem and solution, and this will go towards the inventive concept.

o The obligations to research

▪ Distinguish the obligation to invent from the obligation to research. They are different.

o Academic freedom

▪ Would a duty to invent conflict with the obligation to publish and have collateral impact on academic practice.

▪ If a Sterling principle were applied, would have a collateral impact on future academic interests?

o Collaboration

o Public and Private relationships and interests Fiduciary Obligation

• Requirements (Victoria University of Technology v Wilson) if ALL are established there will be a breach of fiduciary duty:

o The presentation of opportunity to the employees through the university o The availability of the opportunity to the university

o The university nature of the project

o The taking of the opportunity by the employees

o The capacity of the university to take the opportunity itself

• Consider also that the higher up in the company you are the more likely you are to owe a fiduciary duty. This is because the more senior you, the more you are linked to the company and also you can do more damage.