Category: IP and Trade Practices

Implied terms in trade mark license upsets the apple cart

Trade marks – assignment and licence back – option to take assignment – whether variations agreed by conduct – implied terms – whether implied term that licence extends to replacement versions of licensed marks – whether implied term that marks be re-assigned if licence is breached – relevance of post-contractual conduct

This will hurt you more than me – validity of IV catheter patent upheld

Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In the proceeding B. Braun Melsungen AG v Multigate Medical Devices Pty Ltd [2014] FCA 1110, Pagone J held certain claims of two of B Braun’s patents for safety IV catheters valid and infringed by the conduct of Multigate. Both patents are for a safety needle protecting device for an intravenous catheter. Both claim the priority date of 12 June 1998 through the same chain of intermediate patents.

Discloser of confidential business plan almost misses out on the fruits of its labour

Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. Where confidential information about a plan for corporate recapitalisation was disclosed and there was a subsequent development by the recipient and completion of the transaction without further recourse to discloser, the issue at trial was whether elements of confidentiality made out and whether equitable compensation is payable.

ZIMA tomato trade mark far from rotten

Case note written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (19 September 2014) Justice Gordon has overturned a decision of the Registrar to reject the mark ZIMA in respect of tomatoes.

Trade mark owner successfully runs a claim for additional damages up the pole

Written by Peter Heerey AM, QC, Tom Cordiner & Alan Nash. In Vertical Leisure Limited & Anor v Skyrunner Pty Ltd & Anor [2014] FCCA 2033 (5 September 2014), the Federal Circuit Court has extended the record by awarding $300k in additional damages for infringement of Vertical Leisure’s X-POLE mark registered for pole-dancing poles. Vertical Leisure is the Australian and international market leader in respect of such products.