It has been held that only an owner of a trade mark at the time the application is made can apply for registration, and that an applicant for a trade mark which would otherwise be deceptively or confusingly similar because an existing registered trade mark has a reputation which is confined to one State, cannot avoid that consequence by disclaiming the right to use in that State
Category: IP and Trade Practices
Copyright – extension of ex parte freezing order – whether duty of candour requires applicant to identify potential bases to find an implied licence – whether freezing order should cover potential additional damages
Patents – amendment – application to amend – fair basis – whether “discrete, unitary disclosure” of combinations of features necessary United States Gypsum Company v CSR Building Products Ltd  FCA 595 The applicant...
Patents – amendment – application to amend to avoid inutility claims – applications limited to deletions of positive statements in the specification concerning the utility of the invention – exercise of discretion
Patents – extension of time to extend term – licences to exploit during period of extension of time application and beyond
H. Lundbeck A/S v Commissioner of Patents FCA 56
Patents – unjustified threats – damages – ultimate findings unsupported, and contradicted by, evidence at trial
Australian Mud Company Pty Ltd v Coretell Pty Ltd  FCAFC 44
Patents – innovation patents – divisional application – infringement – date from which a patentee is entitled to relief – whether from date of parent patent or date of grant of divisional patent
Coretell Pty Ltd v Australian Mud Company Pty Ltd  FCAFC 54
Trade marks – interlocutory injunction – whether serious question to be tried – whether actual non-monetary harm needs to be shown.
Trade marks – opposition – substantially identical – reputation – use of similar marks in different States – infringement – defences – good faith use of own name – revocation – inherent adaptability to distinguish.
Computer software – exclusive licence – construction – ambiguity in payment provisions – extrinsic evidence – commercial sensibility.
Trade marks – exclusive trade mark licence “in perpetuity” – 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 – admissibility of extrinsic material.
Patents – damages for unjustified threats – person aggrieved – calculation of damages.
Copyright – infringement of the Lord of the Rings “One Ring Inscription” – summary judgment.
Trade Marks – passing off – misleading or deceptive conduct – Pacific Ale – groundless threats.