7 min read

Caterpillar have successfully appealed a decision by the Registrar to dismiss their opposition to registration of Puma’s procat mark (as shown below) for goods in Classes 18 and 25.

O’Bryan J held that, having regard to fair and normal use of the procat mark outside Australia, Puma’s mark was deceptively similar to Caterpillar’s earlier registrations for both CAT (word) and associated CAT logo mark (as shown below) for goods in Classes 18 and 25.  Further, his Honour was also satisfied that due to the extent of Caterpillar’s reputation in Australia for the CAT and CAT Logo marks for goods in Classes 18 and 25, Puma’s use of the procat mark for such goods in Australia would be likely to cause confusion.

Background

In October 2016, Puma sought to register the mark procat in Australia for goods in Classes 18 and 25 including clothing, footwear, bags and other accessories.  Caterpillar subsequently opposed registration of this mark under ss42(b), 44 and 60 before the Registrar, but failed to establish any of the opposition grounds.

With respect to the s44 ground, Caterpillar argued the procat mark was too similar to a number of earlier registrations for both CAT and CAT Logo that are registered for goods in Classes 18 and 25.  However, the Registrar’s delegate concluded that due to the visual, phonetic and conceptual differences between these marks, Puma’s procat mark was not deceptively similar to either the CAT or CAT Logo mark.

With respect to the s60 ground, Caterpillar argued that due to the extent of their use and reputation in both the CAT and CAT Logo marks, Puma’s use of the procat mark for the claimed goods was likely to deceive or cause confusion.  While Puma conceded that Caterpillar’s CAT Logo mark had acquired a reputation in Australia at the priority date, the Registrar agreed with Puma’s submission that Caterpillar’s use of the CAT word mark was minimal and insufficient to establish that it had acquired the requisite reputation at the priority date. 

Further, the Registrar agreed with Puma’s submission that the reputation acquired by the CAT Logo mark would serve to reduce the likelihood of deception or confusion.  On this basis, the Registrar was not satisfied that because of the reputation acquired by the CAT logo, Puma’s use of the procat mark would be likely to deceive or cause confusion.

With respect to the s42(b) ground, Caterpillar argued that due to the extent of its reputation, Puma’s use of the procat mark would be contrary to the Australian Consumer Law.  However, given the Registrar’s conclusions under the s60 ground above, Caterpillar also failed to establish this ground of opposition.

Federal Court Appeal

Caterpillar appealed the Registrar’s decision to the Federal Court of Australia, seeking to rely on the same three grounds of opposition.  As such an appeal involves a de novo hearing, Caterpillar were able to provide additional evidence in support of these opposition grounds.

Section 44

Caterpillar again sought to rely on the use and registration of its earlier registrations for both CAT and CAT Logo for goods in Classes 18 and 25.  In response, Puma again submitted there are sufficient visual, phonetic and conceptual differences between procat and Caterpillar’s CAT and CAT Logo marks, such that these marks should not be regarded as deceptively similar.

While Puma are yet to commence using the procat mark in Australia, Caterpillar submitted evidence as to how Puma have used the procat mark in the United States and Canada.  Caterpillar submitted that such evidence was relevant to illustrate what would be fair and normal use of the mark by Puma, which is relevant to the assessment of deceptive similarity.   Caterpillar’s evidence showed that Puma used the procat mark in lower case with the letters “pro” and “cat” being rendered in different shades or colours as illustrated below.  Further, Puma’s online marketing of the relevant footwear referred to the brand as “ProCat” (using the upper case “P” and “C”).

O’Bryan J accepted Caterpillar’s submission that such use falls within the parameters of fair and normal use of the mark. His Honour also took the view that Puma’s use of the procat mark in Australia (in the same manner as used in the USA and Canada), would constitute a use with alterations which do not substantially affect the identity of the trade mark.

O’Bryan J concluded that the fact Puma applied to register the procat mark as a fancy mark (in lower case with sans-serif font) does not limit the trade mark rights granted upon registration to use with a single colour or shade of lettering or indeed to use without any letters being capitalised. 

His Honour did not place any material weight on the fact that Puma’s evidence suggested that it was common for at least some traders to use multiple trade marks or branding elements on and in connection with footwear. The evidence on this issue was not conclusive and, in any event, in assuming normal and fair use of the mark applied for, the use or possible use of other marks is ignored.  

On this basis, his Honour concluded that Puma’s procat mark was deceptively similar to Caterpillar’s CAT and CAT Logo marks on the combined effect of the following:

  • the word “cat” comprises the whole of the CAT word mark and one of the two elements of the CAT device mark. The word “cat” constitutes half the letters of the PROCAT mark and one of its two syllables;
  • an ordinary consumer is likely to read, comprehend and pronounce the PROCAT mark as a combination of two words, “pro” and “cat”;
  • the relevant trade context concerns a wide range of apparel, footwear, bags and accessories sold in retail stores and online in the workwear and lifestyle market segments. The evidence showed, and it is a matter of common experience, that goods of the type under consideration are common everyday purchases that are modestly priced and sold through overlapping trade channels.

As such, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with but had an imperfect recollection of the CAT mark, would be confused as to whether goods labelled with the PROCAT mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods. There is a real and not remote risk that the use of the word “pro” in conjunction with the word “cat” in the PROCAT mark, when used on apparel, footwear, bags and accessories, would convey to many consumers that goods branded with the PROCAT mark are professional or high performance goods which are made or endorsed by, or otherwise associated with, Caterpillar. As such, consumers would be caused to wonder whether there is commercial connection between PROCAT branded goods and Caterpillar”.

Section 60

Caterpillar also sought to establish that, due to the extent of its reputation in the CAT and CAT Logo marks in Australia for goods such as clothing, footwear, bags and other accessories, Puma’s use of the procat mark for such goods was likely to cause confusion.  In this regard, Caterpillar filed a number of affidavits by various brand managers, licencees and distributors who were responsible for the manufacture and distribution of goods bearing the CAT and CAT Logo marks.

Based on their lengthy use of the CAT and CAT Logo marks in Australia, O’Bryan J was satisfied that Caterpillar had a substantial and valuable reputation in Australia in each of the CAT marks in relation to apparel, footwear, bags and accessories.  While his Honour accepted that Caterpillar’s evidence shows far more frequent use of the CAT Logo mark (compared to the CAT word mark), he did not consider there to be any material difference in the extent of reputation associated with the CAT word and CAT Logo marks.

In contrast to the Registrar, his Honour did not accept Puma’s submission that the CAT marks had such a strong reputation in Australia (and Australian consumers had such familiarity with the CAT marks), that confusion with the PROCAT mark would be unlikely. While the evidence showed the CAT marks had a strong reputation in Australia at the priority date in respect of apparel, footwear, bags and accessories, his Honour took the view that the CAT marks could not be described as famous or very famous (in contrast to the findings made in respect of the brand “Maltesers”, the subject of the decisions in Mars1 and Delfi2).

On this basis, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with the reputation of the CAT marks but had an imperfect recollection of those marks, would be confused as to whether goods labelled with the procat mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods”.

Section 42(b)

Caterpillar also sought to oppose registration under s42(b), namely that Puma’s use of the procat mark would contravene ss18 and 29(1)(g) and (h) of the Australian Consumer Law.  As Caterpillar sought to rely on the same evidence and contentions advanced under the s60 (reputation) ground, O’Bryan held that Caterpillar’s reliance on s42(b) was superfluous.  In this regard, his Honour remarked that reliance on s42(b) (by reference to the Australian Consumer law) only has utility where the Appellant seeks to rely on additional evidence and contentions that are not relevant to the s60 analysis.  In the absence of such additional evidence or contentions, O’Bryan decided that it was unnecessary to consider this ground of opposition further.

Puma have now filed an appeal in relation to this matter.

1 – Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354

2 – Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; 115 IPR 82

Authored by Nathan Sinclair and Sean McManis

5 min read

How do you make a cup of tea?  Pot or cup…or mug? Loose leaves or a teabag?  Milk first or last?  Don’t worry, this article is not about any of that.

You take a cup (or a mug), grab a teabag, and carefully place the teabag bit inside the cup, and then dangle the tag bit over the rim of the cup.  So far, so good.

The kettle boils, and you lift it to pour water into the cup.  The water hits the teabag, and the velocity of the water imparts sufficient momentum to the teabag such that the string and tag are pulled into the cup, which is now half filled with boiling hot water.  You resort to fishing around for the tag, scalding your fingers (because it is always your fingers in that mad rush), and emitting a few words that will shame your family for generations.

It’s an age old problem, but what have people done to solve it?

I conducted a very limited search* for teabag-related patents in PatBase, and culled anything not related to this topic.  I finished with a set of about 50 patent families, from which I have determined these technology groups.

ObjectTechnologyExample
Cup or potCleats for tying off




Grooves or incisions

NL1002810
AU2011101068
CN105686558


KR200404017
KR20080010469
CN208439552
TagSticky tags




Big tags


Grooves or incisions



Magnets
US4153153
US20060045935
WO2016209316


US4875574


KR101022889
CN201929560
CN210708847

CN204324057
StringSemi rigidGB304115
OtherSeparate devices for holding the teabagUS5129524
DE10308740
DE202004018654
KR20110037156
KR101352223
US9902557
CN209142847

As with many things in life, it’s complicated.  Some of these technologies overlap, and I’ve had to make a decision as to which technology group some fall into.

Starting with technologies for cleats for tying off the string, I’ll focus on the more permanent types, as the last group, ‘Other’, is directed more to temporary or removable devices.

Here are three examples.  The first is a cleat head that can be attached to a cup or pot in any position with an adhesive or by suction, the second is a cleat head specifically for a handle, while the third is part of the handle design.

The next group, where there are grooves or incisions in the cup, appears to relate to paper cups, although there would be nothing to stop it being applied to a ceramic cup.  The three examples below range from a single incision in the rim of the cup, to a more sophisticated shaped groove combined with a cleat arrangement at the base, to a slit in the side of the cup where the tag can be slipped into and secured.

Moving to what is arguably the most popular method of solving the problem, we get to technologies involving sticky tags.  The idea is simple.  The tag has an adhesive or gum on one side, sometimes with a peelable cover, that allows the user to temporarily attach the tag to the outside of the cup, and provide sufficient counterforce to the poured water imparting momentum to the teabag.

It’s pretty self-explanatory but here are a couple of examples.

There is one notable example that is just that little bit different to the rest of this group.  It also falls into the first group to some degree as part of this solution is a permanent addition to the cup or pot, and that’s because it uses Velcro, with the hooks attached to the cup or pot and the loops attached to the tag.  It does the job it is designed to do but is perhaps not the most environmental solution in this group.  Here are a couple of images from the specification.

The next group also utilises a simple solution.  Why not just make the tag so big that there is no way it could ever fall into the cup?  Here it is, although admittedly it is part of a bigger idea to do with packaging and squeezing the wet teabag.

In addition to grooves and incisions in cups, we also find them in tags.  There are two types:  those with an incision within which the string can be secured after it has been wrapped around the handle, and those that have a larger groove that is wide enough to sit on the rim of the cup as a form of anchor.

The first example shown here is the closest to my preferred method where I slip the tag under the string to form a loose knot.

The last group in tag technology is the use of a pair of magnets, with one on the tag and the other on the teabag.  The idea is that the two magnets attract each other through the wall of the cup.  Again, this is not an environmentally sound solution.

The third part of the modern teabag triumvirate is the string, and this has not been forgotten in a solution to this problem.  The example here is also the earliest I have seen in patent literature, and dates to 1928.

I’m calling it semi-rigid string but it is an aluminium wire with a rudimentary teabag at one end and a tag at the other.  The wire is rigid enough to be able to swirl the bag in the hot water, but also malleable enough to bend to form a hook to hang over the rim of the cup.

The very last technology group I have found is a bit of a catch-all class, but these devices are all removable or independent of the whole cup-teabag relationship, and some of them are a little wacky.

If you have an interest in making a bucket of tea, or in craning your teabag into the cup, then these two are for you.

Next are a few devices that hang over the rim of the cup in some way.  Most are reusable but the third image shows a folded piece of card, and so would be recyclable after its usefulness has ended.

Lastly, there is this.

Not only does it hold the teabag and prevent the tag falling into the cup, but you can also wind it up and set it loose around the rim of your cup and swirl the teabag in the hot water at the same time.

There is one further teabag I found.  It doesn’t fit into the theme of this article but it demands to be mentioned.  It looks simple enough, and this image gives it no justice.

The innovation here relates to making the tag fluorescent, and the reasoning behind it is that a person might want to make a cup of tea at night, and in an effort to save energy, they don’t need to turn on the light to find a teabag.  No mention is made of the energy required to heat the water for said cup of tea, nor of a fluorescent teapot.

That ends our journey through the world of teabags.  I hope you have found a useful way of preventing wet teabag tags and scalded fingers.

* (TAC=(teabag*, ((tea, coffee) w1 bag*)) OR IC=(b65d85/808, b65d85/812)) AND TAC=(cup, mug, tumbler) AND TAC=(label, tag, string)

Authored by Frazer McLennan and Paul Harrison

4 min read

A design application by Aristocrat Technologies Australia Pty Limited (Aristocrat) for a bank of gaming machines has been refused because the representations were inconsistent with the product name for the design.  The decision shows that products made of assembled components must be carefully illustrated or run the risk of refusal.

Key takeaways

  • Components of products must be shown connected together in assembled form to be registered as a single product
  • Expert evidence may be of little use during prosecution of design applications
  • Arguments in favour of registration of a design based on previous registrations of similar designs are unlikely to succeed

Background

Aristocrat filed design application AU 201816709 for a “bank of gaming machines” (the Design) in relation to four gaming machines arranged in pairs back to back, as shown below.

During formalities examination, the Design was objected to for not showing the named product – a bank of gaming machines – in a “fully assembled” state because the gaming machines were spaced apart from each other in the representations.  For this reason, the Design was not in relation to a single product, but four separate gaming machines.

Aristocrat unsuccessfully argued that there was a single product – the “bank” of gaming machines.  As the objection was maintained, Aristocrat sought a hearing before a Delegate of the Registrar of Designs (the Delegate) to overcome the formalities objection.

Arguments

Aristocrat submitted evidence from a long time employee, Mr Attwood, asserting that it was common to install and replace gaming machines in groups or “banks”.  The representations illustrated this type of bank.

Aristocrat further submitted that the bank was a “complex product” under the Designs Act 2013 (the Act), which enabled designs for separately made components of a complex product to be registered. In this case, the individual gaming machines were separately made components of the bank, being a “complex product” and so were registrable.

Aristocrat also submitted that the bank could be a “kit”, which may be assembled by an end user.  The Act permitted the registration of designs for kits.

Aristocrat further submitted that the Designs Office had previously registered designs for banks of gaming machines.  Accordingly, the Design should also be registered for consistency in decision making by the Designs Office.

Decision

The Delegate cast doubt on the usefulness of the Attwood’s evidence.  Formalities examination did not require any consideration of an informed user, as represented by Mr Attwood.  Also, Mr Attwood was not independent, being an employee of Aristocrat. 

The Delegate then considered the definitions in the Act for the terms “product”, “complex product” and “kit”. 

The Delegate noted that the definition of “complex product” states that it must be capable of disassembly and re-assembly.  This implied that a complex product must be an assembly of its component parts.  Based on the ordinary meaning of “assembly”, the Delegate held that there must be some physical connection between the component parts. 

However, in the Design, none of the gaming machines were physically connected.  Accordingly, the bank of gaming machines was not in an assembled form and so did not show a complex product.

Aristocrat conceded that the gaming machines were not physically connected in the bank.  Aristocrat argued that they were in fact connected by electronic connections hidden from view and thus were not shown in the representations. 

The Delegate rejected that this argument as it assumed that a complex product was shown in the representations when this was not the case. 

The Delegate also rejected that the hidden connections should be read into the representations.  Such an approach was speculative as there was not any detail of those connections and it would render the scope of the design registration unclear.

The Delegate further rejected that the Design could be a registrable kit.  The definition of “kit” was qualified by the requirement that it is only taken to be a product “when assembled”.  Since the Design did not show the bank of gaming machines as assembled, the Design failed to meet this definition.

Finally, the Delegate agreed that there should be consistency in decisions made by the Designs Office, but said that each design application must be considered on its own merits.  The existence of similar registrations does not override the correct application of the Act and there was a small sample of prior registrations cited by Aristocrat.

Accordingly, the Delegate found that the representations did not illustrate a single product, being a bank of gaming machines.  Instead the Design showed four separate gaming machines and thus multiple designs.  Consequently, the Delegate refused to register the Design because Aristocrat had the opportunity to pay the extra official fees for the additional designs but chose not to do so.

Significance

The decision illustrates that care must be taken when preparing representations for a design that it shows a “product” within the definitions of the Act.  In this instance, the apparent lack of connections between the gaming machines was fatal to the registration of the Design.

The decision also illustrates that expert evidence may be of little assistance during formalities examination.  Also, arguments in favour of registration based on previously registered designs have little persuasive merit and are unlikely to succeed.

Authored by Andrew Lowe and Allira Hudson-Gofers

1 min read

Following on from our article of 4 September 2020, Australian Designs – Draft Bill now released, we advise that the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (the Bill) was recently passed by both houses of Parliament and will soon be presented to the Governor General for Royal Assent.

On the day after Royal Assent, the amendments set out in Schedule 7, Parts 1 and 2 of the Bill will commence. These items relate to changes to clarify the legal standard used for the assessment of design infringement and registration, and the circumstances in which a design can be revoked. Their immediate commencement will realise the benefits of these changes as soon as possible.

The rest of the Bill, including the introduction of a long-awaited grace period (Schedule 1, Part 1 of the Bill), will commence 6 months after the date of Royal Assent.

Further information about the changes, including the commencement details, is available on the IP Australia website.

Authored by Allira Hudson-Gofers

3 min read

I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here, and the second article on patent expiries can be found here.

This third, and final, instalment takes a closer look at how to read kind codes.

Kind Codes

If you’ve ever looked at a patent specification you’ve seen a kind code.  They are the As, Bs and Cs, usually with a number, tacked on to the end of a patent number.

Kind codes have meaning.  They tell you what significant events have occurred in the lifecycle of a patent.  Those significant events range from being filed to grant to amendment, and can also tell you what type of application you are looking at.  In Part 2 of this series on patent expiries, we considered the shorter patent terms for utility model applications.  Kind codes will tell you if you have one.

In Australia, there are kind codes starting with A, B and C.  Standard applications such as convention completes or national phase entries get the kind code A1 with their first publication, and B1 when they are granted.  If they are amended post-grant, they get the kind code C1.  Corrections to bibliographic data get A8/B8/C8 kind codes when the corrected specification is published.

The utility model/innovation patent applications get A4 or B4, and even C4 if corrected during its short lifespan.

The United States has a set of similar looking kind codes but they don’t mean exactly the same things.  Published applications get A1, or A9 if corrected, but the granted patents get B1 if there was no A1 published (first published on 15 March 2001), and B2 if there is an A1 published.

Other United States kind codes include a C for a re-examined patent, and E for a re-issued patent.

Patent Cooperation Treaty, or PCT, applications don’t get granted so we generally just see a range of “A” kind codes.  There is A1 when the specification is published with a search report, A2 when it isn’t, and A3 when they do eventually publish the search report.

Other letters used often in kind codes are U or Y for utility model patents, and T for translations of foreign language specifications.  Sometimes, in the spirit of the Zeroth Law of Thermodynamics, where an extra, more fundamental law was determined after the other three laws, provisional applications are given an A0 kind code, because they are the initial application upon which the rest of the patent family arises.

Each country has its own set of kind codes, some with just a couple to indicate filing and grant, and many more with an extensive array, especially where they have utility model applications and working in a number of languages.  There are many lists available online, some for specific countries if that’s all you need, but this list from Clarivate is a nice summary of kind codes around the world.

To tie this series together, while you’re searching, you can use kind codes on the fly to see where a patent is up to, the patent expiry date to see if it could be alive, and the status to determine if it is truly dead or alive.

Authored by Frazer McLennan and Gareth Dixon, PhD

7 min read

In the recent decision of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (29 July 2021), the Full Federal Court confirmed that a trade mark owner who merely authorises use of its trade mark cannot be subject to liability for direct for trade mark infringement pursuant to s120(1) of the Trade Marks Act.

In the first instance decision, found here, PDP failed in its claims against Grasshopper for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law and for passing off. Both parties failed in their attempt to cancel the other parties’ trade marks but succeeded in having them restricted.

Background

PDP has manufactured and sold a range of chilled dairy desserts and snacks in Australia under the Wicked Sister brand since 2008.

PDP owns registrations for WICKED SISTER in plain word and stylised forms which cover various goods in classes 29 and 30 (collectively “the Wicked Sister Marks”). The earlier stylised mark

dates from 2008 and is owned by PDP Fine Foods Pty Ltd. The later stylised mark

and plain word mark WICKED SISTER both date from 2016 and are owned by PDP Capital Pty Ltd, a related IP holding company. PDP Capital’s marks achieved registration by consent from PDP Fine Foods.

Grasshopper is an IP holding company which has authorised the use by various entities selling dipping sauces since 2002 under the WICKED brand.

Grasshopper owns a registration dating from 2005 for the trade mark:

(“Wicked Tail Mark”) in class 30 for dipping sauces and related products. The WICKED Tail Mark was modified in 2014 to:

(“New Wicked Mark”) for which Grasshopper applied for registration in 2015 with the original branding phased out by early 2016. Grasshopper extended its product range to include waffle dippers in 2018.

Both the Wicked Sister and Wicked products are sold through Coles supermarkets.

PDP sells flavoured rice puddings, custard, tiramisu and panna cotta under the Wicked Sister Marks, made from fresh ingredients and found in the refrigerated section of the dairy aisle of supermarkets.

On the other hand, Grasshopper’s “Wicked” dipping sauces and waffle dippers are shelf stable products which do not require refrigeration, although the dipping sauces are sometimes placed with frozen berries in the refrigerated section of the fresh food section of the supermarket.

Appeal

The Full Court considered grounds of appeal relating to infringement, the parties’ respective removal claims and the ACL and passing off.

Infringement

Whether the Party Authorising use of the Trade Mark is liable for Infringement

Grasshopper authorised use of the Wicked Trade Marks to other companies but was not found to be liable for direct infringement under s120(1). The Full Court confirmed the primary judge’s finding.

The Court noted that under the wording of s120(1) it is the act of “the person” that attracts a finding of infringement. The language does not suggest use by one person will constitute an infringement by another person. Not every reference to the use of a trade mark in the Trade Marks Act is intended to import the definition of “authorised use” by an “authorised user” under s7(3).

An alleged infringer, who has not engaged in a primary act of infringement within s120, may nonetheless be found to infringe as a joint tortfeasor (referring to Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235). However, PDP did not allege joint tortfeasorship in this case.

Deceptive Similarity

PDP contended that the primary judge made a number of errors in her reasoning in finding that the New Wicked Mark and Wicked Sister Marks were not deceptively similar.

Most were dismissed; however, their Honours acknowledged that the essential comparison in an infringement suit remains one between the marks involved and that it was not appropriate for the primary judge to descend into fine detail about the actual uses of the Wicked Sister Marks. Despite this, the Court noted that trade circumstances is a relevant consideration and were not prepared to overturn the primary judge’s findings in relation to deceptive similarity or infringement.

PDP’s removal claim

At trial, in response to PDP’s challenge to the registration of Grasshopper’s “Wicked Tail Mark” for non-use, the primary judge found use only in respect of “dips, including chocolate dips”, but exercised discretion to maintain the registration for all listed goods with the exception of “savoury dips”.

PDP contended that the primary judge erred in finding that there had been use of the Wicked Tail Mark in relation to “dips, including chocolate dips” and in the exercise of discretion.

Grasshopper transitioned from use of the Wicked Tail Mark to the New Wicked Mark between 2014 and 2016. Apart from finding use of the Wicked Tail Mark in respect of “dips, including chocolate dips”, her Honour also found that Grasshopper had established an intention to use the Wicked Tail Mark in the future in relation to chocolate rocky road, fruit flavoured toppings and sauces as well as the balance of categories of goods.

On appeal, Grasshopper acknowledged that the primary judge erred in referring to a future intention to use the “Wicked Tail Mark”, and that this should have been a reference to the “New Wicked Mark”. However, the Court found that the primary judge did intend to refer to the Wicked Tail Mark in her assessment of the facts and stated, “within the welter of overlapping issues advanced by the parties, her Honour made an error”. The Court re-exercised the discretion and ordered that all goods except for “dips, including chocolate dips but excluding savoury dips” be removed from the registration for the Wicked Tail Mark.

Grasshopper’s removal claims

Grasshopper applied for removal of the Wicked Sister Marks under the s92(4)(a) ground of lack of intention to use and no use as at the filing date. The primary judge found that Grasshopper had established grounds for removal of the marks for bakery products, confectionery, ice cream confections, dipping sauces and various yoghurt products, but exercised discretion not to remove the marks for the remaining goods. However, the registration for “dessert sauces” should be replaced with “custard”.

PDP contended that the primary judge erred in finding that PDP Capital had no intention as at the filing date to use the Wicked Sister marks on the remaining goods, placing insufficient weight on PDP’s 2018 Strategic Plan.

The Court agreed with the primary judge’s finding that the 2018 Strategic Plan spoke only in general terms about future plans that amounted to no more than raising a speculative possibility of an intention to expand into different product areas.

PDP argued that use on “tiramisu”, which was sufficient to maintain a claim for “cakes”, should also have been sufficient to establish use in relation to “bakery products”. The Court noted that this proposition was not put to the trial judge and reminded that an appeal is not a forum for a party to retry a case. This aside, the Court said that it does not follow from a finding that “tiramisu” falls within the category of a “cake” that it also falls within the category of a “bakery product”. Similarly, PDP failed to establish that use in relation to “profiteroles” was use for “bakery products” given, in particular, that PDP itself referred to these products as “chilled desserts”.

PDP also contended that “dessert sauces” were not relevantly different to “dipping sauces”. Again, while this contention was not asserted at trial, their Honours said that use of a trade mark on “custard”, which was found to be sufficient to establish use for a claim of “dessert sauces” is not sufficient to establish a claim for use on “dipping sauces”.

Accordingly, PDP’s appeal in relation to Grasshopper’s removal claims were dismissed.

ACL and passing off

The primary judge rejected PDP’s claims that Grasshopper’s conduct in selling its dipping sauces and waffle dippers under the New Wicked Mark was misleading and deceptive in contravention of ss18 and 29 of the Australian Consumer Law, or amounted to passing off. This was due to her findings that the Wicked Marks and Wicked Sister Marks were not sufficiently similar and that PDP did not have an established reputation in the Wicked Sister Marks as at 2014 when use of the New Wicked Mark commenced.

PDP were critical of the primary judge’s treatment of their evidence going to reputation and for taking into account the reputation of Grasshopper to find that there was no real likelihood of confusion or deception. The Full Court was not satisfied that PDP had established any errors made by the primary judge in her assessment of the issues and the appeals were dismissed.

Takeaway

The case reaffirms that there is no statutory liability for infringement by authorisation, with the result that an IP holding company that merely authorises use of a mark cannot be subject to liability for direct infringement. However, it may be liable as a joint tortfeasor.

Authored by Kathy Mytton and Sean McManis

7 min read

Australia’s Federal Court Decision, Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2021] FCA 947, concerns a patent claiming two pharmaceutical substances having different first regulatory approval dates; one less than 5 years after the patent filing date and one more than 5 years after the patent filing date.  The decision considers whether the first regulatory approval more than 5 years after the filing date can be considered the first approval for PTE-eligibility purposes. 

Patent Term Extensions (PTEs) in Australia

Australia’s Patents Act provides patent term extensions (PTEs) to account for the delays that can occur when obtaining regulatory approval for pharmaceuticals (see s70-79A of Patents Act 1990).  A PTE can last for up to five years and is available when the following requirements are met:

  • the patent, in substance, discloses and claims a pharmaceutical substance per se, or a pharmaceutical substance when produced by recombinant DNA technology;
  • goods containing or consisting of the pharmaceutical substance are included in the Australian Register of Therapeutic Goods (ARTG);
  • the PTE application is made within six months after the later of (a) the date the patent was granted and (b) date of the first inclusion in the ARTG; and
  • the first regulatory approval for the pharmaceutical substance occurred more than five years after the filing date of the patent.

The length of a PTE is equal to the period between the filing date of the patent and the date of the first regulatory approval, reduced by five years.  A patent cannot be extended more than once.

Background

Merck Sharp & Dohme Corp. v Sandoz Pty Ltd [2021] FCA 947 concerns the patent term extension granted in connection with Australian patent 2002320303, which covers two pharmaceutical substances for the treatment of diabetes: sitagliptin and a composition containing sitagliptin and metformin.  The patent was filed on 5 July 2002 and its ordinary term was therefore set to expire on 5 July 2022

Sitagliptin was first included in the ARTG on 16 November 2006, i.e. less than five years after the filing date. 

The composition containing sitagliptin and metformin, however, was first included in the ARTG on 27 November 2008, six years, four months and 22 days after the filing date of the patent.  The patentee, Merck Sharp Dohme (MSD), applied for a PTE based on the regulatory approval of the sitagliptin/metformin composition and the term of the patent was extended until 27 November 2023

Sandoz contended that the extension of term was invalid and sought rectification of the register to reflect a patent expiry date of 5 July 2022

Reliance on the Ono decision

This decision relies heavily on the recent decision, Ono Pharmaceutical Co, Ltd v Commissioner of Patents [2021] FCA 643.

As recently reported here. Ono addressed the issue of “earliest first regulatory approval” in the context of a patent covering two blockbuster cancer drugs; the patentee’s drug and a competitor’s drug.  The competitor’s drug received regulatory approval before the patentee’s drug and the issue was therefore which regulatory approval date was relevant for deciding the patentee’s PTE request.

In Ono, Justice Beach noted that PTEs are intended to provide an effective patent life for pharmaceutical products.  His Honour reasoned that the drug which is the subject of the PTE application is intended to be the drug of the patentee, not that of a third party.  His Honour also commented that it is for the patentee to nominate the pharmaceutical substance for the purposes of requesting a PTE (which can be any pharmaceutical substance that is in substance disclosed and claimed in the patent). 

Justice Beach concluded that the patentee’s own first regulatory approval (rather than the competitor’s earlier first regulatory approval) could form the basis of the request. 

The “earliest first regulatory approval date”

In the present case, MSD argued that “the earliest first regulatory approval date” means either:

(a) the earliest first regulatory approval date of any substance claimed by the patent which is included on the ARTG and which received regulatory approval at least 5 years after the patent’s filing date (MSD’s primary construction), as nominated by the patentee (based on Ono), or

(b) the earliest first regulatory approval date of all substances claimed by the patent which are included on the ARTG and which received regulatory approval at least 5 years after the patent’s filing date (MSD’s alternative construction).

That is, MSD’s construction required any regulatory approvals for pharmaceutical substances less than 5 years after the patent filing date to be disregarded for the purpose of assessing PTE eligibility. 

If MSD’s construction were to be followed, the ARTG approval of sitagliptin could be ignored (being less than 5 years after the patent’s filing date) and PTE eligibility could be determined based on the date of inclusion in the ARTG of the combination of sitagliptin and metformin (i.e. the first regulatory approval which is at least 5 years after the patent’s filing date). 

Sandoz contended that “the earliest first regulatory approval date” means the earliest regulatory approval date of any pharmaceutical substance in the patent – this corresponds to the date of inclusion in the ARTG of sitagliptin.  Following this line of argument, if regulatory approval is secured for any pharmaceutical product claimed by the patent less than 5 years after the patent filing date, no patent term extension can be obtained. 

Reasoning and discussion

MSD submitted that all of the factors which Beach J considered relevant in Ono are equally relevant to the present case. Justice Jagot disagreed. 

Her Honour took the view that the absurdity identified in Ono was the fact that a patentee could be granted an extension of term of zero merely because the earliest first regulatory approval date would be that of an unrelated company relating to the same substance.  In the present case, however, it was the patentee who had obtained regulatory approval for both substances covered by the patent.

Her Honour noted:

It is one thing to conclude that it is absurd for a patentee to be denied any term of an extension due to an earlier regulatory approval by another unrelated party of which the patentee may not have known and over which the patentee would have had no control. … It is another to conclude that it would be absurd for a patentee to be denied any term of an extension due to an earlier regulatory approval by the patentee or its agent of which the patentee must have known and over which the patentee had control. In such a case, the patentee, by definition, will not have been delayed in obtaining regulatory approval for a substance or the substance in its patent for at least five years.” 

Justice Jagot also commented on the crucial presence of the word “earliest” in s77(1) of Patents Act 1990, which sets out how to calculate of an extension of term. 

Her Honour was of the opinion that it is clear that the legislature considered a delay of less than five years after a patent filing date for obtaining regulatory approval for a pharmaceutical substance covered by the patent was acceptable and did not require a capacity for an extension of term of the patent, commenting:

There is no reason to infer that the legislature intended that a patentee with a patent disclosing and claiming more than one pharmaceutical substance intended that there could be an extension of term if the patentee obtained inclusion of one or more pharmaceutical substances in the ARTG within five years of the date of the patent but then also obtained inclusion of one or more pharmaceutical substances in the ARTG five years or more after the date of the patent. Provided one pharmaceutical substance has been included in the ARTG within five years of the date of the patent, the patentee has had the benefit of the monopoly afforded by s 13 of the Patents Act within the period of delay the legislature considered acceptable.”

Conclusion

Justice Jagot agreed with Sandoz, taking the view that the regulatory approval date of sitagliptin (less than 5 years after the patent filing date) was to be used in calculating the length of the PTE.  Her Honour thus concluded that the extension of term of MSD’s patent is zero and ordered that the Register be rectified as sought by Sandoz.

Implications

This decision confirms that, if a patent covers more than one pharmaceutical substance for which the patentee has obtained regulatory approval, the calculation of the extension of term must be based on the substance that was approved first.  If the approval date of that substance is within five years of the filing date of the patent, no extension of term will be granted.

Patent Applicants should therefore consider separating substances that have received (or are expected to receive) regulatory approval into multiple patents, for example by pursuing each substance in its own divisional patent application.  This will ensure that each patent is able to enjoy the maximum extension of term that is available to it based on the substance that it covers.

Authored by Serena White, DPhil and Michael Christie, PhD

2 min read

Bega Cheese Limited v Vincenzo Fasanella [2021] ATMO 49 (10 June 2021)

Successful opposition by Bega Cheese Limited to the registration of BUTTERMITE filed in the name of Vincenzo Fasanella.

Background

Vincenzo Fasanella (Fasanella) filed an application for BUTTERMITE on 27 February 2018 for the following goods:

Class 29: Dairy spreads; Food spreads consisting principally of dairy products; Butter; Butter portions; Butter preparations; Savoury butters

Bega Cheese Limited (Bega) is an Australian food company, which has been established for almost 120 years. Bega acquired most of Mondelez International Inc’s grocery business in Australia and New Zealand in January 2017, including the VEGEMITE brand.

Bega owns various trade mark registrations for VEGEMITE and VEGEMITE composite marks in Australia, covering a broad range of goods and services.

Grounds of Opposition

Section 60 – Reputation

The VEGEMITE trade mark is an iconic and well-known brand. It has been used in Australia since 1923 in relation to a yeast spread product. Over 22 million jars of VEGEMITE brand yeast spread are sold every year

Bega submitted a substantial amount of evidence of the VEGEMITE trade mark being extensively advertised and promoted through a wide variety of channels, some of which is listed below:

  • Substantial revenue and marketing figures.
  • 1954 radio advertising jingle ‘Happy Little Vegemites’. In 1956 the jingle was developed into a television campaign, which was broadcast until the late 1960s.
  • In the 1980s and 2010 The ‘Happy Little Vegemites’ commercials were remastered, colourised and rebroadcast.
  • Advertisements from supermarket retailers including Coles, Woolworths, Metcash and Foodworks.
  • Screenshots from the vegemite.com.au website, including historical extracts.
  • Social Media Accounts – Facebook, Instagram and Twitter.
  • Agreements with Peter Alexander Sleepwear Pty Ltd, Bambis Imports Co Pty Ltd, The Lane & Co, and various food manufacturers including Arnott’s Biscuits, ABE’s Bagels and Four ‘N Twenty.
  • Men at Work song ‘Land Down Under’ – ‘he just smiled and gave me a Vegemite sandwich’.
  • Sponsorship of events.
  • Use and licensing of the suffixes MITE and MITEY to promote/and or indicate products that include the VEGEMITE food spread as an ingredient. Since 1994, Bakers Delight has offered a CHEESYMITE SCROLL with the VEGEMITE spread as an ingredient.
  • Addition of VEGEMITE BLEND 17 and VEGEMITE CHEESYBITE to its range.
  • Reference to BUTTERMITE in the context of the VEGEMITE yeast spread on its Facebook page. The post promoted a fictitious VEGEMITE & BUTTER combination spread, because its VEGEMITE yeast spread product has a strong association with butter.

Fasanella’s evidence included argument that the suffix MITE is used by other food producers of yeast spread (e.g. Marmite; Aussiemite; MightyMite; and Ozemite). However, the Delegate has indicated that Bega’s tendency to play around with the brand using the suffix MITE, as in its use in CHEESYMITE SCROLL and MITEY recipes that sets the VEGEMITE mark apart.

Fasanella included evidence that the MITE suffix is also used by bakery chains and food distributors (i.e. Baker’s Delight’s CHEESYMITE SCROLL; Brumby’s CHEDDARMITE; and Melbourne Food Distributors TASTYMITE product). However, these products include Bega’s VEGEMITE yeast spread as an ingredient.

Decision

The Delegate was satisfied that Bega’s VEGEMITE trade mark had a very substantial reputation in relation to food spreads. Further, she was satisfied that members of the public are also likely to conclude that the BUTTERMITE trade mark is used by, or under the auspices of Bega.

In coming to this conclusion, it was significant that -MITE branding has been used to identify a range of products that contain VEGEMITE as an ingredient, and that VEGEMITE and butter are both spreads that are commonly combined and used in a similar manner.

Consequently, the s60 ground of opposition was successful and costs were awarded against Fasanella.

The additional grounds of opposition, namely sections 42(b), 44 and 62A were not considered.

Final Comment

Fasanella also filed an additional trade mark for the composite mark BUTTERMITE & Device (representation below) for the same goods in class 29 as its BUTTERMITE word mark.

This trade mark was also opposed by Bega, however, a Notice of Intention to Defend was not filed by Fasanella  and the application subsequently lapsed.

Authored by Danielle Spath and Sean McManis

4 min read

FemTech is surging around the world with new start-ups and technology entering the marketplace every day, but what’s going on Down Under?

Need for FemTech

As of June 2019, just over half of Australia’s population faced complicated genetic, physiological and hormonal factors making them prone to and more severely affected by certain conditions in comparison to the other half of the population.

Conditions such as heart diseases, osteoarthritis, cancers, strokes and autoimmune diseases present in women differently and pose considerable health risks. 

While FemTech is rapidly growing in Australia, increased health technology options are still needed to support Australian women. This has become even more apparent during the pandemic where existing inequalities in healthcare for women have been laid bare. 

Research is currently well placed in Australia with the Australian Government announcing they will be investing $354 million over the next four years to support the health and wellbeing of Australia’s women, including funding for cervical and breast cancer, endometriosis and reproductive health.

Current market snapshot

FemTech in Australia is still relatively new and unchartered territory. No official study has been conducted about Australian FemTech companies, however, the rise of new FemTech companies and products is undeniably on an upward trajectory.

The Women’s Health Summit 2021 hosted by the Royal Australian and New Zealand College of Obstetricians and Gynaecologists highlighted issues and deficiencies in the Australian healthcare system about health equity for women; access to mental health, contraception, abortion, sexual health and reproductive services; preventative approaches to chronic diseases; and areas in the medical industry where data about women lack.

Australian companies

FemTech typically spans across medical devices, digital health applications and direct to consumer products. Even though medical related digital health applications have only entered the market within the last decade, they are fast becoming the front runner for providing women with access to crucial information about medical conditions, including their diagnosis, treatment and management. Their popularity, which has reached new heights, is primarily due to their accessibility and ease of use.

The following Australian companies have redesigned, reinvented and recycled technology to benefit the health of women:

Menstrual pain

Transcutaneous electrical nerve stimulators (TENS) have typically been used for musculoskeletal pain, such as chronic back pain or knee joint arthritis.

Ovira, a female owned start-up had other ideas for TENS and have developed a non-invasive and instant period pain relief through their device, Noha. The Noha device sends low-level pulses of electric vibrations to the abdomen to block pain signals from being sent to the brain.

Menstruation

Since their conception, menstrual products have made their way from rags to riches. Starting off from cloth, bandages, cotton and wool in the 1800’s to disposable pads, winged pads, and tampons in the 1900’s, menstrual products have come a long way.

Modibodi, are at the forefront of menstrual technology and provide reusable and sustainable leak-proof period apparel that replaces the need for disposable products such as panty liners, tampons, pads, and incontinence products.

Juju, a socially responsible and environmentally conscious company manufactures Australia’s only made menstrual cup.

Payment solutions for the adult industry

Businesses and workers operating in the sex industry find themselves facing discrimination and often struggle to get finance or financial services.

Intimate.io, a blockchain startup, has taken this issue into their own hands. Intiamte.io is focused on solving issues inherent in the adult industry by establishing a cryptocurrency to operate as a digital payment option for adult or sexual products, services or offerings.

Fertility solutions

Despite major technological advancements in IVF, the success rates of IVF still remain very low.

Life Whisperer, an AI focused company, has been using AI to increase the chance of pregnancy through IVF by identifying morphological features that constitute a healthy embryo.

Future of FemTech Down Under

With women comprising over 50% of the population, these emerging companies have a huge opportunity to improve the health and wellbeing of millions of Australians. We expect the Australian FemTech market to continue to grow with local start-ups and from the expansion of international FemTech companies.

It is encouraging to observe the recognition by the Australian Government of the need for better understanding of pressing health challenges faced by women and the injection of money into the women’s health sector to combat some of the challenges.

Companies like Ovira, Modibodi, Juju, Intimate.io and Life Whisperer continue to break boundaries and use technology to find solutions to age old women’s health issues.

Shelston IP are proud supporters of FemTech, assisting FemTech businesses to protect their innovative new products and develop and implement intellectual property strategies to achieve a sustainable competitive advantage.

Authored by Connie Land and Allira Hudson-Gofers

5 min read

The Australian Patent system is relatively forgiving in terms of missed deadlines.  The Patents Act provides extensions of time for complying with most deadlines, provided that a genuine error or extenuating circumstances can be demonstrated.  The extensions are at the discretion of IP Australia, which is generally pragmatic in their acceptance of the fact that mistakes do happen.

However, there are a small number of deadlines that are specifically excluded from the general extension of time provisions.  Perhaps most significantly, the general extension of time provisions exclude the  deadline for filing evidence during patent oppositions.  Rather, in order to extend an evidentiary period in an opposition, the party seeking the extension must be able to demonstrate that either a) they made all reasonable efforts to comply with all relevant filing requirements, and have been unable to file their evidence despite acting promptly and diligently to ensure it is filed in time; or b) there are exceptional circumstances that warrant the extension.

In general, requests for extensions falling under the “despite all reasonable efforts” limb of the test receive little sympathy from the IP Australia if they consider there has been any unexplained delay at any stage during the evidentiary process.  A delay in identifying or engaging an expert or settling the expert evidence are likely to fail the test for appropriate diligence.

Most Australian attorneys engaged in opposition work find themselves in the squeeze between IP Australia, who appear determined that the parties must complete their evidence in the minimum allotted time, and independent expert witnesses who have multiple competing priorities for their time.

The “exceptional circumstances” test requires a) a Court order or direction from the Commissioner to stay the proceedings, b) an error or omission by the Commissioner that prevents a party from filing the evidence or c) a circumstance beyond the control of a party that prevents them from filing evidence.

Previous decisions by the Commissioner have ruled that unavailability of experts due to leave, work commitments, personal commitments or short illness should be expected and is not exceptional.

Exceptional circumstances were recently tested in QIP Nominees Pty Ltd v Delinia, Inc. [2021] APO 24 (22 June 2021). In that case, the patent applicant had failed to meet their original deadline for filing their evidence in reply, but were ultimately successful in demonstrating that exceptional circumstances did apply, and an extension to file that evidence was justified.

In this case, the patent applicant was located in the US, and their US attorney only became aware of the existence of an opposition to their application one month before their evidence in answer was due.  That is, the US attorney was unaware of the filing of a notice of opposition, unaware of the opponents filing their statement of grounds and particulars  (3 months into the opposition), and unaware of the filing of the opponent’s evidence in support filed (6 months into the opposition).  Two of the three months of the applicant’s window for filing evidence in answer had elapsed before the applicant first became aware of the opposition.  In short, the opposition had progressed for eight months without the applicant’s knowledge.

All of the opposition correspondence was duly received by the Australian attorney and passed on to the applicant’s US attorney, however, unbeknownst to all parties, the US attorney’s  spam filter was diligently capturing and destroying the relevant correspondence upon receipt.  Notably, no bounce back was received by the Australian attorney.  This capture and destruction of the emails only appears to have been detected by good fortune when, for some reason, a reminder email from the Australian attorney did indeed manage to avoid the US attorney’s spam filter.

The Applicant initially requested an extension of time to file their evidence which was refused by the  opposition division.  The opposition division  acknowledged that the email communication failure was unintended, but overall, they considered that the applicant’s attorney did not act reasonably, promptly and diligently because they did not follow up on emails that were not acknowledged by the client.  In refusing the request for an extension, the opposition division said “It is reasonable to believe that the information associated with those emails would generally elicit a response and the failure to do so, especially over an extended period of time and in view of the strict deadlines in opposition matters, is quite remarkable and failing to follow up on the lack of response does not appear to be commensurate with acting reasonably or promptly and diligently.” 

The initial refusal noted a number of points, such as the failure of the applicant to check on the grant of the patent, the US attorney’s  processes involved in  checking their spam filter was not blocking legitimate emails, and the failure of the Australian  attorney to follow up on a lack of acknowledgement of their emails.

The applicant sought a hearing on the matter, arguing that “the Senior Examiner’s proposed approach is a counsel of perfection, made with the benefit of hindsight. Email is a highly reliable, mature technology. Users are accustomed to receiving non-delivery or bounce-back messages if an email is not delivered and it is entirely reasonable to assume, as [the Australian attorneys] did, that, in the absence of receiving any non-delivery message, the email has been safely delivered to its intended recipient. That was the assumption made in the present case. It was a reasonable assumption. It is not for [the Australian attorneys] to second-guess why a client does not respond to emails or indeed why a client may not wish to defend an opposition proceeding.”

In his decision, the hearing officer sided with the patent applicant, finding that “Although with the benefit of hindsight it can be envisaged that the situation could have been avoided (such as [the Australian attorneys] making a ‘follow up’ phone call when no response was received to the emails), such speculation is beyond the realm of what was reasonably beyond the control of the parties. I consider that the emails not being received (with no indication that the email was not delivered) was beyond the control of both the sender … and receiver … of the emails.”

The decision is pleasing to those in the patent profession, who in some cases deal with hundreds of emails every day, as it demonstrates that a “perfect” practice is not the starting point for determining whether “exceptional circumstances” exist when determining whether extensions of opposition deadlines are warranted.

Authored by Charles Tansey, PhD