Australian confirmed as WIPO head

Dr Francis Gurry has been confirmed as Director General of the World Intellectual Property Organization (WIPO).

Dr Gurry is now the most senior Australian in the United Nations system; the first Australian to head a United Nations specialised agency since 1992, and only the third Australian to do so

Two Wrongs Don’t make a Right but Two Countries make an International Exhibition

The Full Federal Court has allowed the appeal in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142, overturning the decision of the trial judge and holding that a furniture fair involving 250 Australian exhibitors and seven from New Zealand was an “international exhibition”.

Section 47(1) provides that the fact that a design, or any article to which a design has been applied, has been exhibited at an official or officially recognized international exhibition … shall not prejudice or prevent the registration of the design or invalidate the monopoly therein, if the application for the registration of the design is made within six months after the opening of the exhibition.

A week prior to filing a design application, Chiropedic had displayed a mattress to which the design had been applied at the 1996 Furnishing Industry Association of Australia fair known as "The National New Products Parade". At trial, it was held that this event was an officially recognised exhibition, by reason of funding from the Victorian Government, but was not an international exhibition. Accordingly, section 47 could not be relied on.

The Full Court considered that:

the trial judge erred in formulating a test of "international" which involved the need for a significant foreign presence. Not only does it import into the section a requirement that is not expressly stated, but it introduces into the section questions of degree which are likely to be productive of uncertainty and expense. In our opinion, the fact that there were exhibitors from Australia and New Zealand was sufficient to make the fair an "international" exhibition within s 47(1).

As a result, the validity of the design registration will not be effected by the prior publication of the design caused by its display at the fair.

IP Australia surveys fashion designers

IP Australia recently sent a short survey to 450 members of the fashion industry.

The results revealed a pretty good level of awareness of IP, but with room for improvement!

New High Court Chief Justice

The Australian Government recently announced the appointment of Justice Robert French (currently of the Federal Court) as Chief Justice of the High Court of Australia.

Justice French takes up the position from 1 September, becoming the 12th Chief Justice appointed to the High Court since Federation, and the first from Western Australia. The current High Court Chief Justice Murray Gleeson will retire on 29 August. This appointment represents a significant change to the High Court bench and one that will prove very interesting especially in the area of IP given his Honour's experience in this area.

EMDG scheme extended to IP expenditure

The Export Market Development Grants (EMDG) scheme is an Australian Government financial assistance program for exporters. The scheme reimburses up to 50% of expenses incurred on eligible export activities.

A number of changes were made effective 1 July 2008 (claimable from 1 July 2009). These include allowing costs of patenting products overseas (and obtaining trade marks overseas) to be eligible for support.

IP Scorecard

The Australian Department of Innovation, Industry, Science and Research has released a 6-page analysis of registrable IP rights (particularly patents and trade marks) for the period from 2002 to 2006. The Scorecard looks at Australian applications and foreign applications by Australians (particularly in the US and Europe) . It is available as a PDF here.

Design by Committee ends in Revocation

Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8, saw delegate Herald consider an application by Tclip for revocation of certain registered designs in the name of Allen Hardware on the basis of lack of entitlement.

The delegate considered that principles relating to inventorship under the Patents Act should be applied to questions of designership under the Designs Act as “Both involve activities of original creativity. Both involve situations where multiple people can be involved in the creative exercise.”

Having determined that two persons associated with Tclip and also two persons associated with Allen Hardware were all co-designers of the designs in question, the delegate directed that the designs be revoked pursuant to s 52, the original registered owner not being the sole person entitled to the design.

The delegate noted that the parties may wish to apply jointly for new design registrations relying on the provisions of s 54.

Costly Consequences

Three decisions handed down on 12 June 2008 illustrate how various tactical decisions can have implications on the costs awards made in intellectual property litigation.

In ITW AFC Pty Ltd v Loi and Tran Pty Ltd (No 2) [2008] FCA 895, Finkelstein J held that costs should lie were they fell in a patent dispute where both the claim for infringement and the cross-claim for revocation were unsuccessful. In rejecting the respondents argument that the proceeding should be treated as a single case in which the patentee failed, his Honour made several comments on the undesirability of parties bringing revocation actions without merit for purely tactical reasons concluding that:

“The usual order for bringing a hopeless case is to require the losing party to pay indemnity costs. Sometimes even that might not be enough. In patent litigation the parties are often large organisations that will not sufficiently feel the pain of an indemnity costs order. In those cases (I do not suggest this one) the proper order might be to require the legal practitioner to himself bear the costs, coupled with an order that the practitioner shall not be entitled to recover those costs from his client, notwithstanding any agreement to the contrary.”

In Nutrasweet Australia Pty Ltd v Ajinomoto Co Inc (No 4) [2008] FCA 876, also decided by Finkelstein J, his Honour was not prepared to award the successful party their costs on an indemnity basis because the ground upon which they had succeeded was raised only six days before the trial.

Finally, in Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 3) [2008] FCA 896, Besanko J ordered that the applicant should have its costs of the infringement of copyright and breach of implied contractual term claims on which it succeeded, but that the respondents should otherwise have their costs of the proceeding. Despite the applicant being awarded only $10 nominal damages for the infringement of copyright, his Honour also made an order that the costs payable to the applicant not be reduced pursuant to O 62 r 36A(1) on the basis that copyright litigation is appropriately commenced in the Federal Court even where the monetary claim is small.

WIPO nominates Australian as next Director General

Dr Francis Gurry has been nominated by WIPO's Coordination Committee to be the WIPO's next Director General. Dr Gurry is an Australian national, who studied law and commenced practice here before joining WIPO in 1985. The General Assembly needs to formally appoint him at it's next meeting in September.

The WIPO announcement is here.

Designs case - Prior publication

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869

The applicant, Chiropedic Bedding Pty Ltd (“Chiropedic”), was the registered proprietor under the Designs Act 1906 (Cth) of a design in respect of a mattress. Chiropedic sued the respondent, Radburg Pty Ltd (“Radburg”) for infringement of its design. This case considered Radburg’s cross-claim for the cancellation of the Design registration, on the ground that the design was not new or original.

Before the priority date of the design, Chiropedic had exhibited a mattress to which the design was applied at a fair held at the Melbourne Exhibition Centre, and organised by the Furnishing Industry Association of Australia (Vic/Tas). The publication at the fair would invalidate the registration unless s 47 of the Designs Act 1906 (Cth) applied.

Click here to read the case note.