On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.
Read MoreThe Australian Federal Parliament has been debating the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill), which seeks to repeal section 51(3) of the Competition and Consumer Act 2010 (CCA).
The Bill is expected to pass during this session of Parliament (by 6 December 2018). Section 51(3) of the CCA presently provides an exemption from most of the competition law prohibitions for certain types of transactions involving intellectual property (IP). The current exemption covers conditions in licences or assignments of IP rights in patents, registered designs, copyright, trade marks and circuit layouts.
Once passed, commercial transactions involving IP rights will be subject to the same competition laws as all other transactions involving other types of property and assets. The repeal will apply retrospectively but IP owners will have six months to review existing licences and agreements. It is important for brand owners to consider their key licensing arrangements and the possible competitive implications of those arrangements.
2017/18 was an intriguing 12 months in the Australian patent landscape, with Courts being called upon to deliver decisions in relation to a number of issues that have not previously been judicially considered. The judgments delivered in this period have dealt with the patentability of methods claims deploying genetic information, patent term extensions for “Swiss-style” claims and whether applying to list a product on the Pharmaceutical Benefits Scheme constitutes an act of patent infringement.
UK Government issues guidance on IP matters if there is no deal struck
Over two years after the UK voted to leave the EU, there is an increasingly likely possibility that the UK will leave the EU in March 2019 without a deal agreed (although negotiations continue). As a result, the technical guidance notes published on 24 September 2018 give businesses, brand owners and designers much needed insight into how such a scenario will look.
Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 receives Royal Assent on 24 August 2018
The proposed changes to parallel importation law that we blogged about in January 2018 and May 2018 have become law.
Bill introduced to Parliament that will pave the way for parallel importers in Australia.
Proposed laws favouring the parallel importation of goods are currently being considered by the Australian Parliament. The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 (Bill) was introduced to the House of Representatives on 28 March 2018.
On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.
Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.
EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.
EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.
Thanks to increased inspection efforts, there has been an uptick in the number of counterfeit goods stopped at the external borders of the European Union. In 2014, the figure was 35.5 million items of a value of EUR 617 million; in 2015, it was 40 million items of a value of EUR 642 million, while it was 41 million items of a value of EUR 672 million in 2016.
This legal alert is a follow-up to “Coming Home?: Federal Circuit Asked to Immediately Weigh in on Proper Venue Post-TC Heartland,” available here.
On the morning of June 9, 2017, the defendants in Cobalt Boats, LLC v. Sea Ray Boats, Inc., filed their Mandamus Petition seeking immediate review of the district court’s decision to deny their request to transfer venue. [1] The defendants also renewed their emergency motion to stay the proceedings pending Federal Circuit review. The Federal Circuit denied both requests late in the afternoon the same day. The Federal Circuit did not weigh in on any of the substantive issues regarding waiver of venue challenges, but rather determined that mandamus relief was not the appropriate recourse in this instance. [2]
As with the previous denial of the defendants’ emergency motion to stay, Judge Newman dissented from the opinion. Judge Newman again reiterated that “[t]here is little doubt that the Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, No. 16-341, 2017 WL 2216934 (U.S. May 22, 2017), was a change in the law of venue . . .” [3] Judge Newman also opined that the case presented exceptional circumstances warranting mandamus review because “if the trial commences next Monday as scheduled, the landscape will have changed dramatically—without a stay, the event will be over, and an opportunity for this court to determine whether the district court’s decision was in compliance with the venue requirements revived by TC Heartland may have harsh consequences.” [4]
The district court in the underlying litigation is set to begin trial today.
Notes:
[1] No. 15-cv-21 (E.D. Va.).
[2] In re Sea Ray Boats, Inc., No. 17-124, Dkt. No. 15 at 2 (Fed. Cir. June 9, 2017).
[3] Id. at 5 (Newman, J., dissenting).
[4] Id.
By: Jason Engel and Devon Beane
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