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Archive for the ‘Trademarks’ Category

IP Australia fees rise from 1 July 2012

In Designs, IP Australia, Patents, Trademarks on 11 May 2012 at 17:40

Following the Australian Federal Budget on Tuesday 8 May 2012, IP Australia has announced a list of changes to fees charged for its products and services.

Most fee changes will take effect from 1 July 2012. New application filing fee charges will increase from 1 October 2012.

Full fees for each type of intellectual property can be found by clicking on the headings below. In summary, the new fees will be as follows (a variety of fees indicates that some filing methods cost more than others):

Trademarks

  • Headstart request:     $120/class
  • TM application:     $200 or $220/class
  • Standard TM registration:     $300/class
  • TM renewal:     $300 or $350/class

Designs

  • Application:     $250 or $350/design
  • Examination:     $420
  • Renewal:    $320 or $370

Patents

  • provisional application:     $110 or $210
  • standard patent:
    • application:     $370 or $470
    • examination:     $490
    • renewal:     $350 (yrs 4-9), $550 (yrs 10-14), $1,170 (yrs 15-19)
  • innovation patent:
    • application:     $180 or $280
    • examination:     $500
    • renewal:     $160 (yrs 2-4), $270 (yrs 5-7)
  • opposition:     $600

Plant Breeders’ Rights

  • Application:     $345 or $445
  • Examination (single):     $1,610
  • Certificate (PBR):     $345
  • Annual renewal:     $345 or $395

‘Raising the Bar’ Amendments now law

In Law Reform, Patents, Trademarks on 17 April 2012 at 19:18

Intellectual Property Laws Amendment (Raising the Bar) Act 2012

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 received the Governor General’s assent on 15 April 2012 and is now part of Australia’s intellectual property law.

Most provisions in the Act will come into effect on 15 April 2013 but exemptions for researchers and regulatory use took immediate effect from 15 April 2012.

The research exemptions are intended to allow people to conduct genuine scientific research without fear of infringing patents. IP Australia summarises the exemptions as follows:

“To provide clarity for researchers, an inclusive list of activities that are deemed to be experimental has been included in section 119C of the Patents Act 1990. The following activities are exempt:

* determining the properties of the invention
* determining the scope of a patent claim relating to the invention
* improving or modifying the invention
* determining the validity of the patent or of a patent claim relating to the invention
* determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

This list is not intended to be exhaustive. A court may find other activities also fall within the meaning of ‘experimental’.”

Useful background:

* Progress of the Bill through Parliament

* Summary of the changes from firm Davies Collison Cave. See also their advice to practitioners.

* Summary of the changes from firm DibbsBarker

* Summary of the changes from firm Middletons

* Summary of the changes from firm Shelston IP

* Summary of the changes from firm Sprusons

* Summary of the changes regarding trademarks from firm Clayton Utz

* Summary of the changes from firm King & Wood Mallesons

Govt submissions filed in HCA tobacco packaging case (5 April 2012)

In Trademarks on 6 April 2012 at 19:26

British American Tobacco Australasia Limited and Ors v. The Commonwealth of Australia

The Australian government has filed written submissions in the case brought by British American Tobacco (‘BAT’) challenging the Tobacco Plain Packaging Act 2011.

The legislation received Assent on 1 December 2011 and  will require uniform packaging of tobacco products from December 2012. Cigarette packaging will have to be a standard olive green colour, devoid of logos and most other distinctive branding (brand names will be carried in a standard font), and carry graphic health warnings. For example, Section 20 of the Act states: “(1)  No trade mark may appear anywhere on the retail packaging of tobacco products, other than as permitted by subsection (3)... (3)  The following may appear on the retail packaging of tobacco products:  (a)  the brand, business or company name for the tobacco products, and any variant name for the tobacco products; (b)  the relevant legislative requirements; (c)  any other trade mark or mark permitted by the regulations.”  The Act prescribes the manner in which the permitted markings may be presented. An example of the prescribed packaging can be viewed here.

BAT argues that legislation denying the ability of an intellectual property proprietor to use its intellectual property amounts to an acquisition of property without compensation, and is thus constitutionally invalid.  Section 51(xxxi) of the Australian Constitution states: “The Parliament shall, subject to this Constitution, have power to make laws for the peace, order, and good government of the Commonwealth with respect to: (xxxi)  the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws“.

BAT’s submissions were filed on 26 March 2012 and their argument can be outlined as follows:

  • Cl.37: “For there to be an acquisition of property within the meaning of s 51 (xxxi), it is necessary, but not sufficient, for the owner of the property in question to demonstrate that legislation “adversely affects or terminates a pre-existing right that [he or she] enjoys in relation to his [or her] property”.* In this case… the plaintiffs will be unable to use or exploit their trade marks, patents, designs, copyright and get-up in connection with the sale of cigarettes or in any meaningful or substantive fashion, or to exercise any meaningful or substantive control over the appearance of cigarette packets and cigarettes owned by them.” [* Tasmanian Dam Case(1983) 158 CLR 1 at 145 per  Mason)].
  • Cl.39: “It follows that, even though the plaintiffs have not been formally deprived of their trade marks, patent, design, copyright, get-up, goodwill and rights in their packaging, they have been” in a real sense, although not formally, stripped of the possession and control” of their property.” The Commonwealth has, in other words, deprived the plaintiffs of the “reality of proprietorship”* or “everything that made [that property] worth having.”** The extent of the restriction on the plaintiffs’ use of their property is plainly, it is submitted, capable of characterization as an acquisition.***” [* Bank of NSW v.  Commonwealth {1948) 76 CLR 1 at 349 per Dixon J] ; ** Minister of State for the Army v Dalziel (1944) 68 CLR 261  at  286 per Rich J; *** See Trade Practices Commission v Tooth &  Co Ltd (1979)  142 CLR 397 at 415 per Stephen]
  • Cl.47: “In the result, the Commonwealth has assumed control over a substantial aspect of the plaintiffs’ property, business, goodwill and reputation. That description of the benefits accruing to the Commonwealth (and others) by reason of the prohibition of all practical uses of the plaintiffs’ intellectual property makes clear, however, that there is yet a further dimension to the benefit accruing to the Commonwealth. By securing the benefit of the plaintiffs’ rights to use their property by refraining from deploying it in particular ways or for certain purposes , the Commonwealth has been able to assume complete control over the get-up and appearance of BAT’ s cigarettes and their packaging.”

BAT’s submissions go on to explain its claim that this constitutes a taking that is not on just terms.

The Australian government’s 49-page submissions counter these claims, arguing that:

  • Cl.1;  Section 51(xxxi) protects property, not the general commercial and economic position of traders;
  • Cl2: the Act does not effect an unjust acquisition of property.
  • Cl.5: tobacco companies’ statutory rights to trademarks, patents, registered designs and copyright do not include a positive right to use the intellectual property. Further, these statutory rights are inherently subject to statutory modification or extinguishment without compensation.
  • Cl.6: the Act does not confer upon the Commonwealth, or anyone else, a benefit of a property-like nature.
  • Cl.8: “The TPP Act restricts the use of property no more than is appropriate and adapted to reduce harm to members of the public and public health. The TPP Act otherwise allows tobacco companies to continue to use their brand names and variant names on retail packaging to indicate trade origins of their tobacco products and not to use trade marks and registered designs through non-use.” It argues that this does not amount to acquisition on unjust terms.

The government’s submissions go on to elaborate on its arguments, characterising the Act as involving “regulation” not “acquisition” (Cl.79ff). Cl.36 argues that plain retail packaging will reduce the appeal of tobacco products, increase the effectiveness of health warnings, reduce the potential for retail packaging to mislead, and thus improve public health and comply with Australia’s obligations under the World Health Organization Framework Convention on Tobacco Control (“FCTC”).

The Hearing before the HCA is due to commence on 17 April 2012.

Useful documents: