Reckitt Benckiser puts a Finish (for now) to competitor’s launch of dishwashing tablets

The Australian Federal Court’s decision in RB (Hygiene Home) Australia Pty Ltd & Anor v Henkel Australia Pty Ltd[1] demonstrates the powerful option of seeking an urgent interim injunction to protect the strength and value of an established brand, and to protect market share.

Key takeaways

  • Businesses need to be aware of their competitors’ brands and reputation, before launching their brand in Australia.
  • Urgent injunctive relief sought on an interim basis can afford significant protection to brand owners.
  • The effect on the party subject to the injunction can be significant, particularly in the consumer sector, and can include wasted launch expenditure for new products, costs in redesigning packaging as well as marketing campaigns and materials, and any cost involved with re-negotiating contracts with distributors.

Click here to read our full analysis of the decision and its implications for brand owners.


  1. [2021] FCA 1094.

Authors

Sue Gilchrist
Sue Gilchrist
Head of IP - Australia
+61 2 9225 5221
Vanessa Jiang
Vanessa Jiang
Solicitor
+61 2 9225 5382

Byron Turner
Byron Turner
Solicitor
+61 2 9322 4155

Marketing a product as an “alternative” is no answer to trade mark infringement

The Full Court of the Australian Federal Court has found that marketing a product as an “alternative” to a trade-marked brand is no answer to a claim of infringing use as a trade mark. In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163, Justices Jagot, Lee and Thawley took a broad view of trade mark “use”, and the likelihood of confusion on the part of consumers, to find that both “PROTOX” and “instant Botox® alternative” are deceptively similar to the appellant’s “BOTOX” mark, and that the protection of the Respondent’s defensive registration was ineffective.

Key takeaways

  • The use of the phrase “instant Botox® alternative” was held to constitute use “as a trade mark”, such that it infringed the registered trade mark for BOTOX.
  • Although it will depend on context, the mere use of the word “alternative” to describe a product (for example, “instant Botox® alternative”) may not be sufficient to avoid trade mark infringement. Indeed, in some circumstances it may imply some association in the trade source.
  • Although an exception exists under the Trade Marks Act for comparative advertising, it is easy to fall outside the protection of that provision. In particular, simply referring to a competitor product is not enough to fall within its scope.
  • Advertisers should be cautious to avoid references to competitor products that seek to leverage off the competitor’s reputation, rather than advertise comparatively with that product in good faith.

For the full article, see here.


Sophie Yates
Sophie Yates
Solicitor, Sydmey
+61 2 9322 4897

Bryce Robinson
Bryce Robinson
Solicitor, Melbourne
+61 3 9288 1155

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739

“Why cannot our own creations also create?”: AI systems can be patent inventors in Australia

An artificial intelligence system is capable of being named as an “inventor” of patentable subject matter, according to the Federal Court’s recent decision in Thaler v Commissioner of Patents.[1] Subject to any appeal, this decision has salient implications for the ways in which inventorship, ownership, and inventiveness might be assessed in Australia in the future.

Key takeaways

  • AI systems can be “inventors” for the purposes of the Patents Act 1990.
  • AI systems cannot be the owners of patents, but a patentee can, in certain circumstances, “derive” their entitlement to a patent from an AI “inventor”.
  • This differs from the position taken with respect to AI “inventors” in decisions in the UK, EU and US.
  • The decision also contrasts with the legislative requirements for human authors in other areas of intellectual property in Australia, such as copyright.
  • The decision may have implications for the way in which the entitlement and inventiveness of patentable subject matter are assessed in the future.

Click here to read our full analysis.


[1] Thaler v Commissioner of Patents [2021] FCA 879.

 

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739
Tess Mierendorff
Tess Mierendorff
Senior Associate, Sydney
+61 2 9225 5596
Claire Dorse
Claire Dorse
Solicitor, Melbourne
+61 3 9288 1131

Sophie Yates
Sophie Yates
Solicitor, Sydney
+61 2 9322 4897

Not all’s “fair dealing” in war and Greenpeace: Federal Court confirms limits of the “parody or satire” exception to copyright infringement

The Federal Court’s decision in AGL v Greenpeace[1] confirms that using a corporate logo in activist or protest materials may be permissible under both copyright and trade mark law, but only where that use constitutes a “fair dealing” for the genuine purpose of “parody or satire”. Not all such uses will fall within that exception, so a fine line must be trodden to avoid infringement. Continue reading

Copyright owners “Don’t have to take it”: Universal Music v Palmer

The Australian Federal Court’s recent decision in Universal Music v Palmer, in which Mr Palmer was ordered to pay AU$1.5 million for his unauthorised use of the song We’re Not Gonna Take It, reaffirms that the Court is prepared to award significant financial remedies to intellectual property owners whose rights are infringed.

Key takeaways

  • The $500,000 in compensatory damages and $1 million in additional damages awarded against Mr Palmer reaffirms that the Court will award additional damages in an amount appropriate to punish and deter serious infringements of intellectual property, even where that award dwarfs the actual loss suffered by the rights owner and the amount of compensatory damages awarded.
  • A party’s response to allegations of copyright infringement and their conduct after the original infringement, including the manner in which they conduct their defence to the proceedings, have critical implications for the assessment of additional damages.
  • Damages on the basis of the “user principle”, or hypothetical licence fee, are available for copyright infringement in Australia, even when the parties would not have agreed on an actual licence. This appears to resolve any lingering uncertainty on this issue following the 2007 Full Court decision in Aristocrat.

Click here to read our full analysis of the important aspects of this decision on our website.

Sue Gilchrist
Sue Gilchrist
Head of IP - Australia, Sydney
+61 2 9225 5221
Rebekah Gay
Rebekah Gay
Partner, Joint Global Head of IP, Sydney
+61 2 9225 5242
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739