COPYRIGHT

Copyright subsists?
Literary, dramatic, musical, artistic work? Sound recording,
film, TV/sound broadcast?
Originality? (s 32)
Desktop Marketing v Telstra: Original if sufficient
labour and expense has been expended in the creation of
the work. Dont need any creativity.
Material form? (s 22: in writing, or in storage from which it
can be reproduced?) (Donoghue v Allied News)
Ownership?
S 35(2): Creator of the work = the owner of any copyright in
the work.
Special rules (can be modified by agreement: s 35(3)):
S 35(4): Journalists proprietor owns, but journalist can
reproduce in a book or a hard copy.
S 35(5): Commissioned photos/portraits/engravings
commissioner owns.
S 35(6): Employees create work in course of employment
employer owns. Factors for employment relationship:
Control employer has over employee?
Who pays super & tax?
Joint ownership of copyright is recognised only in relation to
collaborations where the contributions are inseparable.
Assignment & exclusive licence in writing.
Item/expression dichotomy: Copyright is separate from
property right.
Direct Infringement?
Did/authorised an act within the owners exclusive rights,
without permission? (knowledge/intention is irrelevant: Andritz
Sprout v Rowland).
LDM work: reproduce, publish, perform in public,
communicate to public, make adaptation of.
Artistic work: reproduce, publish, communicate to public.
Sound recordings & films: copy, cause to be seen/heard in
public, communicate to public.
Broadcasts: make a film/sound recording of broadcast, rebroadcast, communicate to public.
Authorisation
Factors for authorisation = power to prevent the act,
relationship, taken reasonable steps to prevent/avoid the act,
industry practice.
CBS Songs v Amstrad (selling tape recorders was not
authorising copying, b/c legit uses & no control over buyers)
Infringement by copying
Deemed reproduction (s 21): Making sound recording/film of
a work, converting to/from electronic form, 2D/3D version of
artistic work, compiling/decompiling.
Eagle Homes v Austec Homes: Must have objective similarity
between original & allegedly infringing material.
CCOM v Jiejing: Need causal link independently created
material is not infringing.
Francis Day & Hunter v Bron: If objectively similar &
alleged infringer has opportunity to see the original
presumed causal connection.
Plix Products v Frank Winstone: Indirect copying is infringing
(just need causal link).
Hollinrake v Truswell: Must copy expression, not a mere idea.

Harman Pictures v Osborne (copied a books theme, plot,

storyline infringement)
Krisarts SA v Briarfine (copied crucial elements of
drawing, ie. subject, angle, style infringement)
Bauman v Fussell (copied positioning in a picture no
infringement)

Doing something in relation to a substantial part is deemed to be

done in relation to the whole. (s 14)
Data Access v Powerflex: A substantial part is an essential or
material feature.
An original part is more likely to be a substantial part.
Indirect infringement?
Importing the article, if he knew (or ought reasonably to have
known) that the making of the article in Australia by him,
would have been an infringement (ss 37, 101);
Sells/hires/trades/exhibits the article, if he knew (or ought
reasonably to have known) that the making of the article was
an infringement (or if imported: the making of the article in
Australia by the importer would have been an infringement)
(ss 38, 103);
Permits a place of public entertainment to be used for an
infringing public performance of the work (s 39(1)), unless:
he was unaware, and had no reasonable grounds for
suspecting, that the performance would be an
infringement (s 39(2)(a)); or
he gave permission gratuitously, for nominal
consideration, or for consideration that did not exceed a
reasonable estimate of incurred expenses (s 39(2)(b)).
Exception?
Fair dealing for purpose of research/study (s 40),
criticism/review (s 41), reporting news (s 42)?
Copying by library officers where required by users for
research/study purposes? (s 49)
Computer program exceptions: Reproduction for purposes
of:
normal use/study of computer programs (s 47B)?
backup (s 47C)?
making interoperable products (s 47D)?
correcting errors (s 47E)?
security testing (s 47F)?
s 47G: Exceptions apply only if get the owners consent.
Making temporary reproduction as part of technical process
of making/receiving communication (s 43A)? (unless the
making of the communication is an infringement)
Remedies? (s 115)
Only copyright owner & exclusive licensee can sue for
copyright infringement.
Remedy = injunction + damages or account of profits.
No damages if Def is unaware of & had no reasonable
grounds for suspecting infringement.
Additional damages for personal distress, embarrassment
or cultural considerations (Milpurrurru v Indofurn); or
flagrant piracy (Autodesk v Cheng).
If remedy is insufficient, then may get conversion/detention of
infringing copies.
Unjustified threat?
S 202: If unjustifiably threaten another with copyright
infringement action, then may be liable for damages to an
aggrieved person.
Mere notification of copyright existence is not a threat.

PATENTS
Patentable invention? (s 18)
Manner of manufacture
Product/process capable of commercial application + not generally
inconvenient?
Novelty
S 7(1): Novel in light of prior art info available in:
Single document;
Related documents if a skilled person in the art would
treat them as a single source;
Single published patent specification with earlier priority
date.
Inventor may destroy novelty by:
Giving away a sample (Fomento v Mentmore
Manufacturing);
Publishing a photo in a magazine (Windsurfing Int v
Petit);
Agreeing to sell products of the invention (Re Wheatleys
Application);
Publicly using the invention before lodging an application
(Acme Bedstead v Newlands);
Non-confidential disclosure of the invention.
Grace period: A complete application may be filed within 12
months of a disclosure that destroys novelty.
Inventive step
S 7(2): Obvious to a person skilled in the relevant art, in light
of prior art info?
Expert evidence determines this.
Indirect factors pointing to inventiveness:
Invention solved a long standing previously unmet need
(which many people were working on);
Commercial success of invention;
Rapid introduction of rival products/processes.
Sunbeam v Morphy Richards: An invention based on public
information is still inventive, if the application/combination of
that information was not obvious to a person skilled in the
relevant art.
Usefulness
Skilled person who follows the specification can achieve the
claimed result?
Secret use
S 9: These acts are not secret use of an invention:
(a) use for purpose of reasonable trial/experiment only;
(b) use occurring solely in the course of a confidential
disclosure of the invention;
(c) use for purposes other than trade/commerce purposes;
(d) use by Crown where the patentee (or ) disclosed the
invention to the Crown.
Non-patentable inventions
Human beings, & biological processes for their
generation (s 18(2));
Use of which would be contrary to law (s 51(1)(a));
Substance capable of being used as food/medicine + is a
mere mixture of known ingredients; or a process
producing such substance by mere admixture (s 51(1)(b)).

Rights
S 13: Patentee has exclusive rights to exploit the invention &
to authorise another to exploit it.
Ownership
S 15(1): A patent may only be granted to a person who:
(a) is the inventor;
(b) would be entitled to have the patent assigned to him;...
Joint inventors
Mueller Brass v Reading Industries: If, without a persons
contribution, the invention would have been less
efficient/simple/economical, then that person is an inventor.
A person who merely followed instructions in performing
experiments is not a co-inventor.
Re applications by CSIRO & Gilbert: Where an invention is
the result of collaboration, all collaborators are joint inventors.
Co-ownership
S 16: Subject to contrary agreement, if there are multiple
patentees:
(a) each is entitled to an equal undivided share in the
patent;
(b) each is entitled to exercise the exclusive rights for his
benefit without accounting to the others; and
(c) none of them can grant a licence under the patent or
assign it, without consent of the others.
Employee invention
Triplex Safety Glass v Scorah: It is an implied term of
employment, that an invention of the employee made in the
course of employment is assigned to the employer.
Anti-competitive contractual conditions
S 144(1): A condition in a contract relating to the
sale/lease/licence of a patented invention is void, if the
conditions effect would be:
(a) to prohibit/restrict the buyer/lessee/licensee from
using a [3rd partys] product/process; or
(b) to require the buyer/lessee/licensee to acquire a
product not protected by the patent from the
seller/lessor/licensee.
S 144(2): Subs (1) does not apply if:
(a) when the contract was made, the buyer/lessee/licensee
had the option of a contract on reasonable terms without
that condition; and
(b) the contract entitles the buyer/lessee/licensee to be
relieved of the condition, by giving 3 months written
notice & paying compensation.
Infringement
Any unauthorised act within the patentees exclusive rights, is
an infringement.
S 117: If use of a product would infringe, supplying that
product is an infringement of the patent by the supplier.
If a claim consists of a number of integers, the Def must
have adopted all the essential integers to be infringing.
Populin v HB Nominees: Replacing an essential feature of the
invention with an alternative not claimed, will avoid
infringement.
Dillon v JP Products: A worsening alteration to avoid
infringement is a colourable variation it does not avoid
infringement.
Pinefair v Bedford Industries: A product patent can be
exploited (& infringed) by making the claimed product in the

course of manufacture of a final product for commercial

advantage (even if the final product is not within the claim).
Exception to infringement prior use
S 119(1): No infringement, if immediately before the priority
date of the claim, the person:
(a) was making a product, or using a process, claimed in
that claim; or
(b) had taken definite steps to do so.
S 119(2): Subs (1) does not apply if the person:
(a) derived the subject-matter of the invention from the
patentee/predecessor; or
(b) before the priority date, had stopped making the
product or using the process, or abandoned the definite
steps (other than temporarily).
Defences
S 144(4): It is a defence [to anyone] that the patented
invention is the subject of a contract containing a provision
void under s 144.
S 144(5): This defence ceases to apply if the patentee offers a
new contract that does not contain the void condition.
Compulsory licence
S 133: Can get a compulsory licence if:
The patentee has not exploited it;
The applicant has tried for a reasonable period, without
success, to obtain the licence on reasonable terms &
conditions;
The reasonable requirements of the public with respect to
the invention has not been satisfied; and
The patentee has no satisfactory reason for failing to
exploit it.
S 133(5): If granted, licensee must pay a just/reasonable amt.
Revocation
S 138: Anyone can apply to revoke a patent, on the grounds
that:
(a) the patentee is not entitled to the patent;
(b) the invention is not a patentable invention;
(c) the patentee contravened a condition in the patent;
(d) the patent was obtained by fraud, false suggestion or
misrepresentation;
(e) an amendment to the patent request or complete
specification was made/obtained by fraud, false
suggestion or misrepresentation;
(f) the specification does not comply with s 40(2)-(3).
Remedies
S 122: Injunction & damages or account of profits.
S 123: The court may refuse damages/account of profits, if the
Def was not aware & had no reason to believe that the patent
existed @ date of infringement.
Unjustified threats
S 128: If a person threatens another with infringement
proceedings, a person aggrieved may apply for:
(a) a declaration that the threats are unjustifiable;
(b) an injunction against continuance of the threats; and
(c) recovery of any damages sustained by the applicant as
a result of the threats.
S 131: Mere notification of the existence of a patent, or
application for a patent, is not a threat.

MORAL RIGHTS
Right of Attribution
S 193-4: Author has a right to be identified if a relevant
exclusive right is exercised.
S 195(1): Author must be identified in a reasonable form.
S 195(2): If the author has made known that he wishes to be
identified in a particular way, and that way is reasonable, then
that must be done.
S 195AA: Identification of the author must be clear &
reasonably prominent.
Right of False Attribution
S 195AC(1): The author of a work has a right not to have
authorship falsely attributed.
S 195AD: [if work] it is false attribution to:
insert (or authorise inserting of) a persons name in the
work, in such a way as to imply falsely that:
the person is an author; or
the work is an adaptation of a work of the person; or
deal with such an altered work (or a copy of it) or
perform or communicate it to the public while knowing
that the named person is not an author.
Right of Integrity
S 195AQ: The right of integrity can be infringed by:
Subjecting (or authorising the subjecting of) a work to
derogatory treatment;
[if work] Reproducing such work in material form,
publishing it, performing it in public, communicating it to
public, or making an adaptation of it;
[if film] Making a copy of such work, exhibiting it, or
communicating it to public; or
Authorising such activities.
S 195AJ: [if work] derogatory treatment means:
(a) doing anything that results in a material distortion of,
the mutilation of, or a material alteration to, the work
that is prejudicial to the authors honour/reputation; or
(b) doing anything else in relation to the work that is
prejudicial to the authors honour/reputation.
Exceptions to infringement
No infringement if it was reasonable.
S 195AWA [for works not in films]: An act/omission is not a
moral rights infringement, if it is within the scope of a written
consent genuinely given by the author.
S 195AW(4) & AWA(4): An employee can give their
employer a blanket consent applying to all acts/omissions &
all works made by the employee in the course of his
employment.
S 195AW(3) & AWA(3): Consent is ineffective unless given
in relation to:
specified (classes of) acts/omissions,
specified works existing when the consent is given; or
specified works of a particular description, which have
not been made yet.
S 195AW(5) & AWA(5): Consent is presumed to be given for
the benefit of the (prospective) copyright owner, unless the
contrary intention appears in the consent instrument.
S 195AWB: Consent under ss 195AW & AWA is invalidated
by duress or misleading statements.
Remedies
s 195AZA: Remedies are at the courts discretion.

Expense of the product (higher price deception less

likely: Parkdale v Puxu).
Pricing differences (Dr Martens v Figgins; CA Henschke
v Rosemount).
To prove deceptive conduct, the Pl can use surveys and
evidence of consumers being deceived. However, the court
may disregard the evidence if it considers the view to be
extreme or fanciful (Campomar v Nike).
Campomar v Nike: Defs conduct must cause the deception.
If deception arises as a result of the customers erroneous
assumption, which cannot be attributable to Defs
conduct, then the court can disregard it.
Australian Woollen Mills: Intention to deceive may assist.
Tabasco case: Deliberate copying for use in a completely
different market is not necessarily deceptive.
Miller v Britt Allcroft: Disclaimers used to expressly deny
any connection to pre-existing products are ineffective if not
prominent enough.
20th Century Fox v SA Brewing: Unauthorised markings
may even enhance the connection.
Campomar v Nike: Use of a registered mark can constitute
passing off and infringe s 52 TPA.

PASSING OFF
Commercial reputation?
Any reputation in Pls name/logo, product, or get up? Ie.
distinctive or merely descriptive/functional?
Hornsby BIC v Sydney BIC: Hard to get reputation in
descriptive terms.
BM Auto Sales v Budget: Can get reputation in descriptive
terms over time through use.
Interlego v Tyco; Philips Elec v Remington: Hard to get
reputation in common functional features of products.
Reckitt v Borden: Common getup can become distinctive
over time by use.
Stannard v Reay: The reputation/goodwill in Pls products
must exist in the mind of the relevant public [in Australia], at
the time of the misrepresentation.
Reputation of a foreign Pl can be established in Australia,
depending on factors:
ConAgra v McCain (advertisements in US magazines not
available in Australia no reputation here)
Anheuser-Busch v Castlebrae (international travel +
increasingly internationalised media reputation here)
Rumcoast v Prospero: The Internet makes reputations
extend beyond geographical location more easily today.
Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd: A
foreign well-known business can get reputation here, by
simply announcing an intention to set up business here.
Deceptive conduct?
Shell Co v Esso: Is Defs conduct likely to give ordinary
consumers (with imperfect recollection) an impression that
there is some connection between Def & Pl?
Conduct can be: name/logo, getup (for services), packaging
(for goods), advertising, product range names.
Similarities in name/logo, getup, packaging?
Campomar v Nike: Name in similar font/style (bold
with plain background) deceptive.
CA Henschke v Rosemount: Hill of Gold had
different connotations to Hill of Grace not
deceptive.
Red Bull; Pub Squash: Different name, but same
colour, size & shape packaging deceptive.
Dr Martens v Figgins: Prominent branding not
deceptive.
Similarities are common?
Time available for consumer selection (shorter time
deception more likely).
Reckitt & Colman v Borden: Ordinary shoppers
would make quick shelf selection no time to
discriminate deceptive.
Trade channel & manner the product is marketed.
Coca Cola v All-Fect: Common trade channel +
marketed at children deceptive.
Use in different market.
Tabasco case: Use of identical mark in different
market not deceptive.
McWilliams Wines v McDonalds: Use of Big Mac
in wine market not deceptive.
But Campomar v Nike: Use of Nike in perfume
market deceptive.
How brand & price conscious relevant consumers are.
Dr Martens v Figgins: Durable good + Customers
are aware of look-alikes no deception.

Damage?
Loss of trade. (Pub Squash)
Dilution of reputation through association with inferior goods.
Personality is deprived of opportunity to character
merchandise or grant endorsements.
Lego v Lego Lemelstrich: Loss of opportunity to use Pls
reputation (eg. franchise/licence) in another area of business.
Remedies?
Injunction & damages / account of profits.
Damages issues:
Hogan v Koala Dundee: Damages may not be available if
there is no fraud and no proper measure of damages.
Flamingo Park v Dolly Dolly: Exemplary damages if Def
blatantly disregarded Pls rights.
S 230 TMA: If Def was using his registered TM, had no
actual/constructive knowledge of use of Pls TM, and
immediately stopped using it when he found out, then Def
not liable for damages.

MISLEADING & DECEPTIVE CONDUCT (S 52

TPA)
Vieright v Myer Stores: Misleading or deceptive conduct
includes all conduct that would amount to passing off.
Differences from passing off:
No need to prove reputation/damage specifically (eg.
Talmax v Telstra);
Can attack unauthorised associations with 3rd parties;
Wider remedies.

BUSINESS/COMPANY NAMES
Nintendo v Care: Registering a business/company name does
not entitle use of such names in a way that constitutes a
breach of another persons mark.

Commerciality:
Invite media/news to highlight the differences.

 Advertise the differences (comparative ads).

REGISTERED TRADEMARKS
Registrable?
Sign used to distinguish own goods/services (dealt with in
the course of trade) from those of others?
S 6: Sign includes any letter, word, name, signature,
numeral, device, brand, heading, label, ticket, aspect of
packaging, shape, colour, sound or scent.
Koninklijke v Remington: Sign is itself a function of the good
not a trademark.
Application process
S 27: The owner of the mark can apply for registration of a
TM in respect of specified goods/services, if he is
using/authorising use of (or intends to use/authorise use of)
the TM in relation to those goods/services.
The Registrar will examine the application (s 31) and before
grant, acceptance is advertised in the Official Journal (s 34).
S 52: Any person may oppose registration within 3 months
(after which the Registrar must register it: s 68).
Grounds for rejecting application / opposing registration
Capacity to distinguish (invented/descriptive word?)
S 41: TM is not capable of distinguishing the applicants
designated goods/services from the goods/services of others.
Inherent capacity to distinguish?
Mix of inherent capacity to distinguish, use (or intended
use) by the applicant, and other circumstances?
Anheuser-Busch v Castlebrae (foreign trader was already
using Spuds MacKenzie mark couldnt distinguish Defs
goods)
Chocolaterie Guylian: Shape marks are less capable of
distinguishing, if they are based on common shapes that other
traders have a legitimate interest in using.
Kenman Kandy (invented spider-shape was potentially
registrable)
Deceptively similar
S 44: TM is substantially identical with, or deceptively
similar to, a TM registered (or applied for) by another person
in respect of similar goods or closely related services which
has an earlier priority date.
Exceptions:
Where there has been honest concurrent use of the 2
TMs, the Registrar may accept it subject to
conditions/limitations he thinks fit [eg. area of use] (s
44(3)).
Where the applicant (or predecessor) has
continuously used the TM before the other TMs
priority date, the Registrar cannot reject the
application because of the existence of the other TM
(s 44(4)).
S 60: TM is substantially identical with, or deceptively
similar to, a [existing well-known mark]; and because of that
reputation, use of the applicants TM would be likely to
deceive or cause confusion.
Virgin v Bowes: Virgin local garden service, was not
deceptively similar to the international Virgin.
Test of deceptive similarity (Shell Co v Esso): What
impressions would an ordinary customer get from the marks
perhaps in a hurried situation and without perfect recollection
of the other mark.

Factors:
Trade channel (Southern Cross v Toowoomba: Southern
Cross marks on goods sold alongside each other in
country shops deceptively similar);
How closely related the goods/services are (Telstra v
Yellownet: Yellownet for database was deceptively
similar to Yellow Pages for directories).
Ownership
S 58: Applicant is not the owner of the TM.
Shell Co v Rohm & Haus: If ownership is not established by
prior use, then it is established on the basis of (a) authorship
of the mark, (b) intention to use it, and (c) application for
registration.
A local trader can own a TM which has been used in another
country but not in Australia.
Michael Sharwood v Fudruckkers: Foreign traders cannot
claim ownership simply by advertising in foreign journals
which circulate to Australia; some use of the TM in
Australia is needed.
Other grounds
S 39: TM contains signs prohibited by regulations;
S 40: TM cannot be represented graphically;
S 42: TM contains scandalous matter, or its use would be
contrary to law;
S 43: TM is likely to deceive or cause confusion because of
some connotation contained in it;
S 59: Applicant does not intend to use, or authorise the use
of, the TM in relation to the goods/services specified in the
application; (Imperial Group v Philip Morris)
S 61: TM contains a false indication of geographical origin;
S 62: Application or supporting documentation was
improperly amended, or contained false evidence.
Loss of a registered TM?
S 88: An aggrieved person may apply to Court for an order
cancelling a registered TM, on any of the grounds of
opposition; or on the ground that the registration was obtained
as a result of fraud, false suggestion or misrepresentation.
S 24: If a registered TM consists of a sign that becomes a
generally accepted descriptive term within the relevant
trade, then the owner loses exclusive rights to use, or authorise
others to use, the sign in relation to goods/services of the same
description.
Removal from register for non-use
S 92: A person aggrieved can apply to the Registrar to remove
a mark, if:
The registered owner had no intention to use the TM at
the time of application, and has not used it; or
The mark has not been used for a continuous 3 year
period.
S 7(3): Use of a TM by an authorised user is taken to be use
of the TM by the owner of the TM.
S 8(1): authorised user = a person who uses the TM
under the owners quality/financial control.
Rights given by registration?
S 20(1): The registered owner of a TM has the exclusive
rights to:
(a) use the TM; and
(b) authorise other persons to use the TM;
in relation to the goods/services registered for.

 S 20(2): The registered owner of a TM has the right to get

relief for infringement of the TM.

Infringement?
Sign is substantially identical with, or deceptively similar
to, a registered TM?
Used sign as a TM?
S 120(1): Used on the same goods/services as those registered
for?
S 120(2): Used on goods/services closely related to those
registered for?
BUT no infringement if use of the sign is not likely to
deceive or cause confusion.
Coca-Cola v All-Fect (softdrink & confectionary are
closely related)
S 120(3): Used on goods/services unrelated to those registered
for?
Registered TM is well-known in Australia [within the
relevant sector of the public]?
The sign is likely to show a connection between the
unrelated goods/services and the registered owner?
Registered owners interests are likely to be harmed?
Coca-Cola v All-Fect: A 3D product can infringe a 2D mark.
Coca-Cola v All-Fect: Cant infringe by using the idea behind
a mark.
Sony v Saleh: Importation may infringe a registered TM under
s 120.
S 123 (Transport Tyre v Montana): Cannot restrain
parallel importation of legitimately TMed goods, after
the owner consented to application of the TM anywhere.
Deceptively similar
Oakley v Oslu (OakY was deceptively similar to Oakley)
Polaroid v Sole (Solaroid was deceptively similar to
Polaroid)
Aldi v Frito-Lay (Cheezy Twists was not deceptively similar
to Twisties)
MID Sydney v Aust Tourisn (Chifley was not deceptively
similar to Chifley Tower)
Coca-Cola v All-Fect (confectionary was deceptively similar
to 2D contour bottle mark)
Use as a trademark (whats the purpose of the use?)
There is use as a TM if the sign is used to distinguish the
goods/services from those of other traders, in the course of
business.
If the sign is used to merely describe the good/service, it is
not used as a TM.
Johnson & Johnson v Sterling (CAPLETS on drug was
merely used to describe the shape of the tablets inside
not use as a TM)
Pepsico Australia v Kettle Chips (use of Kettle or
Kettle Cooked on chip packets was simply descriptive
of the process of cooking chips not use as a TM)
Aldi v Frito-Lay (use of Cheezy Twists on snack food
did more than merely describe the contents; it was used to
distinguish use as a TM)
Koninklijke v Remington: If the sign is used as a (technical)
function of the good, it is not used as a TM.
Exceptions to infringement? No infringement if:
S 122(1)(a): the person uses in good faith his name, or the
name of his place of business (or that of a predecessor in
business);
S 122(1)(b): the person uses a sign in good faith to indicate
the characteristics of goods/services (eg. kind, quality,

quantity, intended purpose, value, geographical origin, time of

production);
S 122(1)(c): the person uses the TM in good faith to indicate
the intended purpose of goods (eg. as accessories or spare
parts) or services;
S 122(1)(d): the person uses the TM for comparative
advertising purposes;
S 122(1)(e): [authorised user exercises their rights];
S 122(1)(f): the court thinks that the person would obtain
registration of the TM if applied for;
S 122(1)(g) a condition/limitation on the registration allows
the use.
S 122(2): a disclaimer has been registered in respect of a part
of a TM, and the person uses that part.
S 123: The TM was applied with consent of owner.

Prior use of similar mark

S 124(1): No infringement of ss 120(1)-(2), if the Def (and
predecessor in title if relevant) continuously used his
unregistered mark in the course of trade, from a time before
the earlier of:
the date of registration of the registered TM; or
the first use by the registered owner.
S 124(2): The exception only applies to use in the particular
area that the Def used his unregistered mark in.
[so cant franchise under that mark]
Remedies?
S 126: Injunction + damages / account of profits.
S 127: Where the Def successfully applies for removal of the
TM for non-use, the court will not grant damages or account
of profits for the relevant period.
Falsely claiming registration
S 151: It is an offence to intentionally/recklessly represent that
a TM (or part of it) is registered, or that a TM is registered in
respect of goods/services, unless he knows (or has reasonable
grounds to believe) that it is true.
Unjustified threats
S 129: Person made groundless threats of legal proceedings in
relation to registered TM infringements?
Remedy = declaration, injunctions or damages (s 129(2)).

DOMAIN NAMES
Registration of domain name can:
Be passing off (British Telecom);
Infringe a registered TM (Brookfield Comms).
Dispute resolution procedures: UDRP & auDRP
Although contractual, they are cheap & fast.
UDRP: The Registrar will cancel/suspend/transfer a domain
name if:
Domain name is identical, or confusingly similar, to the
complainants trademark;
Other party has no rights or legitimate interests in the
domain name; and
Other party registered & uses the domain name in bad
faith.
Telstra v Nuclear Marshmallows: Inactivity can amount to use
in bad faith.
Reg Vardy v David Wilkinson (registration intended to disrupt
business is acting in bad faith)

BREACH OF CONFIDENCE
Confidential information
Identifiable
Trustek v Burke: The relevant information must be identifiable
with adequate precision.
Talbot v General TV: The information does NOT need to be in
material form (can be oral).
Fraser v Thames TV: The information must be sufficiently
developed.
Confidential
AG (Eng) v TV NZ: To be confidential, the information must
NOT be in the public domain.
Information must be relatively secret may be protected
even if it is not unique to the possessor.
Ansell Rubber: Factors whether information is confidential:
Extent known by employees;
*Measures taken to protect it (internally & externally);
*Value of the information;
*Cost/difficulty in ascertaining/developing the
information.
Wright v Gasweld: Additional factors:
*Degree of skill & effort expended in getting the
information;
*Express directions that material is confidential;
*General industry practice in degree of confidentiality
attached to such information;
Level of seniority/responsibility of people to whom the
information is disclosed.
Mars UK v Teknowledge: Mere encryption of information
does not make it confidential.
Voluntary disclosures
Coco v Clark: 3 elements to establish breach of confidence:
1) The information must have the necessary quality of
confidence.
2) That information must have been imparted in
circumstances importing an obligation of confidence.
Test = would a reasonable person in the position of
the recipient have realised that the information was
given to him in confidence?
Talbot v General TV Corp: Information given in
private is likely to be given in confidence.
3) There must be an unauthorised use of that information
to the detriment of the party communicating it.
Seager v Copydex: Even subconscious use of
confidential information can breach confidence.
Industrial espionage
Franklin v Giddins: Acquiring confidential information
surreptitiously/improperly is a breach of confidence.
Du Pont v Christopher: It is a breach of confidence to take the
secret without permission at a time when the Pl is taking
reasonable precautions to maintain its secrecy.
But discovering anothers secret process through
inspection & analysis or reverse engineering of a finished
product, or independent research, is NOT a breach of
confidence.

[AG v Jonathan Cape: This defence is presumed to be successful

for disclosure of govt info.]

 Possible delivery up / destruction.

Employment relationships
Duty of fidelity
Robb v Green: During employment, the employee must act
in the employers interests, not compete against the employer,
and not solicit the employers clients (ie. must not use any
information to the employers disadvantage).
Independent Management v Brown: Where an employee has
given notice of termination, their duty of fidelity towards the
end of employment is reduced.
The employee can set up & prepare, but NOT solicit
customers, take confidential information or memorise it.
Duty of confidence
Confidential info generated in the course of employment
belongs to the employer.
Faccenda Chicken v Fowler: Employment contracts contain
an implied term that imposes on the employee a duty of
confidence, during & after employment, in relation to
confidential information accessed at work.
Trivial or easily accessible information is not protected
post-employment.
Specific trade secrets are protected post-employment.
Exception: Herbert Morris v Saxelby: Post-employment, the
ex-employee is free to use general skill, knowledge and
experience acquired on the job. BUT:
Printers & Finishers v Holloway: An ex-employee cannot
use/disclose confidential information committed to
memory.
Metrans v Courtney-Smith (ex-sales manager could use
customer info absorbed into her general knowledge (not
memorised)).
NP Generations (LJ Hooker) v Feneley: Confidential
information copied into the ex-employees personal diary
is not necessarily part of personal knowledge.
Wright v Gasweld: Confidential information absorbed
into the ex-employees general skill/knowledge can be
protected post-employment, by restrictive covenants.
Commercial Plastics v Vincent: To be valid,
restrictive covenants must be reasonable in
scope/field, time & area.
Third party liability
Fraser v Evans: Can restrain 3rd parties from using/disclosing
CI when they have knowledge (actual/constructive) that its
use/disclosure is unauthorised.
Wheatley v Bell: 3rd parties who buy CI cannot allege the
defence of bona fide purchaser for value.
Defences
No duty of confidence in relation to illegal acts (Gartside v
Outram) or grossly immoral matters (Stephens v Avery).
Lion Labs v Evans; X v Y: Breach of confidence in a matter of
real importance is excused where the public interest in
disclosure outweighs the public interest in confidentiality.
Remedies
Anton Pillar order where evidence might be
destroyed/removed/tampered pre-trial.
Injunction (withhold disclosure, or prevent further use).
If CI has been released into public domain, can apply the
springboard doctrine to delay Defs use of it & remove
his unfair start.
Damages (loss of opportunity to licence; loss of profits); or
account of profits.