NUCKIN FUTS accepted for registration as a trade mark

Posted by Nicole Reid

Image courtesy of steffenz

The trade mark NUCKIN FUTS has been accepted for registration by an Australian trade marks examiner. This means that the mark will be registered as long as no opposition is received by 12 April 2012 (or any such opposition is unsuccessful). The decision to register the mark followed an adverse first report by the examiner stating that the application would be rejected on the basis that the mark was scandalous.

According to reports, the initial objection was based on the fact that the proposed trade mark was an 'obvious spoonerism' evoking an offensive word. However the applicant, Universal Trading Australia Pty Ltd as trustee for Basil and Groovy Trust, reportedly argued that the swear word implied by the trade mark was part of Australian everyday language and should not be considered offensive.

Under section 42(a) of the Trade Marks Act 1995 (Cth), an application for registration of a trade mark must be rejected if the Registrar of Trade Marks is satisfied that the trade mark 'contains or consists of scandalous matter'.

In an earlier decision considering the application of this section, a delegate of the Registrar found that, in order for a trade mark to be rejected under section 42(a), it must do more than give offence. Instead, there must be a 'real tangible danger' of 'a significant degree of disgrace, shock or outrage' being caused by the mark (Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594). In that case, the hearing officer accepted for registration the trade mark LOOK GOOD + FEEL GOOD = ROOT GOOD on the ground that, while crude and potentially in bad taste, it was not in ordinary circumstances likely to cause a significant degree of shock to members of the public.

Last year, the trade mark POMMIEBASHER was also accepted for registration, with the hearing officer finding that the term was colourful Australian slang and would not cause offence to any person (Peter Hanlon [2011] ATMO 45).

Other trade marks that have been accepted for registration in Australia include several marks incorporating the word 'damn' or 'bloody', CNUT, ABSOFCUKINGLUTELY (after rejection of the proposed mark ABSOFUCKINGLUTELY on the ground of section 42(a), although the registration was successfully opposed on different grounds)[1] and FCUK. The latter was the subject of a proceeding in the United Kingdom unsuccessfully seeking a declaration of invalidity (Re Registered Trade Mark No 2184549 in the name of French Connection Limited (2006) 70 IPR 438). It was held that, although the trade mark could be used to evoke the similarly-spelled swear word, it was not the swear word and that accordingly 'the generally accepted moral principle prohibiting the use of swear words' did not apply to the word FCUK. On that basis it was found that 'the intrinsic qualities of the mark FCUK are not such as to render it objectionable'.

On the other hand, an application to register the word KUNT was rejected in Australia because it was the aural equivalent of a swear word that was still considered highly offensive, not merely suggestive of such a word (Application to Register KUNT [2007] ATMO 34). The hearing officer did comment that the mark KÜNT, which was the word intended to be used by the applicant, may be registrable with an endorsement stating any meaning in a foreign language. However a subsequent application to register KÜNT was allowed to lapse after an adverse report.

In summary, resemblance to or evocation of a swear word does not necessarily preclude the registration of a trade mark. However, it appears to remain the case that an application for such a mark may be found to be scandalous if it too closely resembles a swear word.

Although the applicant for the NUCKIN FUTS trade mark sought to rely on the increasing acceptance of the relevant swear word in the community, it is not clear that this was the sole reason for its acceptance for registration or that a proposed mark would be accepted if it bore a closer aural or visual resemblance to a swear word.  Further, the NUCKIN FUTS trade mark is subject to an endorsement requiring that it not be marketed to children, which further supports the view that potentially vulgar trade marks will still be subject to close scrutiny by IP Australia.

Partner: Paul Kallenbach
 

[1] Home Box Office Inc v Isaias Florenca [2010] ATMO 99.

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UK Supreme Court hears first patent case and clarifies the 'industrial applicability' test

The Supreme Court of the United Kingdom has handed down its first patent decision, over-turning the Court of Appeal's decision to revoke a patent owned by Human Genome Sciences Inc (HGS) covering a nucleotide gene sequence encoding a novel protein, called Neutrokine-α (the Patent). The decision has clarified the 'industrial application' requirement for patentability under English law and has emphasised that it should be interpreted in line with decisions of the European Patent Office (the EPO).

Background to the case

HGS filed the underlying patent application with the EPO in October 1996 and was granted the Patent in August 2005. The claimed invention covers the existence and structure of Neutrokine-α, its amino acid sequence, antibodies to the protein and its membership of the TNF ligand superfamily. The invention was identified using 'bioinformatics' techniques - a computational process which enables researchers to identify genes and proteins by comparing their sequences with previously identified genes. HGS was unable to identify precise activities of Neutrokine-α using this process. However, HGS used existing information about other members of the TNF superfamily to predict the biological properties and therapeutic activities of Neutrokine-α. This led HGS to disclose in the Patent a long list of potential uses of Neutrokine-α in the diagnosis, prevention or treatment of a large number of disorders and conditions.

Eli Lilly and Company (Eli Lilly) commenced opposition proceedings against the Patent in the EPO in June 2008. The EPO revoked the Patent on the basis that the claimed invention constituted a claim to an 'arbitrary member of the TNF ligand superfamily' without a known function (ie. the claims were too general and there was no experimental evidence in the Patent to support any of the contentions). HGS appealed to the Board of the EPO, which subsequently reversed the decision and directed that the Patent be maintained.

Around the same time, Eli Lilly also commenced proceedings in the High Court of England and Wales to revoke the Patent. The trial judge (Kitchin J) revoked the Patent on the basis that HGS had provided no evidence of potential uses for the invention. The trial judge found that the 'functions' of the nucleotide were 'at best, a matter of expectation and then at far too high a level of generality to constitute ... anything except a research project'. Accordingly, it did not amount to sufficient disclosure of an industrial application.

On appeal, the Court of Appeal agreed with the trial judge. Lord Justice Jacob's decision is of particular interest, as he rationalised the reasons for the different outcomes (at that time) in the English Court and the EPO. He noted that the EPO and Courts serve different roles, with the EPO having a more administrative function and the Court proceedings being of a final nature. Additionally, the EPO and Courts have different approaches to evidence and, in this case, they considered different evidence when reaching their decisions.

Supreme Court findings

The central issue for the Supreme Court was whether, in light of the common general knowledge at October 1996, the Patent satisfied the requirement for 'industrial application'. Under Article 57 of the European Patent Convention, an invention is capable of industrial application 'if it can be made or used in any kind of industry, including agriculture'.

The Supreme Court acknowledged that the relevant law to be applied were the principles developed in prior EPO Board decisions. Lord Neuberger, giving the leading judgment, undertook a detailed analysis of the case law in relation to industrial application, which he concluded was consistent on the following principles:

(i) the term 'industry' is to be interpreted broadly, as referring to activities which provide any kind of commercial gain;
(ii) the patent must disclose a 'practical application' and 'some profitable use' for the claimed invention (ie. a 'concrete benefit' to be expected in order for the monopoly to be granted);
(iii) this benefit must be derivable directly from the patent description combined with the common general knowledge;
(iv) a vague and speculative indication as to potential applications that may or may not be achievable will not be sufficient; and
(v) the patent and common general knowledge must enable the skilled person to reproduce or exploit the claimed invention without undue burden.

The Supreme Court was mindful of the strong tension faced by inventors when deciding whether to file a patent application. On the one hand, if an inventor files a patent application early without sufficient evidential data to support the claimed invention, they risk not obtaining the patent and have then disclosed their invention to the public. On the other hand, if an inventor waits until they have further experimental data at hand, they risk a competitor beating them to the patent.

The Supreme Court acknowledged two strong policy arguments in favour of finding that the Patent satisfied the 'industrially applicable' test. They were:

(i) to reduce the risk of a 'chilling effect' on investment in bioscience; ie. a high threshold to satisfy the requirement of industrial application may discourage innovators from investing in research and development; and
(ii) to harmonise the UK's interpretation of the European Patent Convention with that of other European states.

The Supreme Court also noted that where an appellate court is called to consider a case where there are two or more preceding lower court decisions in favour of one party, it is only in rare cases that the appellate court will interfere with their findings. On balance they considered that this was a case where the lower courts' findings should be overturned.

Significantly, the Supreme Court also reconfirmed that, in the interests of harmonisation, European patent law should be followed unless there are strong reasons to differ. That said, the English Courts need not unquestioningly follow EPO decisions, as the Supreme Court acknowledged that 'there has to be room for dialogue between a national court and the EPO'.

Applying these principles, the Supreme Court found that the lower courts had set too strict a standard for 'industrial application' and found that there was sufficient disclosure in the Patent. The Supreme Court therefore (i) allowed HGS's appeal; (ii) held that the Patent satisfied the requirements of Article 57; (iii) dismissed Eli Lilly's cross-appeal on the insufficiency argument; and (iv) remitted the case to the Court of Appeal to deal with outstanding issues.

Impact of the decision

The case has significant implications on the bioscience industry generally and, in the author's view, is likely to receive a mixed reaction. For those patentees owning patents based on bioinformatics techniques and predicted therapeutic uses, the Supreme Court's decision endorsing the lower 'plausible' test for industrial applicability will clearly be welcomed. However, many may view the decision as going too far and potentially opening the floodgates for unduly speculative patents. Lord Justice Jacob, in the Court of Appeal decision, succinctly characterised this concern when he observed that '[you] cannot have a patent for an invention when only years later you or someone else finds out what it is for'.

This is not, however, the end of the case and it remains to be seen how the Court of Appeal determines the other grounds that have been remitted to it by the Supreme Court.

Senior Associate: Dennis Schubauer

Do your homework before you watch your (3D) TV

Posted by Hugh James

The Federal Court's decision by Justice Collier last month to fine Harvey Norman $1.25 million for misleading advertising is a timely reminder for businesses to ensure that their campaign reflects what they can ultimately deliver to consumers.

The decision

Harvey Norman was found to have breached sections 18 and 29 of the Australian Consumer Law (forming Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (ACL) (as well the equivalent provisions of the now repealed Trade Practices Act 1974) by misleading consumers in non-metropolitan areas during its "3D Finals Fever" advertising campaign, which ran in periods between October 2008 and July 2011.

As part of the Federal Court action, the Australian Competition and Consumer Commission (ACCC) claimed Harvey Norman's catalogue advertisements gave consumers the impression that 3D TVs purchased from Harvey Norman could be used in all areas the catalogue was distributed.  In particular, the advertising suggested that consumers could watch the 2010 AFL and NRL grand finals in 3D.  In fact, 3D broadcasts of the grand finals were only available in metropolitan areas.

In Justice Collier's view, Harvey Norman's fine print disclosures did not counterbalance the overall impression of its catalogue advertisements. Her Honour found that, in light of Harvey Norman's knowledge of the 3D broadcast limitations, the campaign was 'seriously misleading and deceptive, on a significant and far-reaching scale'. In response to the large fine imposed on Harvey Norman under the decision, ACCC Chairman Rod Sims has emphasised the responsibility of retailers to provide consumers with correct information as part of any advertising campaign. This is especially the case where new technology is offered, as consumers may rely on retailers to provide details about how the new technology works. The ACCC Chairman has also stated that where retailers use aggressive advertising campaigns, they face greater scrutiny by the ACCC to comply with the ACL.

What does this mean for businesses?

Businesses intending to offer consumers emerging technology products ought to do their homework before implementing any large-scale, multi-media advertising campaigns. That homework should include technical and compliance planning, not just the inclusion of limited fine print disclosures.

Failure to include appropriate disclosures in advertising about new technologies is likely to attract the attention of the ACCC, and potentially risk a hefty fine from the Federal Court.

Partner: Paul Kallenbach

Privacy Roundup for close of 2011

Posted by Veronica Scott


Annual Report (2010-11) from OAIC
The Office of the Australian Information Commissioner ('OAIC') has released its first annual report since it was created in November 2010 to centralise the government's executive functions in relation to freedom of information ('FOI'), privacy protection and information policy.  The Report gives an insight into the OAIC's operations during its first year and its areas of focus for 2011-12.

Much of the OAIC's operational work has focused on ensuring compliance with the Commonwealth Privacy Act 1988 and Freedom of Information Act 1982. Under the FOI regime, the OAIC received 88 complaints (finalising 39), 176 applications for review (finalising 29), over 1,000 applications by agencies for extensions of time and some 700 telephone enquiries.  In the privacy area, it received 1,222 complaints, closing 1,167 (including from previous years), and almost 11,000 telephone enquiries.

The OAIC will continue its active involvement in the Australian Law Reform Commission's privacy reform process and expects to be asked to undertake a review of FOI charges. It has a backlog of privacy and FOI complaints and will this year begin evaluating agency compliance with the Information Publication Scheme.  It will also continue liaising with privacy regulatory authorities and information commissioners in Australia and overseas.
By Peter Kearney


Introducing the first proposed amendments to the Privacy Act
 

At the Privacy Summit held by iappANZ on 30 November 2011, the Minister for Privacy and Freedom of Infomration, Brendan O'Connor, announced that the proposed amendments to the Privacy Act introducing the new Privacy Principles and changes to the credit reporting provisions, would be introduced in the Autumn sittings of Parliament in 2012. Although not stated, it is assumed that there will also be some amendments tot he powers of the Privacy Commissioner.
By Charles Alexander

Privacy Commissioner opens an investigation into Telstra bigpond

The Privacy Commissioner has opened an investigation into the Telstra data breach which arose as a result of its many of its bigpond customers' personal information being downloaded from an insecure Telstra customer portal recently.

Telstra has been asked to also provide a written report on how the breach occurred, what information, if any, was compromised and what steps it has taken to prevent a reoccurrence. An investigation report is expected in late January 2012.

**New Federal privacy case notes Alert **
We have below reported on State based privacy cases of interest. The OAIC has now published 13 new case notes for the end of 2011 relating to privacy matters it finalised. The case notes are also available on AustLii. There are no significant decisions to report on at this stage. For summaries of and tips from previous cases decided by the former Office, see our Privacy Newsletter on our website.

Recent Privacy Case notes from the States

Here we look at some recent State privacy decisions in Victoria, NSW and Queensland.
By Veronica Scott and Mark Silberer

Victoria

Complainant AU v Public Sector Agency [2011] VPrivCmr 03

This case is an important reminder to organisations to observe their privacy obligations when dealing with internal complaints.

The complainant was an employee of a public sector agency subject to the Victorian Information Privacy Act 2000 and the Information Privacy Principles (IPPs). The complainant had made a bullying complaint against co-workers by way of a document to the agency outlining the outcomes they sought and a list of all of the alleged bullying incidents. They were advised by the agency of the complaints process and that their document would be given to each of the alleged bullies.  The complainant agreed at first, believing there was no other option, but then changed her mind. However by then the document had been disclosed.

The complainant alleged that the disclosure of the documentation breached her privacy under IPPs 1.3 (collection), 2.1 (disclosure) and 4.1 (data security).

The Victorian Privacy Commissioner found that: where an agency receives a complaint about its employees, it will be necessary to provide some documentation to relevant parties so that the complaint can be investigated and responded to. However, the information provided was more than necessary to enable the alleged bullies to respond to the complaint; andthe document could have been edited to protect the complainant's privacy.

The complaint was successfully conciliated. The agency apologised, paid compensation and agreed to change its policies relating to bullying investigations.

Complainants AS v Contracted Service Provider to a Department [2011] VPrivCmr 1

This case concerns the obligation to consider ways of gving as full access as possible to personal information.

The complainant had sought access to personal information held about her and her children by a contracted service provider to a Department (‘the CSP’) under IPP 6. The CSP responded that it was seeking legal advice.  112 days after making the request, the complainant made a complaint to the Privacy Commissioner that the CSP had not provided her with the personal information sought or adequate reasons for the delay.  The CSP argued that the information could not be released as it contained private information about other individuals.

The Privacy Commissioner found that the CSP had not outlined steps it had taken to consider ways to give the complainant access to the information and suggested other methods of providing fuller access including:

• notifying or gaining consent of other individuals;
• removing or redacting identifying information; or
• properly considering whether the information unreasonably impacted on the privacy of others.

The complaint was conciliated by the redacted file being provided to the complainant.

New South Wales

VK v Department of Education & Training (No 3) [2011] NSWADT 168

This decision by the NSW Administrative Decisions Tribunal ('ADT') is an important reminder to employers that they must be mindful of what information they disclose in relation to a work cover claim by an employee.

In 2004, the applicant, a teacher, commenced stress leave and lodged a workers compensation claim as a result of events that happened at his school. A consulting psychologist attended the school to interview the principal in relation to the claim.  The principal disclosed to the psychologist, amongst other things, information they had received via an anonymous phone call relating to the applicant's behaviour and problems at another school where he was previously employed.

The applicant claimed the Department, by its officer the principal, disclosed and used information contrary to sections 16 and 18 of the Privacy and Personal Information Protection Act 1998 (NSW) ('PPIPA').  Section 16 requires an agency to check the accuracy of information before it is used and section 18 limits disclosure of information.

The ADT determined that the Department had:

• breached section 16 as the principal knew the identity of the applicant's previous school and failed to check the accuracy of the information received via the anonymous phone call; and
• breached section 18 as the disclosure of that particular information was not necessary for the purpose of enabling psychologist to determine the merit of the applicant's work cover claim.

NK v Northern Sydney Central Coast Area Health Service (No. 2) [2011] NSWADT 81

This is the first time that the maximum award for compensatory damages has been made

The ADT has ordered the respondent to pay $40,000 compensation to the applicant after an earlier decision ([2010] NSWADT 258) which found that the respondent had breached sections 16 and 17 of the PPIPA and numerous Health Privacy Principles (HPP) including: 

• HPP 3 - collection of information was to be from individual concerned;
• HPP 4 - individual was to be informed of certain matters when their information was collected from a third party (in this case another hospital);
• HPP 5  - the applicant's health information should have been kept secure, inaccurate information was provided by the nurse;
• HPP 9  - officers of the respondent failed to check the accuracy of the information; and
• HPP 10 - the applicant's health information was used for a purpose other than for which it was obtained and the nurse disclosed the information to the HR Manager without the applicant's consent.

This is the first time the maximum award has been made, the ADT finding that the respondent was entitled to "compensatory damages as a step towards restoring him to the position that he would have been in but for the breaches" having regard to what it described as the respondent's "oppressive" conduct, the fact that the applicant had been "punished" as a result of the respondent's own privacy breaches which were based on unchecked inaccurate information, the applicant was both an employee and a patient, the evidence of loss and damage attributable to the respondent's conduct and the manner of the respondent's conduct.

The applicant was an employee and patient of a hospital operated by the respondent.  The applicant had bipolar disorder.  A psychiatric nurse at the hospital had obtained information concerning the applicant from another hospital and disclosed it to the respondent's HR Manager.  As a result, the respondent was locked out of the hospital on the basis that he was a threat to staff and patients at the hospital.  Some of the information provided by the nurse later proved to be incorrect and the officers of the respondent failed to check its accuracy. The respondent maintained that its officers had acted in good faith and the applicant failed to show evidence of damage.

The ADT found that the applicant's health information was interfered with, disclosed and used against him, preventing him from working for several years and causing a great deal of stress and uncertainty.  In addition to payment of compensation the respondent was also ordered to correct or remove the inaccurate information contained in the applicant's file, commence an investigation in to the conduct of the nurse and  make a formal apology.

Queensland

DH6QO5 and Department of Health (310034, 11 May 2011)

The applicant applied to the Department  for access to their personal information, most of which  was released. However, the Department refused to release a small piece of text (being information supplied by a third party) under section 67(1) of the Information Privacy Act 2009 (Qld) on the basis that disclosure would be contrary to the public interest under section 47(3)(b) of the Right to Information Act 2009 (Qld) ('RTI Act'). 

QH also withheld a number of documents on the basis that they were non-existent or could not be located (under section 67(1) of the IP Act and sections 47(e) and 52(1)(e) of the RTI Act).

The applicant complained to Right to Information  Commissioner that he was entitled to the information as it would enable him to assess which treatment decisions had been made about him.  The Department argued that disclosing information from third parties would hinder its ability to obtain confidential information in the future by deterring potential sources that may assist in a patient's treatment.

The RTI Commissioner found that:

• it was in the public interest to ensure such agencies were able to obtain confidential information from third party sources and given that the applicant had been provided the bulk of information requested, it was in the public interest to withhold the small extract of information; and
• the Department was not obliged to disclose documents that could not be located as they had demonstrated that reasonable steps had been taken to find them.

Partner: Charles Alexander