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May 18, 2012

Quick trade mark checks

In conjunction with the new National Business Names Register, IP Australia has introduced TM Check to help Business Name applicants more easily identify pending and registered trade marks which may be similar or identical to their proposed business name.

TM Check is a simplified search for trade marks that have been applied for or registered with IP Australia. It is intended to provide the user with an indication only - It is not a substitute for the comprehensive ATMOSS database search.

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Posted 18th May 2012 by David Jacobson in Business names, Intellectual Property

August 16, 2011

Senate Committee report on Business Names Bill

The Senate Economics Committee Report on the Exposure draft of the Business Names Registration Bill 2011 has recommended that the Bill be passed in time for a May 2012 commencement notwithstanding its concerns in the following areas:

  • restrictions on the ability to verify the identity of credit applicants through the national business names register
  • jurisdictional conflicts between the Bill and state and territory probate laws. There are no procedures in the bills as to how ASIC will determine who is a rightful heir to a deceased business name owner and the measures they will take should a new and different heir—as appointed by the state Supreme Courts—make claim to a business registration.
  • individuals should be able when applying to register a business name to concurrently search the database for similar or identical domain names and trademarks.

UPDATE 17 August: The Business Names Registration Bill 2011 has been introduced into the House of Representatives together with Business Names Registration (Transitional and Consequential Provisions) Bill 2011 and Business Names Registration (Fees) Bill 2011.

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Posted 16th August 2011 by David Jacobson in Business names, Intellectual Property

May 17, 2011

When are your secrets safe with your employees? Case note: Seven v Warburton

When we talk about keeping secrets secret we mean we want to keep them secret from competitors and other parties as well as physically secure.

But not every secret is genuinely confidential and not every secret will be legally protected.

Disputes occur when employees leave with knowledge about a business including commercially sensitive information.

And when we retain a consultant, enter a joint venture, seek an investor or pitch a deal we want a confidentiality and non-disclosure agreement signed.

Whilst information you provide your external lawyers is usually protected by legal professional privilege, information exchanged between executives and in-house counsel may not be.

You should identify your intellectual property and trade secrets and protect them appropriately. But some secrets cannot be protected simply because they would be embarrassing if they became publicly known. (more...)

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Posted 17th May 2011 by David Jacobson in Business Planning, Intellectual Property

May 13, 2010

National business names registration

A new national business names registration system is due to start in the first half of 2011. The proposed changeover date is 4 April 2011.

The purpose of business name registration is to protect consumers by identifying persons trading under names that aren’t the same as their personal, company or other entity name.

The scheme will also reduce administration for businesses trading in multiple jurisdictions.

Currently business names must be registered in each state or territory a business operates in. The new system requires business name registration nationally only, regardless of whether a business is not carried on in every state.

The National Register will
• Replace all the current state based registers
• Be administered and maintained by ASIC
• Be online
• Carry out automatic checks for identical or similar company or business names which are already registered

The ABN/Business Names Registration Project's objectives include:

  • making business registration available online 24/7;
  • improving awareness about the different rights conferred by business names in comparison to trade marks;
  • enabling registration in one process for both an ABN and national business name.

New Registrations will require an ABN in order to register a new
business name.

Existing registrations will not require an ABN if the business name is
currently registered on a state register and does not have an ABN.

All current registrations will transfer across to the new national register.

If the same business name is registered in multiple jurisdictions by the same entity, all registrations will be merged into the one registration.
If the same business name is registered in multiple jurisdictions by different entities, registrations will be distinguished by state identifiers at the end of the name eg (SA), (NSW).

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Posted 13th May 2010 by David Jacobson in Business names, Business Planning, Compliance, Intellectual Property

April 23, 2009

Ice TV wins High Court appeal

In IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, the High Court has decided (6-0) that IceTV's use of some of Nine Network's time and title information obtained from aggregated program guides did not infringe Nine's copyright in its weekly schedules. The High Court restored the trial judge's original decision (see here and here).

The court was aware of the commercial implications.

Here's what French CJ, Crennan and Kiefel JJ (who delivered a separate judgment from Gummow, Hayne and Heydon JJ) said:

So as to indicate that the time and title information alleged to have been reproduced did not form a large part of a Weekly Schedule, the primary judge referred to the copying of "slivers of information". However, in order to assess whether material copied is a substantial part of an original literary work, it is necessary to consider not only the extent of what is copied: the quality of what is copied is critical.

This principle has a long provenance and it is particularly apposite when considering a compilation. Some compilations are no more than a selection or arrangement of facts or information already in the public domain. When the particular form of expression contains facts and information, it is not helpful to refer to "the rough practical test that what is worth copying is prima facie worth protecting". To take an example, facts are obviously worth copying for purposes such as a narrative work of history which depends on secondary sources. It is equally unhelpful to refer to the "commercial value" of the information, because that directs attention to the information itself rather than to the particular form of expression.

It is often said that questions of whether a substantial part has been copied are questions of fact and degree. However, a factor critical to the assessment of the quality of what is copied is the "originality" of the part which is copied....

Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and the entitlements of the reading public. The Act mandates an inquiry into the substantiality of the part of the work which is reproduced. A critical question is the degree of originality of the particular form of expression of the part. Consideration of the skill and labour expended by the author of a work may assist in addressing that question: that the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original. However, focussing on the "appropriation" of the author's skill and labour must not be allowed to distract from the inquiry mandated by the Act. To put aside the particular form of expression can cause difficulties, as evidenced by Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd.

It is not seriously in dispute that skill and labour was expended on producing the Weekly Schedules (and the Nine Database). The evidence disclosed considerable skill and labour involved in programming decisions. There was a contest about whether it mattered if some of the skill and labour expended was directed to business considerations. Plainly, the skill and labour was highly relevant to matters such as advertising revenue. It is not difficult to understand that questions of the timing of particular broadcasts are crucial for advertising revenues. The fact that business considerations inform the decision to adopt a particular form of expression will not necessarily detract from the originality of that form of expression.

However, the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine's employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.

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Posted 23rd April 2009 by David Jacobson in Intellectual Property

August 6, 2008

Surveyors entitled to be paid for copying of plans

In Copyright Agency Limited v State of New South Wales [2008] HCA 35, the High Court decided that the State of New South Wales was not entitled to use surveyors’ plans (by copying the survey plans and providing them to the public) without fairly remunerating copyright owners.

The court decided that consulting surveyors (who appointed CAL as their collecting agency) own the copyright in their survey plans, which are “artistic works” protected by the Commonwealth Copyright Act.

There was no claim that the State had breached copyright.

The Court held that various factors militated against implying a licence in favour of the State in respect of its dealings with survey plans.

  • First, nothing in the conduct of a surveyor in preparing plans for registration involved abandoning exclusive rights bestowed by the Act, particularly since the statutory licence scheme qualified those rights on condition that remuneration be paid for permitted uses.
  • Secondly, surveyors could not practise their profession without consenting to the provision of survey plans for registration, knowing the subsequent uses to which plans would be put.
  • Thirdly, an application by a surveyor for fair remuneration for government uses of survey plans involving copying and communication of the plans to the public after registration did not undermine clients’ use of the survey plans for lodgement for registration and issue of title.
  • Fourthly, neither a surveyor nor their client could factor into fees under the contract between them, copying for public uses done by the State.
  • Fifthly, the State charged for copies issued to the public.
  • Sixthly, nothing in the express terms of the Act could justify excluding copying and communication of plans to the public.

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Posted 6th August 2008 by David Jacobson in Intellectual Property

August 5, 2008

Regulatory constraints on innovation and access to public information

Joshua Gans has written a humorous but relevant opinion piece on the restrictions on republishing information published on government web sites.

His point is that there is much government data (he gives the examples of the location of public toilets and bus and train timetables and potentially FuelWatch data) which is either inaccessible when you want it or is published in a form that is not easy to use which third parties could re-use for the public benefit (plus a marginal profit).

It reminds me of the government practice of requiring copyright over all third party contractors' work even though the government did not keep a record of what they owned or how it could be used.

Whilst there are no doubt copyright and contractual issues, the issue also reflects cultural and philosophical beliefs about the ownership of (intellectual) property.

It is worth quoting US copyright lawyer William Patry who this week stopped writing his blog citing the depressing state of copyright law:

Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits from activity that not only causes no harm, but which is beneficial to copyright owners.

UPDATE: If you're interested in exploring the concept of creativity and the law then you have to read Blawg Review#171. Here's how it starts:

"If intellectual property had a theme song it would have to be "Like a Virgin." 


Because IP is all about "the very first time," the "aha" moment, the creative spark that gives rise to previously undreamed imaginings.The restrictions of "how we've always done things" fall away and the numbing repetition of days become vibrant. " Read more

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Posted 5th August 2008 by David Jacobson in Intellectual Property

July 2, 2008

Keep your trade marks current: Gallo v Lion Nathan

In  E. & J. Gallo Winery v Lion Nathan
Australia Pty Limited
[2008] FCA 934 the Federal Court rejected a claim by Gallo that Lion Nathan's trade mark "Barefoot" in relation to a beer infringed its trade mark "Barefoot" in relation to wine.

Not only did Gallo fail to stop Lion Nathan, Lion Nathan succeeded in its counter-claim that Gallo's trade mark be removed for non-use.

A detailed analysis of the case is made by Nicholas Weston here.

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Posted 2nd July 2008 by David Jacobson in Intellectual Property

Copying other people’s designs: a defendant wins

In Inform Design and Construction Pty Ltd v
Boutique Homes Melbourne Pty Ltd
[2008] FCA 912  the Federal Court rejected a copyright claim in house plans (see previous note on Barrett v Metricon).

Kim Weatherall analyses the case in detail here: she concludes the defendant was able to substantiate its claim of independent design by producing a credible chain of evidence including a history of draft plans which evolved into the design in dispute which was similar to the plaintiff's.

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Posted 2nd July 2008 by David Jacobson in Intellectual Property

June 19, 2008

Review of photo and film copying (format-shifting) law

A review of sections 47J and 110AA of the Copyright Act 1968 governing the private copying of films and photographs has recommended that no changes be made to current copyright law for the time-being. 

Sections 47J and 110AA of the Copyright Act 1968 were introduced in 2006 to permit "format-shifting" by allowing
photographs and cinematograph films to be reproduced in a different
format for private use, subject to certain conditions.

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Posted 19th June 2008 by David Jacobson in Intellectual Property
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