Welcome
The process of securing or
enforcing intellectual property
rights can sometimes take many
years. In this edition of Inspire,
we look at a number of cases in
which decisions made at an early
stage in the process had profound
implications later on. In Frucor v
TCCC, the trade mark applicant
was unable to establish that it had
a reputation in the colour green, in
part because it was unclear which
shade of green was the subject of
the application. This was the result
of a disconformity between the
written and visual descriptions of
the mark in the application as filed.

Matthew Overett reports on the
prosecution of a patent family in
which the original application was
rejected by the patent office for
failing to disclose the best method
of performing the invention.

While the applicant was able to
circumvent the issue by filing
a divisional application which
corrected this deficiency, the
approach taken by the patent office
may have a sting in the tail for
those filing divisional applications.

The decision in Gram v Bluescope
highlights the difficulty of proving
the damage caused by infringing
conduct which may have taken
place many years in the past. While
the Court is willing to accept that a
degree of speculation or guesswork
may be necessary, a claimant must
still prove their case. This can be
challenging, particularly where
records of what occurred during the
period of infringement are sparse.

Also in this edition, Alexis Keating
discusses the dangers of making
unjustified threats of infringement,
Chris Schlicht delves into the
world of superhero licencing,
David Longmuir asks whether a
trade mark can be too famous
and we say congratulations to our
new Partners and Associates.

Adrian Crooks, Partner
BEng(Civil)(Hons) LLB LLM FIPTA
Inspire September 2018
adrian.crooks@pof.com.au Congratulations to
our new Partners
and Associates
We are delighted to
announce our new
appointments for 2018
– David Longmuir
and Raffaele Calabrese
as Partners in our
01 Melbourne and Adelaide
office, and Dr Matthew
Overett and Dr David
Hvasanov as Associates
in our Melbourne
and Sydney office.

David Longmuir joined in 2003
and is part of associated law
firm, Phillips Ormonde Fitzpatrick
Lawyers. He has an extensive
practice in patents, trade marks
and plant varieties and has
acted for several of our major
clients in complex contested
opposition and litigation work.

Raffaele Calabrese is a member of
our Electronics Physics and IT team
and has been with POF since 2011.

He has a strong and established
patent drafting and prosecution
practice, with experience in
protecting inventions relating to
ICT, software and engineering.

Dr David Hvasanov joined
POF in 2014. A member of the
Chemistry Life Sciences team,
he has experience in drafting and
prosecuting patent applications in
chemistry and applied chemistry
both in Australia and overseas.

He recently relocated to our
Sydney office, bolstering the firm’s
service offering in this market.

Dr Matthew Overett joined POF in
2015, and although only relatively
recent to the profession, he moved
quickly to registration. Most
recently, he has been drafting and
prosecuting patent cases for a
range of important clients in our
Chemistry and Life Sciences team.