Issue 43 • March 2019 Commissioner of Patents ‘Rokt’ by Federal Court of Australia, appeal quick to follow Are interlocutory injunctions becoming harder for pharmaceutical patentees? A meaty matter of reputation of trade marks Entitlement to ownership of a design registration: get it right or risk losing it! Patents | Trade Marks | Designs | IP Research | Legal Services Welcome The law of intellectual property can be challenging to navigate and as the cases discussed in this edition of Inspire illustrate, it is important to have an experienced guide to help you avoid the many possible pitfalls. Inspire March 2019 In recent years, pharmaceutical patent owners have had a large measure of success in obtaining interlocutory injunctions to restrain the launch of generic competitors. However, a number of recent decisions suggest that obtaining such injunctions may now be more challenging. In Sigma Pharmaceuticals v Wyeth the court was required to assess the damages to be awarded to various parties in circumstances where a patentee who obtained an interlocutory injunction ultimately failed in its infringement case. As David Longmuir reports, the costly, lengthy and complex damages case has broader implications and has already been relied upon in subsequent judgements as a reason for rejecting a patentee’s interlocutory injunction application. Raffaele Calabrese analyses the latest development in the ongoing controversy over the patentability of computer implemented inventions in Australia. In Rokt v Commissioner of Patents the patent applicant successfully appealed the Commissioner’s rejection based on lack of patentable subject matter, in part by relying on expert evidence as to the state of the art at the time the invention was made. Establishing a strong reputation in your trade mark would generally be considered an advantage. However as Russell Waters notes, the decision in Australian Meat Group v JBS Australia highlights that in certain circumstances such a reputation can hinder an infringement claim. Also in this edition of Inspire, Peter Wassouf looks at how the incorrect identification of designers can result in the revocation of a registered design, Michael Squires discusses the importance of trade mark owners exercising appropriate control over their licensees and David Hvasanov warns of the dangers of amending a patent specification during the course of litigation. Adrian Crooks, Partner BEng(Civil)(Hons) LLB LLM FIPTA adrian.crooks@pof.com.au POF welcomes new Senior Associate and fintech specialist, Matthew Ford Phillips Ormonde 2 Fitzpatrick is delighted to welcome our newest Senior Associate, Matthew Ford, who has recently joined the Electronics, Physics and IT (EPIT) Team in our Sydney office. Matthew has a first class honours degree in physics, majoring in photonics and has over 10 years of experience in IP. He practices in the fields of physics, electrical engineering and computer technologies, specialising in lasers, optical fibres, photovoltaic devices and various optical network devices for the telecommunications industry. He is also a fintech specialist and enjoys working with early-stage companies, focussing his efforts on assisting them with protecting their IP and gaining commercial traction. POF Managing Partner, Ross McFarlane says “We’re looking forward to working alongside Matthew and the unique set of skills and expertise that he brings to our growing Sydney office. Sydney is a big focus for POF, and we’re thrilled to have Matthew on board.” At the core of the right to ownership of a registered design is the fundamental principle of entitlement derived from creation of the design. Ultimately, entitlement flows from the person who created the design, but may reside for example with their employer. An issue that often arises is who the actual designer is, particularly where there has been collaboration in the creative process, as illustrated by the recent decision issued by the Australian Designs Office in Jarvie v Comtec 1 . The request for revocation brought by John Jarvie revolved around establishing who was responsible for the creation of the designs the subject of registrations 201515406 and 201616328, and whether the listed owner was entitled to ownership. The designs were both filed in the name of Comtec Industries Pty Ltd. Design Design 201515406 for a Pin Pile. Design 201616328 for a Sheet Pile. registration 201616328 listed two directors of Comtec (Ryan Nugent and David Whelan) as co-designers. The other registration listed Luke Jarvie as the designer. Luke, the son of the requestor John, claimed that he had never held himself out to be a designer of the design. Rather, it was said that he was listed as a designer because the directors of Comtec were incorrectly advised that the financial position of his father John disqualified him from being listed as a designer. John filed a request for amendment of the designs on the basis of entitlement. John claimed he was the sole designer of both designs, and that Comtec were not entitled to the designs as no agreement existed relating to ownership of the IP he created. In response to the request, Comtec conceded that John was a designer of the designs, however it submitted that David Whelan was the author of the designs, and that John had collaborated with him in the conceptual works. The Act defines ‘designer’ as ‘the person who created the design’, 2 a question of fact. Adding to this, the designer has been held to be the ‘person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form’. 3 It was established that David Whelan had received copies of John Jarvie’s drawings, which were conceived long before the two met. David Whelan subsequently made modifications to the designs to address certain technical problems. Upon comparison of the original and refined drawings, it was evident that David Whelan’s contribution was a refinement of a shape already conceived by John John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5 (31 October 2018) Designs Act 2003 (Cth) s 13(1)(a). 3 Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80 quoted in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; (2008) 80 IPR 85, 96 [26]. 4 ss 21 and 55 of the Act 1 2 Jarvie. The drawings were almost identical. It was evident that John Jarvie had ‘conceived’ the drawings, and was the sole designer. While the Designs Act states that the designer may be the entitled owner, if the design is created in the course of employment, or under a contract with another party, then the other party may be entitled to ownership. In this case, John Jarvie was not employed by Comtec and there existed no contractual agreement concerning the assignment of IP rights. Rather, John Jarvie was found to have acted as an independent contractor, with no contractual agreement pertaining to the assignment of IP he generated. John Jarvie was found to be the sole designer of both designs, and the entitled owner. In the event that a listed owner is not entitled to ownership of a design right, the registrar can only revoke the design. The designs cannot be transferred to the entitled person. However, the entitled person/s can file a further application for the same design and retain the priority date. 4 In this case, both designs were revoked, and John Jarvie can now file a further application for the same design whilst retain the priority date of the revoked designs. Inspire March 2019 Entitlement to ownership of a design registration: get it right or risk losing it! 3 Peter Wassouf, Patent and Trade Marks Attorney B.Eng (Mech) (Hons), B.Bus JD MIPLaw peter.wassouf@pof.com.au Commissioner of Patents ‘Rokt’ by Federal Court of Australia, appeal quick to follow Inspire March 2019 The law relating to manner of manufacture in the context of computer implemented inventions continues to be controversial in Australia. On 12 December 2018, the Federal Court of Australia overturned a rejection by the Commissioner of Patents of a patent application directed to a computer- implemented invention in Rokt Pte Ltd v Commissioner of Patents (Rokt). On 16 January 2019, the Commissioner of Patents, dissatisfied with the Federal Court’s dismissal of its approach to determining the patentability of such inventions, sought leave to appeal the Rokt decision to the Full Federal Court. 4 The Court in Rokt generally accepted the Commissioner’s submission on the state of the law on patentable subject matter (i.e. manner of manufacture) as laid out in Research Affiliates and RPL Central – particularly, that “it is necessary to understand where the inventiveness or ingenuity is said to lie” and “a mere business innovation is insufficient and a business method or scheme is not, per se, a proper subject for letters patent. Nor are abstract ideas. The issue is whether there is a technological innovation”. The Court in Rokt, however, rejected the Commissioner’s approach of focussing on whether specific elements of a claim are novel at the priority date of the patent application when considering the patentability of the claim. Instead, the Court stated that focus should be placed on the claim as a whole so as to not lose sight of the elements of the claim being combined in an innovative and previously unknown way. The Rokt patent application is directed to a computer- implemented method for providing targeted advertising messages by gathering engagement data of a computer user, evaluating the data, selecting and presenting an intermediate engagement offer to the user based on the data, and then presenting a targeted advertising message following the user accepting the engagement offer. This method of providing targeted advertising messages is more likely to result in the user interacting with the advertising messages and making a purchase. During examination, a delegate of the Commissioner found that the substance of the claimed invention amounted to a business innovation, and not a patentable technological innovation. The Court disagreed and instead found that the claimed invention solved both a technical problem and a business problem. The business problem was “translated into the technical problem of how to utilise computer technology to address the business problem”. The ingenuity of the claimed invention was found to lie in the new step of providing engagement offers, which requires the insertion of a widget into a webpage publisher to present the engagement offer to the user, and a ranking algorithm for selecting the engagement offer based on the engagement data. To arrive at this finding, the Court considered expert evidence presented by both sides on the state of the art at the priority date of December 2012, and concluded that the claimed invention indeed involved the new use of computer technology at this date. The Court stated that – while in isolation the elements of the claimed invention were each known as at December 2012 – in combination, the elements formed a new combination and a new use of computer technology. The use of expert evidence in assessing patentable subject matter in Rokt is a practice that we are seeing more of at the Patent Office, but has not been routine practice before the Courts. This evidentiary approach is largely the result of the Commissioner conflating the test for patentability of computer- implemented inventions with the tests for novelty and inventive step. The practice may be short lived as we are expecting the decision of an appeal to the Full Federal Court in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd to be handed down later this year. This case had the unusual honor of both The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) and the Commissioner providing submissions for consideration by the judges on what the proper approach should be for determining patentability of computer-implemented inventions. This case was heard late last year by an expanded panel of five judges so that it has the ability to overturn previous Full Court decisions, and may provide a new, workable and hopefully more reliable test to encourage innovation in Australia for computer- implemented inventions. Inspire March 2019 The ingenuity of the claimed invention was found to lie in the new step of providing engagement offers. 5 Raffaele Calabrese, Partner BEng (Elec&ElectEng) MEng MIP FIPTA raffaele.calabrese@pof.com.au Inspire March 2019 6 A meaty matter of reputation in trade marks Having a trade mark registration is important in protecting your IP rights, however the mark’s reputation may not always assist you in enforcing it against others. In circumstances where a mark does have a significant reputation behind it, actions for passing off and breach of the Australian Consumer Law may form an important part of any infringement claim. This was demonstrated in Australian Meat Group v JBS Australia 1 , where the Full Federal Court considered an appeal from a single judge of the Court regarding a decision surrounding deceptively similar marks, evidence of use and reputation in the market. Pictured left, the AMH Logo (left) and the AMG logos (centre and right) Background ¹ Australian Meat Group Pty Ltd v JBS Australia Pty Ltd, [2018] FCAFC 207 Consumer Law actions, was not an appropriate consideration when determining deceptive similarity. AMG P/L relied upon this case in support of their appeal. Conclusion After considering the authorities, the Full Court found that whilst deceptive similarity arising from imperfect recollection may be countered by demonstrating the well-known nature of the registered mark, reputation of a registered mark is otherwise not a relevant consideration when determining deceptive similarity between marks. The Court found that the trial judge had erred in taking the reputation of the AMH marks into account. They further found that, by focusing on the reputation of the AMH marks, the trial judge had failed to give proper consideration to other issues, such as the stylistic differences between the AMH Logo and AMG Logo, and the common use of acronyms in the industry. The trial judge had also placed too much emphasis on the ‘AM’ component of the marks, given its use to reference ‘Australian Meat’ in acronyms used in the industry, and had placed insufficient emphasis on the differences between the concluding letters ‘H’ and ‘G’. Having considered those issues, the Full Court found that the marks were not deceptively similar, and allowed the appeal. Inspire March 2019 JBS Australia Pty Ltd (JBS) was the owner of two registered The appeal trade marks, one comprising the On appeal, AMG P/L asserted that letters AMH per se, and the other the trial judge erred in finding that comprising a logo including those its marks were deceptively similar letters and a stylised map of to the JBS trade mark registrations. Australia (the AMH Logo). Australian They argued that it was improper Meat Group Pty Ltd (AMG P/L) for the judge to have considered the were using the acronym AMG, reputation of the AMH word both on its own and also as and AMH Logo marks part of a logo including when determining a (different) stylised deceptive map of Australia, similarity. above the words They also AUSTRALIAN JBS alleged that all argued that the MEAT GROUP of the marks used by judge had not (the AMG Logo). AMG P/L infringed considered the AMG P/L also extent to which its registered trade used the AMG the common Logo in other marks and a breach elements devices that of the Australian between the included the Consumer Law. marks (the words PREMIUM letters ‘AM’, which ANGUS BEEF with were used in the a cow’s head device, trade as an acronym or the words SOUTHERN for ‘Australian Meat’ and RANGES PLATINUM. the stylised maps of Australia), JBS alleged that all of the marks were descriptive or common to used by AMG P/L infringed its the trade; nor considered the registered trade marks and also constituted passing off and a breach principal that marks consisting of a small number of initials have little of the Australian Consumer Law, and sued AMG P/L on those grounds. inherent capacity to distinguish. At trial, JBS filed extensive evidence In considering the appeal, the Full Court reviewed existing case law on of use and reputation in its marks, the issue of whether reputation can which had been used in Australia be considered when determining both for the domestic market, and if marks are deceptively similar. for export of Australian meat, for In the context of an application for many years. The trial judge found, registration, the reputation in the on the basis of this evidence, that mark WOOLWORTHS was held to the AMH word mark and AMH be a relevant consideration in finding Logo had a strong reputation at that WOOLWORTHS METRO was all levels of the market. Despite not deceptively similar to a range this evidence, the claims based of prior METRO registrations. On on passing off and breach of the the other hand, the marks HILL OF Australian Consumer Law were GRACE and HILL OF GOLD were ultimately abandoned and the found not to be deceptively similar, case proceeded only on the issue despite extensive evidence of of infringement of the registered reputation in the HILL OF GRACE marks. The trial judge found that the mark. This is because the court respective marks were deceptively in that case found that evidence similar and that infringement of reputation, whilst relevant had occurred. This decision was for passing off and Australian appealed to the Full Court. 7 Russell Waters, Partner BSc LLB FI PTA russell.waters@pof.com.au Are interlocutory injunctions becoming harder for pharmaceutical patentees? Inspire March 2019 A number of Federal Court decisions from 2019 suggest that the balance may be shifting away from originators in the battle for interlocutory injunctions in pharmaceutical patent matters. 8 The decision by Justice Jagot in Sigma Pharmaceuticals v Wyeth 1 is significant. It is the first time the Court has considered the compensation to be awarded pursuant to undertakings given, as the price of the grant of an interlocutory injunction restraining infringement of a pharmaceutical patent. This decision has implications not only for the assessment damages resulting from the grant of an interlocutory injunction, but for the granting of such injunctions more generally. The judgment was delivered in October 2018, following many years of skirmishes in the Federal Court between the parties in relation to the extended-release formulation of venlafaxine (Efexor-XR ® ). Background In 2009, Wyeth (now a subsidiary of Pfizer) sought interlocutory injunctions restraining three pharmaceutical companies from marketing and supply generic venlafaxine in Australia. As is usually the case, a condition of granting the interlocutory injunction was that Wyeth gave the Court an undertaking as to damages which might be caused by the operation 1 of a wrongly-granted injunction. Pursuant to the Court’s Usual Undertaking as to Damages Practice Note (GPN-UNDR), Wyeth was required to give an undertaking: (a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, (to be assessed by the Court or as it may direct), to any person, (whether or not that person is a party), affected by the operation of the order or undertaking or any continuation (with or without variation) of the order or undertaking; and (b) to pay the compensation referred to in (a) to the person affected by the operation of the order or undertaking. The Court’s interlocutory decision was confirmed in 2010 and final injunctions were granted. However, the decision was overturned on appeal with the Full Court holding the patent invalid. As a result, a total of six claimants sought compensation pursuant to the undertakings. These included the pharmaceutical companies subject to the injunctions, Sigma, Alphapharm and Generic Health, as well as non-parties, Alembic and Pharmathen – manufacturers Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2018] FCA 1556 and suppliers of generic venlafaxine products to the generics. The Commonwealth also sought compensation, but settled its claim before judgment. The Decision After six years, culminating in a six week trial, Justice Jagot concluded that compensation would be paid to each claimant on the basis that they had been adversely affected by the operation of one or more of the interlocutory injunctions. In short, each claimant had suffered loss as a result of the generic pharmaceutical companies being wrongly restrained from supplying generic venlafaxine. The judgment confirmed that non-parties may be entitled to compensation under an undertaking as to damages, provided they can prove they were adversely affected and that the losses were reasonably foreseeable at the time the injunction was granted. Following the costly, lengthy and complex damages case, Justice Jagot observed at [1336] that: “It is difficult to imagine that when Sundberg J and then I granted the interlocutory injunctions in 2009 we anticipated that if those injunctions turned out to be wrongly granted, the resulting exercise The difficulty in calculating harm caused by an interlocutory injunction wrongly granted has become a factor in a number of subsequent decisions. 2 3 market than it was for the generics in Sigma to prove the value of their loss on the basis that they were wrongfully held out of the market”. Perhaps more tellingly, in Sanofi-Aventis v Alphapharm 3 , Justice Burley refused an application by Sanofi-Aventis for an interlocutory injunction against Alphapharm to restrain its launch of Semglee insulin product (a biosimilar to Sanofi-Aventis’ Lantus SoloStar). His Honour held that Alphapharm was likely to suffer significant harm that would not be easily compensated if an interlocutory injunction was granted. The decision repeatedly referenced Jagot J’s comments in Sigma noting that the calculation of the harm suffered by Alphapharm was more difficult than for Sanofi-Aventis. An application for leave to appeal from Justice Burley’s refusal to grant the interlocutory injunction was rejected. H. Lundbeck A/S v Sandoz Pty Ltd [2018] FCA 1797 Sanofi-Aventis Deutschland GmbH v Alphapharm Pty Ltd (No 3) [2018] FCA 2060 Conclusion Given the pricing consequences under the Pharmaceutical Benefits Scheme, patentees in Australia have largely been successful in obtaining interlocutory injunctions against generics. However, these recent decisions suggest that the difficult task of calculating damages caused by wrongly granted interlocutory injunctions may be shifting the balance of convenience against originators seeking to restrain the launch of generic or biosimilar products in Australia. David Longmuir, Partner BSc(Hons) LLB(Hons) LLM FIPTA david.longmuir@pof.com.au Inspire March 2019 would bear any resemblance to this one. Hindsight makes one thing certain. Knowing what has occurred, it could never have been concluded, for example, that insofar as relevant to the balance of convenience it would be easier for the generics to prove their loss if the interlocutory injunctions were wrongly granted than for Wyeth to prove its loss if the interlocutory injunctions were withheld and the method patent was valid.” The difficulty in calculating harm caused by an interlocutory injunction wrongly granted has become a factor in a number of subsequent decisions. Justice Jagot continued on this thread in H. Lundbeck A/S v Sandoz Pty Ltd 2 , noting in relation to the assessment of damages for patent infringement “that it was far easier for Lundbeck to prove the value of its loss on the basis of the generics having entered the 9 Inspire March 2019 10 Can amendments to a patent affect damages during infringement proceedings? Amendments to a patent specification may result in a patentee being unable to claim compensation for infringement prior to the date of the amendment. Section s115(1)(a) of the Patents Act 1990, requires a patentee to show that the specification without the amendment was framed in good faith and with reasonable skill and knowledge. Background Generic Health had been found to have infringed claims 3 and 11 of Bayer’s patent AU780330 directed to compositions for use as oral contraceptives. Bayer sought compensation for the infringing conduct in the form of damages, and at first instance, were awarded damages of $25,437,966 plus interest. Bayer had amended the patent during the course of the litigation, and to be entitled to claim damages before the date of amendment, they had to show that the specification without amendment was framed in good faith and with reasonable skill and knowledge. Generic Health appealed the finding that this requirement had been satisfied, a key aspect of the damages determination worth approximately $6.7 million plus interest. Amendments and Section 115(1) Bayer filed a number of amendments during infringement proceedings, among which the relevant amendment considered on appeal was the limitation of the dosage of drospirenone from “2 to 4 mg” to “3 mg” in claim 3. The amended requirement of “3mg” was the amount of drospirenone found in both Bayer’s and Generic Health’s oral contraceptives. The crux of the Generic Health’s appeal was that there was an evidentiary vacuum about the selection of the original dosage range from 2 to 4 mg, which resulted in the specification falling foul of s 115(1)(a). Very few cases have considered the issue of s 115(1)(a) in Australia. The Full Court noted that the Australian provision had its roots in earlier UK legislation of which it was said: “The principle of this provision was that the inventor who knowingly or carelessly claimed bad matter was not an object of sympathy. On the other hand, an infringer who knowingly infringed the good and valid part of a patent because he had discovered some portion, perhaps unimportant, which was bad or invalid, was not entitled to sympathy or protection”. The Full Court referred to UK authorities relating to the equivalent provision and stated that those cases provide persuasive guidance on how s 115(1)(a) should be construed and applied. The requirements of good faith and reasonable skill and knowledge were said to require that: (a) the specification was framed honestly with a view to obtaining a monopoly to which the material was known and believed was entitled to the patentee; (b) the specification was framed with reasonable skill and knowledge, a phrase which relates to the care exercised by the person who drafted the specification. Application to appeal Although there was a scientific report showing safety studies across the originally claimed dosage range, Generic Health argued that there was no proof that Bayer had relied on or even knew of the report when framing the specification. There was no evidence showing that Bayer had acted dishonestly, so the appeal focused on reasonable skill and knowledge. Generic Health argued that absent proof that the patentee had actual knowledge of scientific evidence to support the 2 to 4 mg claimed range when providing instructions to the drafter, the patent application would not be framed with reasonable skill and knowledge. Their Honours dismissed this ground, finding that Generic Health had a fundamental misunderstanding of the obligations placed on an applicant and patentee with respect to drafting a specification. For a specification to be framed with reasonable skill and knowledge, the drafter of the specification Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183 1 must be taken to have been “properly instructed”, as well as professionally competent and honest. Their Honours stated that: “…reasonable knowledge is not limited to documents actually before the drafter of the specification. It is knowledge that the patentee had or reasonably should be taken to have had – whether or not the drafter, or those providing instructions to the drafter, was or were cognisant of that knowledge or its source at the time when the specification was framed.” and “exercise of reasonable skill is to be judged against that body of knowledge, as well as reasonable knowledge of the law and practices relating to the drafting of patent specifications”. Despite the lack of ‘proof’ that Bayer and the drafter were aware of the report, this report was considered ‘corporate knowledge’. Bayer was found to have met the requirements of reasonable skill and knowledge and be entitled to infringement damages prior to amendment. Bayer sought compensation for the infringing conduct in the form of damages, and at first instance, were awarded damages of $25,437,966. Inspire March 2019 The Full Court decision in Generic Health v Bayer 1 has clarified the requirements imposed on a patentee when instructing the preparation of a patent specification, particularly with respect to providing the necessary knowledge that the patentee had, or reasonably should be taken to have had, at the time the specification was framed. 11 David Hvasanov, Associate BSc(Hons) PhD MIP MRACI david.hvasanov@pof.com.au Warning: trade marks out of control A recent Federal Court decision has reinforced the dangers of not having appropriate control over the licensed use of a trade mark. Inspire March 2019 The case has serious implications where trade marks are owned by one company within a group, but used by another. The entity that owns IP within a corporate group is often decided based on a variety of non-IP related reasons. This may be appropriate, but with trade marks there’s an additional responsibility to make sure the structure doesn’t work against you. In Calico Global Pty Ltd v Calico LLC 1 , the Court held that the owner of the trade mark CALICO had not used its trade mark for a three year period because, amongst other reasons, it had not exercised any actual control over the use of the mark by a related company pursuant to a licence. The Court ordered removal of the mark for the services being attacked for non-use. 12 Background Mr Owens was the registered owner of the trade mark CALICO for some of the relevant three year period. He had established a fitness scheme and website where members could track their calorie intake and expenditure. He registered the trade mark in classes 41 for education and fitness services and 44 for medical and health services. A different company, Calico LLC, was launched in September 2013 and focussed on “anti-ageing, treatment of degenerative conditions and promotion of life extension generally”. They sought registration of CALICO in class 44 for providing medical information, however their application was blocked by the earlier registration. Mr Owens had assigned the mark to Calico Pty Ltd (Calico) of which he was a director, but didn’t record that assignment. Calico then licenced the mark to Calico Global Pty Ltd (Global). Owens relied on his status as managing director of the licensor, Calico, as a basis on which it could be inferred that Calico, through him and the licence, controlled Global’s use of the mark. One of the terms of the licence required Global to clearly indicate in all correspondence and all other dealings that it was acting as licensee of Calico Pty Ltd. However, there was no evidence of Global ever complying with this. Nor was there evidence of any other quality or other control exercised by Calico Pty over Global’s use of the trade mark. Ultimately the Court held that there was no use of the mark in the relevant period attributable to the registered owner, and so ordered removal of the class 44 services under attack by Calico LLC. Result This is yet another decision highlighting the problems which can arise where the owner of a trade mark registration isn’t the person using the mark. There is no difficulty if the owner exercises financial control over the user, the usual case where a parent company owns a mark used by a subsidiary. But where the mark is used by a ‘sibling’ company or unrelated entity, there must be actual control over that use- something substantial enough to indicate a connection with the registered owner. This is a question of fact and degree. The connection may be slight, such as selection of particular goods or quality control. So what should licensors, especially holding companies, do? There’s no single way to ensure that there is actual control over the licensee, but it is wise to: Formalise the license in writing and set out a standard of quality or specification for goods or services on which the trade mark(s) may be used. Insist on regular reporting from the licensee, confirming compliance with the standards. We recommend that you contact us if your trade marks are owned by one entity and used by another, to ensure that there is adequate control to protect your registrations from attack. Michael Squires, Partner BSc LLB FIPTA michael.squires@pof.com.au 1 Calico Global Pty Ltd v Calico LLC [2018] FCA 2096 Contact us info@pof.com.au Melbourne Level 16 333 Collins St Melbourne 3000 +61 3 9614 1944 Sydney Level 19 133 Castlereagh St Sydney 2000 +61 2 9285 2900 Adelaide Level 5 75 Hindmarsh Sq Adelaide 5000 +61 8 8232 5199 Geelong 108 Gheringhap St Geelong 3220 +61 3 9614 1944