Inspire December 2020
Welcome In our final edition of Inspire
for 2020, Magda Bramante
explains how a case about
recycled printer cartridges led
the High Court to overturn 100
years of patent law precedent
and abandon the theory of an
implied license in favour of the
doctrine of exhaustion of rights.

Liz Eadie of CSIRO provides
us with some insights into
how the organisation has been
dealing with the challenges
of 2020 and its vision for
the future of Australian
science and innovation.

Russell Waters looks at
the issues which can arise
when a person adopts their
name as a trade mark as
well as the difficulties in
proving that reputation in
a trade mark extends to
goods or services outside a
business’s core activities.

Finally, Melissa Wingard
highlights some pitfalls that
can arise when technology
makes use of biometric data
and Mark Williams explores the
surprising patenting prowess of
rock guitarist Eddie Van Halen.

2 Adrian Crooks, Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au 2020 has been a difficult year for many,
but green shoots can be seen. Reports of
vaccines being available early next year are
encouraging. In Australia, business confidence
is returning as we shift our country’s focus
to efforts that support returning to work.

The global economy has been
severely impacted by COVID-19.

Governments around the world
are now reflecting upon global
supply chains, and the need to
strengthen local manufacturing.

The Australian Federal Government
on 1 October 2020 announced a
renewed focus and A$1.5 billion
investment in manufacturing, in
particular in the target areas of
resources technology and critical
minerals, food and beverages,
medical products, recycling and
clean energy, defence and space.

In many technology-driven
companies, COVID-19 has simply
accelerated existing industry
trends. Whilst there has been
growth in business activity in
the IT, telecommunications and
biotechnology sectors, many
companies in the transportation and
energy sectors have been hard hit.

Like many organisations, COVID-19
has changed the way we at Phillips
Ormonde Fitzpatrick think about
work. The first time COVID-19
became a focus for us was in early
February this year. By mid-March, we
had set-up a COVID-19 Response
Team, and two weeks later had
100% of our people working from
home. Most of us have been working
remotely for eight months now with
no disruption to our business activity
and no drop-off in client service.

Our staff have been simply amazing.

Frequent and open communication,
involving our staff in our decision
making, and taking steps to preserve
our culture and connectedness
have been key to our strategy.

At the time of writing, Australia has
effectively suppressed community
transmission of COVID-19. The way
we live and work in Australia is now
rapidly moving to a new COVID
normal. We are now developing a
hybrid model that lets our principals
and staff split their time between
the home and office. This has
upsides in terms of productivity,
work-life balance, and mental health
considerations for our people, while
still providing the in-office social
interaction and collaboration with
workmates that is so important.

Our thoughts and best wishes go
out to our colleagues and friends
around the world where sadly
it appears likely that COVID-19
will cause significant harm and
disruption for much of 2021. We
remain focused on helping to
support your business goals
during these difficult times, and on
ensuring that we continue to have a
talented team and efficient systems
to deliver great outcomes for you.

We look forward to working
with everyone next year and we
wish you a safe festive season
and a much happier 2021.

Our offices will close at 3pm (AEDT)
on Thursday 24 December 2020. We
will reopen with a limited number of
staff on Monday 4 January prior to
a full reopening on 11 January 2020.

Ross McFarlane | Managing
Principal BEng(Elec)(Hons) FIPTA
ross.mcfarlane@pof.com.au
2020: A year of
transformation



Katie v Katy
A rose by any other name
Trade mark owners can invest considerable
effort in promoting and establishing the reputation
of their brand, and so are justifiably angered if someone
else comes along and starts using the same mark.

Normally, registering your trade
mark means that you would have
remedies against an infringing
third party – but what happens
when your brand is you, and
your trade mark is your name?
This is the situation that has arisen
for Australian fashion designer
Katie Taylor, who registered her
maiden name, ‘Katie Perry’ as an
Australian trade mark in relation
to clothes in 2008. Those of you
familiar with the pop music scene
may already know where this is
going – US singer Katy Perry has
started selling goods including
pizza-themed pyjamas and cat-ear
headbands, which are either clothes
or arguably similar goods to clothes.

Katy-with-a-Y adopted her stage name
‘Katy Perry’ in 2004 and registered
this in Australia in relation to CDs,
videos downloadable content and
entertainment services in 2009.

Significantly, she did not register the
name in relation to clothes, although
there are a number of marks including
the name Katy Perry in relation to
perfumes. Two of these are MEOW!
BY KATY PERRY and PURR BY KATY
PERRY, showing a feline motif which
ties in with the cat-ear headbands.

Katie-with-an-IE is now suing Katy-
with-a-Y and an associated company
Killer Queen LLC for infringement of
her clothing trade mark registration.

Katy-with-a-Y’s lawyers have cross
claimed that ‘Katie Perry’ is invalidly
registered, because ‘Katy Perry’ had
acquired a reputation in Australia
before ‘Katie Perry’ was applied for.

They have also argued that use of
‘Katy Perry’ is ‘use in good faith of a
person’s name’, and argued that this
also applies to Killer Queen LLC.

The Trade Marks Act does provide a
defence against infringement, stating
that a person does not infringe
a registered trade mark when:
(a) the person uses in good faith:
(i) the person’s name or
the name of the person’s
place of business; or
(ii) the name of a predecessor
in business of the person or
the name of the predecessor’s
place of business.

Katy Perry is the stage name of
Katheryn Elizabeth Hudson, based
on an abbreviation of her first name
and her mother’s maiden name. The
defence does not normally extend to
just a surname or to a business name,
unless that is the name by which the
person, or company, is known in the
trade. The question here may be to
what extent is Katy Perry known in
the clothing trade. It is difficult to
see how Killer Queen LLC hopes to
rely upon this defence, unless they
claim to be the successor in title to
Katy Perry. The level of reputation
of Katy Perry in Australia in 2008,
and the likelihood that confusion
would arise from use of ‘Katie Perry’
in relation to clothing will also be
relevant to determining whether
‘Katie Perry’ can be invalidated.

This is, of course, not the first
time that such issues have arisen.

A few years ago, Kylie Jenner
withdrew Australian applications
for KYLIE COSMETICS in relation to
cosmetics, and KYLIE in relation to
entertainment services after a trade
mark dispute with Kylie Minogue
regarding rights in the name KYLIE.

Unless your name is Moon Unit
Zappa, X Æ A-12, or something
similarly unusual, protecting
rights in a name is always going
to be problematic because of
the likelihood that someone else
of that name will want to use
it as a trade mark in relation to
their own goods. The problem
is compounded where the other
party’s goods are not related to
your goods. This is the reason that
the Registrar refuses to accept
applications for surnames alone if
they are considered ‘common’ in
Australia. The risk is too high that a
common surname will be required
by another trader for similar goods.

As Australia is a ‘first to use’ country,
you can protect the reputation of
your name in relation to goods or
services for which you are first to
use the mark in Australia. To avoid
later conflict with another person of
the same name, it is recommended
that you register your name for all
the goods and services you are
interested in. A 2004 registration
of ‘Katy Perry’ for clothing would
have blocked registration of ‘Katie
Perry’ for the same goods in 2008.

Because of the defence under the
Act, earlier registration will still not
prevent use of a name by another,
provided the name is their own and
use is in good faith, but actions
may still be available under the
Australian Consumer Law if the
use is misleading and deceptive.

Russell Waters | Principal
BSc LLB FIPTA
russell.waters@pof.com.au Inspire December 2020
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