Welcome
In the face of a major crisis such as the Covid-19 pandemic it can be
tempting to focus inwardly and concentrate on aspects of the world that
we can control. However, it is important not to lose sight of the broader
environment which may provide both challenges and opportunities.

As Malcolm Bell explains, the
decision in Cth v Sanofi illustrates
the difficulties facing a third party
seeking to rely on an undertaking
as to damages given to secure an
interlocutory injunction. In the absence
of direct evidence from the relevant
decision maker within the enjoined
company, the Commonwealth was
unable to satisfy the Court that the
alleged financial loss was a direct
result of the interlocutory injunction
as opposed to other circumstances.

Also in this edition, Mark Williams
notes some upcoming changes
to the Designs Act, Alexis Keating
reviews a copyright spat over “Love
is in the Air” and Russell Waters
reports on the ongoing trade dress
dispute between Kraft and Bega.

Finally, we say congratulations
to our attorneys both those that
have recently been promoted
within the firm and those who
have been recognised externally
for their outstanding work.

Adrian Crooks, Partner
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au Inspire July 2020
Proposed Australian
Designs reform: Grace
period HOT but GUI’s NOT
2 As we reported last year, IP Australia sought input
on proposed changes to the Designs Act 2003.

Following a consultation in late
2019, IP Australia now intend
to release an exposure draft of
a proposed Bill and supporting
regulations later in 2020 to:
introduce a grace period with
prior use defence (presently, there
is no grace period in Australia for
the designs system, unlike the
patent system for example);
remove publication option
for registration of designs;
remove liability for infringement
before registration; and
give exclusive licensees legal
standing to sue for infringement.

Notably, IP Australia have decided
not to take action with regard to
virtual, non-physical and active
state designs and whether IP
protection will apply for new
types of designs – including
screen displays, screen icons and
graphical user interfaces (GUIs).

More information as to the current
state of play regarding GUI’s in
Australia may be found here.

IP Australia’s response to the
consultation may be found here.

Mark Williams | Special Counsel
BCSE(Hons) MIP FIPTA
mark.williams@pof.com.au
In this edition of Inspire, Marine
Guillou uncovers the challenges
being faced by those battling
the rise of COVID-19 related
counterfeiting activities. While
counterfeiters have so far largely
targeted medical and pharmaceutical
industries, all businesses should
be aware of the possibility of
increased counterfeiting activity
during a time of global upheaval.

Meanwhile, Anita Brown discusses
Southcorp’s ongoing fight to protect
its Penfolds brand against a group
of overseas companies trying to
take advantage of its worldwide
reputation. As highlighted the ground
of bad faith may be particularly
important in challenging trade mark
applications which may not be
susceptible to other grounds of attack.