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.




The lifeblood of our business is our outstanding people. We are pleased
to acknowledge the promotion of ten of our attorneys to Principal,
Senior Associate and Associate positions, effective from 1 July 2020.

New Principals
Dr Mary Munroe
BSc(Hons), PhD, GDipIP
Mary has been promoted to Principal
within our Chemistry and Life Sciences
team. Mary has over 15 years’ experience
as a European, UK, Irish, Australian &
New Zealand patent attorney and has
worked with clients on technologies
in the chemical, analytical science
and instrumentation, material science,
nanotechnology, therapeutics including pharmaceuticals,
medical science, biomedical engineering, molecular
biology, medical devices, electromechanical engineering
and food and beverage fields. She is also a qualified Irish
and Community trademark and design attorney (EU).

Being multi-jurisdictionally qualified, Mary’s approach
is strategically focused, taking a hands-on role in the
development and management of Australian and global
patent portfolios, giving clients advice where necessary
for optimising protection in Australia and internationally,
as well as for enforcement and licensing opportunities,
particularly in Europe, Ireland and the UK, where Mary
has an established network of experienced contacts.

Mary enjoys guiding inventors and business
owners through the IP procurement process and
developing their understanding of the value of IP.

She has strong relationship skills and a hands-on
approach. Driving client satisfaction and confidence
are strong motivators in her professional career.

Matthew Ford
Bsc (Photonics) (Hons 1) MIP
Matthew has been promoted to Principal
within our Electronics, Physics and
IT team. Matthew has a first class
honours degree in physics, majoring
in photonics and has over 10 years
of IP experience. Matthew practices
primarily 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. Matthew also has a keen interest in the fields
of nanotechnology and near-Earth space technology
which has exposed Matthew to the importance of
computational analysis of complex systems and problems.

Matthew has expertise drafting, prosecuting and
defending patent specifications across a broad range
of technologies, including optical and electronic
telecommunications, control systems, computer vision,
driver monitoring technology, consumer electronics,
machine learning, augmented reality, neuroscience
diagnostic and rehabilitation systems, gaming
technologies, HVAC and building management systems
and various other computer-implemented technologies.

Inspire July 2020
Congratulations to our
new Principals, Senior
Associates & Associates
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