Welcome
Much of the world of intellectual property is based on the
work of those seeking to make improvements but sometimes
such efforts can lead to unexpected outcomes.

In this edition of Inspire, we look
at the ups and downs of trying
to effect change. It was hoped
that the much anticipated High
Court decision in Aristocrat v
Commissioner would provide clarity
as to the patentability of computer
implemented inventions. However,
as Helen McFadzean explains, rather
than improve the situation, the split
decision has perhaps left us with
more questions than answers.

Matthew Overett discusses the
efforts being made by Monash
University and Jupiter Ionics
to improve the efficiency of
ammonia production. While
ammonia is critical to the world’s
food production, its manufacture
is a significant contributor to
global carbon dioxide emissions,
demonstrating the potential
importance of this exciting research.

Engaging third party expertise to
improve systems and software may
seem like a great idea, but as the
decision in Campaigntrack v Real
Estate Toolbox shows, care must
be taken to ensure that you don’t
become liable for the wrongdoing
of an agent. Mellissa Wingard
reviews how the Full Federal
Court found liability for authorising
copyright infringement where
parties had been put on notice of
the risk of infringement but took
no reasonable steps to prevent it.

Also in this edition, Anita Brown
provides some special comments
on USGA’s swing and miss, Peter
Wassouf considers the significance
of defining the technical field of
an invention, and Russell Waters
warns of the dangers of not
complying with court orders.

Adrian Crooks, Principal
BEng(Civil)(Hons) LLB LLM FIPTA
adrian.crooks@pof.com.au Inspire November 2022
Phillips Ormonde Fitzpatrick
acquires Brand Haven
2 Phillips Ormonde Fitzpatrick is pleased to announce the
strengthening of its Trade Marks practice team with
the acquisition of NSW-based IP firm, Brand Haven.

Brand Haven will be fully integrated into Phillips
Ormonde Fitzpatrick. Director and Principal of Brand
Haven, Philip Macken, will be joining Phillips Ormonde
Fitzpatrick on 1 November as Special Counsel. Phil is
a registered patent and trade mark attorney with over
30 years’ experience in the field of intellectual property.

Brand Haven was formed at the start of July 2017
and has specialised in assisting clients to create,
protect and maintain all rights relating to trade marks.

The ongoing management and care of matters handled
by Brand Haven will be conducted by Phillips Ormonde
Fitzpatrick. Phil will continue to perform, manage
and supervise work carried out on for Brand Haven’s
clients, as part of Phillips Ormonde Fitzpatrick.

Ross McFarlane Managing Principal said: “Phil is an
outstanding addition to the Phillips Ormonde Fitzpatrick
team, bringing with him a depth of experience and client
focus that is so important. I am excited that he and the
Brand Haven practice are to become part of Phillips
Ormonde Fitzpatrick and contribute to our growth.”



The United States Golf Association (USGA)
has been left to green and bear a decision
from the Australian Trade Marks Office.

The Office ruled that its Australian
trade mark application for
HANDICAP INDEX was not up to
par, with the term found not to be
capable of distinguishing USGA’s
claimed services, “ handicapping
for sporting events, namely golf.”
The USGA had not struck any trouble
registering the same mark in the UK,
the US and Canada. But just like golf
courses, each trade marks office
has its own hazards and requires a
different strategy to avoid the rough.

It’s fair to say though that the USGA
found itself stuck in a sand trap that
it could not chip its way out of; an
experience most golfers can relate to.

Initially, the trade marks examiner
found the mark lacked sufficient
distinctiveness and rejected
registration of the mark under
s 41(4) of the Trade Marks
Act, stating in the first report that:
“HANDICAP in relation to sport,
including golf, refers to disadvantages
or advantages, while INDEX refers
to a detailed list. As a whole, this
indicates that your services related
to an index of player handicaps.”
For the non-golfers among us,
a handicap is a numerical measure
of the golfer’s ability that is used
to enable payers of varying
abilities to compete against each
other. The lower your handicap
the better the golfer you are.

The USGA’s attorney responded
tto the examiner by arguing that
the ordinary signification of the trade
mark was not directly descriptive of
the services. Then, in a blow to the
USGA, the examiner raised a ground
of rejection under s 41(3), on the
basis that the mark was in common
generic use by other traders to
indicate goods or services relating
to calculating handicaps for golfers.

This meant any evidence the
USGA put before the examiner
to establish that the mark had
acquired distinctiveness had to
be dated prior to 10 May 2019,
the application filing date.

Historically, rules for calculating
handicaps have varied from country
to country. However, the USGA
introduced a global system, the
World Handicap System. The trade
mark HANDICAP INDEX is used
by USGA to denote a standardized
calculation of a golfer’s demonstrated
ability against a golf course of
standard difficulty. It licenses the
use of the trade mark to various
golfing associations globally.

The system was not introduced
into Australia until January 2020
after the application filing date.

It’s fair to say that
the USGA found itself
stuck in a sand trap that
it could not chip its way
out of; an experience
most golfers can
relate to.

Despite filing two rounds of evidence
to try to demonstrate that the
mark had acquired distinctiveness,
including that Australian golfers
would understand the mark as
referring to its handicap system, the
examiner would not budge so USGA
sought a hearing before the Registrar.

Under Australian law, there is a
two step test for distinctiveness:
> establish the ordinary signification
of the trade mark in Australia to
those concerned with the relevant
goods or services;
> consider whether other traders
may legitimately desire to use
the word in respect of their
goods or services.

The Registrar’s view was that
members of the public engaging
in handicapping services or golf
services would understand the term
as a measure or rating of a golfer’s
handicap, or alternatively as an index
or list of golf players’ handicaps.

Further, it found that other traders
would want to use the term in
connection with such a system or list.

Turning to the evidence of acquired
distinctiveness, the Registrar
found it was lacking for various
reasons including that there was
no evidence of the advertising or
promotional activities undertaken
either before or after the filing
date in Australia, and that despite
USGA’s assertion of its extensive
use overseas, there was minimal
supporting evidence. The evidence
was also said not to show sufficient
use of the term as a badge of origin.

The upshot was the mark was
rejected for registration. Perhaps,
the USGA will take another swing
at registering it once it has used
it more extensively in Australia.

Bad puns aside, for those
competing globally where trade
mark protection across various
jurisdictions is required, this decision
is a reminder that the assessment
of the distinctiveness of a mark
may differ between offices. When
devising a filing strategy, the nature
of the mark, the applicable test for
distinctiveness and any requirements
to show acquired distinctiveness
should be borne in mind.

Sometimes it may be appropriate
to seek registration for a mark in a
distinctive form, at least to provide an
interim level of protection. This might
include for example, applying for the
non-distinctive mark with a house
mark, or as part of a logo, particularly,
if there is not sufficient evidence
of use that can
be demonstrated.

Otherwise, the path
to registration may
be, well, rough.

Anita Brown | Principal
BA LLB MIPLaw GAICD
anita.brown@pof.com.au Inspire November 2022
Golfing body
lands in the rough
3