SNIPER Bulletin 2012-04 - IP Australia

Searchable Networked Intellectual Property Electronic Resource 

SNIPER 

Bulletin 

April 2012 

Note: Due to copyright requirements, IP Australia Library is unable 

to directly supply copies of these articles to readers outside IP 

Australia. Please contact your local library to obtain copies of these 

articles by interlibrary loan. 

IP Australia Library 

library@ipaustralia.gov.au 

Phone: (02) 6283 2301

SNIPER Bulletin 

Library, IP Australia 

SNIPER No.:2012/00059 

Author: Matulionytė, Rita 

Title: ACTA's digital chapter: remaining concerns and what can be done 

Source: Queen Mary Journal of Intellectual Property. Vol. 1 No. 3 September 2011, pp. 248-271. 

Summary: Anti-Counterfeiting Trade Agreement (ACTA) -- 'Digital Chapter' provoked heated 

debates -- strong criticism -- final text of Digital Chapter has dropped some controversial proposed 

provisions -- some problems remain -- whether ACTA establishes criminal liability for private filesharers 

-- what internet service provider (ISP) liability provisions mean -- what the encouragement 

of "cooperative efforts within the business community" might lead to -- to what extent the 

provisions on technological measures set World Intellectual Property Organisation (WIPO) plus 

standards. 

Subject: Anti-Counterfeiting Trade Agreement 

Subject: Carriage service providers--liability 

Subject: Circumvention 


Author: Dudek-Urbanowicz, Izabella 

Title: Addition of a famous brand to an earlier less known trademark 

Source: World Intellectual Property Review. November-December 2011, p. 83. 

Summary: Owner of an earlier trade mark Bikini registered for cosmetic products -- claimed later 

application for a trade mark Bikini Christian Dior Paris, for face and body products, may mislead 

the public -- filed a request for cancellation of the trade mark Bikini Christian Dior Paris -- acted in 

bad faith -- Adjudicative Board of the Polish Patent Office (PPO) dismissed request for cancellation 

-- no risk of confusion -- combining weak trade mark and strong and recognisable designation -- 

eliminates risk of confusing both marks -- Direct Administrative Court (DAC) -- appropriation of 

another's trade mark -- DAC's judgment. 

Subject: Trade mark litigation--Poland 


Author: Stone, David 

Title: After PepsiCo: are we any closer to harmonisation of design rights? 

Source: World Trademark Review. No. 35, February-March 2012, p. 55. 

Summary: United Kingdom Court of Appeal rejected Dyson's application for injunctions to enforce 

registered design rights in the shape of its DC02 machine -- Pepsico v Grupo Mon Graphic -- 

whether PepsiCo’s later registered Community design created the same overall impression on the 

informed user as the designer’s earlier registration -- concept of the informed user -- degree of 

freedom of the designer must be taken into consideration -- aspects of a design that are solely 

dictated by technical function are already excluded from design protection -- sensible to include 

things other than merely technical issues in the restrictions on design freedom -- assessing overall 

impression. 

Subject: Industrial designs--case law--Europe 

Subject: Industrial design infringement--Europe 

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Title: AG rules OHIM's practice does not offer "sufficient clarity" 

Source: Intellectual Property Magazine. December 2011-January 2012, p. 7. 

Summary: Advocate General Bot of the Court of Justice of the European Union (CJEU) -- opinion 

regarding the use of class headings -- Office for Harmonization in the Internal Market's (OHIM) 

'class heading covers all' approach does not offer enough clarity -- registration of trademarks in the 

Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator case) -- some 

class headings in the Nice Classification are not precise -- OHIM does not offer the clarity needed 

when registering a trade mark -- OHIM's current practice creates confusion -- background to the 

case. 

Subject: Trade mark registration--Europe 


Author: Belder, Lucky 

Title: The age of copyright: Wittem's copyright reform proposal compared to Samuelson's 

Preliminary Thoughts 


Summary: Comparison between the draft for a EU Copyright Code by the Wittem Group and 

Pamela Samuelson's Preliminary Thoughts on Copyright Reform -- development of copyright in 

Europe -- how the proposed EU Copyright Code strikes a balance between the different 

jurisdictions -- Pamela Samuelson's main critiques of the US copyright system -- reform initiatives 

are similar in their critique of the existing system -- agree on the need for reform of the system of 

limitations to copyright -- balance between copyright and the public domain -- future of copyright 

harmonisation. 

Subject: Copyright--reform 

Subject: Fair use (Copyright) 

Author: Dijkman, Léon E. 

Author: Mombers, Arne E. M. 


Author: Vilau, Dragos M. 

Title: Aiming for consistency 

Source: World Trademark Review. No. 35, February-March 2012, pp. 84-85. 

Summary: Romania is a founding member of Paris Convention -- Paris Convention refers only to 

identical or similar goods -- Agreement on Trade-Related Aspects of Intellectual Property Rights 

(TRIPs) added extensions to these principles -- Romanian legislation on well-known trade marks -- 

determining whether a trade mark is well known in Romania -- degree of knowledge of the mark -- 

contradictions and controversies -- famous and well-known criteria -- how trade mark owners 

should prove their trade marks are well known. 

Subject: Famous trade marks--Romania 

Author: Lupsa, Ionut 

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Author: Calkins, James C. 

Title: The America Invents Act: summarizing the statute 

Source: Pharmaceutical Patent Analyst. Vol. 1 No. 1, March 2012, pp. 13-16. 

Summary: Patent system reform -- United States -- America Invents Act 2011 (AIA) -- varied 

implementation dates -- litigation issues -- prior user rights -- disclosure of best mode for carrying 

out an invention -- advice of counsel -- wilful infringement -- prioritised examination -- fee increases 

-- patent marking -- patent examination and review processes -- pre-issue challenges -- post-grant 

review -- inter partes re-examination -- supplemental examination -- change to first-to-file system -- 

worldwide disclosure. 

Subject: Patent systems--reform--United States 

Subject: Patent examination--reform--United States 

Subject: Patents--law and legislation--United States 


Author: Newton, Jill 

Title: Appeal upheld - claims lack fair basis: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth 

[2011] FCAF 132 

Source: Australian Intellectual Property Law Bulletin. Vol. 24 No. 7, February 2012, pp. 195-197. 

Summary: Grounds for patent revocation not established -- Sigma Pharmaceuticals (Australia) 

Pty Ltd -- Alphapharm Pty Limited -- Generic Health Pty Ltd -- decision reversed -- priority date -- 

pharmaceutical compound for the treatment of depression -- patent application -- fair basis 

Subject: Patent revocation 

Subject: Patent claims--case law 

Subject: Patent priority--case law 

Subject: Pharmaceuticals 


Author: Rijsdijk, Michiel 

Title: Apple-Samsung decision causes interesting discussions 


Summary: Preliminary court decision of the Dutch Court at The Hague -- Apple v Samsung -- 

interim injunction proceeding -- infringement of one Apple patent -- judge made a cross-border ban 

-- Samsung is prohibited from marketing its smart phones in all European countries where the 

patent is valid -- whether it is possible to provide for a preliminary cross-border injunction -- 

opinions -- question remains unanswered -- European Court of Justice decisions in other cases. 

Subject: Injunctions--Netherlands 

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Title: Architecture and copyright controversies 

Source: WIPO Magazine. No. 5, October 2011, pp. 12-14. 

Summary: Protection of architecture as a creative work -- rights of architects in their creations -- 

whether able to be protected under copyright law -- whether legally possible to reproduce an 

architectural work located on a public site without architect’s permission -- right of reproduction -- 

image rights and brands -- image of Auditorio de Tenerife registered as trade mark -- charge to 

commercial operators for use -- striking a balance between the moral rights of architects and 

rights of building owners -- new law in Colombia -- right to the integrity of the work -- United States 

Copyright Act -- infringement of architect’s moral rights -- Sydney Opera House and Jørn Utzon -- 

line between inspiration and plagiarism -- originality of design of Crown of the East, Chinese 

Pavilion at World Expo 2010 -- future for IP rights of architects 

Subject: Copyright 

Subject: Artistic works 

Subject: Moral rights 

Internet: http://www.wipo.int/wipo_magazine/en/2011/05/article_0004.html 


Author: Kalibbala, Christine 

Title: Assigning IP to foreign entities: the role of exchange control 


Summary: No South African Intellectual Property (IP) may be exported without South African 

Reserve Bank permission -- Exchange Control Regulations -- aimed at protecting South African 

capital reserves -- Couve and another v Reddot International (Pty) Limited and others -- 

assignment agreement -- change of ownership in certain patent applications -- foreign company 

would gain direct and material interest in the rights -- right to receive royalties -- non-compliance 

with the provision of the Regulation rendered assignment agreement null and void -- Oilwell (Pty) 

Ltd v Protec International Ltd & others -- Supreme Court of Appeal decision -- tax consequences. 

Subject: International trade--case law--South Africa 

Subject: Intellectual property assignment--South Africa 


Author: Rana, Lucy 

Title: Balancing the odds: an evaluation of the .in domain name Dispute Resolution Policy 

Source: World Intellectual Property Review. November-December 2011, pp. 52-54. 

Summary: Jurisdictional difficulties for domain name dispute proceedings -- internet global 

medium -- .IN Dispute Resolution Policy (.INDRP) -- formulated by the .IN Registry for the domain 

name dispute resolution in India -- initiating proceedings at the .INDRP -- use in bad faith -- 

registrant's rights -- registrar's involvement in dispute resolution -- advantages of the .INDRP 

procedure. 

Subject: Domain name dispute resolution--procedure--India 

Author: Srivastava, Rishu 

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Author: O'Byrne, Peter 

Title: Better borders?: the proposed new EU Customs Regulation 


Summary: European Commission proposed a new draft Customs Regulation for the European 

Union -- result of an action plan to tackle the significant increase in counterfeit activity -- extends 

the scope if intellectual property (IP) rights covered by customs procedures -- expressly covers 

parallel imports -- increase in demand on the resources and time of customs -- simplified 

procedure process whereby goods can be destroyed without the need to determine whether an IP 

right has been infringed -- rights holder and holder of the goods agree to destruction -- destruction 

of small consignments -- rights holder can only make limited use of the information relating to 

counterfeit activity -- transit -- costs of storage and destruction. 

Subject: Customs--reform--Europe 

Subject: Customs--procedure--Europe 

Author: Roberts, Karen 


Author: Sloan, Helen 

Title: Beyond China: the counterfeiting challenge in Southeast Asia 


Summary: Counterfeit products widely available for sale in Vietnam, Thailand and Malaysia -- 

manufacturing of fake goods is also an issue -- counterfeiting on the rise in Vietnam -- booming 

economy -- increasing affluence -- growing demand for consumer goods -- imported and homegrown 

fakes -- administrative and government bodies committed resources to taking on 

counterfeiters -- courts are not ready for an influx of cases -- distinct divergence in opinion among 

brand owners -- strategies for companies to tackle counterfeiting -- judicial efficiency and 

competence in Thailand -- counterfeits are a big problem -- imported and home-grown fakes -- 

disagreement between brand owners and local law enforcement over who should fund and carry 

out enforcement activities -- possible to get good results -- work alongside the police -- other 

government agencies are proactive and efficient -- landlord liability legislation -- Malaysia is more 

of a counterfeit consumer -- anti-counterfeiting programmes concentrate on removing goods from 

the market -- the investigator's perspective -- the brand owner's perspective. 

Subject: Counterfeiting--Southeast Asia 

Subject: Intellectual property enforcement--Southeast Asia 


Author: Filoche, Geoffroy 

Title: Biodiversity fetishism and biotechnology promises in Brazil: from policy contradictions to 

legal adjustments 

Source: Journal of World Intellectual Property. Vol. 15 No. 2, March 2012, pp. 133-154. 

Summary: Development of the Brazilian legal framework -- access and benefit sharing -- 

protection by patent of biotechnological innovations -- 20 years on from the adoption of the 

Convention on Biological Diversity -- Brazil has different attitude and expectations with regard to its 

genetic resources -- control of the State over access procedures and restrictive regimes -- out of 

step with the concerns of national researchers and companies -- target of criticisms and reforms -- 

scientific community seeking to acquire prerogatives for managing genetic heritage -- State 

seeking to strengthen the national biotechnology sector -- adjustment of legal environment to new 

and contradictory issues -- interplay between public and private rights when it comes to genetic 

resources and natural-based products -- "commons" systems emerging -- accessing biodiversity -- 

protecting innovations. 

Subject: Biodiversity--Brazil 

Subject: Benefit sharing--Brazil 

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Author: Sullivan, Clark G. 

Title: A brief history of generic substitution in the USA 


Summary: Generic pharmaceuticals -- United States -- generic substitution marketplace -- 

therapeutic equivalence -- role of Food and Drug Administration (FDA) in the generic substitution 

process -- Orange Book processes -- effects of Hatch-Waxman Act on Federal Drug and Cosmetic 

Act (FD&C Act). 

Subject: Pharmaceuticals--United States 


Author: Zakrocka, Anna 

Title: The challenge of proving renown 


Summary: Polish Law on Industrial Property -- trade mark ineligible for registration if it is similar or 

identical to a mark which became well-known in Poland and was used for similar or identical goods 

-- well-known trade marks under the law -- renowned trade marks -- options available for owners of 

famous and well-known marks to combat infringement -- aspects to consider when considering 

whether a mark has acquired renown -- function of a renowned trade mark -- Toyota Motor 

Corporation filed opposition against registration of Lexus trade mark -- Tiffany & Co -- territorial 

extension of renown -- renown must be proved among consumers -- Rafello trade mark. 

Subject: Famous trade marks--case law--Poland 


Author: Wongel, Heiko 

Title: Changes to the IPC effective from January 2011 

Source: World Patent Information. Vol. 34 No. 1 March 2012, pp. 4-7. 

Summary: Changes to the International patent Classification from January 2011 -- core and 

advanced levels no longer used -- only one text of the IPC now published, corresponding to the 

former advanced level -- smaller patent offices may choose to classify using main groups only -- 

annual revision process -- major revision in nanotechnology, pictorial communication and air 

conditioning areas -- future developments on the Common Hybrid Classification 

Subject: Patent classification--reform 

Author: Farassopoulos, Antonios 


Author: Sapalo, Ignacio S. 

Title: Cheaper medicine over quality medicine? 


Summary: Universally Accessible Cheaper and Quality Medicines Act 2008 -- succeeded in 

bringing down the cost of essential drugs and those to treat chronic diseases -- also resulted in 

incorrect jurisprudence -- Supreme Court decision in Roma Drug v GlaxoSmithKline -- ensure 

quality of the medicine is not compromised -- Roma Drug imported medicines without obtaining 

prior registration from the Bureau of Food and Drugs (BFAD) -- case filed against Roma Drug for 

violation of the Special Law on Counterfeit Drugs -- imported product considered to be counterfeit 

if not registered with the BFAD -- Republic Act No. 9502 -- amended Intellectual Property Code, 

Republic Act No. 8293 -- provided international exhaustion of patents for medicine -- allowed 

parallel import by third parties -- Supreme Court considered prosecution of Roma Drug to be no 

longer warranted. 

Subject: Pharmaceuticals--case law--Philippines 

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Author: Costin, Sharyn 

Title: The claim to fame 


Summary: Canada requires a case-by-case determination of fame within the context of an 

infringement proceeding or opposition -- some marks are famous without the need for proof -- 

many will require evidentiary support for the claim -- types of evidence -- Remo Imports Ltd v 

Jaguar Cars Ltd -- Allergan Inc v Toutoughi -- Mattel USA Inc v 3894207 Canada Inc -- 

McDonald's Corp v Chung-Kee Noodle Shop Ltd -- Apple Computer Inc v Richardson -- Empressa 

Cubana del Tabaco v Tequila Cuervo, SA de CV -- ambit of protection -- Mattel -- Veuve Cliquot -- 

Wrangler Apparel Corp v Big Rock Brewery Partnership. 

Subject: Famous trade marks--case law--Canada 

Subject: Evidence--case law--Canada 


Author: Zawa, Paul 

Title: Competition and IP law: the odd couple 

Source: Intellectual Property Forum. No. 87, December 2011, pp. 45-53. 

Summary: IP rights -- competition law -- Competition and Consumer Act 2010 -- Australian 

Competition & Consumer Commission Immunity Policy -- Nestle Australia v ALDI -- parallel 

importing of Nestle coffee -- "exclusive dealing" -- cartels 

Subject: Intellectual property rights 

Subject: Competition law 

Subject: Intellectual property law 

Subject: Competition (Economics) 

Subject: Parallel importing 


Author: Arnold, Richard 

Title: Content copyrights and signal copyrights: the case for a rational scheme of protection 


Summary: Distinctions between two categories of copyrights recognised by United Kingdom law -- 

content copyrights and signal copyrights -- UK law suffers from two problems in this area -- 

addressing the problems would promote a more rational scheme of protection -- enable a more 

accurate implementation by the UK of the European Union (EU) copyright directives. 

Subject: Copyright--law and legislation--United Kingdom 

Subject: Copyright--law and legislation--Europe 

Subject: Copyright owners' rights--United Kingdom 

-8-




Author: Rendle, Adam 

Title: Copyright protection for photographs: UK "red bus" case 

Source: World Intellectual Property Report. Vol. 26 No. 3 March 2012, pp. 49-50. 

Summary: Copyright infringement claim -- Patents County Court decision in Temple Island v. New 

English Teas -- copyright protection of photographs of common scenes in the UK -- picture of red 

bus crossing Westminster Bridge on black and white background, manipulated using Photoshop -- 

facts of the case -- circumstances when copyright subsists in photograph -- originality -- using 

editing techniques to produce an altered visual appearance of photograph -- new "category" of 

photographs called "photographic works" -- whether substantial part copied -- found ‘key 

combination’ copied -- significance of the decision. 

Subject: Copyright infringement--case law--United Kingdom 

Subject: Artistic works--United Kingdom 

Author: Shanmuganathan, Niri 


Author: Carrington, Victoria E. 

Title: Counterfeiters beware: Canadian court's message to purveyors of 'knock offs' 


Summary: Federal Court of Canada -- Louis Vuitton and Burberry largest ever punitive damages 

award in a trade mark counterfeiting and copyright case in Canada -- Louis Vuitton Malletier SA et 

al v Singga Enterprises (Canada) Inc et al -- defendants engaged in manufacturing operations in 

China -- importing vast amounts of counterfeit products into Canada -- plaintiffs were forced to 

expend significant time and resources in order to gather evidence -- Tucows.com Co v Lojas 

Renner SA -- Uniform Domain-Name Dispute Resolution Policy (UDRP) complaint -- personal 

property. 

Subject: Counterfeiting--case law--Canada 

Subject: Damages--case law--Canada 


Author: Elliott, Henry 

Title: Court of Appeal upholds CTM infringement in Specsavers v. Asda, refers questions to CJEU 


Summary: Trade mark infringement claim -- registered community trade marks -- logo and word 

marks -- UK Court of Appeal decision in Specsavers International Healthcare Ltd and Ors v. Asda 

Stores Ltd -- upheld two of Specsavers’ grounds of appeal -- facts of the case -- analysis of the 

decision -- questions referred to the Court of Justice for the European Union (CJEU) -- guidance 

on what constitutes use of a graphic device for the purposes of the Trade Marks Regulation -- how 

to distinguish between separate use and use as one mark -- Court of Appeal focused on ASDA’s 

clear intention to target and parody Specsavers as a factor in finding an unfair advantage -- risks 

of marketing campaign based on references to competitor’s trade marks 

Subject: Trade mark infringement--case law--United Kingdom 

Subject: Brand confusion--case law--United Kingdom 

-9-




Author: Friedgut, Martin 

Title: Current developments: Australia 


Summary: IP Australia fee review -- patent infringement -- copyright -- trade marks -- brand 

names -- trade mark infringement -- copyright infringement -- Apple Inc v Samsung Electronics 

Subject: IP Australia 

Subject: Patent fees 

Subject: Patent infringement--case law 

Subject: Trade mark infringement--case law 

Subject: Copyright infringement--case law 

Subject: Branding 

Subject: Copyright 

Author: Caldwell, Amanda 

Author: Cordiner, Tom 

Author: Nash, Alan 

Author: Reynolds, Simon 


Author: Lloyd, Mike 

Title: Designs Act 2003 (Cth): the effects in practice for lawyers 

Source: Australian Intellectual Property Law Bulletin. Vol. 24 No. 8, March 2012, pp. 207-211. 

Summary: Changes to existing law aimed to improve enforceability of registered designs -- 

infringement test changed -- increase in overseas originating designs filed -- Australian originating 

designs stable -- popular classes for design applications 

Subject: Australia. Designs Act (2003) 

Subject: Industrial designs--Australia 

Subject: Fashion and design industry 

Author: Bowman, Byron 


Author: Rivette, Michael 

Title: Do IP laws adequately protect fashion? 


Summary: Designs Act 2003 -- copyright infringement -- registration of fashion designs -- Elwood 

Clothing Pty Ltd v Cotton On Clothing Pty Ltd -- trade mark infringement -- passing off -- 

Consumer & Competition Act 2011 -- damages -- brand protection 


Subject: Fashion and design industry 

Subject: Industrial designs 

Subject: Passing-off 

Subject: Damages 

Subject: Brand management 

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Author: Puasiri, Wanwipar 

Title: Doubts in Rosetta Stone v Google: analysis and comments 


Summary: United States court ruled in favour of Google in Rosetta Stone v Google Inc -- Google 

was not liable -- gained profit by offering space for advertisements leading to websites offering 

Rosetta Stone counterfeits -- Google controls the use of Adwords by advertisers -- raises some 

doubts as to whether the court has erred regarding trade mark infringement -- could result as a 

non-standard for trade mark keyword decisions -- could contribute to mounting fears of trade mark 

owners in future disputes. 

Subject: Keyword advertising--case law--United States 

Subject: Trade mark infringement--case law--United States 


Author: Gekas, Jami 

Title: Easing the path to protection 


Summary: Owners of famous and well-known marks receive important strategic benefits -- fame 

and the federal trade mark prosecution process -- acquired distinctiveness -- trade mark use -- 

fame and likelihood of confusion -- enforcement options -- infringement -- dilution -- cybersquatting 

-- evidentiary methods for proving fame. 

Subject: Famous trade marks--United States 

Author: Tenney, H. Straat 


Author: Thomas, Nicole M. 

Title: An education: the three-step test for development 

Source: European Intellectual Property Review. Vol. 34 No. 2, 2012, pp. 244-260. 

Summary: Innovating ways to share and protect innovation -- developing nations struggle to 

access knowledge to educate their communities -- World Intellectual Property Organisation 

(WIPO) Standing Committee on Copyright and Related Rights (SCCR) -- improve global access to 

copyrighted works, with particular emphasis on limitations and exceptions for visually impaired 

people -- expansion of legal exceptions for educational purposes in developing countries -- Trade- 

Related Aspects of Intellectual Property Rights (TRIPS) -- World Trade Organization (WTO) -- 

WTO-TRIPS three-step test -- Berne Appendix -- France - Germany -- United States -- Australia -- 

United Kingdom -- micro proposals -- macro proposals. 

Subject: Education and training industry--developing countries 

Subject: Intellectual property management--developing countries 

Subject: Copyright use--developing countries 

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Author: Oltra-Garcia, Ricardo 

Title: Efficient situation specific and adaptive search strategies: training material for new patent 

searchers 


Summary: Optimizing patent search efficiency -- aim to find the best prior art in the shortest time 

possible -- selecting the initial search criteria -- basic structured search -- linear search -- 

importance of intermediate search results -- continuously revising and adapting the search 

strategy in an iterative process -- adaptive search strategies -- value as a training methodology for 

patent examiners -- training of European Patent Office examiners to use closed-loop iterative 

approach -- continuous monitoring of quality of search results -- critical review of initial search 

criteria 

Subject: Patent searching 


Author: Ponce González, Carolina Julieta 

Title: Embracing well-known marks 


Summary: Filing of applications for a declaration of well-known status with the Trademark Office -- 

two kinds of well-known trade marks -- fees -- evidence required to obtain a declaration of wellknown 

status -- documentation -- challenging a rejection -- recommended procedure for obtaining 

a declaration of well-known status -- five year period of validity -- possible renewal -- things that 

may not be registered as trade marks -- Trademark Office will not allow the registration of another 

identical or confusingly similar trade mark used to commercialise or benefit the same or similar 

goods or services for notorious marks -- any goods or services at all for famous marks. 

Subject: Famous trade marks--Mexico 

Subject: Confusing similarity--Mexico 


Author: Wadlow, Christopher 

Title: The emergent European law of unfair competition and its consumer law origins 

Source: Intellectual Property Quarterly. No. 1, 2012, pp. 1-24. 

Summary: Unfair competition law politically too hot to harmonise -- Unfair Commercial Practices 

Directive (UCPD) regulates unfair "business-to-consumer" practices -- "business-to-business" 

practices largely unregulated -- supposed division between the two is impossible to maintain -- 

makings of a European law of unfair competition may already be latent within the Directive -- 

potential consequences of the proposition -- concept of unfair competition in the Rome II 

Regulation -- the travaux préparatoires -- extent of liability for unfair competition in German and 

English law. 

Subject: Competition law--Europe 

Subject: Consumer protection--Europe 

Subject: Competition (Economics)--Europe 

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Author: O'Malley, Maura 

Title: Enter the dragon 

Source: Intellectual Property Magazine. December 2011-January 2012, pp. 11-12. 

Summary: Hong Kong since its return to Chinese rule -- Hong Kong as a gateway into the 

Chinese mainland -- China has good laws to protect intellectual property (IP) -- will take time for 

respect for these laws to grow -- difficult to achieve enforcement of laws in a uniform way -- China 

as a place where you can set precedence -- Hong Kong can play an important role, by raising the 

standard in China -- Business of IP Asia Forum. 

Subject: Intellectual property--Asia 

Subject: Business and professional services industry--Asia 


Author: Fhima, Ilanah Simon 

Title: Exploring the roots of European dilution 


Summary: Harmonised trade mark regime firmly embedded -- Trade Mark Directive was 

negotiated and agreed on by the individual Member States -- individual Member States' courts are 

charged with interpreting the legislation -- framing questions for reference to the Court of Justice of 

the European Union (CJEU) -- preharmonisation national approaches play a role in the way in 

which European trade mark law is interpreted -- national approaches in four of European trade 

mark law's most influential jurisdictions, the United Kingdom, Germany, France and the Benelux, 

in the field of dilution -- how each of those jurisdictions provided protection against dilution prior to 

harmonisation -- key trends which may have influenced contemporary European dilution law. 

Subject: Trade mark dilution--Europe 

Subject: Harmonisation of laws--Europe 


Author: Bellingham, Sarah 

Title: Explosive drama: exploring the boundaries of copyright subsistence in dramatic works 

Source: Australian Intellectual Property Journal. Vol. 22 No. 3 September 2011, pp. 106-118. 

Summary: Interaction of fireworks displays and copyright law -- judgment in 1999 of Hill J in Nine 

Network Australia Pty Ltd v Australian Broadcasting Corporation -- televising of New Years' Eve 

fireworks on Sydney Harbour -- Hill J did not form a view on whether copyright could subsist in the 

script for a fireworks display as dramatic work under the Copyright Act 1968 (Cth) -- whether a 

person who selects the sequence of elements which comprises a fireworks show should be 

regarded as the author of a dramatic work 

Subject: Copyright--law and legislation--Australia 

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Author: Li, Luo 

Title: Extraordinary landmark in the protection of intangible cultural heritage of China 


Summary: Issue in China -- how to apply the law to effectively protect and encourage the 

sustainable development of intangible cultural heritage which has a "Chinese element" -- China 

announced a law specifically covering intangible cultural heritage -- Intangible Cultural Heritage 

Law of the People’s Republic of China -- general rules -- documentation of intangible cultural 

heritage -- inventory system of protected masterpieces -- rules governing activities of passing on 

and transmission of intangible cultural heritage -- legal liabilities -- supplementary provisions -- 

represents improvements on previous legal regulations -- some new provisions -- comprehensively 

protect and develop intangible cultural heritage -- limitations and advantages of the proposed 

framework. 

Subject: Traditional cultural expressions--China 

Subject: Intellectual property law--reform--China 


Author: Catania, Philip 

Title: Facebook: emerging intellectual property issues 


Summary: IP rights -- intellectual property infringement -- copyright -- posting content on 

Facebook -- personalised web address feature holds potential for cyber squatting -- brand 

management -- intellectual property enforcement 

Subject: Intellectual property rights 

Subject: Social networking 

Subject: User-generated content 

Subject: Intellectual property infringement 

Author: Lenthall, Sarah 


Author: Hawcroft, Emily 

Title: Fair or foul dealing?: parody, satire and derogatory treatment 


Summary: Copyright Act 1968 -- "Mad Max remix" -- parody of the Mad Max film trilogy -- fair 

dealing -- infringement 

Subject: Fair use (Copyright) 

Subject: Copyright infringement 


Subject: Cinematographic works 


Author: Folmer, Fleur 

Title: First ECJ decision on Community design rights: Promer-Pepsico "Pogs" case 


Summary: European Court of Justice (ECJ) -- decision in Grupo Promer Mon Graphic and 

Pepsico Inc -- ECJ' s first decision on Community design rights -- clarifies the meaning of several 

key concepts in the Community Design Regulation 6/2002 -- "informed user" -- "level of attention" - 

- decision sheds light on how to assess the overall impression produced on an informed user by 

potentially conflicting designs. 

Subject: Industrial design validity--case law--Europe 

-14-




Author: Naumov, Victor 

Title: Five landmark intellectual property and related law changes in Russia in 2011 


Summary: New laws passed by Russian Federation -- court for intellectual property law to be 

formed in Russia -- special state arbitration court for the adjudication of certain disputes over IP 

rights -- law enacted to ratify the Treaty on Uniform Principles of Regulation to Protect and Defend 

Intellectual Property Rights -- established uniform principles to protect IP rights in Russia, Belarus 

and Kazakhstan -- ruling from the Presidium of the Supreme State Arbitration Court of the Russian 

Federation -- liability of internet service providers on unlawful use of photographic works -- 

formulated criteria to exempt ISPs from liability for content uploaded by users -- licensing and 

orders -- ruling of Presidium of the Supreme Commercial Court -- SAB Miller case -- two 

agreements of differing legal natures -- sublicensing agreement on the use of a trade mark -- 

ordering agreement for the production of beer and its sale -- Russia's accession to the WTO -- 

protocol signed on December 16, 2011 -- Russia's obligations 

Subject: Intellectual property law--reform--Russia 

Subject: Carriage service providers--Russia 

Subject: Intellectual property--treaties--Russia 


Author: Ávila, Jorge 

Title: Focussed on the future 


Summary: Jorge Ávila, president of Brazil's National Institute of Industrial Property (INIP) -- major 

challenges facing INIP -- importance of international cooperation -- usefulness of the Patent 

Prosecution Highway (PPH) -- need for more comprehensive, plurilateral agreements. 

Subject: Business collaboration--Brazil 

Subject: Intellectual property--Brazil 


Author: Rudgard, Nick 

Title: Football decoders: making a drama out of a sporting event? 


Summary: Court of Justice of the European Union (CJEU) ruling in Murphy and QC Leisure -- key 

question for the CJEU -- what intellectual property rights (IPR) did the Football Association 

Premiere League (FAPL) have within the framework of television broadcasts that were capable of 

being protected under the Copyright Directive? -- CJEU considered three articles of the Copyright 

Directive -- sporting events cannot be classified as intellectual creations within the meaning of the 

Copyright Directive -- justifying a restriction on the freedom to provide services by an objective of 

protecting IPR -- IPR analysis in relation to sporting events -- CJEU findings. 

Subject: Intellectual property rights--tourism and recreation industry 


-15-




Author: Raval, Melchor Inigo 

Title: Game over for mod chips?: the aftermath of Sony v Stevens and the Australian-US Free 

Trade Agreement 


Summary: Comparison of the Australian Copyright Act and the United States Digital Millennium 

Copyright Act (DMCA) in light of the Australian-US treaty -- harmonisation of copyright rules has 

made the mod chip illegal to curb gaming piracy -- harmonisation fails to recognise the right for 

gamers to back up games -- develop non-infringing interoperable applications for the gaming 

console. 

Subject: International trade 

Subject: Multimedia works 

Subject: Circumvention 


Author: Dickerson, Jeremy 

Title: Getting your sub-licensing strategy right 


Summary: Benefits of trade mark licensing -- a clear document goes a long way towards avoiding 

disputes between parties -- right to grant sub-licences -- scope of the grant -- whether sublicensing 

is allowed at all -- benefits of sub-licensing -- requirement for consent to sub-licence -- 

Lonsdale Sports Limited permitted its licensee, Leofelis SA, to grant a sub-licence to a company 

called Leeside SRL in Italy -- imposed limits on the grant of further sub-licences by Leofelis -- 

Leofelis purported to extend Leeside's sub-licence to cover additional territories within the 

European Union -- did not seek Lonsdale's prior consent -- Court of Appeal's decision -- to what 

extent should the licensor determine the terms of the sub-licence in advance -- sub-licences are 

not an automatic mirror of the head licence -- important terms -- calculating royalties -- policing 

licensee's use of trade marks -- sub-licensee's perspective. 

Subject: Trade mark licensing 


Author: Griffiths, Elizabeth 


Author: Licks, Otto B. 

Title: Government change of heart in data package protection in Brazil 


Summary: Research based companies seeking the enforcement of data package protection for 

new drugs against the Brazilian food and drug agency (ANVISA) and infringers -- ANVISA's 

defence has been there is no such data package protection to drugs for human use in Brazil -- 

TRIPS agreement -- General Agreement on Tariffs and Trade (GATT) -- World Trade Organisation 

(WTO's) framework -- Industrial Property Law (IPL) -- data package protection foreseen in 

Brazilian legal framework -- unclear how courts will decide this matter. 

Subject: Pharmaceuticals--Brazil 

Author: Hallak, Eduardo 

-16-




Author: Hargreaves, Ian 

Uniform title: [Hargreaves review of intellectual property and growth [Internet document]] 

Source: Hargreaves Review of Intellectual Property and Growth. 2010-2011. 

Summary: Intellectual property review -- United Kingdom -- Intellectual property and growth -- 

evidence base -- international context -- copyright licensing opportunities -- digital copyright 

exceptions -- patents -- designs -- enforcement and disputes -- small and medium enterprises 

(SMEs) and the IP framework -- an adaptive IP framework -- impact -- Review terms of reference - 

- stakeholders met during Review of IP and Growth -- submissions -- supporting documents - 

government response. 

Subject: Intellectual property--reviews--United Kingdom 

Subject: Innovation (Technological)--reviews--United Kingdom 

Author: United Kingdom. Intellectual Property Office 

Internet: http://www.ipo.gov.uk/ipreview-finalreport.pdf 

Internet: http://www.ipo.gov.uk/ipreview.htm 

Internet: http://www.ipo.gov.uk/ipresponse 


Author: Roberts, Gwilym 

Title: The Hargreaves Review reviewed: a missed opportunity to help the dragons in their den? 


Summary: Hargreaves Review of Intellectual Property and growth -- United Kingdom (UK) 

Government's response -- purpose of the review and response -- much discussion focussed on 

the copyright aspects of the Review -- other areas of IP have received less attention -- crucial 

areas of IP, especially patents, have been neglected -- Government has indicated that no more 

reviews are planned for the time being -- creation and innovation essential to the economy -- 

innovation can be said to be the subject of the patent system -- does not look likely to be 

developed particularly as an outcome of the Hargreaves Review. 

Subject: Intellectual property--reviews--United Kingdom 

Subject: Patent systems--United Kingdom 


Author: Verducci-Galletti, Simone 

Title: A high regard for reputation 


Summary: Special protection of well-known marks in Italian legal system -- reputation is not valid 

grounds for pre-registration administrative opposition -- invalidity proceedings -- impact on costs -- 

cross-class protection -- development of jurisprudence on similarity between goods and services -- 

similarity between products if they might credibly be judged to be attributable to the same source 

of origin -- line of argument was developed to protect the fashion industry -- Max & Co -- Damiani - 

- Intel -- Tosca Blu -- evidence. 

Subject: Famous trade marks--case law--Italy 

Author: Mannini, Alessandro 

-17-




Author: Kica, Evisa 

Title: High-quality patents for emerging science and technology through external actors 


Summary: Article 115 of the European Patent Convention -- inclusion of third parties to provide 

input to the prior art search -- third party involvement in the patent prosecution process -- 

communicate relevant information to the examiner in charge -- empirical research in the field of 

human genetics -- third parties usually participate after patents have been granted -- United States 

-- Europe. 

Subject: Inventive step--Europe 

Subject: Patent applications--Europe 

Author: Rodriguez, Victor 

Author: Groenendijk, Nico 


Author: Stobbs, Julius 

Title: Honesty is the best policy 


Summary: Interpretation of the provisions on the registrability of descriptive marks -- precludes 

registration of certain marks -- the Court of Justice of the European Union (CJEU) interpretation -- 

intellectual property rights must be balanced between the monopoly being granted and the fair use 

outside it -- interpretation of Art 6(1)b -- descriptive mark can be registered if it is shown to have 

acquired distinctiveness through use -- changes to the way the directive is interpreted are 

warranted -- allow registration of descriptive marks, where the proposed use of the mark is clearly 

as a trade mark -- where the context of the use means that the relevant consumers would see the 

mark as distinctive -- do not refuse registration because other potential uses may not indicate 

origin. 

Subject: Trade marks--interpretation--Europe 

Subject: Trade mark distinctiveness 

Subject: Trade mark registrability 

Author: Weller, Geoff 


Author: Griffin, Sharon 

Title: How to keep IP in reach when outsourcing 


Summary: Risks to intellectual property (IP) in outsourcing arrangements -- examples of risks to 

IP and related business risks -- internal due diligence -- mitigate weaknesses -- taking stock of 

your own IP -- practices to overcome common industry and organisational weaknesses -- consider 

risk management methods -- model for IP risk management. 

Subject: Trade secrets 

Subject: Outsourcing 

Subject: Risk--management 

-18-




Author: Bosetti, Rita 

Title: The impact of effective patents on future innovations in nanomedicine 


Summary: Nanomedicine patenting -- United States -- current system dysfunctional -- long 

research and development process --effects of long patent pendency -- need to develop patent 

office expertise -- biomedical applications of nanotechnology -- patent issue confronting 

nanomedicine -- overlapping patents -- future perspectives. 

Subject: Intellectual property--biotechnology industry--United States 

Subject: Patent systems--United States 

Author: Vereeck, Lode 

SNIPER No.:2012/00304 

Author: Bitton, Miriam 

Title: Implementing the Public Sector Information Directive 


Summary: How the Public Sector Information Directive was implemented in the European Union - 

- Public sector information (PSI) is a major informational product produced by governments 

globally -- background of the PSI Directive -- comparing the ways in which different EU countries 

have implemented the directive -- evaluation of problematic and good practices of implementation. 

Subject: Knowledge industry--law and legislation--Europe 


Author: Sexton, Christopher 

Title: In conversation with Kathryn Everett 


Summary: Interview with Kathryn Everett -- partner at Freehills -- intellectual property litigation -- 

women in top tier law firms -- served on the executive of the Trans Tasman National Committee of 

Management at IPSANZ 

Subject: Everett, Kathryn--interviews 

Subject: Intellectual property litigation 


Author: Psaroudakis, Georgios 

Title: In search of the trade mark functions: keyword advertising in European law 


Summary: Keyword advertising brings about some proximity on the internet between the 

advertised goods and those of the trade mark owner -- does not lead to any confusion -- may be 

some dilution due to free-riding -- reputation of the trade mark is exploited by other businesses -- 

appearance of their advertisement in as many internet searches as possible -- only through the 

dilution doctrine that the advertising function of the trade mark must be protected -- no direct 

protection of this function beyond the limits of the doctrine should be granted. 

Subject: Keyword advertising 

Subject: Trade mark dilution 

-19-




Author: Ellis, Michael 

Title: Information lock down 


Summary: Trade secrets -- United States approach follows Trade-Related Aspects of Intellectual 

Property Rights Agreement (TRIPS) -- obligation to protect "undisclosed information" -- Economic 

Espionage Act 1996 makes theft of trade secrets a felony -- penalties -- trade secrets in the United 

Kingdom -- dealt with via contract law or action for breach of confidence -- Coco v AN Clark -- 

actions to take to maintain a trade secret -- mistakes with trade secrets -- appropriateness of trade 

secret protection -- what should an organisation be doing? -- develop an intellectual property (IP) 

policy -- risk register -- IP capture process -- enforce appropriate protection -- establish secure 

processes and methodologies for trade secrets. 


Subject: Intellectual property management 

Author: Trysburg, Donna 


Author: Lo, Szu-chia Scarlett 

Title: Innovation and patenting activities at universities in Taiwan: after Bayh-Dole like acts 


Summary: Analysis of patents granted to Taiwanese universities during 2004 to 2009 -- university 

administrations proactive in patenting works resulting from university-funded research after two 

Bayh-Dole like acts were passed -- Fundamental Science and Technology Act and Government 

Scientific and Technological Research and Development Results Ownership and Utilization 

Regulations passed in 1999 and 2000 -- general universities favoured invention patents -- 

technology universities favoured utility model patents 

Subject: Patents--education and training industry--Taiwan 

Subject: Technology transfer--Taiwan 


Author: Marzetti, Maximiliano 

Title: IP education - what next?: a view from the southern cone 


Summary: Need to rethink IP education IP curricula -- example of Latin America -- traditional 

emphasis on IP law -- need to adopt economics-based approach to IP legal education programs -- 

introduce specific IP business management components -- enable companies to fully leverage 

their IP assets for long-term economic growth and development -- role of WIPO in advancing IP 

education 

Subject: Intellectual property education 

Internet: http://www.wipo.int/wipo_magazine/en/2011/05/article_0008.html 


Title: IP valuation: speaking a common language 


Summary: Challenge of gaining an accurate picture of relevant intellectual assets -- how to value 

those assets -- intellectual assets are major part of a companies' value -- getting an accurate 

valuation is imperative -- different parts of a company may take different views of the value of 

intellectual property assets -- developing a common language is crucial -- building the best team 

for the job -- communicating effectively -- costs of inaccurate IP valuations -- when negotiating 

deals, it is important to understanding the other company's position. 

Subject: Value of intellectual property 

-20-



SNIPER No.:2012/00043 

Author: Stonelake, Barry 

Title: It is not all about the money 


Summary: Boehringer Ingelheim KG & Others v Swingward Ltd -- infringement arises only 

because the defendant failed to give notice in accordance with the law on parallel importation -- 

claimants elected to seek an account of profits -- point in an account of profits -- problem in this 

case -- trademark proprietor is entitled to an account of profits -- assessment of the amount of the 

financial remedy in the particular circumstances of the case -- sanction where the only 

infringement is failure to notify should not be the same as the sanctions where the substantive 

conditions for infringement are also breached -- trade mark owner may deliberately delay 

commencing proceedings with a view to increasing any financial reward for infringement. 

Subject: Account of profits--United Kingdom 

Subject: Trade mark infringement--case law--United Kingdom 


Author: Wolter, Bernd 

Title: It takes all kinds to make a world: some thoughts on the use of classification in patent 

searching 


Summary: Review of patent classification systems -- International Patent Classification (IPC) -- 

European Classification (ECLA) -- Indexing Codes (ICO) used in the EPO -- German DeKla 

classification -derived from the IPC -- two classification schemes added to the IPC by the 

Japanese Patent Office -- F-terms (File Forming Terms) and FI (File Index) terms -- US Patent 

Class (USPC) -- Derwent Manual Codes -- comparison search using the example of concept of 

controlling wind motors -- strengths and weaknesses of these systems -- benefits to patent 

searchers of the many options available 

Subject: Patent searching 

Subject: Patent classification 


Author: Maruyama, Ryo 

Title: JPO examination guidelines revised 


Summary: Japanese Patent Office (JPO) Examination Guidelines revised -- Description 

Requirements of a Specification and Claims (DRSC) -- guidelines subcommittee of experts -- key 

points of the revision. 

Subject: Patent applications--Japan 

Subject: Patent examination--reform--Japan 

-21-




Author: Burke, Shane 

Title: Justifications for patents as applied to human-animal chimeras 


Summary: Justifications for the application of patent law to human-animal chimeras -- satisfy the 

inventive step threshold in patent law -- investigate the distinction between biological inventions 

and discoveries -- examines the competence and jurisdiction of patent offices in relation to the 

interpretation and application of morality provisions -- Diamond v Chakrabarty -- living things 

created by man -- Newman and Riftkin patent application -- United States and European patent 

systems -- Weldon Amendment. 

Subject: Patenting of life forms--case law--United States 

Subject: Patent applications--law and legislation 


Author: McLeod, Chris 

Title: Keep calm or get litigious? 

Source: World Trademark Review. No. 35, February-March 2012, p. 68. 

Summary: Recent trade mark dispute over the "Keep Calm and Carry On" slogan -- whether 

slogans can be registered as trade marks -- key stages when considering whether a slogan can be 

registered as a trade mark -- leading cases relate to inherent distinctive character rather than 

acquired distinctive character -- Office of Harmonization for the Internal Market (OHIM) v Erpo 

Möbelwerk GmbH -- Audi AG v OHIM -- whether a slogan is merely a promotional formula -- 

whether a slogan that has been created by someone else can be registered -- yes, if it satisfies the 

requirements of distinctiveness -- no requirement for a trade mark to be the original creation of the 

trade mark owner. 

Subject: Trade mark registrability 

Subject: Trade mark distinctiveness 

Author: McCarthy, Imogen 


Author: Trey, Vladimir 

Title: Knowing the procedure 


Summary: Well-known trade mark protection -- special recognition procedure through Russian 

Patent and Trademark Office (Rospatent) -- High Patent Chamber competent authority to consider 

requests to recognise trade marks as well-known -- documents governing the protection and 

recognition of well-known trade marks -- kinds of marks that may be recognised as well-known -- 

advantages provided to owners of well-known trade marks -- procedure involved in seeking to 

have a trade mark recognised as well-known -- documents to submit -- once recognised as wellknown 

information is published in the Official Gazette -- main difficulty is demonstrating that 

consumers have a strong association between the trade mark and goods or services for which the 

trade mark is used -- determining the date the trade mark became well-known. 

Subject: Famous trade marks--Russia 

Subject: Trade mark registration--procedure--Russia 

-22-




Author: Sexton, Christopher 

Title: The latest Senate report: a patent win for Australian research 


Summary: Patent Amendment (Human Genes & Biological Materials) Bill 2010 -- amendment to 

Patents Act 1990 -- Senate Legal and Constitutional Affairs Legislation Committee report 

recommended the Bill should not be passed -- patenting of human genes -- ethical issues -- scope 

of Bill too broad 

Subject: Patenting of life forms--law and legislation 

Subject: Patenting of life forms--reviews 

Subject: Patentability 


Author: Yan, Min 

Title: The law surrounding the facilitation of online copyright infringement 


Summary: Piracy exacerbated in the digital era -- advanced means of communication and 

distribution -- peer-to-peer file sharing a new focus -- holding internet service providers liable for 

secondary infringement -- cost effective and viable -- law surrounding secondary liability is not 

clear -- uncertainty and problems of the existing law -- recent decisions regarding The Pirate Bay. 

Subject: Copyright infringement--liability 

Subject: Carriage service providers 

Subject: Copyright--law and legislation 


Author: Bikoff, James L. 

Title: Legislation targets theft of US property by rogue websites 


Summary: Severe and growing problem of online infringement of United States intellectual 

property -- Congress has considered a series of legislative changes -- Combating Online 

Infringement and Counterfeits Act -- Preventing Real Online Threats to Economic Creativity and 

Theft of Intellectual Property Act (PROTECT IP Act) -- Stop Online Piracy Act -- comparing the 

bills -- criticism and support for the Stop Online Piracy Act. 

Subject: Intellectual property infringement--law and legislation--United States 

Subject: Intellectual property law--reform--United States 

Author: Heasley, David K. 

Author: Marano, Phillip V. 

Author: Lauter, Judd 

-23-




Author: Roll, Martin, 1967- 

Title: Local lessons: the brand experience in China 


Summary: Globalisation -- migration of intellectual capital -- increase in cross-national business – 

allowed companies to expand and grow, increase consumer base and prosper -- increased 

competition, heightened regulatory monitoring, greater exposure to the fluctuations of the global 

marketplace -- strategies for brand owners for doing business and manufacturing in emerging 

markets -- tailored to local circumstances -- emerging markets in China -- affluent Chinese 

consumers -- luxury brands have taken renewed interest in Chinese market -- easing of trade 

barriers -- addition of more than two billion consumers to the global demand pool -- challenges 

dominating the effective navigation of the Chinese market -- government intervention -- negative 

effects of country branding -- legitimacy through strategic associations -- enhancing global 

presence -- consistent demonstration of quality -- new counterfeiting strategies -- connect with 

consumers on the ground -- customise strategically for each consumer segment -- cooperate with 

local innovators -- outlook. 

Subject: Brand management--China 

Subject: Intellectual property enforcement--China 


Author: Breton, Pierrette 

Title: Maintaining your competitive edge 


Summary: Gaining competitive intelligence -- reverse engineering -- acquire product and 

teardown into subparts -- analyse the feature of interest using one or a combination of 

methodologies -- results are reviewed by an expert knowledgeable in the technology -- 

conclusions are reached -- the feature is documented -- while gathering competitive intelligence, a 

competitor will come to know what you may prefer to keep as a trade secret -- is information 

obtained by reverse engineering theft of trade secrets? -- how reverse engineering impacts trade 

secrets -- reverse engineering can take time and be costly -- how best to protect trade secrets 

from reverse engineering. 


Subject: Business intelligence 


Author: Gao, Xiang 

Title: Major changes to PRC trademark law 


Summary: Trademark Law of the People's Republic of China draft submitted to the Legislative 

Affairs Office of the State Council -- summary of major changes reflected in the draft -- important 

articles of current Implementing Regulations of the Trademark Law were transplanted to the draft - 

- ambiguity in the draft -- further debate and amendment expected. 

Subject: Trade marks--reform--China 

-24-




Author: Skarvan, Dennis 

Title: Making tracks: Caterpillar on counterfeiting 


Summary: Dennis Skarvan, chief intellectual property (IP) counsel at Caterpillar Inc -- major 

threats to automotive manufacturers and parts suppliers from counterfeiting -- types of technology 

most likely to be counterfeited -- most effective strategies for dealing with the problem -- most 

heinous example of counterfeiting in the industry -- implications of counterfeiting for the industry -- 

quality of counterfeit products -- ensuring proprietary technology doesn't fall into the wrong hands - 

- helping to fight against automotive counterfeiting -- on a political level -- through cooperation 

within the industry. 

Subject: Counterfeiting--manufacturing and processing industry 

Subject: Intellectual property enforcement--manufacturing and processing industry 


Title: The manga phenomenon 


Summary: Manga as Japan’s most popular cultural export -- origins -- economic and cultural 

significance -- helped Japan become one of the world’s largest exporters of cultural products -- 

manga industry under threat from piracy – ‘scanlation’ -- act of scanning, translating and posting 

manga on the internet -- emergence of popular scanlation aggregator websites hosting thousands 

of manga and making them available free of charge -- causing global manga sales to plummet -- 

publishers fighting back -- release title in key markets at same time -- legal electronic version 

available for tablet computers -- piracy making it difficult for manga artists to earn a living – ‘Real’ 

Manga Competition launched by WIPO Japan Office -- create original work to highlight health and 

safety risks of buying counterfeit products -- interview with the winner, Emiko Iwasaki 

Subject: Copyright infringement--cultural and entertainment industry--Japan 



Author: Strauss, Sasha 

Title: Master brand or multiplicty?: choosing a branding approach 


Summary: Master brand strategy -- focus on one primary brand -- portfolio strategy -- focus on a 

range of products -- bifurcation of focus represented by two Procter & Gamble products -- 

illustrates the strength of the portfolio approach -- addresses the needs of distinct consumers -- no 

detrimental effect on neighbouring brands or products -- challenge inherent in portfolio 

development -- appeal of the portfolio approach for consumers -- master brand successes and 

risks -- difficulty of drawing a company's products and services together under a consistent master 

brand identity -- portfolios online -- hybrid approaches -- expense of building a brand. 


Author: Radcliff, David 

-25-




Author: Marginean, Dragosh 

Title: Memantine aftermath: will the national courts be influenced? 


Summary: Supplementary protection certificates (SPCs) for human and veterinary medicinal 

products and plant protection products available in Romania from 2007 -- majority of SPC 

applications have been granted by the State Office for Inventions and Trademarks (OSIM) -- SPC 

applications placed on the market before entry into force of the national law were initially rejected 

by OSIM -- OSIM decisions challenged in court -- patent protection extended for several 

pharmaceutical ingredients -- questions referred to the Court of Justice of the European Union 

(CJEU) -- CJEU rulings. 

Subject: Patent extension--case law--Romania 


Author: Mehta-Dutt, Ranjna 

Title: The missing link: prior informed consent 


Summary: Genetic resources (GR) -- Convention on Biological Diversity (CBD) -- "prior informed 

consent" (PIC) from government authorities or traditional knowledge holders for the country to 

which the GR belongs -- Biological Diversity Act, 2002 (BDA) -- National Biodiversity Authority 

(NBA) -- an invention utilising GR from India must obtain PIC from the NBA before applying for a 

patent -- sanctions for non-compliance -- no provision under the Patents Act, 1970 -- mandates 

only disclosure or source and geographical origin of GR -- no mandatory requirement for 

submitting evidence of PIC -- need to bridge the gap between Patents Act and BDA. 

Subject: Disclosure of origin--India 

Author: Srivastava, Neha 


Author: Yan, Min 

Title: Morality: an equivocal area in the patent system 


Summary: Patents will not be granted to inventions against morality -- inconsistent standards -- 

disparate interpretations of the morality standard and approaches of judgment under the European 

patent system -- European Patent Convention (EPC) morality provisions -- unacceptability 

standard -- abhorrence standard -- Harvard/Onco-Mouse case -- uncertainty and confusion under 

the current European patent system -- Howard Florey/Relaxin case -- biotechnology and genetic 

engineering. 

Subject: Biotechnology Industry 

Subject: Patentability--case law--Europe 

Subject: Ethics 


Author: Nicol, Dianne 

Title: More from the United States on patenting of biotechnology inventions and the potential 

impact on Australia 


Summary: Association for Molecular Pathology v United States Patent & Trademark Office (AMP 

Appeal) -- patentability of gene sequences -- patents held by Myriad Genetics -- current Federal 

Court of Australia case of Cancer Voices Australia v Myriad Genetics Inc 

Subject: Patenting of life forms 

Subject: Gene sequences--patentability 

Subject: Genes 

-26-




Title: Movie magic: moving forward 


Summary: Making movies -- digital technologies for producing creative content and making it 

available to audiences -- risks and opportunities -- views from perspective of producer, actor -- 

views on challenges from Spanish film star, Javier Bardem -- Indian film producer and director, 

Bobby Bedi -- Egyptian film producer Asaad Younis -- British film producer, Iain Smith -- downside 

to going digital -- need to change perceptions about piracy and content theft 

Subject: Bardem, Javier--interviews 

Subject: Bedi, Bobby--interviews 

Subject: Younis, Esaad--interviews 

Subject: Smith, Iain--interviews 

Subject: Piracy--cultural and entertainment industry 

Subject: Cultural and entertainment industry--interviews 



Author: Potter, Wellett 

Title: Musicological and legal perspectives on music borrowing: past, present and future 


Summary: Application of the substantial part test in copyright law to music -- challenges in 

applying the substantial part test in copyright law to music -- can lead to exclusive rights stifling 

creative reuse -- plaintiff's work may comprise barely recognisable aspect of the alleged 

infringement -- music borrowing -- fragments of previously composed music incorporated into new 

compositions -- Larrikin Music Publishing Pty Ltd v EMI Songs Australia -- music borrowing from 

differing perspectives of musicology and law -- suggested court role for musicologists. 

Subject: Copyright--culture and entertainment industry--Australia 

Subject: Musical works--Australia 

Author: Forrest, Heather A. 


Author: Merle, Mattijs van 

Title: Name your price 


Summary: Should be able to negotiate the most favourable fees for your company -- factors that 

influence patent attorney fees -- composition of the team working on your cases must be carefully 

considered -- balance between senior and junior attorneys -- senior attorneys educate the junior 

attorneys before leaving the team -- over years the senior attorneys will need to be replaced by 

junior attorneys -- otherwise you will end up working with the most expensive attorneys -- price 

index of patent attorney fees. 

Subject: Patent attorneys--costs 

-27-




Author: Ricketson, Sam 

Title: The need for human authorship: Australian developments: Telstra Corp Ltd v Phone 

Directories Co Pty Ltd 


Summary: Full Federal Court of Australia decision in Telstra Corp Ltd v Phone Directories Co Pty 

Ltd -- original literary works -- identify specific works for which protection is claimed -- identify the 

human author of these works -- works in this case were white and yellow telephone directories -- 

protection was denied -- compilation and production was almost entirely automated -- small 

amount of human contribution -- refused special leave to appeal this decision to the High Court of 

Australia -- decision on the need for human authorship must be taken as the authoritative 

statement of the Australian law -- decision does not really touch upon the level of originality 

required, once a human author(s) has been identified -- IceTV Pty Ltd v Nine Network Australia 

Pty Ltd -- higher standard of originality required if copyright is to subsist in an original work of 

authorship. 

Subject: Moral rights--case law--Australia 

Subject: Literary works--Australia 


Author: Chew, Kherk Ying 

Title: New Trade Descriptions Act 2011 


Summary: Trade Descriptions Act 2011 -- aims to promote good trade practices in the market -- 

key amendments -- intellectual property enforcement tool -- Trade Descriptions Order (TDO) -- 

provisions as to the use of false and misleading statements in advertisements and contests -- 

increase in penalties -- extended powers of the minister to assign any expressions or descriptions 

used in relation to goods/services or in the course of trade to have definite meanings -- introduced 

to facilitate government's efforts to standardise and regulate the certification of Halal products in 

Malaysia. 

Subject: Trade regulation--law and legislation--Malaysia 

Author: Low, Esther 


Author: Robinson, Jeremy 

Title: Obtaining industry specific trend data from IP Australia, with a particular look at green 

energy technology 


Summary: Research and development trends -- individual patents provide insight -- patent filing 

data is a rich source of information -- AusPat database -- classes on the International Patent 

Classification (IPC) system -- publication dates -- Patent Cooperation Treaty (PCT) applications -- 

searching in Australia using AusPat -- green technologies in Australia. 

Subject: IP Australia 

Subject: Patent filing 

Subject: Patent databases--Australia 

Subject: Industrial research and development 

-28-




Author: Lie, Steinar, 1965- 

Title: Of models and makes: the saga continues? 


Summary: Norwegian Industrial Property Office (NIPO) -- marks said to be perceived as so-called 

'model indications' only -- combinations of letters and numbers used in many industries to 

distinguish the goods of individual manufacturers from each other -- NIPO appeal board did not 

specify which industries -- general refusals for all marks consisting of combinations of letters and 

numbers -- board offered some clarification -- descriptive abbreviations common within the car 

industry -- practice of refusing three-letter marks was abandoned -- subsequent decisions -- 

combinations of letters and numbers are registrable unless they are descriptive. 

Subject: Trade mark registrability--Norway 


Author: Stevens, Trevor 

Title: Optical 88 Ltd v Optical 88 Pty Ltd [2011] FCAFC 130 


Summary: Copyright infringement and trade mark infringement claims by a Hong Kong company - 

- non-use of marks -- use of the name "Optical 88" with additional words 

Subject: Trade mark infringement--case law--Australia 

Subject: Copyright infringement--case law--Australia 

Subject: Trade mark abandonment 


Author: Tam, Sandy 

Title: An overview of revised Chinese patent law 2008 


Summary: China experiencing rapid economic growth -- intellectual property rights protection is a 

growing issue for foreign companies -- one of the world's leading nations in terms of numbers of 

annual patent applications -- revised Patent Law in 2008 -- updates and improves deficiencies -- 

better aligns with foreign patent systems -- object of the secrecy examination -- requesting a 

secrecy examination -- official notice regarding the secrecy examination -- novelty requirement 

tightened -- absolute novelty -- impact of a conflicting application on the assessment of novelty -- 

parallel imports -- Bolar exemption -- exempted from infringement -- establishes the principle of 

prior art defence in patent infringement and dispute cases. 

Subject: Patent systems--reform--China 


Author: Perry, Mark 

Title: Ownership in complex authorship: a comparative study of joint works 


Summary: Copyright legislation -- international harmonisation -- not in the area of joint works -- 

very different outcomes when comparing a North American and a European country -- despite 

similar statutory definitions in copyright legislation -- explanation for divergence found in parts of 

property law that deal with tenancy in common -- comparative analysis of rules and remedies 

available in both systems -- recommendations towards a more fair and efficient framework. 

Subject: Property law--Italy 

Subject: Property law--United States 

Subject: Moral rights--Italy 

Subject: Moral rights--United States 

Author: Margoni, Thomas 

-29-




Author: Avgoustis, Ioannis 

Title: Parallel imports and exhaustion of trade mark rights: should steps be taken towards an 

international exhaustion regime? 


Summary: Parallel importing in connection with the exhaustion of trade marks -- practice of 

parallel trade -- explanation and results of relevant surveys -- exhaustion doctrine brief historical 

scope -- examination of various forms -- analysis of European Union and United States trade 

marks exhaustion regimes -- arguments for and against international exhaustion -- whether 

implementation of a specific exhaustion model would be preferable. 

Subject: Trade mark exhaustion--Europe 

Subject: Trade mark exhaustion--United States 

Subject: Parallel importing--Europe 

Subject: Parallel importing--United States 


Author: Samuelson, Pamela 

Title: The past, present and future of software copyright interoperability rules in the European 

Union and United States 


Summary: Protectability of computer program interfaces -- legality of reverse engineering of 

program code to extract interface information -- reimplementation of interfaces in complementary 

or competing programs -- pre-history of software interoperability in copyright law -- controversies 

over interfaces and interoperability have not ceased -- SAS Institute, Inc. v World Programming 

Ltd -- calls for an interpretation of the Council Directive 91/250 on the legal protection of computer 

programs. 

Subject: Computer-related inventions--case law--Europe 

Subject: Copyright owners' rights 


Author: Daim, Tugrul Unsal, 1967- 

Title: Patent analysis of wind energy technology using the patent alert system 


Summary: Methodologies being developed in the technology watch area -- patent alert system 

(PAS) by Dereli and Durmusoglu -- two different variations of the PAS -- Linear Regression based 

PAS and Fuzzy Logic based PAS -- each approach uses different methodology to evaluate 

available data and generate a trend -- predict future values of patent counts in the applied area of 

technology -- patent analysis of wind energy technology using PAS -- horizontal windmills and 

vertical windmills -- assessment and comparison of the two variations of PAS -- global events 

linked to trends found 

Subject: Patents--analysis 

Subject: Innovation (Technological)--trends 

Author: Iskin, Ibrahim 

Author: Li, Xin 

Author: Zielsdorff, Casey 

Author: Bayraktaroglu, Ayse Elvan 

Author: Dereli, Türkay 

Author: Durmusoğlu, Alptekin 

-30-




Author: Chari, Santosh 

Title: Patent claims invalidated for lack of utility, but punitive damages awarded for infringement 


Summary: Importance of meeting utility requirement under Canadian Patent Act -- Federal Court 

decision in Eurocopter v. Bell Helicopter Textron Canada -- Eurocopter sued Bell for patent 

infringement -- Bell counterclaimed patent invalid on various grounds -- facts of the case -- 

analysis of the decision -- found Bells' legacy landing gear infringed most of the claims of the 

patent -- all but one of the claims of the patent found to be invalid for lack of utility -- one claim held 

valid and infringed -- Bell's conduct wilful and egregious -- punitive damages awarded -- lessons 

learned 

Subject: Patent infringement--case law--Canada 

Subject: Patent utility--case law--Canada 

Author: Prenol, Anthony M. 


Author: Cockbain, Julian 

Title: Patent protection in Europe of pharmaceuticals found to have a further medical indication 


Summary: Patentability of methods of medical treatment -- Europe -- issues where medical 

treatment has a further medical indication -- provisions of European Patent Convention (EPC) -- 

grounds for rejecting a Swiss-type use claim -- decision of Enlarged Boards of Appeal in Dosage 

regime/Abbott Respiratory case. 

Subject: Swiss-type claims--Europe 

Subject: Medical procedures--patentability--Europe 


Author: Sutton, Paul J., 1939- 

Title: Patent reform means far-reaching consequences for inventors 


Summary: America Invents Act -- impact -- some changes took place on signing -- litigationrelated 

provisions -- new criterion affecting inter partes re-examination proceedings -- fee related 

changes -- changes taking place in eighteen months -- first-to-file provision -- post-grant 

proceedings -- summary of the key changes. 

Subject: Patents--reform--United States 


Author: Mulder, Cees, 1954- 

Title: Periods and remedies under the EPC: compliance of the EPC with the PLT: Part 1: 

extension of periods and further processing 


Note: First article in a series of two. See also: 2012/00305 

Summary: The Patent Law Treaty (PLT) -- harmonising and streamlining formal procedures 

relating to national and regional patent applications and maintenance of patents -- requirements in 

respect of relief regarding time-limits -- remedy of continued processing under the PLT with their 

counterparts in the European Patent Convention (EPC). 

Subject: Patent applications 

Subject: Patent processing 

-31-




Author: Mulder, Cees, 1954- 

Title: Periods and remedies under the EPC: compliance of the EPC with the PLT: Part 2: reestablishment 

of rights 


Note: Second article in a series of two: See also: 2012/00050 

Abstract: Patent Law Treaty (PLT) -- harmonising and streamlining procedures relating to 

national and regional patent applications and maintenance of patents -- compares the remedies of 

reinstatement of rights and restoration of the priority right under the PLT -- remedy of reestablishment 

of rights under the European Patent Convention (EPC). 


Subject: Patent processing--Europe 


Author: Driouchi, Ahmed 

Title: Pharmaceutical patents and prices of generics in Morocco and neighboring economies 


Summary: Importance of generics in relation to the need to increase access to pharmaceuticals in 

Morocco and its neighbour countries -- achieved through the introduction of a simplified theoretical 

market structure model -- pricing implications -- empirical application to available data -- results 

show the effective price decrease of generics relative to the originator drug -- increased access to 

medicines -- reduction of the prices of the originals is also important -- monitoring of 

pharmaceuticals and their generics -- crucial institutional regulatory functions that need to be 

addressed and emphasized. 

Subject: Pharmaceuticals--costs--Morocco 

Subject: Patents--pharmaceutical industry--Morocco 

Author: Zouag, Nada 


Author: Wu, Gloria Q. 

Title: Preparing for change 


Summary: China offers well-known trade marks a broader scope of protection -- recognised as 

well known on a case-by-case basis -- factors to consider when determining whether a trade mark 

is well known -- where a trade mark cannot meet all the requirements, but has a long history or 

enjoys a high reputation in the market, it may still be recognised as well known -- for foreign 

applicants whose trade marks have long enjoyed a high reputation in the Chinese market, the 

burden of proof can be reduced to a reasonable extent -- foreign brands well known overseas may 

not meet the minimum five years of use in China -- prospects of obtaining well-known status will be 

very low -- low prospects of success in opposition proceedings -- other territories -- Chinese 

attitudes to well-known status -- solutions for foreign brand owners. 

Subject: Famous trade marks--China 

Subject: Trade mark examination--China 

Author: Sun, Samiko 

-32-




Author: Black, Gillian 

Title: Privacy considered and jurisprudence consolidated: Ferdinand v MGN Ltd 


Summary: Ferdinand v MGN Ltd case -- dispute centred around the extra-marital indiscretions of 

a celebrity -- conflict between his desire to keep them private and the interests of a Sunday tabloid 

in publicising them -- facts of the case -- judgment of the High Court -- specific issues raised by the 

litigation. 

Subject: Privacy--case law--United Kingdom 

Subject: Free speech--case law--United Kingdom 


Author: Niezgódka, Piotr 

Title: Protecting computer program user interfaces 


Summary: Legal solutions for the protection of a user interface in Poland -- copyright protection -- 

whether a graphical user interface (GUI) should be treated as a standard artistic work or as a 

computer program -- Polish case law -- advisable to differentiate between the GUI and the 

computer program itself -- contracts should include separate provisions dedicated to the GUI -- 

assess which elements of the GUI meet the requirement of creative character of an artistic work -- 

jurisprudence of the Polish courts offers guidelines -- unfair competition -- industrial design 

registration. 

Subject: Computer-related inventions--Poland 

Subject: Copyright owners' rights--Poland 


Author: Narula, Ranjan 

Title: Protecting consumers and brand owners alike 


Summary: Provisions on the protection of well-known marks in India -- Trademarks Act 1999 -- 

conform to the stipulations laid down under the Agreement on Trade-Related Aspects of 

Intellectual Property Rights (TRIPs) -- expressly extends statutory protection to well-known trade 

marks -- clear criteria -- helped brand owners to assess the evidence and information required for 

a mark to qualify as well known -- background -- protection for well-known marks -- mark need not 

be known to the public at large -- awareness and recognition among the relevant section of the 

public -- court decisions -- recent developments at the Trademarks Registry. 

Subject: Famous trade marks--India 

Author: Suri, Rajiv 


Author: Tang, Guan H. (Guan Hong) 

Title: Public archives and public copyright: the Chinese tale 


Summary: Opening and use of archival records in China -- produced enormous problems and 

challenges -- balance between the rights of individuals and the state -- copyright not applicable to 

archival records of government documents -- Chinese Archives law -- Regulation on Open 

Government Information (CROGI) -- issues arising from the public's access and use of records -- 

Chinese archives sector -- access to government information -- copyright claimed by the state -- 

Lu Jiandong case -- Right of access v right of privacy -- orphan work. 

Subject: Copyright infringement--knowledge industry--China 

Subject: Copyright infringement--case law--China 

-33-




Author: Sawdy, Colin 

Title: A question of reputation 


Summary: Protection of well-known and famous marks in the United Kingdom -- reputation -- 

passing-off -- evidence required to demonstrate that a mark is distinctive, well known or famous, or 

benefits from goodwill or reputation -- factors the competent authority may take into account -- 

form of evidence -- press articles -- evidence attesting to the intensity of media coverage -- 

independent third-party witness statements -- time consuming and costly to gather -- United 

Kingdom's Trademark Registry tendency to restrict instances in which time extensions will be 

granted -- recommended to implement an ongoing programme of evidence identification. 

Subject: Famous trade marks--United Kingdom 

Subject: Evidence--United Kingdom 

Author: Hitchens, Ben 


Author: Atkinson, Jonathan 

Title: 'Raising the bar' of patentability 


Summary: Standard of patentability -- Europe -- patenting threshold perceived to be too low -- 

changes to European Patent Convention (EPC) to improve granted patent quality -- evergreening 

and effective patent duration -- tightening of grant system -- increasing patentability bar -- 

requirement to provide experimental pharmacological data -- sufficient description of invention -- 

divisional applications -- accelerated examination process -- likely impact of European Patent 

Office (EPO) procedural changes. 

Subject: European Patent Office--procedure 

Subject: Patent processing--procedure--Europe 

Subject: Patent systems--reform--Europe 

Author: Jones, Rachel 


Author: Delion, Fayssy C. 

Title: A reality check in trademark cases 


Summary: Peruvian Trademark Office (INDECOPI) -- upheld opposition to the registration of trade 

mark Billalcon Surfers -- shared similar letters and sounds to Billabong -- likelihood of confusion 

among consumers. 

Subject: Trade mark registration--case law--Peru 

-34-




Author: McDonagh, Luke 

Title: Rearranging the roles of the performer and the composer in the music industry: the potential 

significance of Fisher v Brooker 


Summary: Royalties due to artists flow back to composers/songwriters rather than performers -- 

enactment of stronger performers' rights sought to redress imbalance -- performers right to receive 

equitable remuneration for the exploitation and use of their performances -- cases where 

performers may be "authors" for the purpose of copyright -- making of arrangements by a group of 

musicians -- if a performing musician makes an original contribution to the creation of an 

arrangement, he or she will be a joint author of the resulting work -- deserving of a share of 

copyright in that arrangement -- share of licensing revenue -- performers potentially seen as joint 

authors in return for their creative contributions -- concept of the musical work under the Copyright, 

Designs and Patents Act 1988 (CDPA) -- distinction between the composition and the 

arrangement -- historical hierarchy of musicians in the music industry -- reasons why the composer 

of the work has traditionally received more royalties than the performer of the work -- assessment 

of the originality of compositions and arrangements -- Fisher v Brooker case. 


Subject: Neighbouring rights 

Subject: Musical works 


Author: Liakatou, Vlotina 

Title: Red soles, gas bottles, and ethereal market places: competition, context, and trade mark law 


Summary: Relationship between intellectual property and competition -- trade mark law 

internalises competition considerations by setting distinctiveness thresholds -- raising functionality 

barriers -- adopting first sale exhaustion principles -- principles of competition influence courts' 

rationalisation of basic trade mark concepts -- recent cases show interests of the marketplace, the 

competitors of trade mark proprietors and consumers in their role as market players contextualise 

the enforcement of trade mark rights -- Christian Louboutin v Yves Saint Laurent -- Viking Gas A/S 

v Kosan Gas A/S -- L'Oréal SA v eBay International AG. 

Subject: Competition law 

Subject: Trade mark infringement 

Author: Maniatis, Spyros M. 


Author: Lappa, Eleni 

Title: Reducing expense the right way: best practice in alternative dispute resolution 


Summary: Advantages of alternative dispute resolution (ADR) -- perceived disadvantages -- 

strategies for incorporating ADR into current practice -- suggestions for greater uptake of 

arbitration -- current state of play. 

Subject: Dispute resolution 

-35-




Author: Marie, Aurélia 

Title: Refilling of gas bottles by a competitor: trademark infringement? 


Summary: Court of Justice of the European Union (CJEU) -- Viking Gas A/S v Kosan Gas A/S -- a 

container, whose shape is protected by a three-dimensional trade mark, is refilled with a different 

company's product -- trade mark infringement -- CJEU considers the bottles are not mere 

packaging -- intended for re-use -- if purchasers were tied to a single supplier by trade mark rights, 

competition would be reduced -- sale of the bottle should be considered as exhausting the original 

rights -- right to use the bottles freely should be transferred to purchasers -- legitimate reasons for 

opposing refilling -- Frisdranken Industrie Winters BV v Red Bull GmbH. 

Subject: Trade mark infringement--case law--France 


Author: Emmett, Louise 

Title: Registering "non-traditional" non-traditional trade marks 


Summary: Registration of shape and colour marks -- sound marks -- terms of movement, taste 

and feel added to ATMOSS database image descriptors glossary -- Trade Marks Office Manual of 

Practice and Procedure -- section 40 graphical representation -- section 41 capacity to distinguish. 

Subject: Non-traditional marks--Australia 

Subject: Taste marks 


Author: Eade, Lauren 

Title: Rip-offs, take-offs, and the off-colour: trade marks and parody under Australian law 


Summary: Trade marks as a shorthand expression of culture and meaning -- issues surrounding 

the parody of a trade mark -- oppositions to applications for the registration of parodic marks -- 

trade mark infringement actions -- actions for misleading and deceptive conduct -- elements of 

trade mark infringement -- use as a trade mark -- substantial identity or deceptive similarity -- 

similarity of goods and services -- protection under Australian Consumer Law -- prohibits 

misleading or deceptive conduct -- false representations -- passing off -- likelihood of confusion -- 

opposing applications for trade mark parodies -- Australian law has no specific defence for 

parodies -- often permitted in practice. 

Subject: Fair use (Trade marks)--law and legislation--Australia 

Subject: Trade mark infringement--law and legislation--Australia 

Subject: Confusing similarity 


Author: Schreiber, Elliot 

Title: Risky business 


Summary: Origins of reputation -- stakeholder perceptions of a firm's intangible assets -- 

identifying and managing reputation risk -- stakeholder's experience with the organisation falls 

below expectations -- stakeholder relations council -- way to build corporate reputation and also to 

serve as the primary reputation risk management team -- council should comprise those who have 

primary stakeholder responsibilities -- key is for the management team to get a clear view 

throughout the organisation to learn where risks may be occurring -- the council chair -- case 

study. 

Subject: Risk--management 


-36-




Author: Headdon, Toby 

Title: The road ahead for online service providers 


Summary: Film studios obtained an injunction against Newzbin Ltd -- website enabled users to 

fileshare copyright infringing content -- a similar website emerged -- film studios sought and 

obtained a further injunction -- against British Telecommunications (BT) in Newzbin2 -- injunction 

will not usually be granted when it would be impractical or too costly to implement -- scope of the 

injunction -- BT responsible for the cost of implementing the injunction as a cost of carrying on its 

business -- film studios have made requests to other service providers to block access to 

Newzbin2 -- Newzbin has issued software to circumvent the block -- service providers continue to 

receive requests to block access to particular websites -- likely to maintain their current approach 

of requiring a court order to protect themselves against potential claims -- debate about who 

should bear the cost of implementing injunctions. 

Subject: Copyright infringement--carriage service providers--United Kingdom 

Subject: Copyright infringement--case law--United Kingdom 


Author: Panda, Aurobinda 

Title: Role of collective management organizations for protection of performers' right in music 

industry: in the era of digitalization 


Summary: Collective Management Organizations (CMOs) -- specialise in administering copyrights 

-- history and development of CMOs -- efficiency of collecting societies in the field of music -- 

international developments in this area of intellectual property -- World Intellectual Property 

Organization (WIPO) and World Trade Organization (WTO) stand together on the issues of 

protection -- compelled member countries to bring domestic laws into conformity with an 

international commitment that facilitates trade -- protection regime, loopholes and remedies in the 

Indian scenario for the performer's rights under the Copyright Act, 1957 -- international community 

should come up with a collective rights organization -- bring uniformity, fairness, and efficiency to 

transferring digital media in the era of digitalization. 

Subject: World Intellectual Property Organisation 

Subject: Copyright licensing societies 

Subject: Neighbouring rights--India 

Author: Patel, Atul 


Author: Barcelon-Yang, Cynthia 

Title: Role of patent analysis in corporate R&D 


Summary: Patent analysis in innovation -- difficulty in extracting relevant information from 

increasing patent filings -- use of patent portfolios as offensive competitive tool -- more aggressive 

assertion of patents by rights owners -- patent mining -- case studies -- hepatitis C virus (HCV) 

inhibitor patents -- company profile of Kosan Biosciences -- need for further development of patent 

analysis tools. 

Subject: Patents--analysis 

Subject: Informatics 

Subject: Innovation (Technological)--analysis 

-37-




Author: McRobert, Andrew 

Title: The rule in Pub Squash: determining "relevant date" for claims of misleading or deceptive 

conduct 


Summary: Claims of misleading or deceptive conduct -- depend on reputation subsisting in a 

name or some other indicia -- subject to rule that fixes applicant's reputation at a point in time -- 

date when respondent commenced its conduct -- rule attributed to Privy Council's decision in 

Cadbury-Schweppes Pty Ltd v Pub Squash Co -- development of this rule in passing off -- 

application to allegations of misleading or deceptive conduct -- rule allows continuing deception of 

consumers -- should not be applied to misleading or deceptive conduct cases. 

Subject: Passing-off--Australia 

Subject: Consumer protection--Australia 


Author: Cornthwaite, Jonathan 

Title: Say it with flowers: the judgment of the Court of Justice of the European Union in Interflora v 

Marks & Spencer 


Summary: Interflora v Marks & Spencer -- online flower distributors battling in the English courts 

over whether an advertiser's unauthorised use of a trade mark as a search engine keyword can 

constitute infringement -- no winner has emerged -- judgment from the Court of Justice of the 

European Union (Court). 

Subject: Keyword advertising--case law 

Subject: Trade mark infringement--case law 


Author: Davies, Colin 

Title: A scandalous affair: the disparity in the application of morality to trade marks, patents and 

copyright 


Summary: Controversial issues in the potential denial of intellectual property protection on the 

ground that they offend accepted principles of morality -- appropriateness of denying intellectual 

property protection on such grounds -- differing treatment and application of morality concerns in 

relation to principal intellectual property rights -- extent to which morality affects the grant of and 

enforcement of such rights. 

Subject: Intellectual property--social aspects 


Author: Lantos, Judit 

Title: Smelling of roses 

Source: World Intellectual Property Review. November-December 2011, pp 64-65. 

Summary: Issey Miyake and Narciso Rodriguez -- 3 dimensional perfume packages in Hungary -- 

infringement committed by a Czech internet distributor -- trade mark infringement lawsuit initiated - 

- extent of jurisdiction of community trade mark law -- exhaustion of trade mark rights within the 

European Economic Area (EEA) -- testers and selective distribution system. 

Subject: Trade mark infringement--case law--Hungary 

-38-




Author: Schork, Micaela 

Title: A solid basis for protection 


Summary: Evaluation of well-known and famous trade marks in Germany -- historical 

abridgement -- legal background -- notion of famous trade mark distinguished from the notion of 

well-known trade marks -- when a mark is a well-known trade mark -- degree of reputation -- 

evidence -- scope of protection -- protection approach where there is no likeliness of confusion. 

Subject: Famous trade marks--Germany 


Author: Puran, Sangeeta 

Title: SPC conditions clarified for combination drugs 


Summary: Court of Justice of the European Union (CJEU) -- clarified key conditions patentees 

must satisfy to obtain a supplementary protection certificate (SPC) for medicinal products 

combining active ingredients -- SPC Regulation and Articles 3(a) and 3(b) -- relationship between 

the SPC product and the basic patent required under Article 3(a) -- relationship between the SPC 

product and the marketing authorisation (MA) required under Article 3(b) -- patentees and 

competitors reaction to the CJEU's interpretation. 

Subject: Patent extension 

Subject: Evergreening 

Author: Gallagher, Daniel 


Author: Chan, George 

Title: A special campaign: how efforts to protect China's knowledge economy will benefit 

trademark owners 


Summary: State Intellectual Property Office (SIPO) -- State Administration for Industry and 

Commerce (SAIC) -- National Copyright Administration -- State Council's Special Campaign 

against IP Infringement and the Production and Sale of Fake and Shoddy Products -- short term 

campaign -- targeted infringing goods across all industry sectors -- measures adopted by 

government stakeholders -- what happened in the provinces -- legacy of the special campaign. 

Subject: Intellectual property rights--China 

Subject: Intellectual property enforcement--China 

Author: Edmondson, Dominic 

-39-




Author: Orange, John 

Title: Speed bump on the Patent Prosecution Highway 


Summary: Patent Prosecution Highway (PPH) processing in Canada -- claim category restriction - 

-USPTO requirements -- claims cancelled to bring the claim set into conformity could be 

prosecuted in a divisional application -- vulnerable to double patenting attack during examination in 

Canada or in court proceedings -- recommended to file full set of claims in Canada even when 

there are clearly multiple inventions -- provoke unity of invention objection -- provide safeguard 

against double patent attacks -- this defence to double patenting not available with PPH -- claims 

have to be amended to conform to the allowed claims before objections from examiner -- 

strategies to overcome this -- lack of harmonisation of procedures in patent offices conflicts with 

offices' efforts to be more efficient -- trap for unwary applicant. 

Subject: Patent processing--Canada 

Subject: Patent claims--Canada 

Author: Begleiter Rodin, Leah 


Author: Minssen, Timo 

Title: Standing on shaky ground: US patent eligibility of isolated DNA and genetic diagnostics after 

AMP v USPTO: Part 1 


Summary: The Association for Molecular Pathology (AMP) v United States Patent and Trademark 

Office (USPTO) -- Federal Circuit partially reversed district court decision on Myriad's BRAC 

patents -- court erred in invalidating Myriad's method claims directed to "screening" potential 

cancer drugs -- Federal Circuit affirmed that the court did have jurisdiction over the case -- 

Myriad's method claims directed to "comparing or analysing" BRCA genes are invalid -- impact of 

the judgment -- both parties filed (unsuccessful) petitions for a rehearing by the Federal Circuit 

panel -- Supreme Court rehearing. 

Subject: Patentability--case law--United States 

Subject: Genes--patentability--United States 

Author: Nilsson, David 


Author: Hoyle, Ben 

Title: Starter for ten 


Summary: Ten things every business manager needs to know about intellectual property (IP) -- IP 

exists -- IP is everywhere -- IP requires a strategy -- IP requires time -- IP requires a habit -- IP 

must be captured -- IP may be product agnostic -- IP services can help -- proactive IP 

management reduces costs -- good IP management increases value. 


-40-




Author: Darwin, Richard C. 

Title: Stranger danger 


Summary: DuPont v Kolon -- previous DuPont employee retained documents and files reflecting 

DuPont's confidential information relating to Kevlar -- entered into a consulting arrangement with 

Kolon -- DuPont initiated an investigation into his activities -- federal Bureau of Investigation (FBI) 

uncovered DuPont documents and computer files containing confidential information -- the 

employee pled guilty to theft of trade secrets and obstruction of justice -- litigation holds, what not 

to do -- how to effectively institute a litigation hold -- how to avoid court ordered sanctions -- 

lessons for companies who hire from their competitors. 

Subject: Trade secrets--case law--United States 

Subject: Personnel management--United States 


Author: Goddard, Christopher 

Title: Structural changes to the pharmaceutical industry and impacts on IP strategy 


Summary: Patent cliff -- blockbuster drugs coming off patent -- forcing large pharmaceutical 

companies to reconsider approach to all aspects of drug research, development and 

commercialisation -- economies of scale in late development -- flexible entrepreneurial attitude to 

discovery and early development -- develop collaborations with smaller companies -- smaller 

companies should be prepared -- need innovation and sound management of their IP portfolios 

Subject: Pharmaceutical industry--reform 

Subject: Intellectual property management--pharmaceutical industry 


Title: Switching on to solar: goodbye kerosene 


Summary: Kerosene lamps used for lighting in much of developed world -- considerable long-term 

financial, health and safety and environmental costs -- solar-powered lamps as a smarter, cleaner 

more affordable and efficient alternative -- work being done to light up rural and peri-urban 

communities in Kenya -- Joseph Nganga, CEO of Kenya-based Renewable Energy Ventures 

(REV) 

Subject: Nganga, Joseph--interviews 

Subject: Innovation (Technological)--Kenya 



Author: Tyacke, Nicholas 

Title: Tablet patent wars Down Under 


Summary: Federal Court of Australia -- Apple Inc v Samsung Electronics Co Ltd -- Apple seeks 

preliminary injunctive relief -- two questions in determining whether to grant a preliminary 

injunction -- Apple established a prima facie case of infringement -- decision to grant preliminary 

relief is discretionary -- analysing the balance of convenience -- Samsung appeals -- Samsung 

seeks preliminary injunctive relief -- Apple threatens web retailers -- implications for patentees. 

Subject: Patent litigation--Australia 

Subject: Injunctions--Australia 

Author: Collins, John 

Author: Hardwick, Simon 

-41-




Author: Chen, Candy K. Y. 

Title: Taiwan-US PPH pilot launched 


Summary: Patent Prosecution Highway (PPH) pilot programme between Taiwan Intellectual 

Property Office (TIPO) and the US Patent & Trademark Office (USPTO) -- trial period -- 

requirements for requesting accelerated examination at TIPO under PPH -- existing Accelerated 

Examination Programme (AEP) for invention applications will continue to be in effect -- 

supplementary to AEP -- applications eligible to request for AEP -- where AEP differs from PPH 

pilot programme. 

Subject: Patent examination--Taiwan 

Author: Chen, Crystal J. 


Author: Little, Trevor 

Title: Talking point: industry developments 2011-2012 


Summary: Trade mark professionals -- industry representatives -- legal specialists -- highlight the 

most significant issues of 2011 -- what they anticipate will be major developments in 2012. 

Subject: Intellectual property industry 

Author: Bauer, Gerhard 

Author: Graulund, Tove 

Author: Narula, Ranjan 

Author: Pangborn, Russell 

Author: Weild, David 

Author: Serova, Ludmila 

Author: Mannini, Alessandro 

Author: Rowden, Cynthia 


Author: Blaya, Alicia 

Title: Technology transactions: managing risks arising from disputes 


Summary: Advantages of mediation and arbitration in managing IP and minimizing risks in an 

R&D context -- interests in R&D collaboration -- IP issues and when to think about a dispute 

resolution strategy -- WPIO alternative dispute resolution (ADR) mechanisms -- WIPO's Arbitration 

and Mediation Center -- services include mediation, arbitration, expedited arbitration, expert 

determination -- advantages of ADR in an R&D context -- ADR clauses in R&D contracts -- need 

for consistent dispute resolution clauses in related agreements 

Subject: Dispute resolution 


Author: Castro, Ignacio de 

Author: Schallnau, Judith 


-42-




Author: Gringras, Clive 

Title: There is nothing new under the sun, or in the cloud 


Summary: United States and the United Kingdom -- morally principled and strong legislation 

allowing the State's machinery to intercept certain electronic communications stored and 

transmitted through the cloud -- concerned to intercept plotting and evidence of most feared and 

serious offences -- interception rules to apply to any communications equipment in their territories 

-- parameters of the US PATRIOT Act -- framework and workings of the UK's RIP Act -- UK 

businesses will not escape interception by shifting from a cloud provider in the United States to 

one elsewhere. 

Subject: Computing 

Subject: Communication services industry 

Subject: Trade regulation 


Author: Saunders, Marlia 

Title: Times are shifting: FCA delivers judgment on Optus TV recording service 


Summary: Federal Court of Australia decision in Singtel Optus Pty Ltd v. National Rugby League 

Investments Pty Ltd (No 2) -- copyright infringement claims made by Australian Football League 

(AFL) and the National Rugby League (NRL) and telecom competitor Telstra about the Optus TV 

Now service -- first time that personal of time-shifting provisions of the Copyright Act considered -- 

found that user, not Optus caused the recordings of free-to-air TV programs to be made via Optus’ 

TV Now Service -- recordings for personal or domestic use to watch at a ‘more convenient’ time -- 

recordings not copyright infringements -- liberal interpretation of s111 of Copyright Act -- facts of 

the case -- key arguments -- analysis of the decision -- implications -- certainty to cloud service 

providers in setting up services to avoid infringing IP rights -- appeal likely 

Subject: Copyright infringement--case law--Australia 

Subject: Electronic copyright--case law--Australia 

Subject: Television broadcasts--Australia 

Author: Ritson, Lisa 

Author: Todd, Robert 


Author: Catterns, David 

Title: To amend...or not...strategies for litigation and prosecution 


Summary: Patents Act 1990 -- amendment of patent applications -- three stages - before 

acceptance, after acceptance and before court proceedings and during court proceedings -- right 

to amend varies -- patent litigation 

Subject: Patent amendment 

Subject: Patent processing 

Subject: Patent litigation 

-43-




Author: Morcom, Christopher 

Title: Trade marks and the internet: where are we now? 


Summary: Use of the internet by infringers -- under scrutiny of courts in a number of cases in the 

European Union -- alleged infringements include the use of AdWords purchased by traders from 

service providers -- claims service providers are liable as infringers -- series of judgements of the 

Court of Justice of the European Union (CJEU) on references from national courts -- main rulings - 

- questions as to their correctness. 

Subject: Trade mark infringement--liability 

Subject: Carriage service providers--liability 

Subject: Keyword advertising 


Author: Samtani, Anil 

Title: Trade marks that are contrary to public policy or morality: the search for the right-thinking 

man 


Summary: Companies increasingly employing the use of controversial trade marks -- debate as to 

whether such marks should be allowed in public -- marks which are acceptable -- marks which are 

offensive -- Singapore Trade Marks Act (STMA) s.7(4)(a) -- legislative intent and potential 

application -- provision which prohibits the registration of trade marks which are contrary to public 

policy or morality -- acceptable standard in Singapore today -- trade mark case law from the United 

Kingdom -- guidelines from the Intellectual Property Office of Singapore -- survey data -- 

recommendations -- to assist businessmen keen on registering controversial marks -- regulatory 

authorities on issues with current guidelines -- legal scholars with suggestions for further study. 

Subject: Intellectual property--social aspects--Singapore 

Subject: Public policy--Singapore 

Subject: Trade mark registrability--Singapore 


Author: Kenney, Robert J. 

Title: Trademark rights trump aesthetics 


Summary: Fleischer Studios Inc v Avela Inc decision -- Fleischer Studios claimed ownership of 

copyright and trade mark rights in Betty Boop cartoon character -- alleged infringement by Avela, 

which licensed Betty Boop merchandise -- copyright claims dismissed -- trade mark claims shifted 

on appeal -- creation of Betty Boop character -- District Court's decision -- Ninth Circuit's decision - 

- 'aesthetic functionality' doctrine -- International Trademark Association's (INTA) argument. 

Subject: Trade mark ownership--case law--United States 

Author: Peden, Katherine M. 

-44-




Author: Knight, Peter 

Title: TV Now or TV later? Case note: Singtel Optus Pty Ltd v National Rugby League 

Investments Pty Ltd (No 2) [2012] FCA 34 

Source: Australian Intellectual Property Law Bulletin. Vol. 24 No. 8, March 2012, pp. 202-204. 

Summary: Optus "TV Now" service -- broadcasting of football and rugby games -- infringement of 

copyright -- time-shifting defence -- recording of broadcasts for later viewing -- "near-live" -- 

exclusive rights to broadcast games 


Subject: Neighbouring rights--case law--Australia 

Subject: Television broadcasts 


Author: Leathley, Anna 

Title: UK Supreme Court overturns key human genome patent ruling 


Summary: Human Genome Sciences Inc v Eli Lilly & Co -- Supreme Court decision overturned 

previous findings of lower courts -- Human Genome Science Inc (HGS)'s patent to Neutrokine-’ 

lacked industrial application -- background to the case -- relevant law -- the judgment. 

Subject: Patent litigation--United Kingdom 


Author: White, Catherine 

Title: Under lock and key 


Summary: Cyber attacks -- pose a threat to a company's trade secrets -- rise in trade secret theft - 

- trade secret protection -- any confidential business information which provides a competitive 

advantage -- motive behind trade secret theft -- Anonymous -- WikiLeaks -- breach of contract -- 

advantages and disadvantages of protecting information as a trade secret -- risks to trade secrets - 

- reverse engineering -- cloud computing -- social media and technology -- overreacting or under 

reacting -- simple steps to ensure trade secrets remain protected -- trade secret theft laws in the 

United States and United Kingdom. 



Author: Gupta, Paul R. 

Title: The US patent system after the Leahy-Smith America Invents Act 


Summary: America adopted Leahy-Smith America Invents Act (AIA) -- moves the American 

system closer to the European system -- will significantly change many aspects of the US patent 

system -- determining priority date -- scope of prior art -- United States Patents and Trademarks 

Office (USPTO) proceedings and joinder of parties in litigation -- other issues largely untouched 

and ripe for further judicial development -- damages -- revenue -- practical effects of the AIA's 

main provisions -- litigation with patent trolls and with competitors. 

Subject: Patents--reform--United States 

Subject: Patents--law and legislation--United States 

Author: Feerst, Alex 

-45-




Author: Özdoğan, Işik 

Title: Usage requirements for well-known trademarks 


Summary: Key decision rendered by Council of Appellate Circuits of the Turkish Court of Appeals 

-- well-known trade marks' usage requirements in different classes -- council decided a well-known 

trade mark cannot be protected in different classes -- will be partially cancelled if the trade mark is 

not in use in these classes -- First Instance Court (FIC) decision -- Appeals Court decision -- 

council decision -- grounds for the decision. 

Subject: Famous trade marks--Turkey 

Subject: Trade mark use--Turkey 

Author: Baklaci, Ezgi 


Author: Ruiz, Eugenio 

Title: Use of a trademark in Mexico 


Summary: Establishing trade mark use in Mexico -- Mexican Law of Industrial Property (MLIP) -- 

two hypotheses to consider whether a trademark is in use -- mark has been put into the market -- 

goods or services can be purchased by Mexican consumers within the Mexican market -- mark is 

available -- use of a trade mark through the internet -- whether a trade mark can be considered in 

actual use in Mexico through this method -- other examples of use -- trade mark must be used as 

registered or with slight modifications that do not alter its distinctive characteristics. 

Subject: Trade mark use--Mexico 


Author: Hidalgo, Antonio 

Title: Use of prediction methods for patent and trademark applications in Spain 


Summary: Need for patent and trade mark offices to have reliable forecasting data in planning 

capacity and service levels -- Spanish Office of Patents and Trademarks research project -- 

develop methodology which predicts changes in number of national and patent and trade mark 

applications for a three year period -- trends in numbers of patent and trade mark applications in 

Spain -- two research techniques used -- based on different techniques of time series prediction in 

a short-term horizon -- methods grouped into two specific areas -- regression models of trends -- 

time series models -- results of study show that these techniques are helpful with relatively low 

error. 

Subject: Patent applications--trends--Spain 

Subject: Trade mark applications--trends--Spain 

Author: Gabaly, Samuel 

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Author: Adamopoulos, Jonathan 

Title: Using coins and banknotes in advertising: the limits 


Summary: Criminal prohibitions and copyright issues -- reproducing images of money in 

advertisements -- issuing legal tender in Australia -- Reserve Bank of Australia (RBA) -- Royal 

Australian Mint -- Crimes (Currency) Act 1981 -- criminal prohibitions -- reproductions in 

newspapers, magazines or other similar material -- banknotes -- coins -- copyright in images -- 

copyright ownership -- moral rights. 

Subject: Marketing 

Subject: Copyright ownership 

Subject: Financial services industry--law and legislation--Australia 


Author: Daniels, Mark 

Title: Vax found to not infringe on Dyson's registered design 


Summary: Dyson Ltd v Vax Ltd -- test for United Kingdom registered design infringement -- 

overall impression on the informed user -- Court of Justice of the European Union (CJEU) 

guidance on whom the informed user is -- what the overall impression of a design is -- assessing 

infringement -- expert evidence -- design freedom -- practical considerations -- limitations of design 

registration -- alternative forms of intellectual property protection. 

Subject: Industrial design litigation--United Kingdom 

Subject: Industrial design infringement--case law--United Kingdom 

Author: Parsons, Giles 

SNIPER No.:2011/02453 

Author: Mouy, Rebecca 

Title: Victorian Law Reform Commission releases recommendations on privacy rights [Internet 

article] 

Source: Goldenfein, Jake, et al. (eds.). Commemorative Edition 2010-2011.The Fortnightly 

Review of IP and Media Law. Melbourne, Vic. : [Centre for Media and Communications Law and 

the Intellectual Property Research Institute of Australia, University of Melbourne], 2011. pp. 105- 

106 

Summary: Invasive surveillance technology concerns -- regulation of surveillance in public places 

-- changes to Surveillance Devices Act 1999 -- media affected 

Subject: Privacy 

Subject: Privacy--law and legislation--Australia 

Internet: http://fortnightlyreview.info/2010/10/14/victorian-law-reform-commission-releasesrecommendations-on-privacy-rights/ 

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Author: Glickman, Leonard 

Title: When bad things happen to good brands 


Summary: Importance of protecting a brand's image in the marketplace -- controlling public 

perception of a brand -- significant issue for brand owners arises when a brand's image shifts 

negatively in the eyes of consumers -- reputation of a particular brand is affected by negative 

associations in the media -- unauthorised uses can damage brand image and equity -- use in film 

and television -- brand references in music lyrics and videos -- unauthorised or uncontrolled use of 

a brand in news reporting -- United States, trade mark claims for unauthorised trade mark use by 

way of an infringement claim or a dilution by tarnishment claim -- trade mark claims in Canada -- 

copyright claims in the United States -- copyright claims in Canada. 


Subject: Trade mark dilution 

Author: Lastman, Brie 


Author: Holme, Marianne 

Title: When is a disclaimer allowable in a European patent application? 


Summary: European Patent Convention (EPC) -- provision of Article 123(2) and (3) to is avoid 

that an applicant or proprietor improves the scope of the application or patent by way of 

amendments -- various decisions of the European Patent office (EPO) technical boards of appeal 

have resulted in referrals to the Enlarged Board of Appeal -- guidance of how to make 

amendments -- added subject matter -- additional undisclosed features -- allowable and nonallowable 

approaches to use disclaimers -- purpose of the referral -- answer to the referral. 



Author: Künzel, Jens 

Title: When is the use of a design admissible as a 'citation'?: the ICE case 


Summary: When a text protected by copyright may be used in the form of a 'citation' -- problem 

arises often in copyright law -- not common in design law -- Germany's Federal Supreme Court -- 

registered designs of the ICE train operated an owned by Deutsche Bahn -- advertisement by a 

firm of engineers included a picture of the ICE 3 model -- Deutsche Bahn asked the engineers to 

sign a licence agreement and pay a licence fee -- engineers filed a negative declarotory judgment 

action asking the court for a binding statement that use of the picture was legal -- court of first 

instance and Court of Appeal of the State of Berlin dismissed the action -- advertisement 

constituted a design infringement 

Subject: Industrial design litigation--Germany 

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Author: Takagi, Yo 

Title: WIPO services for access to patent information: building patent information infrastructure 

and capacity in LDCs and developing countries 


Summary: WIPO's new initiatives -- helping least developed countries (LDCs) and developing 

countries benefit from patent information -- infrastructure providing access to databases -- 

developing local skills for analysing, adapting and applying patent information -- analysis of patent 

information - focal points are Technology Innovation Support centres (TISCs) -- new partnership 

programs Access to Research for Development and Innovation (aRDi) -- Access to Specialized 

Patent Information (ASPI) -- provides access to science and technology journals databases and 

commercial patent databases 

Subject: Patent searching--developing countries 

Author: Czajkowski, Andrew R. 


Title: Without a songwriter there is no song 


Summary: Interview with Caribbean singer-songwriter, Shontelle Layne -- importance of 

managing her music -- intellectual property as a business asset -- challenges as a songwriter -- 

music piracy -- need to make buying music easier than stealing it -- lessons learned. 

Subject: Layne, Shontelle, 1985- --interviews 

Subject: Intellectual property management--culture and entertainment industry 

Subject: Copyright infringement--culture and entertainment industry 



Author: Factor, Michael 

Title: Wrangler takes Crocker to the cleaners 


Summary: Wrangler Apparel Corp -- W-shaped stitch pattern on jeans' back pockets -- Israeli 

jeans manufacturer, Crocker, decorates back pockets of its jeans with a curved W shape -- 

Wrangler claimed registered and well known trade mark infringement, passing off, unjust 

enrichment, dilution and confusing the public -- Crocker's defence -- Wrangler conducted a survey 

to establish that the mark was well known and to establish a case of passing off -- judge found 

trade mark infringement, passing off and unjust enrichment -- issued an injunction -- awarded 

damages and legal costs. 

Subject: Trade mark infringement--case law--Israel 


Title: YikeBike spells urban freedom 


Summary: Electric bicycles or e-bikes -- radically different design from group of New Zealand 

engineers -- team led by Grant Ryan -- YikeBike -- light, easy to fold, highly portable -- most 

compact electric bike in the world -- winner of many design awards -- importance of patent 

protection -- international protection using WIPO's Patent Cooperation Treaty -- company seeking 

to license its technology -- "time-limited exclusive licenses for particular markets and types of 

implementation" 

Subject: International patents 


Subject: Inventions--New Zealand 


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SNIPER Bulletin 2012-04 - IP Australia

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