AUstRALIA
Th e appeal court acknowledged that there was no clear legal authority. It
Patents
decided that as Gallo did not know of the wholesaler’s sales in Australia,
there had been no ‘projection’ of the Barefoot wine by Gallo into the
sigma Pharmaceuticals v. Wyeth and Alphapharm v. Wyeth
Australian market, and therefore no use by Gallo of the registered mark. Th e use of interlocutory injunctions in pharmaceutical patent cases continued
Th is judgment appears to require a conscious resolve on the part of the in 2009, with Wyeth successful in obtaining urgent injunctions against both
owner of a trademark to trade in particular goods in Australia in order to Sigma Pharmaceuticals and Alphapharm for infringing its method patent
establish use. for Efexor-XR (an extended release formulation of venlafaxine, which is
used as an antidepressant).
Th is decision is potentially worrying for trademark owners with
international distribution arrangements as they may be held not to have In each case, a generic company had obtained registration of a competing
used their marks in Australia if they are not actively involved in and product on the Australian Register of Th erapeutic Goods, having established
conscious of the relevant trades. bioequivalence to Wyeth’s Efexor-RX. Upon discovering Wyeth’s patent,
both Sigma and Alphapharm commenced proceedings seeking a declaration
Th ere is doubt regarding the Full Federal Court’s decision, and it is the
of invalidity of the relevant patent claims. Wyeth cross-claimed, seeking an
subject of an application for special leave to the High Court of Australia.
injunction on grounds of patent infringement.
Copyright
Th e Federal Court trial judges in each case found that Wyeth had established
a reasonably strong prima facie case of infringement of the method patent,
Ice tV Pty Limited v. nine network Australia
but that the generic company in each instance had also established a prima
Th e High Court of Australia has overturned a lower appellate court ruling in facie case of invalidity. Th e judgments therefore focused on the balance of
one of the most important copyright cases in recent years. convenience. Wyeth succeeded in obtaining injunctions largely on the basis
that the generic product had yet to enter the Australian market and a new
Previously, the Full Federal Court had found in favour of Channel Nine (an
entrant into the market would have an eff ect that may be both unpredictable
Australian free-to-air television broadcaster), ruling that the production of a
and irreversible.
subscription-based electronic programme guide (EPG) by Ice TV infringed
compilation copyright in Nine’s television programme schedules.
Patent enforcement proposals
Th e High Court focused on the question of whether Ice TV had copied a
Most patents are not enforced, chiefl y for economic reasons. In an attempt
substantial part of Nine’s schedules. Th e court paid particular attention to
to address that, the Advisory Council on Intellectual Property has proposed
the originality and quality of the part copied.
measures intended to help inventors enforce patent rights. Th ese include
the establishment of an intellectual property disputes centre and increased
Ice TV accepted that Nine’s schedules were subject to copyright, but asserted
powers for the Australian Customs Service to seize infringing goods.
that the originality of the schedules lay in the selection and presentation
of time and title information, additional programme information and Th e centrepiece of the proposals is a Patent Tribunal with no judicial power
synopses. Ice TV claimed that there was very little skill and labour in the and no powers of enforcement. Th is may add something useful to the
mere provision of time and title information—the information taken by array of alternative dispute resolution options, but little or nothing to the
Ice TV. enforcement landscape.
Th e High Court agreed and held that when assessing whether a substantial Th e customs proposals are potentially useful for patentees. Th e Australian
part of a copyright compilation has been copied, it is necessary to consider Customs Service already provides a highly eff ective seizure regime for
the originality involved in the selection and arrangement of the compilation, imported products that infringe notifi ed trademarks and copyrights. It
rather than the skill and labour expended in formulating the information would be helpful to have customs seize products that are thought to infringe
recorded by the compilation. Th e decision calls into question the applicability a patent without the need for a court order. On the other hand, patent law is
of previous authorities and represents a potential narrowing in the protection complex, and customs cannot be expected to make the fi ne judgement calls
of compilations, including databases. that are required to assess infringement questions. Th e ultimate liability is
www.worldipreview.com World Intellectual Property Review Digest 2009 35
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