Registering Foreign Word Marks in Australia

/ Irena Fizulic / Important Updates

Registering foreign word marks in Australia (the effect of the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited concerning the trade marks “ORO” and “CINQUE STELLE”)

It appears from the recent High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited that it should now be easier to obtain trade mark registration in Australia for marks containing foreign words.  This case considered the registrability of the Italian words “ORO” and “CINQUE STELLE”  which mean “gold” and “five stars” respectively in English.

The High Court has clarified that the registrability of foreign words should be assessed in the same way as English words, namely by examining whether the word will convey a “tangible” meaning to anyone in Australia and the “ordinary significance” of that word to anyone who will encounter the goods in Australia.  In applying the “ordinary signification” test, the Court noted that the Italian words “oro” and “cinque stelle” did not convey a meaning or idea “sufficiently tangible to anyone in Australia concerned with coffee goods”. Further, the Court noted that the words “oro” and “cinque stelle”  are not “directly descriptive” of coffee, but rather “allusive” and metaphorical. Accordingly, the Court held that the marks “oro” and “cinque stelle” are inherently adapted to distinguish Cantarella’s goods from the goods of other traders and are therefore registrable.

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Australia’s top PCT filers

/ Madderns / Important Updates

In the results of an annual global survey released on 2 October 2014, Madderns was named in the Top 10 filers of International (PCT) patent applications among Australian IP services firms. This is the first time that Madderns has been named in the list.

Commenting on this distinction, Senior Partner Craig Vinall said that “Madderns has edged out a number of significantly larger firms in being named among Australia’s largest filers of PCT applications. It’s a great result reflecting the firm’s continual drive to attract the best people and hone our services and expertise to match the best in the world. That’s being recognised by Australian patent applicants and inventors.”

PCT patent applications are a very popular way to simultaneously seek patent protection for an invention in over 140 countries. More information on the system can be found at www.wipo.int/pct/en/.

The PCT applications filed by Madderns during the survey period relate to a broad spectrum of technologies including biotechnology, computing, irrigation, medical diagnostics, electronic and electrical engineering, materials science, medical devices, mining and fossicking technologies, and pharmaceuticals.

The full results of the survey, conducted by respected International journal Managing Intellectual Property, may be viewed at www.managingip.com.

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What is the Defence Trade Control Act and why should I know?

/ Bill McFarlane / Important Updates

Did you know that sending an email overseas may find you in breach of the Defence Trade Control Act 2012 and that you will be personally liable? Did you know that a penalty for such an act without a licence includes imprisonment?

Australia takes seriously its international counter proliferation obligations, using Australian export control laws to ensure Australia exports responsibly. Australia’s export control policies are in place to enable the export of defence and strategic goods where it is consistent with Australia’s national interests and international obligations.

The Defence Export Control Office (DECO) is the government entity that supervises these obligations as defined in a number of Acts and the one that is the subject of this article is the Defence Trade Controls Act 2012. The DECO web site, from which passages of this article are included, is http://www.defence.gov.au/DECO/Notices.asp#N2 .

The Defence Export Control Office (DECO) is responsible to the Minister for Defence for regulating the export of defence and strategic goods and technologies and importantly for you and the patent attorney profession this includes the export of information about controlled goods and technologies by way of electronic email.

The implementation date for the application of this Act is 17 May 2015, so you have plenty of time to set procedures in place in your working environment so that you, your staff or colleagues are not going to fall foul of this Act.

Thus, the inclusion of such information in an academic paper, patent specification or even an email containing such information, sent overseas or copied to someone, such as a fellow researcher or patent attorney overseas, is prohibited unless a license to do so is obtained before the act of export. It does not matter to where overseas the export of the information is made, so it does not matter that it may only be sent to someone in what most would consider an allied nation such as the United States of America.

Interestingly, an email containing the same information sent and received within Australia is not an export.

More specifically if you want to know whether the information is of the type that MUST be licensed before exportation, the first point of enquiry is the Defence and Strategic Goods List (DSGL) http://www.defence.gov.au/DECO/DSGL.asp .

This list contains all controlled items in relation to the arms control treaties and international export control regimes to which Australia is committed, and identifies specific Australian goods and technologies. The important issue is to realise that information that discloses certain technical details of these goods and technologies is information subject to the Defence Export Controls Act 2012.

The DSGL is made up of two parts.

Part One covers defence and related goods – these are goods and technologies designed or adapted for use by armed forces or goods that are inherently lethal.  These goods include:

  • military goods – goods or technology designed or adapted for military purposes; and
  • non-military lethal goods – equipment that is inherently lethal, incapacitating or destructive such as non-military firearms, non-military ammunition and commercial explosives and initiators.

Part Two covers strategic goods and technologies developed for commercial needs but may be used as part of a military program, for the development or production of a military system or weapons of mass destruction. This is also known as the Dual-Use List.

This document is 361 pages long and unless you are continually required to deal in such matters, it has been a welcome initiative of DECO to provide a web interface to assist concerned and responsible persons to check if their goods or technology fall within its ambit. Thus it is important for academics, their administrators, inventors and patent attorneys to make the check and determine if a planned export will require a licence or at least a further discussion with DECO to determine the circumstances. The web site is http://www.defence.gov.au/deco/ .

DECO has indicated that every effort will be made to assess enquiries and applications within a reasonable time frame, but clearly, the earlier before the planned or intended export you conduct a check or contact DECO the better. It will be unrealistic to expect DECO, to properly assess your situation within hours or days if the type of information is not clearly identifiable as being a restricted export or requires authorisation of an export licence.

Once formalised, the progress of individual cases is closely monitored and reported to the applicant. Applicants are consulted early in the application process and throughout the process and are provided the opportunity to present all relevant information that can assist in making an assessment of the application for a licence or indeed the necessity for a licence. Where it is determined that an application requires inter-agency consultation, applicants are provided with written advice explaining the process and that advising time frames may extend beyond 35 days.

The export control systems in place and the types of goods and technology are continually evolving and must be constantly monitored and updated by DECO into the DSGL. Australia’s export control policies and procedures are therefore regularly reviewed to take account of changes in our strategic circumstances. Thus it is the responsibility of you and your patent attorney to check and recheck the DGSL or enquire with DECO as required.

As stated above the implementation date for the application of this Act is 17 May 2015, so now is the time to create procedures for you your working environment so that you, your staff or colleagues are not going to fall foul of this Act. DECO is relying on education as the main instrument of encouragement to Australians and punitive measures will not be taken. However, DECO has indicated that repeat and intentional export of such information will be met with the full force of this very important law.

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New Zealand’s New Patents Act

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents Act 2013 will shortly replace the out-dated Patents Act 1953, and will raise the thresholds for a valid New Zealand patent.

Additionally, the new Act will substantially align New Zealand and Australian patent law, which will eventually assist the expected introduction of a single Trans-Tasman patent application and examination system.

Synopsis of New Zealand’s New Patents Act

The major changes introduced by the New Act include:

  • Replacement of local novelty with absolute novelty;
  • Replacement of “prior claiming” assessment with “whole-of-contents” assessment for prior art patent documents filed before but published after the filing date of the application of interest;
  • Expansion of examination grounds to include inventive step and utility;
  • Strengthening of support requirements for a complete specification;
  • More stringent requirements for claims;
  • Introduction of specific patentability exclusions;
  • Expansion of options for third party challenges;
  • Expansion of infringement and infringement exemption provisions;
  • Strengthening of the patentability standard to the “balance of probabilities”; and
  • Introduction of additional formality requirements.

The Patents Act 2013 will be applied to all patent applications filed or entering New Zealand on or after 13 September 2014, even if a corresponding basic (provisional) or Patent Treaty Co-operation (PCT) application was filed before the commencement date.

Where possible, we would recommend patent applicants take advantage of the more lenient provisions of the 1953 Act by filing new applications in New Zealand before 13 September 2014

New Zealand’s Patents Act 2013

The New Zealand Patents Act 2013 replaces the out-dated Patents Act 1953, and will raise the thresholds for a valid New Zealand patent.  Additionally, it substantially aligns New Zealand patent law and Australian patent law, following the recent introduction of the Australian “Raising the Bar” reforms. The similarity between the Australian and New Zealand Acts will eventually assist the expected introduction of a single Trans-Tasman patent system.


The Patents Act 2013 is due to come into full effect on 13 September 2014. It will be applied to all patent applications filed or entering New Zealand on or after 13 September 2014, even if a corresponding basic (provisional) or Patent Treaty Co-operation (PCT) application was filed before the commencement date. New divisional applications with a parent application filed before the commencement date, however, can be antedated to proceed under the 1953 Act.


Where possible, we would recommend patent applicants take advantage of the more lenient provisions of the 1953 Act by filing new applications in New Zealand before 13 September 2014.

Major Changes Introduced by the New Act


Absolute novelty replaces local novelty, expanding the prior art base to include matter available to the public anywhere in the world. Additionally, “whole-of-contents” novelty replaces “prior claiming”, meaning that when a prior art patent document is filed before but published after the priority date of the application of interest, any information in the prior art document can be used to assess for novelty, rather than only the information in the claims.

Inventive Step

Patent applications will now be examined for inventive step, which is expected to raise the standard of granted patents.


Utility will also be a new ground for examination: an invention must have a specific, credible and substantial use.


The support requirements for a complete specification have been strengthened. Specifications must now include disclosure of a best method and the description of the invention must be “clear enough and complete enough” to allow the invention to be performed by a person skilled in the art, which is likely to narrow the scope of granted claims.


Under the new Act, the claims must to be “clear and concise” and “supported by the matter disclosed in the specification”.

Patentability Exclusions

The new Act formalises that an invention is not patentable if the subject matter is:

  • Contrary to public order or morality, including commercial exploitation of processes for cloning or  modifying the genetic identity of human beings, the use of human embryos, modifying genetic identity of animals that is likely to cause suffering without substantial benefit;
  • Human beings and biological processes for their generation;
  • A method of treatment of human beings by surgery or therapy;
  • A method of diagnosis practised on human beings;
  • A plant variety; and
  • A computer program as such.


Post-acceptance amendments to the specification will now be allowed providing the amendments do not introduce matter that was not in substance disclosed in the specification before the amendment, and that amended claims wholly fall within the scope of the claims before the amendment.


The new Act will introduce re-examination provisions. Any person will be able to request re-examination of an accepted patent application or of a granted patent, and re-examination of a patent can be ordered by the courts. All grounds of opposition are available for pre-grant re-examination, and all grounds for revocation are available for post-grant re-examination.


Pre-grant opposition grounds have been expanded to include prior secret use.


It will be possible to commence revocation proceedings through the Intellectual Property Office of New Zealand at any time, whereas under the 1953 Act, revocation proceedings commenced after 12 months from grant of the patent must be conducted through the courts.

Infringement & Infringement Exemptions

The infringement provisions have been expanded to include contributory infringement. Exemptions to infringement now comprise acts for experimental use, seeking regulatory approval and prior use.


Restoration will be possible under particular conditions.

Priority Claim

The priority date of a claim is the date of filing of the earliest accompanying application (eg a provisional application) that provides support for the claim in the matter disclosed.

Grace Period

The new Act essentially retains the prior grace period provisions, with disclosure of the invention in the one-year period prior to filing of the application disregarded as prior art under particular circumstances, such as unauthorised disclosure, or reasonable trial of the invention; and a 6-month grace period for disclosure of the invention at prescribed exhibitions has been maintained.

Renewal/Maintenance Fees

Maintenance Fees for pending applications will be payable from the fourth anniversary of the filing date of the complete specification (or PCT filing date), and for granted patents, renewal fees are payable on the anniversary of the same date.

Patentability Standard

The previous “benefit of the doubt” standard has now been replaced with a “balance of probabilities” standard.

Māori Advisory Committee

A Māori advisory committee will advise whether the invention is derived from Māori traditional knowledge or indigenous plants or animals; and whether the commercial exploitation of that invention is likely to be contrary to Māori values.

No Pharmaceutical Term Extension

The new Act does not include provisions for extending the term of a patent.


The new Act provides that complete specifications will automatically be published 18 months from the earliest priority date; and that a Notice of Entitlement must be filed before the application can be accepted. Additionally, it will be necessary to formally request Examination, which may occur either voluntarily or following direction from the Commissioner. The application must now be accepted by the 12 months from the date of the first examination report.


Patents Regulations 2014
The New Zealand Patents Regulations 2014 became publicly available on 15 August 2014.

Due date for Divisional Applications
Notably, the Regulations provide that examination must be requested in connection with any divisional application filed under the new Act within the period of five years from the antedated date of filing of the divisional application. Accordingly, for a divisional application derived from a parent application that is filed under the new Act, the divisional application must be filed and examination must be requested by five years from the date of filing of the parent application (ie, the International filing date for applications derived from PCT applications).

If required, please contact one of our attorneys to discuss your situation.

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Madderns Launches New Brand

/ Craig Vinall / Important Updates

If you are familiar with our firm, then you will know that we have recently upgraded our website and updated our logo and branding as well.

We are very pleased with the new look and have already received many kind comments about the new branding.

At Madderns, we have a clear understanding of the importance of brands or trade marks. It is after all one of the areas where we have some expert knowledge.

So it is not surprising that we would treat our own brand with care. The reputation of the Madderns brand is very important to us and we work hard to ensure that it continues to embody the values that are important to us as professional advisors in the field of Intellectual Property.

Madderns looks after a large number of trade mark registrations for many clients. We understand the importance of creating strong brands and maintaining their reputation.

Strong brands convey to a consumer the reputation of our products and of our services. Strong brands are a consumer’s aid memoir to their relationship with our products or services. Brands at once cause a consumer to recall the reputation, the relationship, the expectations, the promise associated with the owner of that brand.

Obviously, changing a brand is something that needs to be done with care. It is not something that is done lightly or frequently. But also, brands do need to move with the times. They need to reflect and keep up with change particularly in a service industry.

So the time has come where we needed to make a change. Our firm has grown significantly over the last decade. The nature of our profession is also changing and we at Madderns are keeping pace with that change. We live in an ever changing world and I think it will always be so.

So we think that the new Madderns’ brand reflects who we are now and demonstrates that we are keeping up with change while maintaining our links to the past.

The new logo and rendering of Madderns presents a strong graphic image that embodies some of the core values of our firm such as enthusiasm, creativity, expertise and excellence … all of the things that we believe will provide a competitive advantage for our clients.

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