A self represented litigant had applied for a trade mark for “BYRON BAY BEACHFRONT APARTMENTS” which was rejected. He appealed to the Federal Court, did not fully understand the process and the Court found that he had no reasonable prospects of success and granted Summary Judgment against him.
Meagher J made the following comments:
“Meaning no disrespect, Dr Quach made a number of submissions which were confusing and misguided. Many of his submissions were contained within his affidavits. He did not address all aspects of the relief sought. Rather, he sought to challenge the legitimacy of the AFS process under the TMA and TMR and the authority of the Registrar. Further, while the relief sought in the originating application was expressed in terms of final relief directing the Registrar to register a trade mark, and interlocutory relief restraining her from registering another trade mark, as Dr Quach’s argument proceeded it was unclear whether the relief expressed to be interlocutory was actually so. Taking that into account, and noting that Dr Quach is not legally qualified, I have made the best I can of his submissions.”
The Registrat of Trade Marks sought indemnity costs (which are higher, compensate for full costs and intended to punish the failed litigant). Meagher J declined to award these, as there was no suggestion that Dr Quach had engaged in an abuse of process. “Rather, it is clear that he has misunderstood the processes involved in registering and opposing trade marks.”
Read more at: Quach v Registrar of Trade Marks [2025] FCA 311 (3 April 2025)
Additional Damages are fairly unusual, but can be awarded in IP Litigation based on the flagrancy of infringement, the conduct of the defendant and other matters. In a Design Infringement case about modular vehicle canopies for trucks and utility vehicles, Anderson J took the unusual step of awarding Additional Damages (which are designed to punish) on the basis that:
(a) The Design owner had previously sued the defendant and settled on the basis that the defendant undertook undertook to cease sale of the infringing products. However, in breach of that settlement agreement, the defendant continued to offer the infringing products for sale.
(b) The defendant continued to engage in infringing conduct after being put on notice of the design infringement claim and even after default judgment was awarded against it, in breach of Court orders.
(c) The defendant did not engage in the Court proceeding and was in default of Court orders in relation to providing sales figures etc.
(d) Notwithstanding its conduct, the defendant operates a sizeable business in Australia. It had been selling infringing products since at least November 2021.
(e) A substantial benefit had accrued to the defendant due to its infringing conduct.
(f) The strong need to deter the defendant from engaging in this conduct, particularly in light of its failure to cease offering for sale its infringing products in breach of Court orders. The need to deter other traders generally from engaging in similar conduct.
The Additional Damages award increased the total damages from $50,000 to $250,000.
The Registered Designs in suit were: 202011929 and 202011931
Read more at: Rock Solid Industries International (Pty) Ltd v Ozi 4X4 Pty Ltd [2025] FCA 334
In the early stages of patent infringement proceedings, each of the respondents (defendants) argued that Scidera had not put its case sufficiently clearly to the court in its pleadings (Statement of Claim and Amended Statement of Claim) and that it should be struck out and the case dismissed.
The patent in suit (AU2010202253) relates to a method to identify a trait of a bovine subject from a nucleic acid sample, using at least three single nucleotide polymorphisms (SNPs).
Rofe J disagreed, stated that the Amended Statement of Claim had dealt with any deficiencies in the original Statement of Claim and cited Justice Murphy in Gall v Domino’s Pizza Enterprises Ltd (No 2) (2021) 391 ALR 675 in stating that “in modern times courts have often taken a “less strict approach” to the application of pleadings principles, and have preferred to use pre-trial disclosure of evidence and exchange of submissions and interventionist case management techniques to address some of the difficulties sometimes associated with pleadings.”
Her Honour made it clear that the parties to the proceeding are sophisticated litigants with legal advisers experienced in patent litigation and that it would be difficult to see how they could say they were not sufficiently apprised of the case that is to be put against each of them for the purposes of preparing their respective defences.
Read more at: Scidera, Inc. v Meat and Livestock Australia Limited [2025] FCA 30
Here are some thoughts on intellectual property if you’re about to go through a business transformation:
- Create a new IP Strategy to complement the business after transformation.
- What Products or Services are you retiring? What IP is associated with them? Will you cull the registered rights immediately or is there some commercial benefit to holding them for a while longer? Are there licensing options that arise here?
- What new Products or Services are going to come online? How advanced is your IP Strategy for these? How advanced is your analysis of the IP ecosystem in these new areas (including key players, potential collaborators and competitors)?
- What new IP risks will arise in the transformed business? Do you have a process in place to identify and deal with them?
- What risks will diminish or disappear with the change? What reporting do you need to do in this regard?
- Are there new issues to consider from an IP Management perspective? Are there new types of rights? New countries to cover? New relationships to build?
- Select a small team to work through these and other related issues, then whiteboard or better still, wargame what it will look like.
The two main areas to consider are protecting your IP before you lose the chance, and managing risk associated with something new out on to the market.
Protecting your IP
This should be part of a plan that goes hand in hand with your technology / product development pathway. So it shouldn’t be something that is only thought about coming up to launch. In fact, by the time you’re preparing to launch, any protections measures should be in place and you should be just polishing and double checking things from an IP protection perspective.
Managing risks
Do you have freedom to operate? How do you know?
What level of patent clearance has been done? What level is appropriate for this offering?
Have you undertaken a scan for registered and common law trade marks in your target market?
How confident are you that no copyright material has been caught up in your new offering (including software code)?
What about registered designs (design patents) and other IP rights?
What strategies have you put in place to mitigate risk where something unexpected occurs?
Excellence – it’s a big call to make. It takes a lot of work.
How much time do you spend pursuing excellence in your IP Strategy?
How do you know?
Here’s a challenge – regularly set aside time just to think about how you could improve your approach to IP Strategy.
And if you’re really serious:
- Make it a habit – do it at the same time each week, even if it’s only half an hour.
- Make plenty of notes and lists.
- Monitor your progress.
- Make yourself accountable to someone by having a regular discussion.
How to make good IP decisions when there’s no time to spare, in a complex and rapidly evolving world? Can you balance multiple perspectives and factors in the heart of the moment? (legal, technical, market, brand, business goals, corporate politics…).
How do you do that effectively, and quickly?
Naturalistic decision making has some interesting and useful answers. A lot of the insights in this area have come from observing people making life and death decisions with very little time, such as firefighters and the military, but it applies much more broadly.
It turns out that people don’t analyse a list of options when faced with an important and time critical decision particularly in ambiguous circumstances. Instead we do a rapid scan of our memories for patterns and similarities in past experiences. We check these against the current situation, find the first that would work, and start to apply it. We stop and adjust again each time we identify another issue.
Even more interesting is that many decisions that are not time critical are also made this way.
You can think of those memories and patterns as a slide deck that your brain rapidly sorts through. So the short answer to how to make better decisions, faster is to increase the number and quality of slides in your deck. That comes from lots of useful experience, but it also turns out that it doesn’t have to be from actual, real life events to create an effective slide in your deck.
Can you think of possible ‘crisis’ situations where you are going to have to respond quickly?
How can you prepare for these and give your team the right, high quality slides to draw on?
(Our Wargames and IP Playbook are designed for just that.)
At what point in the future will you be able to challenge a competitors patents for lack of inventorship because they were AI generated not human generated?
Is it still protected by copyright in the countries of interest to you if there was no human author?
Who is responsible for a rogue AI sending out millions of misleading messages and posts about your brand?
How do you deal with AI that reuses confidential information for a purpose that was not contractually allowed?
What about the AI that infringed copyright?
How are you adjusting your IP Strategy for this new AI world?
The business model used by the business you are supporting profoundly affects the way you do IP Strategy.
Depending on the industry, the business model can change quite dramatically and make your efforts obsolete.
They won’t always recognise nor tell you that they just changed the business model – so watch out.
If you’re close to the business and understand how it really works, then you’ll probably be part of the change when it happens anyway.
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