Intellectual Property, Technology and Media Newsletter – August 2019

20 August 2019

Welcome to our Newsletter, bringing you the latest in Intellectual Property, Technology and Media Law news.

TMs for TLDs: Can descriptive domain names be registered as trade marks?

Earlier this year, the United States Court of Appeals ruled in the case of B.V. v US Patent & Trade Mark Office to find that the seemingly generic word mark “BOOKING.COM” was capable of trade mark registration. The decision has prompted commentary about descriptive domain names and whether they are capable of trade mark registration.

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Historical IP protection repealed: Uncertainty for (some) commercial IP arrangements

On 18 February 2019, the Australian Government passed the Treasury Laws Amendment (2018 Measures No. 5) Bill 2018 (Bill) which effectively removed a longstanding IP exemption in Australia competition law that acted to exempt certain IP provisions from competition laws.

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Prudential Standard CPS 234 – Information Security

Australian Prudential Regulation Authority’s (‘APRA’) new mandatory Prudential Standard CPS 234 on Information Security (‘Standard’) comes into effect on 1 July 2019. The Standard has been drafted with the purpose of tackling the rise in information security threats.

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Focus on privacy in health care: Data breach and the health practitioner

An individual, partnership or body corporate in Australia that provides a health service to another individual and holds any health information is an organisation defined as an APP entity under the Privacy Act and subject to the Privacy Act.

The fact many health practitioners still do not understand this is of concern having regard to both the information they hold and the fundamental privacy principles that underpin the Privacy Act and other State and Territory privacy laws. Further, the Australian Government has proposed amendments to the Privacy Act which will significantly increase the penalties to be imposed on an APP entity when an act or practice interferes with the privacy of an individual.

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A nutty case of trade dress

Kraft had been selling peanut butter in Australia for over eight decades and enjoyed a 65% share of a market worth $110 million in annual sales when the business was sold to Bega in 2017. Bega now accounts for about 80% of the total market, dominating the supermarket shelves.

The parties disputed who owned the distinctive design elements in the product packaging following the sale. This is what is generally referred to in Australian case law as ‘get up’, or in the US as ‘trade dress’, effectively acting as a trade mark to identify the manufacturer.

The ensuing case highlights the perils of failing to protect all forms of intellectual property diligently, limitations in dealing with unregistered trade marks, and traps to beware of in international licensing arrangements, even between related companies.

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Still phishing: the Notifiable Data Breaches Scheme one year on

The Notifiable Data Breaches Scheme 12-month Insights Report issued by the Office of the Australian Information Commissioner (OAIC) on 13 May 2019 (Annual Report) revealed that malicious or criminal attacks which exploit vulnerabilities involving a human factor continue to be the main reasons for notifications to the under the Notifiable Data Breaches Scheme (NDB Scheme).

According to the Annual Report, phishing and spear phishing are the most common and highly effective methods by which entities are being compromised – whether the entity is large or small and within Australia and internationally.

While entities generally appear to be taking steps to comply with their obligations under the NDB Scheme, the OAIC notes that there is still an opportunity to be more proactive in approaching privacy and data security compliance and to build further trust with individuals, particularly in relation to harm minimisation and prevention of further data breaches.

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Industry focus: use of OEM trade marks in the automotive aftermarket

The automotive aftermarket is the secondary market for the manufacture, sale and installation of vehicle parts and accessories after the sale of vehicles by original equipment manufacturers (OEM) such as Ford, Nissan and Toyota. It is a steadily growing business in Australia and, with the rise of automotive e-commerce websites, is estimated to reach approximately $11.48 billion in revenue by 2025.

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ACCC Digital Platforms Report recommends significant changes to Australian privacy laws

Eighteen months after receiving its terms of reference from the Commonwealth Government, the ACCC has released a wide-ranging report into digital platforms such as search engines and social and digital media platforms. Although triggered by concerns about competition in media and advertising services markets, the scope of issues covered by the report reflects the pervasiveness and impact that these technology companies have had.

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Legal issues raised by machine learning systems

Artificial intelligence is a broad concept, used to describe any techniques whereby machines are imparted with some sort of human intelligence. Many recent developments in AI have focussed on a particular field known as ‘machine learning’, where systems evolve as they learn from examples or experience, giving rise to some interesting legal questions.

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