Intellectual property disputes lawyer

Breach of confidence

A breach of confidence can be either contractual, statutory, equitable or all of these.  To establish a breach of confidence, a business wanting to protect its confidential information must:

• particularise with some precision the exact nature of the confidential information that is said to have been misused;
• plead how the confidential information was kept confidential, how the respondent(s) knew or should have known that that it was confidential and the steps that had been taken to keep it strictly confidential;
• describe the basis (contractual, statutory, equitable) that the confidential information was to be kept confidential by the respondent(s); and
• plead that the respondent(s) were under a duty not to use or disclose the confidential information for their own benefit or the benefit of a third party.

Read more about breach of confidence.

Breach of copyright

The elements to be satisfied for the copyright owner to establish a breach of copyright will of course depend on the type of copyright works (Works) that have been infringed – various classes of literary works, computer code, compilations of data, and artistic works (Works) for example.  Generally, however the owner of the copyright must:

• particularise the specific works that are alleged to have been infringed by the respondent(s);
• establish ownership and originality of the works in question;
• state how the works were first published in Australia;
• state how the works in question have been infringed within the meaning of the Copyright Act 1968 (Cth);
• state how the infringement amounted to a substantial reproduction of the Works in question;
• particularise how the applicant(s) has or will suffer loss and damage because of the infringement; and
• include any additional circumstances that give rise to additional damages for flagrancy because of the acts of the respondent(s).

The above is a summary only as each case rests on its own facts.  Read more about breach of copyright.

Trademark infringement

To establish infringement of a registered trademark the owner must:

• state the trademark in question that has been infringed, prove that it is the owner and state the date on which it was first used;
• show how the applicant has acquired a reputation associated with the trademark in question;
• show how the applicant has used the trademark in conjunction with its business to promote its goods or services; and
• state how the alleged infringers conduct in using the mark to promote its good or services is substantially identical or deceptively similar to the applicant’s registered trademark.

Of course, the above is a general summary only.  For more about trademark infringement read our page on trademark infringement.

Patent infringement

Generally, to establish infringement of an Australian registered innovation or standard patent the applicant must:

• describe the patent in question that is valid and subsisting, it’s priority date and complete information about its ownership;
• describe the claims of the patent in suit, the dates when products were marked with the patent in suite that embody the integers of the patent(s);
• describe whether or not the patent in suit was certified (in the case of an innovation patent); and
• particularise how the respondent(s) has infringed the patent in suit by promoting and selling a product that contains the essential integers of the claims of the patent in suit.

Patent revocation

In defending allegations of patent infringement it is not unusual for the respondent to cross claim against the applicant alleging that the patent in suit should never have been granted in the first place.  The grounds that a patent can be revoked in this way are not closed but generally mirror the threshold requirements for registration of the respective patent in the first place.

To read more about patent infringement or cross claiming because the patent in suit should never have been granted (revocation) in the first place see our page on patent infringement.

Infringement of registered design

To establish infringement of an Australian registered design, the applicant must:

• provide complete information about the owner of the registered design in suit; and
• describe the registered design including its registered design number, it’s filing date, the registration date and the date on which it was certified.

Read more about infringement of a registered design.