Williams + Hughes Earns Recertification in Meritas, the Leading Global Alliance of Independent Business Law Firms

Williams + Hughes is pleased to announce that it has been awarded recertification in Meritas, a global alliance of independent business law firms. Williams + Hughes joined Meritas in 2014 and, as a condition of its membership, is required to successfully complete recertification every three years. 

Meritas is the only law firm alliance with an established and comprehensive means of monitoring the quality of its member firms, a process that saves clients’ time validating law firm credentials and experience. Meritas membership is selective and by invitation only. Firms are regularly assessed and recertified for the breadth of their practice expertise, client satisfaction and high standards of cybersecurity to keep legal information safe. Meritas’ extensive due diligence process ensures that only firms meeting the tenets of Meritas’ unique Quality Assurance Program are allowed to maintain membership. The measurement of the firm’s performance, based on input from clients, is reflected in a Satisfaction Index score, which is available online on the Meritas website.

“Our values of quality service and client satisfaction align with the Meritas mission to provide a safe and responsive global offering to clients,” said Damian Quail, Director. “We’ve successfully collaborated with colleagues in many jurisdictions around the world to solve client issues and help them seize opportunities outside of this market. We look forward to keeping those vital connections through membership in Meritas.”

The recertification process Williams + Hughes completed to maintain its membership status included exacting self-assessment, peer review by other law firms and client feedback.  

“Businesses trust the Meritas alliance of law firms for top-tier quality, convenience, consistency and value,” said Sona Pancholy, president of Meritas. “Williams + Hughes has demonstrated its commitment to world-class legal standards, and therefore has successfully earned its recertification in Meritas.”

For more information about our our membership in Meritas, please see here

About Meritas 

Meritas’ global alliance of independent, market-leading law firms provides borderless legal services to companies looking to effectively capture opportunities and solve issues anywhere in the world. Companies benefit from local knowledge, collective strength and new efficiencies when they work with Meritas law firms. The personal attention and care they experience is part of Meritas’ industry-first commitment to the utmost in quality of service and putting client priorities above all else. Founded in 1990, Meritas has member firms in 259 markets worldwide with more than 7,500 dedicated, collaborative lawyers. To locate a Meritas resource for a specific need or in a certain market, visit Meritas.org or call +1-612-339-8680

Meritas Welcomes DMAW Lawyers, Adelaide, to the Membership

Leading Adelaide commercial Firm, DMAW Lawyers has been selected to be South Australia’s representative firm for Meritas, the premier global alliance of independent law firms.

DMAW Lawyers will become an integral part of the Australia & New Zealand network of firms as well as the worldwide network of 191 law firms located across 96 countries.

This alliance will enhance DMAW Lawyers’ ability to support South Australian business interests both nationally and internationally.

DMAW’s Lawyer’s Managing Director, Mr Leo Walsh said “One of most attractive benefits of belonging to this network was the opportunity for our lawyers to participate in national and global conversations on business and legal issues. Not only does this expand our thinking, and add to our technical skills, but it help our lawyers build trusted, reliable relationships with lawyers in the regions that matter to our clients. Already we’ve participated in meetings with Insolvency experts across the country and with Senior Partners in Shanghai and Tokyo.”

Mr Mike Worsnop, Partner with Martelli McKegg in New Zealand and Co-Chair of Meritas ANZ: “We are delighted to have DMAW Lawyers join our group. Not only was their quality apparent but they’ve been very easy and responsive to deal with during our discussions.  They clearly demonstrated the type of service clients look for when using a firm in a different market.”

“DMAW Lawyers had to meet the rigorous requirements to become members of Meritas, the only law firm alliance with a Quality Assurance Program that ensures clients receive the same high-quality legal work and service from every Meritas firm.”

Meritas membership is extended by invitation only, and firms are regularly assessed for the breadth of their practice expertise and client satisfaction.

Ms Sona Pancholy, Meritas CEO: “In today’s environment having a commitment to a reliable network is more important than ever. Independent law firms, Corporate Counsel, Business Owners and their Commercial Advisors, all choose their portfolio of trusted legal relationships to match the issues and the markets they want to navigate. For 30 years, Meritas has cultivated a group of the best firms for this purpose.”

About DMAW Lawyers

DMAW Lawyers was established in Adelaide in 2002. The firm has ten Principals and a team of 50 staff. DMAW Lawyers focus on three areas of specialization being Corporate, Transactions, and Disputes for Business Clients.

Website: DMAW Lawyers

About Meritas

Founded in 1990, Meritas is the premier global alliance of independent law firms. As an invitation-only alliance, Meritas firms must adhere to uncompromising service standards to retain membership status. With 192 top-ranking law firms spanning 96 countries, Meritas delivers exceptional legal knowledge, personal attention and proven value to clients worldwide.  

Website:  Meritas 

In Australia and New Zealand, Meritas is represented by leading independent commercial law firms in each of these six major capital cities:

In Australia

Adelaide DMAW Lawyers

Brisbane Bennett & Philp

Melbourne Madgwicks Lawyers

Perth Williams+Hughes

Sydney Swaab  

In New Zealand

Auckland Martelli McKegg

Privacy policies and procedures: Australian businesses may have to comply with European GDPR laws

On Friday 25 May 2018 the EU General Data Protection Regulation (GDPR) came into effect, giving residents of the EU increased control over their personal data. Importantly, GDPR extends far beyond the boundaries of Europe.

Here we have summarized what this means for Australian businesses.

Does it apply to my Australian business?

GDPR can apply to businesses incorporated outside of the EU, regardless of their size.

GDPR applies to Australian businesses that:

• have an establishment in the EU;
• offer goods or services to EU individuals (including where no payment is required); or
• monitor the behaviour of EU individuals e.g. through the use of website “cookies”.

If an Australian company has an office in the EU, sells goods or services to people in the EU, or processes or handles data relating to EU individuals – even if that data processing occurs only in Australia - that is usually enough to bring the company within the scope of GDPR.

The fact that people in the EU can access a website is not enough to bring the company within GDPR. However, using a European language or currency on your website, or mentioning customers or users who are in the EU, can be considered having an intention to offer services to EU individuals. This will bring any data concerning those EU individuals within GDPR, and so the Australian business will need to comply with GDPR.

Who and what are covered?

The GDPR covers the “personal data” of an “EU individual”. The concept of an “EU individual” extends to EU residents, EU citizens and citizens of other countries who are temporarily in the EU. This could include an Australian resident working temporarily in the EU. The scope of “personal data” is broad - it includes any data set which can identify or single out an individual. It is broader than the definition of personal information under Australian legislation.

Importantly, GDPR focusses on the person to whom the information relates, not where the information handling or processing actually occurs.

So, an Australian company that uses computer servers provided by third parties to process the personal data of an EU individual (e.g. Amazon or Microsoft Azure servers) is bound by GDPR even if those servers are located outside of the EU. GDPR extends far beyond the boundaries of Europe.

If an Australian company has European customers, then they msut comply with GDPR.

We comply with Australian Privacy Laws, isn’t that enough?

Unfortunately it is not that simple. Although the Australian Privacy Act 1988 (Cth) and the GDPR have similar requirements, some requirements of GDPR are stricter than those under Australian privacy law. For example:

• Active, informed, specific consent must be obtained from EU individuals regarding use, collection and storage of their personal information. Companies cannot rely on pre-ticked boxes, opt-out clauses, bundled consents or employment contracts for consent. Privacy and consent cannot be obtained via clause 65 of a privacy policy on your website.
• Companies must notify EU individuals within 72 hours of a data breach occurring. This is a very short timeframe from discovery of a breach. Companies will need to put in place processes to deal with a breach before any breach actually occurs.
• Specific steps must be taken by a company when transferring personal data outside of Europe or to a third party commercial services provider.
• Companies must implement appropriate technical and organisational measures and processes, including data protection policies, to ensure and be able to demonstrate that data processing and retention complies with GDPR. Importantly, there must be “data protection by design and by default”.
• EU Individuals have a “right to be forgotten” under GDPR which does not yet exist under Australian privacy law.

If GDPR applies to your business, you may need to update your privacy policy and procedures to ensure compliance with these rules.

Alternatively, you may need to implement strategies to remove your business from the scope of GDPR. We can assist in this regard. 

Europe's Regulatory Focus- will non-EU companies be fined?

The processing of employee data, such as payroll data, has been identified by EU regulators as a key area for protection. Any Australian business that seriously breaches GDPR in relation to EU employee information could be the subject of enforcement action by EU regulators. In the event of a serious data breach, fines may be imposed. Fines under GDPR can be extremely high - up to €20 million or 4% of annual worldwide turnover, whichever is greater.

Importantly, European regulators are taking action against non-EU companies. The first company to be fined under GDPR by the UK's Information Commissioners Office (ICO) was a Canadian company with apparently no EU presence. The ICO also issued a formal warning under GDPR in November 2018 to the Washington Post over how it was obtaining consent for cookies on its website. The ICO did not take the matter further at the time, and presumably will not in a post-Brexit world. However, it is clear that European regulators may target companies outside of Europe in sufficiently serious cases.

Also, any EU individual whose data has been compromised as a result of an unauthorised disclosure or data breach can take action directly against an Australian company under GDPR.

Many countries are following GDPR

Legislation similar to GDPR has already been passed in many jurisdictions outside of Europe. Other non-European countries are currently updating their privacy laws as a response to GDPR. These countries include Argentina, Bahrain, Brazil, China and Hong Kong, Iraq, Israel, Kazakhstan, Norway, Panama, Peru, Russia, Singapore, California and the United Kingdom. Australian companies operating in, or with customers in, these countries will need to be sure they comply with those laws.

What to do now

The message is clear. Many Australian companies holding or processing personal data of an EU individual should:

• Review their current data processing practices to understand what data is collected, processed and retained
• Determine whether current information handling, security and retention practices comply with GDPR
• Update privacy policies, practices and procedures if GDPR is applicable
• Put in place measures to deal with a data breach before one occurs
• Obtain formal contractual guarantees from third party service providers (e.g. who host or process relevant data) that they are compliant with GDPR.

For Australian companies that wish to avoid the cost of dealing with GDPR, there are strategies that can be implemented to remove their business from the scope of GDPR.

If you have any questions about your company’s obligations or need help to comply with GDPR or avoid GDPR, please contact Damian Quail in our Perth office.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Peanut Butter Battle of Jars and Trade Marks

Peanut butter is big business in Australia.  In 2017 the Australian peanut butter market was worth $110 million in annual sales. A brand recognisable to many Australians - Kraft peanut butter - has been available for purchase in Australia since 1935.

The Federal Court recently handed down judgment in a dispute between Bega Cheese Limited and Kraft Foods Group over the appearance of product packaging (trade dress, also known as “get up”) and copyright in a “peanut butter jar with a yellow lid and a yellow label with a blue or red peanut device” (Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593).

The background to the dispute is complicated and involved various restructurings, licence agreements and assignments between the parties. In 2017 Bega bought the peanut butter business and associated assets and goodwill from Mondelez Australia (Foods) Ltd, a subsidiary within the global Kraft Foods group. After the sale was concluded Kraft temporarily exited the peanut butter market in Australia. Subsequently Kraft returned and wanted to continue to use the distinctive colours and get up previously used for Kraft branded peanut butter products, as depicted below.

However, after closing off the deal between Bega and Mondelez, Bega had commenced selling Bega branded peanut butter products using a trade dress that Kraft claimed constituted misleading and deceptive conduct, breach of contract, passing off and trade mark infringement. Bega countersued and alleged that Kraft had infringed their intellectual property rights and engaged in misleading and deceptive conduct. Bega claimed that as part of the deal with Mondelez, Bega had bought the right to use the distinctive trade dress, including the goodwill associated with it. Bega’s peanut butter jars are shown below.
 

                                                                                                   
On 1 May 2019 the Federal Court ruled in favour of Bega, finding that it had the right to use the distinctive peanut butter trade dress. The Court confirmed that the sale or licensing of unregistered trade marks is not possible without assigning the underlying goodwill of the business. It came to the conclusion that Bega had acquired all rights to the peanut butter trade dress, including the underlying goodwill, and could continue using it in relation to its peanut butter. The Court also awarded damages against Kraft/Heinz for infringing Bega’s intellectual property.

A key factor in the Court’s decision was the fact that the trade dress previously owned by Kraft could have been protected as a registered trade mark but it had never in fact been registered. The Court fight between Bega and Kraft could likely have been avoided if a registered trade mark had been obtained. Instead, both sides had to go to Court to try prove that they had exclusive rights to the use of the unregistered trade mark.

Benefit of registering trade marks

The case is a timely reminder of the value of a registered trade mark.  If Kraft had registered the distinctive Kraft peanut butter trade dress as a trade mark it would have been in a much stronger position to retain rights in its intellectual property.

In addition to trade dress, trade marks can also be a shape (the Coca Cola bottle), a colour (purple for Cadbury chocolates or the orange colour of Veuve Clicquot’s champagne), a sound (the Nokia ring tone) and even a scent (eucalyptus scented golf tees).

Colour, shape, lids, jars and trade dress are important features and should be protected as registered trade marks.

The best protection by far is to register the trade mark under the Trade Marks Act 1995 (Cth). This solution is low cost, and results in an Australia-wide, potentially perpetual, statutory monopoly in the brand. Also, once a mark is registered, enforcement is relatively simple as you don’t need to prove title.

A search of the trade mark register shows that Bega has now filed two trade mark applications to protect the trade dress in the smooth and crunchy versions of the peanut butter.

                                                                                                                      
  
For further information on how these changes may impact on your business please contact Madeleen Rousseau, Special Counsel, on +61 8 9481 2040 or madeleen.rousseau@whlaw.com.au.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Philip Morris Ordered to Pay Australia’s Legal Costs After Failing to Challenge Plain Packaging Laws

The Permanent Court of Arbitration has recently ordered tobacco company Philip Morris to pay the Australian government’s costs, after Philip Morris failed to get the Australian government’s plain packaging legislation overturned. For the uninitiated, the makes it mandatory for tobacco companies that wish to conduct business in Australia to sell their products using only a generic drab dark packaging. The legislation requires tobacco packaging to feature large, visually-arresting health warnings which are designed to make cigarettes unappealing to smokers.

The plain packaging legislation was opposed by tobacco companies and various countries. One rationale was that the mandatory use of plain packaging make it difficult, if not impossible, for brand owners to market their products using unique marks and design elements. The law also makes it that much more difficult for tobacco companies to protect their trade marks, as the plain packaging makes it that much easier for counterfeiters to produce and profit off fake products. It was also argued that any meaningful public health effects brought by the plain packaging law will be negated if cheap counterfeit tobacco products flood the Australian market.

This arbitration was brought on slightly different grounds. When Philip Morris took the case to the Permanent Court of Arbitration, it tried to argue that a ban on trade marks will breach foreign investment provisions, citing the conditions of a 1993 trade agreement between Australia and Hong Kong to support its argument. The court was very critical of Philip Morris’ arguments, and ruled against the tobacco company.

The Permanent Court of Arbitration’s ruling against Phillip Morris marks the third failure of the tobacco industry’s battle against the Tobacco Plain Packaging Act, after its previous failures to overturn the legislation at the High Court of Australia and the World Trade Organisation (WTO.)

The final costs figure that Philip Morris has been ordered to pay consist of the court fees and expenses, including the cost of expert witnesses, travel, solicitors, and counsel, as well as interest. The actual amount is redacted from the Permanent Court of Arbitration’s new ruling. But former Australian Federal Treasurer Wayne Swan (who helped draft the plain-packaging laws and was called by Australia to give evidence during secret hearings in 2015) estimates the case cost to have been “around $50 million” in legal fees.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.

Swiss Style Claims and Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129

On 18 August 2017, the Australian Full Federal Court has overturned a prior decision made by the Administrative Appeals Tribunal in 5 September 2016 over Re AbbvVie Biotechnology Ltd [2015] APO 45, with regard to several applications for an extension of term for Australian patents 2012261708, 2013203420 and 2013257402. Patent extensions of five years are permissible in Australia for pharmaceutical products. These patents contain claims of a type called “Swiss type claims”. As the Full Court noted, “Speaking broadly, such claims are, in form, directed to the use of a substance in the manufacture of a medicament to be administered for a specified therapeutic purpose. An invention in this form is appropriately characterised as a “method or process”, not as a “product”.”

Swiss type claims are drafted by patent attorneys in order to endeavour to accrue patent protection in certain jurisdictions for the discovery of new medical uses for known compounds. In around 80 jurisdictions, patenting methods of medical treatment is prohibited (although not so in Australia as a consequence of the 2013 High Court decision inApotex Pty Ltd v Sanofi-Aventis Australia ). Swiss style claims are intended to catch any method of making a drug of any kind where that drug includes a known compound as an active constituent. Swiss type claims hinge upon the artificial premise that the prerequisites of novelty and inventiveness follow the discovery of the compound’s activity, but in relation to the new condition. This is even though there may be nothing new in manufacturing drugs consisting of the known compound. The concept relies upon the public policy position of rewarding with a patent monopoly the outcomes of successful and helpful medical research.

Each of the original patent term extension application made by AbbVie concerns a pharmaceutical substance called “adalimumab”. This is used in the manufacture of a medicament for the treatment of ulcerative colitis, Crohn’s disease, and rheumatoid spondylitis. Adalimumab is already marketed under the name “Humira.”

The Deputy Commissioner of Patents had originally rejected the request to extend the patents. In his decision, the Deputy Commissioner said,

“…while notionally directed to a method or process of manufacturing a medicament, the claims are characterised by a therapeutic use. Consequently, on the basis of my reasons in ThromboGenics I do not find that a pharmaceutical substance, when produced by a process that involves the use of recombinant DNA technology, in substance falls within the scope of the claims. I must therefore refuse the application for an extension of term.”

The Administrative Appeals Tribunal said that AbbVie’s patents were capable of extension because they satisfied s 70(2)(b) of the Australian Patents Act 1990. This was on the basis that adalimumab is “produced by a process that involves the use of recombinant DNA technology” which meant that AbbVie was trying to patent the process and not the product.

The Full Federal Court disagreed and looked to the term “pharmaceutical substance” and how it relates only to products, not processes. The Full Court said,

“58.The first and critical matter to note about Swiss type claims is that they are not claims to pharmaceutical substances at all. They are method or process claims which, in this connection, exhibit a dual character. First, they are directed to a method or process in which a substance is used to produce a medicament. Secondly, they have an additional method or process element constituted by a specific purpose to which the medication is to be used. Thus, the scope of Swiss type claims is fundamentally different to the scope of the claims addressed by s 70(2) of the Patents Act.

59.With specific reference to the present case, adalimumab is a pharmaceutical substance produced by a process that involves recombinant DNA technology. However, the claims in suit are not directed to adalimumab produced by recombinant DNA technology. They are directed to different subject matter. First, they are directed to a method or process in which adalimumab is used to produce a medicament. Secondly, they are directed to a medicament containing adalimumab that is to be used for specific therapeutic purposes, being those identified at [16] above. These claims do not meet the requirements of s 70(2)(b). In our respectful view, the Tribunal erred in concluding otherwise.”

(There was also discussion in the decision about the inclusion of the words “per se”, an important drafting issue we do not discuss in this summary, and there are also obvious consequences for drugs produced using rDNA technology.)

What does this decision mean for Swiss type claims in Australia? It poses a dilemma of indeterminate proportions by the patent owner at the time of drafting the patent. As stated above, Swiss type claims are not necessary in Australia, but provide benefits in foreign jurisdictions. This is of assistance when extending the patent by way of the Patent Cooperation Treaty into foreign markets. But within Australia, this decision quashes the potential to extend the life of a patent incorporating Swiss type claims. We note that Swiss type claims are invalid in Europe. But, practically speaking, given the relatively small size of the Australian pharmaceutical market compared to the global market where Swiss type claims are applicable, and the relatively small financial benefit arising from an additional five years of protection in this jurisdiction, there is probably no additional incentive to avoid using Swiss type claims arising from this decision.

This article is general information only, at the date it is posted.  It is not, and should not be relied upon as, legal advice.  This article might not be updated over time and therefore may not reflect changes to the law.  Please feel free to contact us for legal advice that is specific to your situation.