Our Intellectual Property & Technology Team reflects on the year and the industry trends of 2024. The Team also looks forward to what the next 12 months may have in store.
“The next 12 months should bring some new challenging legal issues to be tackled by businesses driven by intellectual property and/or technology. These legal issues will be influenced by societal and legal trends towards greater privacy and consumer protections, as well as the technological advances in generative AI. Businesses that inform themselves and tackle these challenges head-on will be better placed to adapt and take advantage of them.”
Tim Clark – Partner
Industry insights
Intellectual Property
2024 has been an exciting year for intellectual property with a number of high profile cases being heard and decided by the Full Court of the Federal Court of Australia, with a number of judgments expected to be handed down early in 2025. Other major highlights including the Commonwealth Government establishing the Copyright and Artificial Intelligence Reference Group to inform the Attorney-General’s Department in preparing advice to the Commonwealth Government on identifying key issues relating to the intersection of AI and copyright and potential solutions to address these issues.
The “7NOW” trade mark dispute between Seven Network and 7-Eleven saw the Full Court of the Federal Court remind businesses of the importance of using their trade marks in the form they are registered to avoid the risk of those marks becoming vulnerable to non-use cancellation actions. In Seven Network (Operations) Ltd v 7-Eleven Inc [2024] FCAFC 65, the Full Court largely upheld the primary judge’s decision to remove Seven Network’s “7NOW” trade mark for non-use in respect of certain goods and services. In particular, the Full Court confirmed the primary judge’s decision that isolated or minimal use of a trade mark, such as in a domain name or a small website banner, is unlikely to amount to the use of the relevant trade mark.
The case of The Agency Group v H.A.S. Real Estate PL (2023) FCR 117 highlighted that an owner’s rights in a registered trade mark are limited to the particular form in which the mark has been registered and that there are limitations to enforcing a composite mark of an otherwise descriptive mark. The Full Court dismissed the appeal by The Agency Group, finding that the trade mark “The North Agency” was not deceptively similar to The Agency Group’s composite trade mark for the words “The Agency”. In particular, the Full Court considered that the whole trade mark must be considered in determining deceptive similarity and that it is relevant to take into account that the word “Agency” in the trade mark was descriptive and commonly used in the real estate industry.
There was more legal troubles brewing in the coffee industry when Cantarella Bros Pty Ltd (Cantarella) was sued by Koninklijke Douwe Egberts BV (KDE), the seller of Moccona instant coffee. In the Federal Court proceeding of Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277, KDE alleged trade mark infringement of KDE’s registered shape trade mark for its glass coffee jar. Cantarella in its cross-claim sought to cancel KDE’s trade mark on various bases including that the shape trade mark was not distinctive. The Court held that while the shape was not distinctive, it had acquired distinctiveness given KDE’s long standing use. However, the Court found that Cantarella was not using its coffee jar shape as a trade mark. In particular, the Court held that the mere featuring of a product in its packaging does not constitute trade mark use. Separately, the Court held that Cantarella’s coffee jar shape was not deceptively similar to KDE’s shape trade mark given the differences in the key features between the shapes. The case is an important reminder of not only of the difficulty in registering a shape trade mark but also some of the difficulties in also successfully enforcing it against third parties.
Technology
This year has seen significant developments in relation to the legal regulation of artificial intelligence (AI).
The European Union introduced its AI Act, which regulates the use of AI based on a risk based approach to certain types of AI systems and platforms. This legislation took partial effect on 1 August 2024, with a staggered introduction of its provisions over the next 3 years. The AI Act applies to both businesses operating within the EU and to businesses that offer AI systems for use in the EU, as well as applying where outputs of AI systems are used within the EU. AI systems and models that involve greater risks will be regulated more strictly under the AI Act. Providers of high risk AI systems must meet obligations relating to risk management systems, data governance rules, technical documentation, logging, transparency, design, accuracy, robustness, and security. AI systems with unacceptable risk are outright prohibited subject to certain exceptions. You can read more about the EU’s AI Act in our August 2024 insight here.
In Australia, the Commonwealth Government released two key publications addressing the regulation of AI: the Voluntary AI Safety Standard and the Proposed Mandatory Guardrails for AI in High-Risk Settings. The Voluntary AI Safety Standard is intended to provide practical guidance on responsible AI implementation, while the proposed Mandatory Guardrails adopts a risk-based approach to regulating AI systems with the aim of addressing risks and harms with high-risk AI systems whilst building public trust and providing regulatory certainty. The Mandatory Guardrails proposal received over 300 submissions in a relatively short one month consultation period, an indication of significant interest and engagement from industry and the community. We expect further news in this regulatory space next year as the Government continues to refine its approach.
Internationally, we are closely watching various legal proceedings filed in the US and UK, in particular, by copyright holders, such as authors and record labels, alleging copyright infringement by many generative AI platforms. The outcomes of these cases may be influential in whether we will see similar cases being pursued in Australia or the need for legislative reform in the area of copyright law.
Privacy and Data Protection
The reform of Australia’s privacy legislation took a significant step forward in September 2024 when the Government introduced into Parliament legislation to amend the Privacy Act 1988 (Cth). The introduction of the first tranche of the reform legislation came almost a year to the day after the Commonwealth Government released its response to the Attorney-General Department’s comprehensive review report into the Privacy Act.
The Government introduced legislation into Parliament to create a statutory tort of “serious invasion of privacy”, to criminalise the “doxxing” of individuals, and to impose significant transparency requirements over the use and disclosure of personal information in automated decision-making processes. The Government also intends to legislate increased penalties for contraventions of the Privacy Act, and to give Australia’s privacy regulator, the Office of the Australian Information Commissioner (OAIC) greater enforcement options. The legislation to amend the Privacy Act is currently under the Parliament’s consideration and we expect to see further progress on Australian privacy law reform in 2025.
You can read more about the amendments to the Privacy Act in our September 2024 insight here.
In late November 2024, the Parliament passed a standalone Cyber Security Act to further the Government’s strategy of improving the country’s cyber-resilience. A key measure that has become law has been the obligation imposed on Australian business to report to the Government ransomware payments. In addition, the Cyber Security Act will impose an obligation on entities involved in the supply chain of internet-connected devices mandated minimum security standards. We expect that the Cyber Security Act will shortly receive royal assent and take effect in 2025.
You can read more about the Cyber Security Act in our October 2024 insight here.
Recognition
We are grateful for the recognition we received from our clients and peers:
The Legal 500 Asia-Pacific
In the 2024 edition of The Legal 500 Asia Pacific, Piper Alderman was recognised across 14 areas of law including Data Protection and Intellectual Property, with the following individuals recommended:
- Tim Clark– Recommended for Data Protection and Intellectual Property
- Tim O’Callaghan– Recommended for Intellectual Property
- Craig Subocz – Recommended for Data Protection
- Travis Shueard – Recommended for Intellectual Property
The Best Lawyers in Australia
In the 2024 edition of The Best Lawyers in Australia, 54 of Piper Alderman’s lawyers are recognised across 49 legal areas including the following from our Intellectual Property & Technology team:
- Tim Clark– Privacy and Data Security Law
- Tim O’Callaghan– Intellectual Property Law
- Travis Shueard – Litigation ‘Ones to Watch’
Doyle’s Guide
In the 2024 rankings for Doyle’s Guide, Tim O’Callaghan was recognised as Leading in the areas of Intellectual Property / Technology, Media & Telecommunications in South Australia. Travis Shueard was recognised as a Rising Star in the area of Intellectual Property / Technology, Media & Telecommunications in South Australia.
Client Feedback
The team was delighted to receive positive feedback from clients and contacts during the research process for the legal directories, including the following testimonials from the Legal 500 Asia Pacific Australia, 2024 edition:
“Piper Alderman are responsive, able to shift work across team members based on specific skill sets and areas of expertise and are willing to understand a company so that they can provide the most appropriate advice.”
“Piper Alderman assisted us greatly with a privacy breach situation, providing timely and clear advice, and guiding us through the necessary response steps – providing a holistic solution.”
“Collaborative and proactive matter management.”
“Working with the practice is always easy and engaging. There’s a great team spirit and ‘can do’ attitude.”
“They are extremely knowledgeable and proactive. They always respond promptly to queries and have a knowledgeable support team to assist if our regular contacts are unavailable.”
“The firm’s commitment to excellence is evident in every aspect of their service. Their responsiveness, efficiency, and thoroughness in handling our legal matters have been consistently remarkable.”
“Their ability to adapt to our evolving needs and their willingness to go above and beyond have centered our trust in their capabilities.”
“Their proactive approach to legal problem-solving has saved us valuable time and resources, enabling us to make well-informed decisions with confidence.”
“Throughout our collaboration, we have been thoroughly impressed with the level of service and dedication the firm have consistently delivered.”
“Their professionalism, attention to detail, and commitment to achieving favourable outcomes have surpassed our expectations.”
Business Development
The Intellectual Property & Technology team provided several bespoke seminars throughout 2024 on intellectual property issues for clients, both in-person and online. Additionally, the team published a number of timely insights while partaking in client and industry facing events, sponsorships and partnerships.
