The Gatherer - Volume 9

. . . I always encourage my STEM students to broaden their interests beyond STEM and develop an appreciation of the arts and get involved in other student activities. ” “

TRADE MARK OPPORTUNISTS

What key intellectual property issues are your clients in the oil and gas industry currently facing? Emerging technologies such as automation, IOT, machine learning and AI provide an enormous amount of data from which rich insights about operations, maintenance, productivity and efficiencies can be gained. Issues such as controlling access to the data by third parties, misconceptions about ownership of data, and developing new business models to extract value from these data sets are relevant to not only the oil and gas industry but health, agritech, mining, finance – the list goes on. It’s incumbent on IP professionals to present pragmatic advice and solutions to these issues for their clients. I also think it’s important to keep abreast of how other industry sectors are grappling with these issues to see where analogous approaches might be useful. There is a lot of pressure on the oil and gas industry to develop engineering solutions for sustainable development. What new technologies do you see emerging in this industry that will work towards achieving this goal? Industry 4.0 technologies mentioned above will obviously be very important to reduce greenhouse gas emissions and increase efficiencies around energy consumption. But I think there will also be a trend towards investment and development of alternative sustainable energy technologies such as hydrogen and energy storage as this sector transitions from fossil fuel to a broader spectrum energy sector.

The process of protecting intellectual property can, in many cases, take a number of years. How do you manage the long-term relationship with your clients to achieve the best commercial result? Regular communication with the client is key – ensuring that the IP strategy continues to be fit for purpose can only be achieved by understanding changes to the client’s business landscape and how they are adapting their business strategy accordingly. I find it particularly rewarding when my input and the questions I raise leads my clients to explore other avenues which hadn’t occurred to them. You enjoy sharing your passion and knowledge of IP by mentoring students in STEM. What new challenges are students facing today and what advice do you give them? The pace of technological change is so fast that the challenge for many STEM students is that they feel they are preparing themselves for a career unknown – one that hasn’t been ‘invented’ yet. How do they know if they are on the right path? While STEM inherently develops critical thinking, analysis and problem-solving skills which can be readily transferred to a range of careers, it is also important to develop ‘soft skills’ like communication, storytelling and creativity. So I always encourage my STEM students to broaden their interests beyond STEM and develop an appreciation of the arts and get involved in other student activities. Regardless of where their career path takes them, it will always be important to communicate effectively and collaborate with others.

T rade mark opportunists are everywhere. In the USA, an IP lawyer filed a TM application for SUSSEX ROYAL apparently to “teach the royal couple a lesson”. While I don’t agree that lawyers should be “teaching lessons” in this way, this had me wondering: do we have an opportunist here in Australia?

In early January 2020, a private individual filed a trade mark application for SUSSEX ROYAL in relation to clothing. Let us assume for a moment that this individual was not authorised to do so. While the individual probably assumed the Australian trade mark register was clear (it would have looked clear at the time of filing), what he did not know was that the (former) royal couple had (at the time) a pending International Application for the same mark covering clothing in Australia. Since the couple’s International Application was filed earlier in time, it would leap-frog the opportunist’s application and initially block it. In Australia, it is also important to remember that you need to have a good faith intention to use the mark before filing (otherwise your mark can be removed), and filing an application in bad faith is a ground of opposition. All of this is the timely lesson in pre-filing searching and the requirement for good faith! Interestingly, at the time of publication, the International Application for SUSSEX ROYAL filed by Harry and Meghan’s foundation has since been withdrawn. As a result, it will no longer be an obstacle to the Australian opportunist’s registration for SUSSEX ROYAL in relation to clothing. That

said, the applicant may still encounter an obstacle on the basis that it has applied to register a mark containing a misleading or deceptive connotation – i.e. that the applicant is affiliated with the royal family in some way when it is, in fact, not. Since this application has yet to be examined, or published for opposition, its fate remains to be seen. Finally, it is worth mentioning that another opportunist also filed an application for SUSSEX ROYAL in January 2020 (shortly after the one mentioned above) but covering perfumes and cosmetics instead. Interestingly, Harry and Meghan’s original application did not cover these goods, so it probably would not have been blocked at the examination stage by IP Australia on this basis, although it could still be blocked (and also opposed by Harry and Meghan) on grounds that it contains a misleading or deceptive connotation.

ADRIAN HUBER Special Counsel

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