眾律國際法律事務所

Lawyers stand a fiduciary relationship with his or her client. Therefore breach of lawyers’ fiduciary duty to a client may end up in civil proceedings against the lawyer. Depending on the nature of the breach, action may be brought up for compensation or damages; an order setting aside the transaction; or account of profits. Lawyer-client relationship dictates that lawyers must give undivided loyalty to their clients, “without being distracted by other interests including personal interest”.[1] The purpose of this is to prohibit lawyers engaging with their clients in circumstances involving a conflict of interest and duty. More importantly, what would constitute a breach of a lawyer’s fiduciary duty to the client is where the lawyer gains at the expense of the client or where the lawyer fails to disclose the lawyer’s personal interest in the transaction, in all, likelihood be professional misconduct.

In Law Society of NSW v Harvey (1976), confirmed that the basic elements of fiduciary duty that a lawyer owes to a client is to act in good faith. In this judgement, Street CJ summaries the following elements of what constitutes duty of good faith:

1. Full disclosure of lawyer’s interest;

2. Duty of a lawyer to the client is paramount when conflict situations arise, lawyer should advise client to receive independent advice or to withdraw the case. Such conflict of interest should be avoidable or ought to be avoided.

Such meaning extends to avoiding the appearance of conflict. In the case of Spector v Ageda[2], Megarry J’s Ratio decidendi are as follows:

"The solicitor must be remarkable indeed if he can feel assured of holding the scales evenly between himself and his client. Even if in fact he can and does, to demonstrate to conviction that he has done so  will usually be beyond possibility in a case where anything to the client’s detriment has occurred. Not only must his duty be discharged, but it must manifestly and undoubtedly be seen to have been discharged.”

This is especially the case where lawyers must not accept instructions to act for a person in any transaction or proceedings affecting or related to any legal or equitable right or interest in property or entitlement, or to act for a person engaged in such transaction or proceedings when lawyers consciously aware that the person’s interest in the transaction or proceedings is, or would be, in conflict with lawyer’s own interest or the interest of an associate.

The Australian Solicitors’ Conduct Rules extend the proscription to “associates” of the conflicted lawyer, the term “associate” are being defined in broad terms as follows:[3]

• a partnership or corporation for which the lawyer has a material beneficial interest;
• employee, agent, or partner of the lawyer or of the lawyer’s firm;
• member of the lawyer’s immediate family, this include spouse, child, grandchild, sibling, parent or grandparent of a lawyer;
• Director of the incorporated legal practice or a subsidiary of that practice.

Nevertheless, in some circumstances, clients may relax such conflict of interest to secure loyal service from their lawyers as long the client has given informed consent or authority to the lawyer acting, or continuing to act, in such matter involving a duty-interest conflict.

Street CJ in Law Society of New South Wales v Harvey:[4]

1.0 Introduction

When there are a large number of persons who all have the same interest, it is impractical and probably impossible for each to become an individual party to a proceeding and accordingly, a class action, known as representative proceeding (“RP”) may be a more practical option.[1] As a representative party, one party may, whether as a plaintiff or defendant, represent other persons who have the same interest when the class is too large for each person to be an individual party.

2.0 Representative Rule in Australia

Apart from the statutory class action regimes applicable in the Federal Court and in the Victorian Supreme Court, the rules of court in most Australian jurisdictions make provisions for representative actions themselves. In some cases, such representative action rules may be more appropriate than the statutory class action provisions. In some other cases, it may be more appropriate to rely on both the representative rule and the applicable class action statutory provisions. The representative action rule in the High Court is r 21.09 of the High Court Rules 2004 (Cth),[2] which is similar to the earlier English representative action rule and the representative actions rule in most other Australian jurisdictions.[3] The representative action rule in the Federal Court however is incorporated in O 6 r 13 of the Federal Court Rules[4] which operates concurrently with the provision of Pt IVA of the Federal Court of Australia Act 1976 (Cth).[5] The provisions of Pt IVA make it clear that, except as otherwise provided by such provisions, nothing in Pt IVA affects the commencement or continuance of any action of a representative character commenced otherwise than under pt IVA[6] or the court’s power under provisions other than Pt IVA[7] or the operation of any law relating to proceedings of a representative character.[8]

Since 1 July 1999, the Uniform Civil Procedure Rules (“UCPR”) have applied to all civil proceedings in the Supreme Court, District Court and Magistrates Courts of Queensland.[9] The Queensland representative procedure rule 75[10] operates at two levels: a jurisdictional level and a discretionary level. Before the representative action may be commenced, the parties represented must have the “same interest”. If such criterion is satisfied, there is jurisdiction to commence a proceeding as a RP. However, even if a proceeding is properly commenced as the RP, the court arguably under rule 62[11] can give discretion to include parties whose presence is necessary to enable an adjudication of all issues raised in the proceeding.[12]

In Minister for Industrial Development of Queensland v Taubenfeld,[13] Mackenzie J contrasted the position under r75[14] with the previous rules in the Supreme Court[15] that “when there were a numerous persons having the same interest in the subject matter of a proceeding…on a proper construction of UCPR 75 and 76,[16] I do not think that approval of the court for appointment of a representative defendant is now required.”[17] Standing alone would permit proceedings to be started and continued against one or more of the persons who have the same interest in the subject matter of the proceeding as all such persons who could have been parties to the proceeding. His Honour in Taubenfeld[18] submitted that the authority of court should still be obtained to sue the representative person however on a proper construction of UCPR r75 and 76,[19] the approval of the court for appointment of a representative defendant was not now required. This is because UCPR r75[20] follows the wording of s82 of the Supreme Court Act[21] for which does not refer to leave being required for having a representative defendant appointed. As His Honour proceeded to observe that if an issue is raised as to the appropriateness of having a representative defendant at all, or whether a particular person selected by an applicant to be a representative defendant is an appropriate person having regard to the relevant criteria, it would be convenient to resolve that issue at the earliest possible opportunity.[22]

It is often the case that representative proceedings (“RP”) are challenged by respondents, including on the ground that the threshold requirements are not satisfied amongst others. There are some criteria that the Queensland representative action rule would appear to be of limited utility in many instances particularly where the claims for relief include damages.[1] For the identity of interest, Queensland has not yet considered the UCPR requirement into its judicial consideration but may be receptive of a wide or narrow interpretation.  In r75 of the UCPR,[2] courts have tended to adopt a narrow interpretation of the ‘same interest’ requirement and often concluded that this precludes bringing representative claim for damages. Furthermore, other representative action rules often provide that the proceeding may be brought on behalf of ‘some or all’ of those with the same interest[3] whereas the Queensland rule does not expressly provide for a limited number of class numbers. In the past, various groups have made submissions advocating for establishing of a legislative regime in Queensland to correct some of the RP shortcomings.[4] There appears to be some perceived problems with the representative action procedure incorporated in court rules which led to various proposals in Australia for which a statutory class action regime that were said to be ‘bedeviled…by defeats and uncertainties’.[5] Concerns remain about lack of certainty for litigants when there is an absence of a clear framework for brining and management of RP in Queensland especially where there is a lack of protection of statute of limitations provisions; absence of consent of represented persons to the initiation of litigation given that judgment will be binding on all members of a represented class; the risk of an adverse costs order being borne solely by the representative of a represented class with the need to examine whether separate damages claims are likely to split the proceeding[6] It can be concluded that Queensland law and practice has failed to keep up with national and international developments. Procedural reform must be introduced to facilitate the representative procedure into Queensland courts.

3.0 Reform of the Queensland RP rule

There are obvious advantages of a structured, court-managed class action regime as contained in Part IVA Federal Court Act over the Queensland scheme in Chapter 3 Division 4 UCPR, namely, that it is:

• Cheaper for all parties;
• Fairer for defendant who has to defend one action rather than many;
• Fairer for the plaintiffs who can resolve common issues;
• Fairer for the community in that it benefits a broad range of people; and
• Have clear rules for all potential litigants to follow.

While it appears that the Queensland rules can be used for RP, the rules do not facilitate management of the RP by the court or make RP requirements or procedures clear for potential litigants and the public at large. The first requirement of an identical interest may be contrasted with other Australian jurisdictions for which the federal and Victorian court provisions do not require identify of interest but that the parties claims arise out of the interest which is similar or related circumstances that gives a greater scope for claims to be prosecuted within one representative action.[7] In addition, the Queensland courts have adopted a narrow construction of the ‘same interest’ requirement and have subsequently concluded that this precludes bringing representative claims for damages. One of the difficulties Queensland faced was when claimants come up with cause of actions arising under the common law, or based on State statutory provisions, is that the representative procedure in the Federal Court require there to be at least one federal cause of action. Attempts to join common law claims with a federal cause of action may be a recipe for disaster for both litigants and lawyers.[8] In relation to the Queensland floods in 2011 for example, there has been media and press coverage of a long foreshadowed class action against the State of Queensland claiming damages for the affected victims. Question arises as to whether a NSW resident who has suffered property loss in Queensland could lead a RP in the NSW Supreme Court under Part 10 of the Civil Procedure Act 2005 (NSW).[9] To raise such RP might be problematic as there is no federal cause of action available with any applicable class action procedure in Queensland.

Generally, the representative persons or entities not party to the RP will not be liable for costs for which the liability for costs will fall on to the representative parties,[1] despite such judgment cannot be enforced against those unnamed persons or entities except by leave of the court.[2]  The unnamed persons or entities in a RP do not need to consent to the institution of proceedings on their behalf.[3] A person may start a proceeding and represent all of the persons who have the same interest[4] and to bring such an action even when some of the representative parties knew nothing of the action.[5] Furthermore, a judgment in a RP must describe or at least to identify the class group members who will be affected by such RP. Unless the court order, the RP would bind all parties who have the same interest as a representative party[6] and to adopt Federal Court’s RP rule for which persons in such Federal Court proceedings have a freedom of choice to ‘opt out’ by not being one of the parties in the proceeding.[7]

Despite that, the Queensland jurisdiction has its inherent jurisdiction to award costs against non-parties, which being defined broadly in the UCPR (Qld) to include persons not party to proceedings by or to whom costs are payable.[8] In some jurisdictions, RP are governed by detailed legislative schemes, which govern how members of the class can ‘opt in’ or ‘opt out’, and to communicate in proceedings. Rule 76 of the UCPR (QLD)[9] however contains no such framework. In the case of Carnie,[10] it was argued that the absence of such a legislative scheme would lead the court to give a very narrow operation to such the case in Esanda.[11] Gleeson CJ mentioned that the absence of a detailed legislative prescription would need to deal with matters such as whether or not consent is required from group members, right of such members to opt out of the proceedings; the position of person under disability, alternations to the description of the group, settlement and discontinuance of the proceeding and to give various notices to group members.[12] In the United States, Federal Rule of Civil Procedure 23(a)(4)[13] imposes one of the conditions to commence a class action that all the representative parties will be fairly and adequately protect the interests of the class for which it is fundamental in the RP where all group members are bound by the outcome of litigation but are not before the Court to be able to protect their own interests that their representative will loyally advance their interest. This need for adequacy of representation has been recognised by High Court in Carnie.[14] Therefore in order to promote a fairer RP in Queensland, it should adopt its Federal Court’s ‘opt out’ system for which allows any persons who do not wish to be part of the proceeding or proceed further with their claims to ‘opt out’.[15] In addition such scheme must also be more clearly spells out the requirements for all parties by notifying represented persons and resolution of problems associated with intermingling of issues that would reduce some problems experienced federally.

4.0 Conclusion

Queensland law and practice has failed to keep up with national and international developments. Procedural reform should be introduced to facilitate class actions in Queensland courts, on behalf of Queensland persons and conducted by Queensland practitioners.

It is recommended that the UCPR be amended to introduce an active class action regime in Queensland, similar to the approach of the Federal Court of Australia that gives greater scope to the court to administer and manage a class action. Such a regime would give greater certainty to potential litigants in a class action as to the requirements for instituting, continuing and defending such proceedings.

How to protect a trademark from infringement in China? – Counterfeits

All counterfeits are infringements but that does not mean all infringements are counterfeits. There are general principles of interpretation with a view to deterring counterfeit activity. The Trademark Counterfeiting Act of 1984 for example, adopts the original Lanham Act definition of counterfeit that:

A “counterfeit” is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.[1]

Such “counterfeit” mark must be used on the same services or goods which are covered by IP right owner’s registration. Nevertheless, it is not necessary for the infringers to know IP right owner’s mark is being registered.[2] Intellectual property right owner frequently employ private investigators to detect alleged counterfeit goods. Defendant cannot bring up an excuse of willful blindness against the penalties of the counterfeit statute.[3]

The general rule attributed by the Supreme Court in the Ives case[4] indicates that:

“[L]iability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances. Thus, if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply to its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.”[5]

China for example, the purpose of recording IP rights at custom in China is to stop exporting and importing infringement product. The General Administration of Customs (GAC) is an administrative agency within the government of the People’s Republic of China. The China’s custom has the authority to protect IP rights by confiscating infringing goods and imposing fines on infringers. For circumstances that the infringement of IP rights exceeds a certain threshold, the custom authorities may impose criminal proceedings against the infringing party.

In China, IP rights can be recorded with GAC in Beijing. Although it is not compulsory to record IP rights with GAC in order to apply criminal proceedings against the infringing party, however it would be considered as extra protection. If your IP rights are registered with custom, the customer would have the power to detain any suspected infringing consignment of goods and be more pro-active to detain counterfeit goods as the recordal provides custom officials with easy access to internal IP databases to determine whether goods passing through customs are genuine or counterfeit.

Once you registered your IP with GAC, your rights can be enforced through two channels:

1. If you know an infringing shipment is going to pass through one of the Chinese ports, you can notify custom officials to seize the goods.

飛任˙ 顏特舒拉智慧財產權法律事務所 (VIERING, JENTSCHURA & PARTNER, VJP) 來訪本所，

共同探討歐洲統一專利制度、東協特殊專利程序制度、新加坡專利律師與台灣專利師相關制度、全球專利申請佈局 等議題。

VJP主要辦公室位於德國與新加坡，期待未來與本所建立穩定國際合作關係。

來訪人員為:

德國、匈牙利、歐洲、新加坡專利律師 暨 歐洲商標律師Adam Bogsch先生、新加坡專利代理人吳素玲小姐、台灣代表蔡欣苓小姐

意峰外國法事務律師事務所，義大利律師Marco Mazzeschi拜訪本所。

意峰在台北與米蘭皆有辦公室，係一高度國際化之律所，希與本所建立友好合作關係。

申請生物材料或利用生物材料之發明時，若生物材料為該發明不可或缺的部分，且所使用的生物材料並非該發明所屬技術領域中具有通常知識者容易取得者，依專利法第27條之規定，申請人最遲須於專利申請日將該生物材料寄存於專利專責機關指定之國內寄存機構，並且於專利申請日後四個月內檢送寄存證明文件。

國際上雖然存在有佈達佩斯條約(Budapest Treaty)，只要在該條約所承認具公信力之國際寄存機構(International Depository Authority，IDA)之一寄存生物材料，在締約會員國申請與該生物材料相關的專利時，則不須再寄存。但我國並非該條約的會員國，無法透過該條約的約束向國際寄存機構IDA申請分讓，以符合專利要件。因此不論專利申請人是否已在國際寄存機構IDA寄存生物材料，皆須依專利法第27條之規定，於國內指定的寄存機構寄存生物材料，以確保在專利核准後，任何人皆可以自由分讓該生物材料。

符合下述兩種情況的專利申請人，可不受最遲應於申請日在國內寄存機構寄存之限制；

1. 已在國際寄存機構IDA寄存生物材料的專利申請案：

申請人只須在專利申請日起四個月內，完成國內寄存並檢送國內寄存機構以及國外寄存機構出具的證明文件即可。

1. 依專利法第28條主張國際優先權者：

申請人只須在最早之國際優先權日之後的16個月內，完成國內寄存並檢送國內寄存機構以及國外寄存機構出具的證明文件即可。

關於生物材料的寄存，目前專利法中所稱的「專利專責機構指定之國內寄存機構」為「財團法人食品工業發展研究所」。雖然生物材料的寄存原則上沒有種類的限制，但在特定情況下，例如生物材料無法複製或無法長期保存時，寄存機構可以依生物材料寄存辦法第6條第4款「生物材料已有明顯的汙染，或依科學理由無法接受此生物材料之寄存。」為由，拒絕接受寄存。

寄存者依生物材料寄存辦法第2條備妥申請書、生物材料的基本資料、必要數量的生物材料以及規費(若有委託書或輸入許可證明，則須一併提供)，即可向寄存機構提出寄存申請。寄存機構確認申請資料無誤後，會先提供「收件通知」，並且展開「存活試驗」，若存活試驗的結果證明生物材料可存活，寄存機構會開具「寄存證明書」。

一般而言，受理寄存的生物材料會在寄存機構保存30年。對於生物材料寄存數目為6管之寄存案件，寄存機構為維持生物材料樣品的足夠庫存或為確保生物材料樣品的妥善保存，在完成存活試驗後，接著會進行生物材料的複製。複製完成後會將其中一管複製的生物材料以及「寄存生物材料確認書」一併寄交寄存者，並請寄存者確認所複製的生物材料是否與寄存的生物材料相同。

對於可公開分讓的生物材料，分讓申請人可依生物材料寄存辦法第14條，向寄存機構申請該生物材料的分讓，但分讓申請人對所取得的生物材料的使用僅限於研究或實驗目的，而不可將該生物材料提供給他人利用。寄存機構依分讓申請人之申請，除分讓該生物材料給分讓申請人之外，同時會透過「寄存生物材料提供分讓通知書」通知寄存者。然而，若分讓申請人未具備專業知識或處理該生物材料之環境，而有對環境、植物或人畜健康有危害或威脅之虞時，寄存機構可拒絕提供該生物材料之分讓。