Hood v Down Under Enterprises International Pty Ltd

In Hood v Down Under Enterprises International Pty Ltd, the appellant, Mr Hood, challenged the primary judge’s determination that essential oil derived from the shrub Kunzea ambigua was not a staple commercial product within the meaning of s 117(2)(b) of the Patents Act 1990 (Cth). Mr Hood argued that the primary judge erred in his conclusion that the oil was a staple commercial product. This was part of a broader appeal regarding the validity of certain patent claims, the determination of infringement, and compliance with the Australian Consumer Law. Down Under Enterprises and New Directions filed a cross-appeal, challenging the primary judge’s conclusions on inventive step and additional damages. The central legal issues in this appeal revolved around the classification of the oil as a staple commercial product, the validity of the patent claims, the inventive step of the claims, the infringement of the patent, and the alleged contravention of the Australian Consumer Law.

The Federal Court of Australia found that the primary judge did not err in concluding that the oil derived from Kunzea ambigua was a staple commercial product. The Court noted that the primary judge had considered and appropriately weighed the evidence and arguments presented by both parties. The Court also found no error in the primary judge’s conclusion that the patent claims did not lack an inventive step, nor in the dismissal of claims for additional damages. However, the Court held that the primary judge erred in concluding that Down Under Enterprises contravened the Australian Consumer Law by falsely representing that the oil was registered or listed on the Australian Register of Therapeutic Goods. The Court found that while the website in question did convey this misleading information, it was not owned or maintained by Down Under Enterprises, and therefore, the respondent could not be held liable for the misleading conduct.

The Court upheld the primary judge's costs order, which required each respondent to pay a fixed portion of Mr Hood’s costs of the cross-claims. The Court found no error in the primary judge’s decision on costs. Therefore, the appeal was dismissed, the cross-appeal was dismissed, and the costs orders as determined by the primary judge were upheld. If either party sought a variation of the costs orders, they could file and serve written submissions and any supporting affidavits within a specified timeframe, after which the issue of costs would be determined on the papers.