By Jesse Robitaille
Documents filed by the RCM in Australia’s federal court on Dec. 22 allege the RAM used a patented printing method relating to how the latter mint printed red poppies on its commemorative Remembrance Day coins. The RCM is now demanding 500,000 $2 coins struck by the RAM – with a total value of $2 million – be turned over or destroyed. The RCM is also requesting the RAM be restrained from further patent infringement or from “making, selling, supplying or otherwise disposing of, using or keeping the infringing coins.” They also want Australian officials to admit their wrongdoing and turn over or destroy all promotional materials related to the infringing coins. Lastly, the RCM is demanding the RAM surrender its profits from the infringement or pay damages.
“The Royal Canadian Mint has launched legal proceedings against the RAM for infringement of the Mint’s patent in Australia when RAM produced a colour printed version of the Australian $2 coin with a red poppy without first having obtained our consent to do so,” RCM media relations manager Alex Reeves told CCN.
“Despite the Mint’s ongoing efforts to resolve the matter since 2015, it has become necessary for us to institute infringement proceedings to protect and preserve our intellectual property rights.”
Reeves added the RCM “distinguishes itself in the global marketplace with its cutting-edge coin technologies.”
“As a Crown corporation mandated to operate in anticipation of profit, our technologies are vital to maintaining our competitive standing, and the Mint undertakes all steps necessary to protect its intellectual property rights.”
In addition to its domestic business, the RCM also seeks contracts in other countries. The RCM’s 2016 annual financial report states its foreign circulation business climbed 33 per cent over 2015 with $63.1 million in revenue.
According to the court documents, the RCM “is and has at all material times been the registered proprietor of Australian Patent number 2006201461 titled ‘Method of printing an image on a metallic surface, particularly on a coin surface.’”
The RCM applied for the patent in 2006, and the complete specification of the patent was published and became open to public inspection the following year. Finally, the patent was granted in July 2013.
The court documents claim from a date unknown to the RCM but before Oct. 26, 2012, the RAM “made, sold, or otherwise disposed of, used or kept coins which were printed with coloured ink by forming a plurality of macropores of about 0.1 to about 0.5 mm across in a designed pattern on a portion of the metal surface, forming a plurality of micropores within the macropores, cleaning the surface, applying the ink and drying the ink.”
On Oct. 26, 2012, the RAM issued a press release referring to Australia’s first commemorative circulating coins, which were described as a special colour printed version of the $2 coin with a red poppy. The RAM struck 500,000 $2 coins bearing the image of a red poppy in 2012.
Reeves said a “physical examination of the Australian $2 coin triggered efforts to resolve the matter through discussion back in 2015.”
While the RCM is a Canadian Crown corporation allowed to sue other parties with its corporate name, the Royal Australian Mint is “an emanation” of the Australian government, so the respondent in the case is the Commonwealth of Australia.
In December 2015, RCM CTO Xianyao Li sent a letter to Dr. Prabir De, international business development director of the RAM, to inform the RAM its conduct had infringed on the RCM’s patent. A year later, the RCM sent another letter, this from Michael Groves, to RAM CEO Ross MacDiarmid.
In response, Australian officials claimed the RAM’s methods were “sufficiently different to have not infringed.”
According to the court documents, the RCM “has suffered, and will continue to suffer, loss and damage” as a result of the infringement. What’s more, the documents claim the RAM has “made profits by reason of its acts pleaded above.”
Reeves said the case has “nothing to do with the design and strictly concerns the process by which colour was applied to the coin, regardless of what artwork was chosen.”
An initial hearing with an Australian federal court judge was scheduled for Feb. 7.