Court documents allege the Royal Australian Mint used without permission a printing method patented by the Canadian mint

OTTAWA — The Royal Canadian Mint is suing its Australian counterpart over the way it prints red poppies on its commemorative Remembrance Day coins.

Documents filed in Australia’s Federal Court in December allege The Royal Australian Mint used without permission a printing method patented by the Canadian mint — which is now demanding that Australia’s 500,000 commemorative $2 coins, in circulation since 2012, either be turned over to them or “destroy(ed) under supervision.”

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“ It has become necessary for us to institute infringement proceedings to protect and preserve our intellectual property rights,” Canadian mint spokesman Alex Reeves said in a statement to the National Post Wednesday.

“ The Mint 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.”

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After fuming for several years over the alleged infringements, officials decided to hire lawyers Down Under. The court filings are dated Dec. 22, 2017. While the Royal Canadian Mint is a Crown corporation allowed to sue other parties with its corporate name, the Royal Australian Mint is part of the Australian government — so the respondent in the case is in fact the Commonwealth of Australia.

According to a statement to court outlining steps taken to try resolving the dispute, the Royal Canadian Mint first contacted its Australian counterpart two years earlier to notify them of the existence of a patent on printing technology. The Australians had replied that they felt their methods were “sufficiently different to have not infringed.”

Photo by Coin image©2015 Royal Canadian Mint - All Rights Reserved

Over the next two years the parties tried discussing the matter with a meeting, several phone calls and several letters, but there was no resolution to the dispute.

The statement of claim clarifies that the Canadian mint first applied for a patent on a “method of printing an image on a metallic surface, particularly on a coin surface” in 2006. The patent was open for public inspection from 2007 and granted in 2013.

The applicants say they are aware of “infringing” Australian coins printed with coloured ink “by forming a plurality of macropores of about 0.1 to about 0.5 mm across in a designated 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.”

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Asked how the Canadian mint is sure that the same printing method was used, Reeves said, “There was an examination. I can’t really add anything else at this time.”

Not only does the Canadian mint want to retrieve or see destroyed $2 million worth of Australian coins, they are asking that the Australian mint be permanently restrained from infringing the patent and from “making, selling, supplying or otherwise disposing of, using or keeping the infringing coins” without licence or authority. They also want the Australians to admit they infringed the patent, to hand over or destroy all advertising and promotional materials related to the Australian coins, and to either surrender profits or pay damages.

“ The applicant has suffered, and will continue to suffer, loss and damage by reason of the acts of the respondent pleaded above,” the statement of claim reads. “ Further, or alternatively, the respondent has made profits by reason of its acts pleaded above.”

If the court ruled in the Canadian mint’s favour, this would appear to mean no small change in the way the Australian mint operates. A quick scan of its website shows a variety of coins have been printed with colour since 2012.

The Canadian mint would not comment on whether it may seek further damages from the production of other colourful coins. “The court documents define the scope of our claim. We can’t say anything else while the matter is before the courts,” Reeves said.

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The case could have implications beyond the use of Canadian and Australian coins within their markets. Both businesses are competitive commercial operations that seek contracts in other countries. A 2016 annual report from the Canadian mint states its foreign circulation business had risen 33 per cent over 2015, with revenue of $63.1 million.

A first case management hearing with an Australian federal court judge is scheduled for Feb. 7. A representative of the Royal Australian Mint did not respond to requests for comment.

This Remembrance Day-related spat between First World War allies is not the only recent flare-up in the Canada-Australia relationship.

Earlier this week Australia filed complaints with the World Trade Organization, saying Canada and its provinces discriminate against imported wine. And in November, Australia’s politicians and officials lambasted Canada after Prime Minister Justin Trudeau decided not to attend a leaders’ meeting on the Trans-Pacific Partnership. In a conversation with Australian press, one official accused Trudeau of “sabotage.”