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New Zealand Patent Law Update

18/11/2015

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The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 seeks to amend the current legislation to remove unity of invention as a ground of pre-grant opposition and re-examination.

It is anticipated that any changes made by the Bill will not have retrospective effect.

“Clause 4 amends section 92 of the Act to remove the right to oppose a grant of patent on the ground that the claim or claims relate to more than 1 invention, and to bring the law back to the position under the Patents Act 1953.”

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Certification Trade Marks

8/11/2015

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Certification Trade Marks allow the registered owner to certify that goods and services of other parties meet certain standards.  A certification trade mark might indicate that a product:

        (i)     is of a particular quality
        (ii)    has been manufactured in a particular location or by using a particular process
        (iii)   is made from particular materials or ingredients
        (iv)   is suited to a particular task.

The use of a certification trade mark by an authorised user may provide a market advantage.

To obtain a certification trade mark the trade applicant must first submit a set rules  to the ACCC.  The set of rules must specify requirements governing the use of the certification trade mark.  The ACCC will provide an initial assessment and a final assessment of the rules.

A number of registered certification trade marks are detailed below.

TM: 185836
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The Woolmark Company Pty Ltd

All goods in class 24
TM: 451318
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Australian Made Campaign Ltd

Numerous Classes
Some further information is available on: https://www.accc.gov.au/business/applying-for-exemptions/certification-trade-marks
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Shape Trade Marks

4/11/2015

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A shape trade mark allows owners to protect their brand recognition in connection with the shape of a product. For a shape to be registered as a trade mark it must be capable of distinguishing the goods or services of the owner from the goods and services of other traders.

A shape trade mark may comprise the shape of a product or an aspect of packaging.  The shape must be capable of distinguishing the owner's goods or services from those of other traders. 

A shape trade mark may acquire distinctiveness through use a prior to filing of an application.  In order to support a shape trade mark application that has acquired distinctiveness, evidence of the acquired distinctiveness is able to be filed at the Trade Mark Office.

The triangular shape of “Toblerone” chocolate was accepted as a shape trade mark. It was seen that the shape qualified as an “added feature” rather than a functional feature.

Kraft Foods' Toblerone
Registration Number: 706788
​Class 30

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Notably the Kit Kat confectionery shape was refused registration.  This was because the evidence did not demonstrate that the shape itself had acquired distinctiveness.

Nestlé's Kit Kat
Application Number: 822779
​
Class 30


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​Several parties opposed the Kit Kat application on the basis that the Kit Kat trade mark was solely a functional shape, merely being two bars joined together by a thin base.  It was contended that the mark could not operate as a trade mark.


The examiner concluded that the evidence garnered high recognition as a functional shape rather than a shape that has  acquired a capacity to distinguish. 


On the other hand,
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Patentability of Human Genes- D'Arcy v Myriad Genetics Inc & Anor

15/10/2015

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​On 7 October 2015, in D'Arcy v Myriad Genetics Inc & Anor [2015] HCA 35, the High Court of Australia held that an isolated nucleic acid, coding for a BRCA1 protein, was not a “patentable invention” within the meaning of the Australian Patents Act 1990 (“The Patents Act”). 

The Patents Act requires that, for an invention to be patentable, it must be a 'manner of manufacture’. The patent was challenged on the ground that the subject matter involved merely isolating naturally occurring nucleic acids.

The High Court held that an isolated nucleic acid is not a 'manner of manufacture’. In addition, it was considered that to attribute patentability to mere isolation would involve an improper extension of the concept of a 'manner of manufacture’. The patent was invalidated on this basis.

Any granted patents that include claims directed specifically to isolated nucleic acid sequences will be subject to review in the light of this decision. Mere isolation will likely be insufficient.

IP Australia has suspended examination of patent applications claiming nucleic acid sequences and will issue a formal response shortly.
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Innovation Patent System – Consultation Paper

11/10/2015

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IP Australia has released a consultation paper suggesting that the innovation patent system in Australia is not effectively stimulating innovation among Australian small to medium enterprises (SMEs).
 
When the innovation patent system was introduced in 2001, the government stated that its purpose was to stimulate innovation in SMEs by providing Australian businesses with industrial property rights for their lower level inventions.
 
The primary concern raised by the report is the system’s alleged failure to achieve its main objective of stimulating innovation of SMEs in Australia.  A number of other concerns have also been raised, such as, the granting of unexamined rights and the level of innovation necessary for an innovative step. 
 
In addition, the report suggest that the system is used in ways for which it was not originally intended, predominantly, when obtained by individuals and SMEs that have a limited understanding of its uses. At the same time, the system has been used by an overwhelming number of inventors and SMEs that have reportedly obtained an economic benefit from the system.  Those users have indicated their satisfaction with the innovation patent system.
 
The report notes that the concerns do not imply the system’s complete failure. Therefore, there seems to be no clear justification behind the removal of the innovation patent system. Moreover, it has largely been argued that the concerns about the system can be addressed without its abolition.
 
It is feared that the abolition of the system will have a negative impact on local Australian applicants, being the vast majority of its users. One of the important functions of the system is providing a necessary litigation tool in the patent system.  This function was apparently not taken into consideration. Overall, there are concerns that the proposal to abolish the system will have a significant detrimental effect on the ability of SMEs to protect their innovations.
 
http://www.ipaustralia.gov.au/about-us/public-consultations/Consultation-on-the-ACIP-recommendation-on-the-innovation-patent-system/

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Patent License Termination

19/1/2015

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The Full Bench of the Federal Court has recently considered Section 145 of the Patents Act. 

Section 145 reads as follows:
Termination of contract after patent ceases to be in force

             (1)  A contract relating to the lease of, or a licence to exploit, a patented invention may be terminated by either party, on giving 3 months' notice in writing to the other party, at any time after the patent, or all the patents, by which the invention was protected at the time the contract was made, have ceased to be in force.

             (2)  Subsection (1) applies despite anything to the contrary in that contract or in any other contract.
Regency Media Pty Ltd had entered into an agreement to license several patents from MPEG LA LLC (‘MPEG’).  Regency Media Pty Ltd contended that Section 145 of the Patents Act allowed them to terminate the agreement when one of the patents lapsed.  In the appeal the Court held that Section 145 did not allow the agreement to be terminated.

In arriving at the decision the Court considered the commercial reality of licensing multiple patents and the intention of section 145.  The Court also considered the unfairness in relation to the case at hand.  Notably, nowhere in the agreement were the inventions referred to separately. Rather reference was made to the ‘MPEG-2 Decoding Products’, the ‘MPEG-2 Encoding Products’, and the ‘MPEG-2 Packaged Medium’.   Various interpretations were applied to the wording of Section 145.

The case serves as a warning when preparing and entering into patent licensing agreements.

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Coca-Cola’s Trade Marked Bottle

15/1/2015

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Coca-Cola commenced legal action against PepsiCo Australia Holdings Ltd (‘PepsiCo Australia’) and Schweppes Australia Pty Ltd (‘Schweppes’) (‘The Respondents’) in Federal Court.

The case concerned Pepsi’s ‘Carolina Bottle’ in comparison to Coca-Cola’s ‘Contour Bottle’ as shown below.
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Coca-Cola's 'Contoured Bottle' was the subject of a number of registered trade marks:
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It was alleged that Pepsi were using Coca-Cola's trade marks. 

Both Pepsi and Coca-Cola’s bottle’s origins were discussed in view of the history of the bottles and the design. It was seen that the waist of the Coca-Cola registration would not be not more prominent than the other features of the trade mark in the eyes of an ordinary consumer. It was noted that ‘Carolina bottle’ had no fluting and a belt band in the middle.  The horizontal waves of the Pepsi’s bottle were seen to be distinguishing features.

More particularly, with respect to the fluted trade marks Justice Besanko held:

  1. The outline or silhouette is not the essential feature.

  2. There is no reason to give any feature prominence over the other features. It cannot be said, for example, that a bottle with a waist is so extraordinary, or a bottle with vertical flutes and a clear belt band so common, that the outline or silhouette should be considered the essential feature.

With respect to the silhouetted trade marks, it was held that

  1. The outline or silhouette of the Carolina Bottle was not deceptively similar.

The case highlights the importance of considering the overall scope of a trade mark in view of its distinctive features.  The case also highlights the importance of obtaining legal advice.

http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCA/2014/1287.html?stem=0&synonyms=0&query=pepsi
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Software - Financial Schemes

11/1/2015

0 Comments

 
The Full Federal Court has held that a financial scheme was not fit subject matter for a patent.  The patent claim concerned:

A computer-implemented method for generating an index, the method including steps of:

(a) accessing data relating to a plurality of assets;

(b) processing the data thereby to identify a selection of the assets for inclusion in the index based on an objective measure of scale other than share price, market capitalization and any combination thereof;

(c) accessing a weighting function configured to weight the selected assets;

(d) applying the weighting function, thereby to assign to each of the selected assets a respective weighting, wherein the weighting:
    (i) is based on an objective measure of scale other than share price, market capitalization and any combination thereof; and
   (ii) is not based on market capitalization weighting, equal weighting, share price weighting and any combination thereof;

thereby to generate the index.
Among other things, it was found that:
  1. The approach to be taken to deciding whether a claimed method or product is properly the subject of letters patent must be flexible and must allow for new technologies presently unknown. The principles should be applied irrespective of the area of human endeavour and invention under consideration. 

    However, that is not to say that any and every claimed method or process is properly the subject of a patent. Examples of exceptions have been identified, such as abstract ideas and mere schemes. There is no formula to be mechanically applied. It is a question of understanding what has been the work of, the output of, and the result of, human ingenuity, and to apply the principles that have been developed and explained so well in 
    NRDC.

  2. In the context of the claim, the significance lies in the content of the data rather than any specific effect generated by the computer..., in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention.
http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCAFC/2014/150.html?stem=0&synonyms=0&query=2005213293
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High Court Allows Foreign Marks

11/1/2015

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The High Court has overturned the The Full Court's finding in  Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110. 

Among other things it was held that: 'The evidence led by Modena to show that some traders in Australia used the expression "five star" on packaging of coffee and many traders used "five star" in respect of a range of services including restaurant and accommodation services also fell well short of proving that "cinque stelle" is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.

The court found that the question concerns '
the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods'.  "ORO" and "CINQUE STELLE" were not shown to 'convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods, as to be words having a direct reference to the character or quality of the goods'.

The full decision is available on http://www.austlii.edu.au/au/cases/cth/HCA/2014/48.html 
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The Use of Foreign Words in Trade Marks

3/12/2013

2 Comments

 
The Full Court in  Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 upheld an appeal against the Federal court’s decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8.  The Full court ordered that two trade marks consisting of words having a foreign meaning be cancelled.  

The first mark ‘ORO’ had a descriptive meaning of “gold” in Italian.  The mark was cancelled on the basis that there was high likelihood of traders thinking of, and wanting to use the word on their labelling.  An important consideration was how the marks were used in conjunction with other words to describe the quality of the goods.  The second mark ‘CINQUE STELLE’ had a meaning of “five stars” in Italian/Latin.  Even though the expression is not a commonly understood phrase, as it is combination of Cinque (Latin for ‘five’) and Stella (Italian for ‘star’), it was seen that traders and consumers would understand a meaning. Given that high quality coffee beans mostly originate from Italy, it was seen that the phrase CINQUE STELLE would call to mind an attachment to coffee.  The Court stated that monopolising the use of the words was not allowable. 

The case demonstrates the need to carefully consider the use of foreign words in Australian trade mark applications.

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    BSc(Hons) BE(Hons) FIPTA(Patent Attorney)

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