February 2018

1. Patents

New Zealand

Assistant Commissioner Questions Workability of Acceptance Timeframe
In 2018 NZIPOPAT 2 Biocon Ltd the Assistant Commissioner confirmed a number of aspects in which the Patents Act 2013 differs from the Patents Act 1953.

After restoring its voided application, the applicant provided a response close to the new deadline along with a declaration by an independent expert, to which IPONZ issued a final examination report on the last day by which the application had to be in order for acceptance. The final examination report upheld a lack of support objection to an earlier amendment and on the same day the applicant requested a hearing.

The amended claim 1 makes general reference to ‘an emulsifier’. However, in the specification as originally filed, the only references to an emulsifier are repeated references to the particular emulsifier polysorbate-20, along with one reference to polysorbate. Consequently, the examiner objected that the amended claim was not supported by the application as originally filed. The applicant argued that the identification of a particular emulsifier is not part of the invention and pointed to the independent expert’s evidence stating that a person skilled in the art would recognise that polysorbate-20 can readily be replaced by other non-ionic emulsifiers. Such substitution would be a matter of running some reasonably straightforward bench tests which would not be onerous.

While conceding that the applicant is allowed to claim variants that have the properties or uses ascribed to them by the applicant in the description, the Assistant Commissioner noted that the reference in claim 1 to an emulsifier is still wider than non-ionic emulsifiers, and so upheld the lack of support objection.

In its submissions the applicant requested that in the event of the objection being upheld that it be allowed to make narrowing amendments. However, the Assistant Commissioner noted that the strict timeframe under section 71 for putting an application in order for acceptance has already expired. This was contrasted with the equivalent Australian provisions, which allows a further 3-months from the date of an examination hearing to bring the application in order for acceptance. The UK has a closer but still distinguishable system which attempts to resolve hearings within the prescribed time limit, although hearings held after the end of the period can only decide whether or not the application was in order at the end of the period.

While noting that the IPONZ Practice Manual clearly states that the Commissioner has no discretion in such respect, the Assistant Commissioner allowed a period of time for making amendments. In particular, the Assistant Commissioner considered that practitioners might not have fully appreciated the radical change from the practice under the Patents Act 1953 and that IPONZ had not compensated for the change by adopting a practice of urgent examination hearings. The Assistant Commissioner also recommended that regulation 80 should be amended to be along the lines of the Australian approach.

2. Designs

Europe

Convergence Project for Assessing Disclosure of Designs on the Internet
In March 2018 the EUIPO launches a new European convergence project regarding the criteria for assessing disclosure of designs on the internet. https://www.tmdn.org/network/graphical-representations
Unlike many jurisdictions Europe does not have absolute novelty, instead designs are protected as long as no identical design or no design producing the same overall impression on the informed user has already been made available to the circles specialised in the sector concerned. However, neither EU law nor national laws specifically address the disclosure of designs on the internet, and there are differing practices on what constitutes disclosure of designs on the internet.

The project aims to identify the relevant criteria and establish a common practice for assessing prior art disclosed on the internet, and in particular will cover the following issues:

• types of evidence acceptable for presenting information obtained from the internet (e.g. printouts from web pages, URL addresses);
• submission requirements and recommendations for evidence of prior art obtained from the internet (e.g. visibility of date, web address);
• relevant factors for assessing effective disclosure via the internet to the circles specialised in the sector concerned (e.g. searchability of a web page, targeted audience, period of time during which information was accessible);
• means of establishing the relevant date of disclosure (e.g. indexing of web pages, internet archiving services);
• specific aspects related to prior art disclosed in social media or on websites (e.g. access to account, indicators of popularity, purpose of account).

The project is expected to result in the publication of a common practice by mid-2020.

3. Trade Marks

Europe

Criteria for Assessing Distinctiveness of Coloured Shape Marks Considered
In preliminary ruling Christian Louboutin v Van Haren Schoenen BV an Advocate General of The Hague has ruled on the criteria by which three-dimensional marks combining colour and shape can be ruled invalid.

Following an earlier opinion regarding Louboutin’s red sole shoe mark and later reassignment of the case before a greater number of Judges, the Advocate General was asked for a preliminary ruling on provisions of Directive 2008/95, which approximates the laws of member states of the European Union relating to trade marks. Article 3 of Directive 2008/95 covers grounds for refusal or invalidity of trade marks, and paragraphs (1)(b) and (1)(e)(iii) relevantly provide that:

‘1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) trade marks which are devoid of any distinctive character;
…
(e) signs which consist exclusively of:
...
(iii) the shape which gives substantial value to the goods;
…’

The Advocate General classified Louboutin’s red sole shoe mark to be a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than being a colour mark per se.

Van Haren and other interested parties submitted that Article 3(1)(e)(iii) prevents the misuse of trade marks which may lead to the creation of anticompetitive monopolies. Louboutin and an interested party submitted that a limit on that rational applies in respect of aesthetic characteristics sought and valued by the public in line with fashion trends. Unlike Articles 3(1)(e)(i) (shape resulting from the nature of the goods themselves) and (ii) (shape necessary to obtain a technical result), the assessment of Article 3(1)(e)(iii) can relate to characteristics that are dependent upon external factors such as the perceptions of the public. By contrast Articles 3(1)(e)(i) and (ii) relate to characteristics which have been pre-determined with lasting effect and which are unaltered by the publics perception.

While sympathetic to Louboutin’s submission, the Advocate General held that it does not prevent Article 3(1)(e)(iii) from applying in the case of a sign consisting of the shape of the goods and which seeks protection for a certain colour. In accommodating Louboutin’s submission, the Advocate General held that the assessment of Article 3(1)(e)(iii) must exclude the characteristics linked to the reputation of the trade mark or its proprietor, in order to prevent the appeal created by that reputation being attributed to a shape which, taken on its own, would not be attractive.

Regarding the assessment of distinctive character of a sign which is inseparable from the appearance of the goods in question, the Advocate General held that it is necessary to assess whether registration would be prejudicial to the general interest in the unrestricted availability of the characteristics represented by that sign for other operators. However, unlike Article 3(1)(e)(iii), such assessment needs to be subject to distinctiveness acquired through use before the date of application.

New Zealand

Judge Holds that Assessment of Ownership can be Affected by Events Subsequent to Filing Date
In SC Johnson & Son Ltd v International Consolidated Business Pty Ltd the High Court Judge quashed an Assistant Commissioner’s decision and ordered a rehearing before the Assistant Commissioner on the issue of ownership.

As earlier reported the Assistant Commissioner held that Johnson’s application for ZIPLOC could not proceed to registration as International Consolidated were the owner of the mark on the application date. The revocation of International Consolidated’s mark with effect from just 3-days after Johnson’s application date was held to not change that determination. Section 68(2)(b) of the Trade Marks Act 2002 allows marks to be revoked with effect from earlier than the date of the revocation application. Johnson requested revocation from either the date of application to revoke or the earliest date that the Commissioner found the mark vulnerable for removal on the ground of non-use. However, the Assistant Commissioner only revoked from the date of application to revoke, citing precedent that puts the onus on the applicant for earlier revocation to request revocation back-dated to a specific date.

In the appeal Johnson argued that the possibility of having two ZIPLOC trade marks registered to different proprietors at the same time only arises on account of the legal fiction of the deemed date of registration being the date of application. It argued that any prohibition on that possibility needed to take into account intervening events between the date of application and the actual date of registration. Such intervening events were taken into account by the Assistant Commissioner in rejecting International Consolidated’s relative grounds opposition under section 25(1)(a). On that point the Assistant Commissioner held that the revocation of International Consolidated’s mark just 3-days later qualified as a special circumstance under section 26(b), thereby overriding any determination under section 25(1)(a). However, the Assistant Commissioner held that the finding on ownership trumped any finding in relation to section 25(1)(a), since the former is concerned with proprietary rights while the latter is only aimed at preventing likely deception or confusion.

The Judge agreed with the Assistant Commissioner’s exercise of discretion under section 26(b) to reject the section 25(1)(a) opposition. However, the Judge disagreed with the Assistant Commissioner’s determination that this was trumped by the ownership finding. The Judge noted that the defining of the deemed date of registration does not also identify at what date ownership is assessed, and nor is this specified elsewhere in the Act. Rather, in practice, decision makers assess whether the applicant can claim to be the owner at the date the application was made. Even a bona fide claim to ownership can be challenged on the grounds that another person is the true owner, but any such determination by New Zealand authorities has been made as of the date of application for registration. The Judge held that the strict application of that principle produces anomalies that run counter to the scheme of the Act, which is to determine and register the true owner of a trade mark. The Judge considered that such anomalies can be resolved by making the determination of ownership at the date of application subject to the discretion available under section 26(b), thereby allowing subsequent events to be appropriately considered and actioned. Likewise, while it is desirable that applicants for revocation should specifically plead an earlier date, it is not mandatory, and the Commissioner has residual discretion under section 68(2)(b) to extend the date where appropriate. Consequently, given the notionally overlapping dates, the Judge held that the appropriate date for addressing both ownership and revocation should be the date of Johnson’s application. The Judge referred the proceedings back to the Assistant Commissioner to determine ownership on that basis and taking into account evidence of legitimate and genuine prior use as well as proposed or intended use.