IP Law Amendment Consultation
IP Australia is seeking public comments on draft legislation to amend the Patents Act 1990, Trade Marks Act 1995, Designs Act 2003, and the Plant Breeder's Rights Act 1994 to:
implement the Protocol amending the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Protocol), enabling Australian medicine producers to manufacture and export patented pharmaceuticals to countries experiencing health crises, under a compulsory licence from the Federal Court
extend the jurisdiction of the former Federal Magistrates Court, the Federal Circuit Court, to include plant breeder's rights matters
allow for a single trans-Tasman patent attorney regime and single patent application and examination processes for Australia and New Zealand, as part of the broader Single Economic Market (SEM) agenda
make minor administrative changes to the Patents, Trade Marks and Designs Acts to repeal unnecessary document retention provisions that are already adequately governed by the Archives Act 1983
make minor technical amendments to the Patents Act to correct oversights in the drafting of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which was passed by Parliament in March 2012.
Written submissions on the draft IP Laws Amendment Bill 2014 should be sent by 7th February 2014 to firstname.lastname@example.org.
No Springboard Relief for Historical Infringement
In Smith & Nephew Plc v Convatec Technologies Inc the judge considered whether springboard relief should be granted for infringing acts conducted in obtaining regulatory approval. In earlier proceedings Smith & Nephew sought and failed to invalidate Convatec’s patent for a method of producing silverised wound dressings. They subsequently developed a new process which they considered would not infringe Convatec’s patent and sought a declaration of non-infringement. Convatec counter-claimed for infringement.
In deciding whether Smith & Nephew’s process fell within Convatec’s patent the judge had to construe the meaning of the lower limit of the phrase “a concentration between 1% and 25%”. Convatec argued that after taking into account rounding the lower limit would be satisfied by concentrations of 0.5% and above. Smith & Nephew argued that at best the lower limit would be satisfied by concentrations of 0.95% and above. The Judge applied a ‘significant figures’ construction holding that the lower limit is satisfied by concentrations of 0.95% and above as it is stated to one significant figure. On this construction Smith & Nephews new process involving a concentration of 0.77% was held not to infringe Convatec’s patent.
However, various prior experiments by Smith & Nephew for the purpose of obtaining regulatory approval fell within the range and so were held to be infringing. Convatec argued that Smith & Nephew should be restrained from selling the resultant products for the period of time that it would have taken them to obtain regulatory approval if they had not so infringed.
The Judge held that preventing Smith & Nephew from selling non-infringing products would over-compensate Convatec. The Judge was satisfied that Smith & Nephew would have obtained regulatory approval by the date of this judgement even if they had not conducted infringing experiments. The Judge’s decision not to grant springboard relief to Convatec was also influenced by Smith & Nephew’s decision to stay off the market until being judged not to infringe.
3. Trade Marks
Local Common Use Trumps Geographical Significance
In Winemakers Federation of Australia v European Commission the Deputy Registrar had to determine whether common use in Australia of a grape variety name could prevent that name being registered as a geographical indication under the Wine Australia Corporation Act 1980.
The European Commission made an application under the Act on behalf of Italy for Prosecco to be listed in Australia as a geographical indication for Italy. The Winemakers Federation objected to the application on the basis that the term has been and continues to be used in Australia as the name of a variety of grapes. In particular objection was made under regulation 58(5) of the Wine Australia Corporation Regulations 1981, which states that:
(5) A person may object to the determination of a proposed item on the ground that the proposed item is used in Australia:
(a) as the common name of a type or style of wine; or
(b) as the name of a variety of grapes.
The Deputy Registrar held that the Winemakers Federation discharged their onus of establishing that the term has been used as the name of a variety of grapes prior to the European Commission’s application. The Deputy Registrar also noted that Prosecco is the only name that Australian wine producers are legally permitted to use for the relevant grape variety.
The Deputy Registrar rejected the European Commission’s argument that consumers would be confused by the use of the name as a grape variety as they understand Prosecco to have a geographical rather than varietal connotation.
The Deputy Registrar noted that, despite the finding under regulation 58(5), regulation 68 still gives the Deputy Registrar the discretion to recommend to the Geographical Indications Committee that the proposed term becomes a geographical indication. However, the Deputy Registrar refused to exercise this discretion mainly on account of the following factors:
the confusion worldwide as to whether Prosecco is a geographical indication, a grape variety or a style of wine;
that Prosecco has been available as a variety name for use by Australian producers since 1994 and is the only official name for that grape variety; and
that if Prosecco is registered as a geographical indication it would prevent producers from continuing to use Prosecco as the name of a grape variety, which is the kind of outcome the Act is designed to avoid.
OHIM Restricts Scope of Black & White Marks
The Office for Harmonisation in the Internal Market (OHIM) has announced a new common practice under which black and white marks will no longer be considered to cover the mark in all colours. Rather, it will only provide protection for the black and white form given. Black and white (or greyscale) marks will only be considered identical to a colour mark if the differences between the marks are so insignificant that they will go unnoticed by the average consumer. Such an insignificant difference requires that a reasonably observant consumer would only perceive the difference on a side by side examination of the marks.
This can raise non-use issues. However, a change in colour will not be considered to alter the distinctive character of a trade mark registered in black and white provided:
The word / figurative elements are the same and are the main distinctive elements
The contrast of shades is respected
The colour or combination of colours does not have distinctive character in itself
Colour is not one of the main contributors to the overall distinctiveness of the sign
The UK Patent Office, as a member of the OHIM, has followed suit and issued a tribunal practice note.