2023 Issue 3
1. Patents
Assistant Commissioner Allows Patent Applicant to Keep on Trucking
In Mechanical System Dynamics Pty Ltd 2023 NZIPOPAT 10 the Assistant Commissioner withdrew the examiner’s obviousness objections after finding that the alleged invention is not obvious in relation to the cited prior art and that the examiner had provided no basis for arriving at the invention by mosaicking the prior art.
Mechanical System’s patent application concerns specific configurations for multi-articulated goods-carrying road vehicles that it contends result in improved low speed turning while also having good high speed dynamic stability and manoeuvrability. More particularly, using this example configuration for reference, it concerns heavy goods transportation vehicles comprising of a prime mover (612) at the front followed by two semi-trailer bodies (614 & 618) and having a combined length of around 20 – 26 metres and a gross combined weight of 48 – 65 tonnes. The second semi-trailer body has a dolly (620) mounted beneath its front where the dolly frame (640) is pivotably connected to the above semi-trailer body as well as connected to the rear of the first semi-trailer by a drawbar assembly (642). The first semi-trailer is connected directly to the prime mover by a quick release fifth wheel coupling (632) and is supported at the rear by only a first single axle set (626), while the combined dolly and second semi-trailer is supported by an arrangement of exactly three axles.
Mechanical System’s patent application entered New Zealand via PCT national phase. The PCT International Preliminary Report on Patentability (IPRP) cited four pieces of prior art and found the application to be novel but lacking in inventive step on the basis that the skilled addressee would combine / mosaic two of those pieces of prior art (D1 and D2). D1 is a prior PCT application by Mechanical System and both the IPRP and the examiner assert that the disclosure therein only differs from D1 in that it does not disclose that the rear of the first semi-trailer is supported by only a first single axle set. This difference was said to be obvious and D2 was asserted to be a qualifying example of a first semi-trailer supported by only a first single axle set. By the second examination report the examiner dropped the obviousness objection in relation to a mosaicking of D1 and D2 on the basis that D2 did not disclose a combination vehicle containing two semi-trailers. However, the examiner now cited two further pieces of prior art (D5 and D6) and sought to establish obviousness by mosaicking D1 and D5 or D1 and D6.
The Assistant Commissioner (AC) noted that the examiner’s obviousness analysis did not expressly apply the standard (Windsurfing/ Pozzoli) test for obviousness as given in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37 at [23], which is a restatement of the test from Windsurfing International Inc v Tabur Marine (GB) Ltd [1985] RPC 59 (CA).
Given the regulatory compliance involved the AC considered the person skilled in the art would at least be a heavy transport certifying engineer and/ or a design engineer experienced in heavy road vehicle design / engineering and conversant with heavy vehicle design rules, standards, transportation legislation including relevant acts and regulations, vehicle configurations, and roadworthiness guidelines.
Regarding the differences between the prior art and the claimed invention the AC agreed with Mechanical System’s contention that another difference with D1 is that the towing vehicle is a rigid truck rather than a prime mover. Namely, the cargo area and platform behind the driver’s cab is rigidly connected to the cab and not connected directly to the prime mover by a quick release fifth wheel coupling. The AC also pointed to another difference being that the first semi-trailer / cargo platform in D1 is supported by 3 axles rather than only one. The AC concluded that D1 teaches away from modifying the number of axles on the semi-trailer in order to provide good low speed turning characteristics as well as good high speed dynamic stability and manoeuvrability. The AC then proceeded to individually distinguish the other 5 pieces of prior art from the claimed invention.
Given the differences found in respect of D1 the AC concluded that there was no basis for establishing obviousness by way of mosaicking D1 and D5 or D1 and D6. In particular, it was held that there is no teaching in any of the cited prior art that altering heavy vehicle trailers in the manner contended by the examiner would have resulted in the combination vehicle having good low speed turning characteristics as well as good high speed dynamic stability and manoeuvrability.
2. Trade Marks
a2 Milk Company's Trade Mark Opposition Rejected
In Milk New Zealand Dairy Limited v The a2 Milk Company Limited 2023 NZIPOTM 27 the Assistant Commissioner rejected the opposition by the a2 Milk Company (a2MC) against an accepted application by Milk New Zealand Dairy Limited (Milk NZ) that contains ‘A2’ as part of a device mark in relation to various milk and related dairy products in classes 5 and 29.
Background
For about the last decade the a2MC has been active in opposing accepted applications that contain A2, a2 or stylised versions thereof in relation to such milk and dairy products in classes 5, 29 and 30. This was recently canvassed by the same Assistant Commissioner (AC) in decision The a2 Milk Company Limited v Nutricia Limited [2023] NZIPOTM 13 at [114], where it can be seen that many such A2 marks by other parties were abandoned after opposition by a2MC or are currently under opposition. While the a2MC has registrations for plain word marks that prominently contain A2 or a2, on account of descriptiveness objections it has not been able to obtain plain word registrations for various marks, notably including A2, A2 MILK, a2 Milk, a2 Ice Cream or a2Only in relation to various milk and related dairy products. Nonetheless the a2MC continues to refile some of these marks. Despite previous rejections of the A2 MILK mark, in April 2017 it filed for a2 Milk in classes 5 and 29 and have kept the application active by obtaining extensions of time since April 2018. Yet it is not clear what legitimate reason a2MC can have for obtaining so many extensions of time, as they should have had plenty of time to provide any evidence of acquired distinctiveness in the mark. Presumably in the expectation that IPONZ will reject further extensions of time the a2MC refiled the a2 Milk mark in July 2022.
Current Opposition
The a2MC opposed Milk NZ’s application in three ways: (i) section 17(1)(a) – on the basis of deception or confusion occurring in relation to its claimed reputation in a number of unregistered and registered trade marks, including a2, a2 Milk, and The a2 Milk Company and various stylised formats thereof; (ii) section 25(1)(b) – on the basis that Milk NZ’s application is similar to some of a2MC’s registered marks and would cause deception or confusion; and (iii) section 25(1)(c) – on the basis that some a2MC trade marks are well-known in New Zealand and its interests in those marks would be prejudiced by Milk NZ’s use of its mark. Milk NZ defends its application on the basis that A2 and/or a2 is a descriptive term when used in connection with milk products as it describes a type of milk that contains only A2 beta casein protein and so is not an exclusive indication of a2MC’s milk products. It also contends that the other device elements in its mark dominate and that the mark as a whole is distinctive and so deception or confusion will not be likely.
Milk NZ asserted that A2 is used descriptively by consumers, traders, government agencies, farmers, scientists and academics, nutritionists and health professionals and geneticists and breeders. Examples it gave of descriptive uses of A2 are: A2 milk; A2 type or type A2; A2A2 (commonly referring to genetic status); A2 factor: A2 protein; A2 beta casein; A2 cows; A2 herds; A2 sires; and the A2 debate or A2 theory (over the alleged health benefits). a2MC acknowledged that A2 can be used in a descriptive sense by other traders without improper motive and that some abbreviation of A2 beta-casein such as A2 protein makes it easier for consumers to understand the terms. However, even with such descriptive expressions the a2MC sought to discourage use of a lowercase ‘a’ for the A2 component. It is noteworthy here that when Milk NZ filed this mark it also filed a near equivalent mark, with the only difference being the use of ‘a2’ instead of ‘A2’ in the device mark. The a2MC opposed both marks and Milk NZ withdrew the device mark that used a lowercase ‘a’.
Section 17(1)(a) – Regarding a2MC’s onus of establishing a reputation amongst consumers in relation to its alleged trade marks the AC found that a2MC had no reputation in A2 as a word-only mark as it is descriptive in relation to all beta-casein products with the A2 protein characteristic. While a2MC can establish reputation in relation to A2 in combination with some other word elements or in various stylised formats of A2, these uses also establish descriptive use of A2 on the labelling. The AC found more differences than similarities between both party’s marks, with the similarities essentially attributable to the presence of either A2 or a2. The surrounding circumstances were found to further highlight the public awareness of A2 protein being a characteristic of some milks, leading the AC to conclude on the balance of probabilities that consumers are not likely to be deceived or confused by the use of Milk NZ’s mark. It was also indirectly implied that the AC would have reached the same conclusion had Milk NZ also contested a2MC’s opposition to its device mark that used a lowercase ‘a’.
Section 25(1)(b) – The AC quickly established that Milk NZ’s application is in respect to the same or similar goods as is covered by the various prior marks that a2MC alleged are similar to Milk NZ’s application. In comparing the respective party’s marks, the AC referred to the principles applied by the Court of Appeal in Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 306 at [47]. One of those principles is that while differences between two marks may be significant, it is the similarities which are most significant, whether visual, audible, distinctive, or conceptual. The AC noted from other precedent that this holds less weight where, as in the current case, the similarity is a descriptive term, which can focus attention to the other parts of the trade marks. Milk NZ’s application is a series mark with two versions of the device mark – one is black, while the other is blue & red. One of a2MC’s a2 device marks is also coloured in similar shades of blue & red. Nonetheless, on an overall comparison the coloured version of Milk NZ’s device mark was not considered similar to a2MC’s blue & red a2 device mark. A2MC’s other cited marks all had additional text which, with the exception of the a2 Milk mark, contributed to the distinctiveness of the mark, and the additional text in Milk NZ’s mark was not similar to any of those a2MC marks. After considering each of a2MC’s mark in turn the AC concluded Milk NZ’s mark was unlikely to result in confusion or deception, predominantly because the A2 element in Milk NZ’s mark conveys the characteristic of the product not some type of joint branding or association with a2MC.
Section 25(1)(c) – The AC found the evidence provided did not establish well-known status for any of a2MC’s asserted trade marks, noting that the evidence lacked any survey, expert, retailer or other such evidence which could be used to establish whether a2MC’s marketing efforts made any of its marks well-known. The AC went on to state that if wrong in that finding he would not have found a2MC’s interests to be prejudiced as the lack of detailed submissions or evidence in that regard meant such an inference was unwarranted.
Concluding Remarks
The AC found little in the way of merit in any of a2MC’s grounds for opposing Milk NZ’s application. While this opposition was not about the registrability of a2MC’s application(s) for a2 Milk, the AC commented that the evidence provided in the opposition regarding the distinctiveness of that mark did not satisfy him that distinctiveness had been attained.
What is the Deemed Date of Registration for International Registrations Designating New Zealand?
In this article I argue that priority is irrelevant to the deemed date of registration for international registrations under the Madrid Protocol that designate New Zealand. The Intellectual Property Office of New Zealand (IPONZ) disagrees, taking the view that international registrations that designate New Zealand and which have a right to a priority date will have that priority date as the deemed date of registration.
The deemed date of registration is important as it is the date from which a registered mark’s exclusive rights, as specified in section 10 of the Trade Marks Act 2002, commence. The deemed date of registration is always earlier than the actual date of registration, meaning that the owner of a registered trade mark can retrospectively sue back to a date before registration was achieved, although they can only do that once the mark is registered.
Prior to NZ Joining the Madrid Protocol
The Trade Marks Act 2002 (Act) was enacted before New Zealand joined the Madrid Protocol. The definition of the deemed date of registration is given in section 5 as follows:
deemed date of registration means,---
(a) in the case of a trade mark to which section 36 applies, the date of the application in the convention country (subject to any enactment relating to international arrangements):
(b) in any other case, the date of the application
In other words the deemed date of registration is either the convention filing date if convention priority applies, or the New Zealand filing date in all other cases.
After NZ Joined the Madrid Protocol
When New Zealand joined the Madrid Protocol it was enacted into our legislation by way of the Trade Marks (International Registration) Regulations 2012 (2012 Regulations) and section 199A of the Trade Marks Act 2002.
Regulation 9 of the 2012 Regulations specifies that once a New Zealand designation of an international application under the Madrid Protocol achieves ‘Protected’ status it has the same rights and remedies as a registered mark, with those rights commencing as per regulation 20(2) of the 2012 Regulations.
9 Effect of protected international trade mark (New Zealand)
(1) The holder of a protected international trade mark (New Zealand) has, subject to these regulations, the same rights and remedies conferred on an owner of a registered trade mark by the Act and the Trade Marks Regulations.
(2) For the purpose of applying section 10 of the Act, the rights conferred on the holder of the protected trade mark take effect on and from the date that the protected trade mark must be treated as being registered under regulation 20(2).
…
Although phrased differently regulations 20(2) and 20(2A) of the 2012 Regulations effectively specify the deemed date of registration for New Zealand designations under the Madrid Protocol. The effect of these provisions is that the deemed date of registration is either:
(i) the date of international registration; or
(ii) the date of subsequent designation; or
(ii) the date that the protected trade mark was corrected under regulation 20(2A).
20 Protections
(1) The protections referred to in regulations 19 and 19A are that—
(a) the trade mark must be protected as a protected international trade mark (New Zealand); and
(b) in a case where a refusal applies in respect of some of the goods or services, protection must apply only in relation to the remaining goods or services.
(2) A trade mark that is protected must be treated as being registered under the Act on and from—
(a) the date of the international registration, in the case where the request for extension of protection to New Zealand is mentioned in the international application; or
(b) the date on which a request for extension of protection to New Zealand is recorded in the international register, in the case where the request is made subsequent to the international registration.
(2A) A protected trade mark that is corrected must be treated as being registered, as corrected, under the Act—
(a) on and from the date that is 3 months after the date of publication in the Journal under regulation 20M; or
(b) if a notice of opposition is filed in relation to the correction, on and from the date on which the event described in regulation 19A(1)(b)(iii) or (iv) has occurred.
(3) Subclause (2) is subject to regulation 30.
The definition of the deemed date of registration given by regulations 20(2) and 20(2A) is only compatible with part (b) of the definition in the Act – namely the above listed 3 alternatives would each qualify as the mark’s filing date. Regulations 20(2) and 20(2A) make no mention of any right to priority affecting the deemed date of registration.
Nonetheless, IPONZ’s view is that the ‘deemed date of registration’ field on the IPONZ database for an international application that claims priority from the ‘home’ mark should be the priority date. IPONZ considers that regulation 12 of the 2012 Regulations provides the basis for using the priority date.
12 Priority
(1) Section 36 of the Act entitles the holder of an international registration designating New Zealand to the registration of his or her trade mark in priority to other applicants.
(2) The manner of claiming the priority conferred under section 36 of the Act must be determined in accordance with the Madrid Protocol and the Common Regulations.
(3) The date on which the holder is entitled to priority is—
(a) the date of the international registration, in the case where the request for extension of protection to New Zealand is mentioned in the international application; or
(b) the date on which a request for extension of protection to New Zealand is recorded in the international register, in the case where the request is made subsequent to the international registration.
Compare: Trade Marks (International Registration) Rules 2000 r 10 (Singapore)
However, regulation 12 of the Trade Marks (International Registration) Regulations 2012 only applies in respect of priority and does not stop regulations 20(2) and 20(2A) from overriding the Act’s definition of deemed date of registration.
Further, regulation 4 of the 2012 Regulations provides that those regulations override the Act and the Trade Marks Regulations 2003 where there is an incompatibility. This is in accord with the general principle in law that international law obligations override national law obligations unless there is a specific statement to the contrary.
4 Application of Trade Marks Regulations and Act to international registrations
For the purpose of these regulations, the Trade Marks Regulations and the Act apply, to the extent applicable and with all necessary modifications, to any holder of an international registration designating New Zealand and any holder of a protected international trade mark (New Zealand), unless and to the extent that—
(a) these regulations provide otherwise; or
(b) any provision of the Trade Marks Regulations or the Act is inconsistent with—
(i) the Madrid Protocol; or
(ii) the Common Regulations.
Hence, regulations 20(2) and 20(2A) override the Act’s definition of the deemed date of registration with the consequence that where an international application claims priority that priority has no relevance for the deemed date of registration. If this is the case then the ‘deemed date of registration’ field on the IPONZ database for applications that designate New Zealand via the Madrid Protocol should be determined as appropriate in accordance with either regulation 20(2) or regulation 20(2A), irrespective of whether priority applies.