August 2015

1. General

Australia

Productivity Commission Tasked with Reporting on Appropriate Balance for IP System
The Australian Government has given the Productivity Commission 12-months to issue a final report on whether the intellectual property system provides appropriate incentives for innovation, investment and the production of creative works while ensuring it does not unreasonably impede further innovation, competition, investment and access to goods and services. In undertaking the inquiry, the Commission should:

1. examine the effect of the scope and duration of protection afforded by Australia's intellectual property system on:
   a. research and innovation, including freedom to build on existing innovation
   b. access to and cost of goods and services
   c. competition, trade and investment.
2. recommend changes to the current system that would improve the overall wellbeing of Australian society, which take account of Australia's international trade obligations, including changes that would:
   a. encourage creativity, investment and new innovation by individuals, businesses and through collaboration while not unduly restricting access to technologies and creative works
   b. allow access to an increased range of quality and value goods and services
   c. provide greater certainty to individuals and businesses as to whether they are likely to infringe the intellectual property rights of others
   d. reduce the compliance and administrative costs associated with intellectual property rules.
3. in undertaking the inquiry and proposing changes, the Commission is to have regard to:
   a. Australia's international arrangements, including obligations accepted under bilateral, multilateral and regional trade agreements to which Australia is a party
   b. the IP arrangements of Australia's top intellectual property trading partners and the experiences of these and other advanced economies in reforming their IP systems to ensure those systems meet the needs of the modern economy
   c. the relative contribution of imported and domestically produced intellectual property to the Australian economy, for example to Australia's terms of trade and other economic impacts of IP protection, including on inward investment
   d. the Government's desire to retain appropriate incentives for innovation and investment, including innovation that builds on existing work, and production of creative works
   e. the economy-wide and distributional consequences of recommendations on changes to the existing intellectual property system, including on trade and competition
   f. ensuring the intellectual property system will be efficient, effective and robust through time, in light of economic and technological changes
   g. how proposed changes fit with, or may require changes to, other existing regulation or forms of assistance (such as research subsidies) currently providing incentives for the development of intellectual property
   h. the findings and recommendations of the Harper Competition Policy Review in the context of the Australian Government's response, including recommendations related to parallel import restrictions in theCopyright Act 1968 and the parallel importation defence under theTrade Marks Act 1995
   i. the findings and recommendations of the Advisory Council on Intellectual Property's Review of the Innovation Patent System the Senate Economics References Committee's inquiry into Australia's innovation system the Australian Law Reform Commission's Copyright and the Digital Economy report.

New Zealand

Enhanced Protection of Confidential Information for Product Formulations on Horizon
A Bill that seeks to amend the Agricultural Compounds and Veterinary Medicines Act 1997 has recently been given its first reading. The Bill provides for an extended term of protection for confidential information relating to innovative product formulations and would create protection for confidential information relating to non-innovative product formulations.

New Zealand became bound by the TRIPs Agreement in 1995. Article 39.3 of the TRIPs Agreement requires Members to protect data submitted to governments or governmental agencies as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities. One of the Acts that implemented New Zealand’s commitments to the TRIPs Agreement is the Agricultural Compounds and Veterinary Medicines Act 1997. Part 6 of that Act provides for the protection of certain confidential information about innovative agricultural compounds. The current Bill would replace Part 6 and make similar consequential amendments to the Medicines Act 1981.

In particular, protection for confidential information given in support of an application for the registration of an innovative agricultural compound changes from a maximum of 5-years after the date of that registration or refusal to a maximum of 8-years after the date of registration. In the case of refusal of the application the term remains the same, but, where registered (granted), the term can increase in 1-year increments up to the 8-year maximum for each new use authorised as a result of successful variation applications.

For non-innovative agricultural compounds the Bill would provide protection of confidential information up to a period to 3-years after the date of registration or refusal. However, in the case of a of successful variation application relating thereto, this can be extended to 3-years from the date of registration of the variation.

2. Patents

Europe

Reebok Unable to Blur Definition of Missing Drawings
In J 12/14 Reebok International Ltd the EPO Boards of Appeal refused Reebok’s request to be allowed under Rule 56 to file drawings from the priority document to replace the poor quality drawings that were filed with the EPO.
The 19 drawings with 39 figures originally filed with the EPO were either partly blurred or black all-over. The EPO had correctly informed Reebok under Rule 58 and had invited them to correct the deficiencies with 2-months. Reebok’s replacement sets of drawings were not accepted by the Receiving Section on the basis that they revealed information which was not present in the original application documents.

However, Reebok claimed that the EPO should have invited them under regulation 56 to file missing drawings, on the basis that the drawings initially submitted did not show what was described in the specification and that in that sense the drawings were missing. Reebok also sought to use a previous decision of the EPO Boards of Appeal as precedent.

The Boards of Appeal held that the EPO correctly rejected Reebok’s argument. EPC Rule 56 only allowed the filing of missing drawings, but not the replacement of filed drawings by an identical set of better quality drawings, without losing the earlier filing date. The earlier decision was also held not to assist Reebok. That decision held that missing drawings is not restricted to absent drawings, but also includes the situation where the submitted drawings did not belong to the application. While Reebok’s initially filed drawings were of poor quality, they still belonged to the application, and so the application could not be classed as having missing drawings.

3. Trade Marks

Madrid Protocol

Madrid Protocol Soon to Completely Replace Madrid Agreement
Currently the Madrid Union is comprised of 95 member states, who are either party to the Madrid Agreement only (1 state), the Madrid Protocol only (40 states), or both the Madrid Agreement and the Madrid Protocol (54 states).

Algeria is the state that is only a member of the Madrid Agreement. However, on 31st July 2015 it deposited its instrument of accession to the Madrid Protocol, which will enter into force on 31st October 2015. It is expected that the Madrid Agreement will effectively lapse from 31st October 2015. The provisions of the Madrid Protocol already specify that mutual relations between states party to both the Madrid Agreement and the Madrid Protocol will be governed by the Madrid Protocol.

New Zealand

Not Only CC'S Gets Discretion Like These
In Bluebird Foods Limited v Griffin’s Foods Limited [2015] NZIPOTM 9 Bluebird was able to retain some of its registered trade marks that were susceptible to revocation for non-use.

On the same day that Griffins filed an application for CC’S in classes 29, 30 it also filed an application to revoke 9 of Bluebird’s registrations in the classes of interest that contained CC’S as a significant element on the basis of non-use for a continuous period of 3+ years. A preliminary issue was whether Bluebird should be allowed to file further evidence out of time. Despite finding that the failure to file evidence on time was not due to genuine and exceptional circumstances, the Assistant Commissioner exercised her discretion to allow the further evidence on the basis that it relates to matters arising after the deadline for filing evidence and so could not have been filed earlier. In exercising her discretion, the Assistant Commissioner considered that in doing so there was a lack of any real prejudice to Griffins, and that there was a public interest in having all of the relevant evidence available to the decision maker.

In countering the revocation application Bluebird submitted evidence that it was preparing to re-launch the brand during the 3-year non-use period as part of a 60th anniversary year promotion. It also filed evidence to the effect that those preparations were frustrated by problems in using a new corn hybrid and from an infestation of weevils. Despite the intended use not occurring during the non-use period, Bluebird claimed use on the basis of use of the mark in a marketing media kit relating to the 60th anniversary year promotion. However, the Commissioner held that such use was not use in relation to the goods, did not amount to a real commercial exploitation of the marks and so could not be used to establish genuine use.

The Commissioner also rejected Bluebird’s claim that the frustrated re-launch qualified as an exception to non-use under the special circumstances criteria of section 66(2). While the frustrated re-launch was a plausible explanation, a lack of specific evidence concerning its effect on the intended use of its CC’S marks resulted in the Assistant Commissioner rejecting the special circumstances argument.

Nonetheless, the Assistant Commissioner exercised her discretion and allowed most of Bluebird’s CC’S marks to remain on the register. In making that decision the Assistant Commissioner used criteria stated in a recent High Court case that considered the same issue. In particular, the Assistant Commissioner held that:

• Bluebird had not abandoned the marks in the sense that it was at least considering re-launching them.
• Bluebird’s intended use of the marks as part of its 60th anniversary year promotion was bone fide and not simply made in response to the application for revocation.
• Despite the recent period of dormancy Bluebird has a residual reputation in the marks on account of the significant reputation it established during their use.
• Bluebird’s recent resumption of use is in a form that does not substantially alter the identity of most of the marks.
• No one would be likely to be deceived or confused by the marks remaining on the register.
• Bluebird’s continued ownership of the marks would block Griffins’ desire to use the marks. However, Griffins did not file any evidence or submissions countering Bluebird’s allegation that Griffins’ desire to use the marks was not legitimate.