February 2014

1. General

Canada

Canada Preparing to Join 5 IP Treaties
Canada is preparing to join several intellectual property law treaties so as to harmonize its patent, trade-mark and industrial design law with important trading partners around the world.
In particular, it has tabled legislation towards joining the following 5 treaties:
The Madrid Protocol: the Singapore Treaty; the Nice Agreement, the Patent Law Treaty; and the Hague Agreement. New Zealand is a member of the first 3 treaties, while Australia is a member of the first 4 treaties. Implementing these treaties will require numerous amendments to Canada’s intellectual property laws.

2. Patents

Australia

False Suggestion Revocation Criteria Considered
In Apotex Pty Ltd v Servier Laboratories (Aust) Pty Ltd the Federal Court has examined the kind of misrepresentations that are required to satisfy the false suggestion ground for revocation. Apotex sought to revoke Servier’s parent company’s patent for a new salt of the compound Perindopril, called Perindopril Arginine on, amongst other grounds, lack of best method, and false suggestion. Apotex was successful on the lack of best method ground, since the patentee had omitted sufficient description of the or a successful method it had employed in working its earlier patent.
However, the Judge rejected the false suggestion allegations. Apotex contended that the patentee was ‘evergreening’ its patent protection by overstating or exaggerating the prior art problems and the advantages of the subject matter of its selection patent. While the Judge held that in some instances Apotex was misconstruing the specification, the Judge also used precedent in holding that not all misrepresentations can establish false suggestion. The misrepresentation had to be a material inducing factor that had led to the grant of a patent. In this regard the promise that the invention will produce a particular result or results for which the protection of a limited monopoly is sought is distinguished from incorrect assertions by the patentee of one or more useful purposes to which the result obtained by invention can be applied. Namely, if the invention actually produces the substantive result or results asserted by the patentee in the specification, the mere fact that one or more additional purposes, embodiments or examples is wrong, will not ordinarily amount to a false suggestion. It is only if what is asserted is of such a nature that the Court finds that the Commissioner has been deceived by it, as a material inducing factor in making the grant, that the discretion to revoke will arise.

Pharmaceutical Patents Review Shelved
Back in 2012 the Pharmaceutical Patents panel was tasked with evaluating whether the system for pharmaceutical patents is effectively balancing the objectives of securing timely access to competitively priced pharmaceuticals, while fostering innovation and supporting research. In particular, the review considered:
• issues that impact on competition in the pharmaceutical industry, for example, the ability of generic medicines to enter the market
• issues around fostering innovation and bringing new pharmaceuticals to market
• the importance of the patent system in providing employment and investment in research and industry
• the impact of pharmaceutical patent provisions on Government health expenditure
• the impact on the Pharmaceutical Benefits Scheme
• international approaches to extensions of term for pharmaceutical patents
• Australia's obligations under international agreements (including free trade agreements and World Trade Organisation agreements)
• Australia's position as a net importer of patents and medicines
In April 2013 the panel released a report which proposed amongst other things:
• replacing the pharmaceutical extension of term regime with a direct subsidy to provide an incentive to companies to carry out R&D within Australia or, if the regime was maintained, to consider limiting the extension of term such that it would expire no later than the term provided for in other key jurisdictions such as the U.S. or U.K.;
• establishment of a database, similar to the Orange book of the U.S. FDA, to identify the relationship between pharmaceutical products and the corresponding patent.
However, with the subsequent change of Government the panel’s proposals noted above were not acted on. The new Government has now released the following statements. “The government has no plans to release the final report at this stage”. “The government is not considering the recommendations made by the panel in the draft report”.

3. Trade Marks

New Zealand

Plain Packaging Legislation Introduced to Parliament
On the 11th February 2014 the Smoke-free Environments (Tobacco Plain Packaging) Amendment Bill passed its first reading. The Bill seeks to amend the Smoke-free Environments Act 1990 by regulating the branding of tobacco and herbal smoking product packaging in New Zealand, thereby removing the last major promotional mechanism of the tobacco industry. In particular, the Bill seeks to:
• prohibit the use of tobacco company branding imagery and other marketing devices on tobacco product packaging, or on the tobacco products themselves;
• tightly controlling how a tobacco brand or company name is represented on tobacco product packaging;
• standardising all other design elements of tobacco product packaging, including the materials, colours, size and the fonts that may be used;
• increase the prominence, pertinency, and size of health warnings on tobacco product packaging;
• controlling the design and appearance of individual cigarettes and other tobacco products.
The specifics parameters of the controlled packaging elements will be given in the regulations, but it can be expected to closely match the Australian legislation.
The Bill also seeks to amend the Designs Act 1953 by allowing the Commissioner to register designs even if their use is restricted or prohibited under the Smoke-free Environments Act 1990. This will bring the Designs Act into line with the similar provision given by section 17(3) of the Trade Marks Act 2002.

Coca-Cola Gets Bottled
In The Coca-Cola Company v Frucor Soft Drinks Ltd, Coca-Cola was unsuccessful in trade mark infringement claims against Frucor, who bottle and distribute PepsiCo products in New Zealand. In October 2009 PepsiCo released a new range of 300ml bottles, which it called the “Carolina” bottle, in New Zealand. The Carolina bottle design was completed in 2004 and it is the subject of uncontested design registration in various countries, although such protection was not sought in New Zealand.
Coca-Cola, who easily dominates the cola market in New Zealand, objected to the use of the Carolina bottle in New Zealand based on its similarity to Coca-Cola’s well known contour shape bottle and three trade mark registrations. The first registration is a 1948 2D representation of its contour shape bottle. From 1995, in order to be TRIPs compliant, the Trade Marks Amendment Act 1994 widened the definition of what could constitute a trade mark. While not specifically including shape marks, the Intellectual Property Office of New Zealand subsequently allowed shape marks to be registered. Coca-Cola subsequently registered two different depictions of the contour shape bottle and in each case claimed it as a 3D shape. The Trade Marks Act 2002 specifically includes shape marks as being capable of registration.
While acknowledging differences between the contour and Carolina bottles, Coca-Cola claimed the silhouette of its contour bottle is its most distinctive and memorable feature. It argued that the silhouette of the Carolina bottle also acts as a sign in the course of trade that is likely to be taken as use of a trade mark, but that its similarity to the contour bottle silhouette makes such use infringing.
The Judge agreed with Coca-Cola’s submission that for shape registrations to have meaning they cannot be circumvented by another trader adding a brand name, colour or other distinctive feature to the same or similar shape. The Judge considered various UK case law developments that argued against this proposition to be irrelevant since they are made under a different statutory regime that conflates the two-step analysis required by New Zealand legislation. In particular, the infringement provisions of section 89 require first indentifying the sign being used in the course of trade by the alleged infringer and only then considering whether that sign is being used in a way that is likely to be taken as trade mark use. Accordingly the Judge found that the Carolina bottle shape on its own qualifies as a sign used in the course of trade. The Judge next considered whether PepsiCo’s and Frucor’s use of that sign is likely to be taken as use of a trade mark. The Judge found that the evidence established that the bottle and its shape were supposed to be noticed and was designed to be a proprietary bottle and concluded that a substantial number of the relevant market would consider the Carolina bottle to be used as a trade mark.
However, when comparing the Carolina bottle with the registrations for the contour bottle the Judge held that they were not sufficiently similar to establish infringement. There were differences in the “waist” feature and the presence of a “waist” feature is common to the trade. The Judge identified 5 distinctive features portrayed in the contour bottle registrations, but only found one of those features to be shared by the Carolina bottle. The Judge also noted that the Carolina bottle’s embossed horizontal wave pattern further distinguished it from the contour bottle. The Judge refused to allow the findings on infringement to be influenced by Coca-Cola’s use in advertising campaigns of silhouette’s of the contour bottle. They were not considered fair and normal use of the registered marks as they are not a full expression of or surrogate for those marks.
While not required to the Judge went on to hold on the basis of the foregoing analysis that no issue of deception or confusion can arise. The Judge also noted that despite Coca-Cola’s domination of the market no evidence of confusion was available and it was unlikely that any such confusion would remain undetected. Coca-Cola’s passing off and breach of the Fair Trading Act actions likewise failed due to lack of similarity and lack of confusion.