January 2021
1. Patents
From Riled to Filed – Sporting Inventor Makes Call on No-Ball Determinations
Former cricketer Peter George was spurred into finding a more instantaneous technological solution for bowler’s front foot no-ball determinations after feeling that reliance upon TV replays detracted from enjoyment of the game for both players and spectators.
In addition to his strong cricketing background, previously playing at Australian State level as well as in one test, Peter had also studied mechanical engineering and so was well placed to find a solution to the uncertainties surrounding no-ball determinations. Peter’s idea was to attach to the rear of the bowler’s front foot shoe a lightweight device incorporating an impact detecting accelerometer and an ultrasonic transmitter which enable an array of ultrasonic detectors to determine the position of the bowler’s shoe heel from the front foot impact. Together with his wife and business partner Suzy, who has a background in product development and commercialisation, Peter established the business Sportech Industries Pty Ltd and set about the multi-faceted journey of bringing the idea to fruition and chose Pipers for getting patent protection.
There are three criteria that must be satisfied in the bowler’s final delivery stride in order to not be found to have bowled a no-ball. In the final delivery stride a bowler must not put the back foot on or over the return crease, must not place a foot beyond the centreline and must have at least part of the delivery foot behind the popping crease. The vast majority of no-ball determinations involve the popping crease criterion, but Peter’s system also works for the other criteria if the device is also attached to the rear shoe. As shown the popping crease (205) is the line forward of and parallel with the return crease line (204). As further shown a popping crease no-ball occurs in situations 1D and 1E, but not in 1A – 1C.
The system can determine whether the front foot impact is made by the heel or toe-ball end of the foot and take that into account when determining the three-dimensional position of the heel. The system can also take into account differences in the speed of the ultrasonic transmissions caused by differences in temperature and further can take into account any Doppler effect caused by the speed at which the foot is moving.
The system can also be used to get detailed information about the magnitude and direction of forces on the front foot at impact, which can be used to refine technique so as to reduce the chance of injury.
In addition to the option of being audibly notified of a no ball the umpire would have a hand-held device which can display a representation of the position of the front foot in relation to the popping crease and can show the number of balls and no balls bowled in an over. The technology has been trialled by high ranking umpires, who are supportive of the idea as it allows them to focus on what happens at the batter’s end of the wicket.
With appropriate modifications the system is also useful in other sports, such as detecting whether a hand is on the ball before or after it crosses the goal line in Australian Rules or rugby.
Further details about the technology can be found in the Australian patent application and on their website www.mycallnoball.com.
CAFC Provides Pertinent Guidance on Criteria for Analogous Prior Art
In Donner Technology LLC v Pro Stage Gear LLC 20-1104 the Court of Appeal for the Federal Circuit (CAFC) clarified the approach to considering analogous art in relation to obviousness determinations.
Donner sought Inter-Partes Review (IPR) of Pro Stage’s patent, which concerns improvements in relation to pedalboards for foot operated guitar effect devices by allowing easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement. Donner argued that the patent is obvious on account of a prior art patent (Mullen) from a different field – electrical relays – that solved the same problems. Mullen disclosed an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various control circuits.
The Patent Trial and Appeal Board (PTAB) held that Mullen did not qualify as analogous art and so dismissed Donner’s obviousness challenge.
On appeal the CAFC found fault with the PTAB’s reasons for rejecting Mullen as analogous art and remanded the case back to the PTAB for further consideration. The CAFC noted that obviousness challenges on the basis of analogous art can be made either in relation to any prior art in the same field or in relation to prior art from a different field if it is still reasonably pertinent to the problem with which the proposed invention is concerned. The CAFC further noted that the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent and ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.
The CAFC found that the PTAB failed to properly identify and compare the purposes or problems addressed in Mullen and Pro Stage’s patent – where the relevant purposes for inventions are those relating to solving a problem. The CAFC noted in particular that the PTAB’s characterisation of the problems or purposes that Pro Stage’s patent is concerned with effectively excluded all prior art not in the same field. The CAFC held that the relevant hypothetical person having ordinary skill in the art would not exclude from consideration all art from outside the field with which the patent is concerned, as the problem solved was not so specific to the field of endeavour that the skilled person would only look within that field.
Whereas the PTAB identified several differences between Mullen and Pro Stage’s patent, the CAFC noted that a reference can be analogous art with respect to a patent even if there are significant differences between the two references. Particularly with art from a different field there are bound to be differences, but that does not rule it out from being pertinent to the addressed problem or purpose. In this regard the skilled person would not need to understand everything disclosed in a prior art reference from another field, information therein would be available to the skilled person provided it would have been reasonable for them to have consulted the reference and could glean from it the relevant pertinent information.
The CAFC further held that the PTAB was wrong to find that on account of Mullen being from the early 1970’s the skilled person would not have considered consulting it, finding that the PTAB did not adequately explain why the difference in publication dates would have excluded it from relevance to the addressed problem.
2. Designs
First Reading for AU Designs Amendment Bill
Following on from the consultation late last year the Australian Government has now introduced and given the first reading of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020.
Last year’s consultation outlined options in respect of the various provisions that were considered available for amendment - a summary of the more substantive options is given here. The Bill will make the following changes:
Grace Period
Replacing the current restricted 6-month grace period with a general 12-month grace period for relevant disclosures by the applicant or their predecessor or the creator of the design and for such disclosures by another entity who derived or obtained the disclosed design from those first mentioned entities. Where an identical or substantially similar design has been prior published or used by another entity and the first mentioned entities claim that the disclosed design was derived or obtained from them, then the onus will be on the other entity to show that they created the design without reference to or knowledge of a design of the first mentioned entities. The Bill also introduces a prior use exemption from infringement where another entity has prior used or taken definite steps towards using an otherwise infringing design and who did not derive or obtain the design from the first mentioned entities.
Deferred Publication
The Bill allows publication to be deferred for up to 6-months. If the applicant does not select the registration option when filing, then the request for registration will be deferred for 6-months, but the applicant can shorten that by requesting registration during that period. Unless the applicant withdraws the application publication will occur once the design passes the formalities examination. The Bill will also remove the current option of choosing publication without registration.
Relief from Infringement Before Registration
The Bill will extend the innocent infringer relief so that it is available for infringement between filing and registration, given that under the Designs Act the infringement provisions apply from the filing date. To be eligible for relief, an infringer has the onus of showing they did not know and could not reasonably be expected to know of the application disclosing the infringed design. The ability to qualify for this relief will end once the otherwise infringed design is registered or when the applicant notifies the innocent infringer.
Right of Exclusive Licensees to Bring Infringement Proceedings
The Bill will allow exclusive licensees of a registered design to commence infringement actions against third parties in respect of infringing conduct subsequent to the commencement of the amendments. It is also clarified that the exclusive licensee cannot bring infringement proceedings against a party that they have authorised or licenced to use the design. Given that the exclusive licensee is the only party entitled to exploit the design in Australia and that the registered owner is not always motivated to enforce that right, this change is considered overdue and will bring the Designs Act in line with other IP legislation. In order to put the registered owner on notice that a proceedings has been commenced the exclusive licensee is required to join the registered owner as a defendant unless they are joined as a plaintiff. When joined as a defendant the exclusive licensee is not subject to any awarded costs unless they have taken part in the proceedings.
Formality Requirements
The Bill will repeal Schedule 2 of the Designs Regulations 2004, which sets out the form that documents must take to be accepted for filing or publication, and instead amend the Act so as to provide that the Commissioner of Designs can issue non-legislative instruments to determine formality requirements. This more flexible approach reflects an equivalent change that was made in respect of the Patents legislation.
Standard of the Informed User
The Bill will amend the Act by clarifying that when designs are compared through the eyes of a notional person, that person only has to be familiar with the product, or products similar to that product, and it does not matter how that familiarity is acquired. This will be done by replacing the standard of the informed user with the standard of the familiar person. As such, the category of the familiar person is wider than the informed user under the European approach, who needs to be a user of the product. The change will only apply to designs filed after the commencement of the amendments.
Revocation of Registration
The Bill will clarify aspects of the revocation grounds. Currently one of the ways a registered design can be revoked is on account of the registration being obtained by fraud or false suggestion. The Bill clarifies that the use of fraud or false suggestion at other stages, such as when certifying a design, is also a basis for revocation. The Bill also clarifies that when revocation is sought on the basis of lack of entitlement that the Court has the discretion to not revoke the design if it is just and equitable to do so, such as where the Court may instead substitute another person as the owner. These changes will apply to applications for revocation made on or after the commencement of the amendments.
Renewal of Registration
Currently it is not clear what the status is of a design during the 6-month renewal grace period and in particular whether it has ceased for infringement purposes. The Bill clarifies that the design is still active for infringement purposes provided it is renewed before the end of the renewal grace period, but that if it is not so renewed it ceases from the renewal due date. Consequently, third parties should assume the design remains active until the end of the renewal grace period.
What Doesn’t Change?
Notably, the Bill does not introduce partial designs or allow virtual designs to be certified. However, given that key countries and regions that Australia trades with recognise these in one form or another, it can be assumed that they remain in contention for recognition in the future.
3. Trade Marks
Judge Rejects Invalidity and Non-Use Challenges to Accidentally Ambiguous Registration
In Energy Beverages LLC v Frucor Suntory New Zealand Ltd [2020 NZHC 3296] the Judge upheld the Assistant Commissioner’s rejection of invalidity and non-use challenges to Frucor’s colour mark based on the shade of green shown on the register being different to the register’s description of the trade mark and as used.
As previously noted Frucor achieved registration for a colour mark in respect of energy drinks on the basis of acquired distinctiveness with the description of the mark at acceptance stating – The mark consists of the colour green (Pantone 376C), as shown in the representation attached to the application, applied as the predominant colour to the goods, their packaging or labels. However, the colour shown on the register is as shown here, whereas Pantone 376 is as shown here.
By the time of the initial proceedings IPONZ no longer retained the paper file as these were destroyed following digitization for the purposes of IPONZ’s online system. Frucor argued that the process of scanning, uploading, downloading and printing colour marks can lead to loss of integrity with respect to the original representation. The trade mark attorney who filed Frucor’s application gave a declaration that included a copy of the application filed which had a square sample that had been cut from a metallic label stapled to it as shown here. Evidence was led to the effect that it is not possible to have an exact Pantone colour system match for colours printed on metallic cans as the Pantone colour system does not take into account colour printed on such metallic substrates. Further, the grey of aluminium cans and the thin ink film can change the apparent colour, and even a skilled printer cannot reliably print a Pantone colour match on aluminium cans. Frucor said it chose Pantone 376C as the closest match, where the ‘C’ suffix refers to the colour being printed on coated or gloss paper.
Energy Beverages unsuccessfully argued before the Assistant Commissioner that the use of the word ‘predominantly’ in the description made the registration invalid as it meant the mark was not capable of a uniform graphical representation. The Assistant Commissioner accepted Frucor’s contention that Energy Beverage’s invalidity argument falls under section 18, which is not within the exceptions given in section 75 to the presumption that a mark that has been registered for 7 or more years is valid.
On appeal Energy Beverages accepted that its argument falls under section 18, but argued that the section 75 presumption of validity only applies to registered trade marks and that on account of the use of ‘predominantly’ Frucor’s mark never qualified as a trade mark. Frucor noted that in submissions on the Bill to the current Act it was argued that section 18 should fall within the section 75 exceptions, but that the Ministry rejected that on the basis that 7-years from registration is ample time for section 18 objections to be raised. It was also noted that Energy Beverage’s argument would require the concept of registration to be treated differently in sections 73 and 75, which would be contrary to the legislative purpose of simplifying procedures. In line with Frucor’s observations the Judge rejected Energy Beverage’s argument holding that the section 75 presumption of validity applies to Frucor’s mark given that section 18 is not an exception for that section and that the time limit for objecting under section 18 is consistent with the purposes of the Act.
If wrong in that conclusion, like the Assistant Commissioner, the Judge went on to consider whether the use of ‘predominantly’ meant the mark failed to satisfy the definition of a trade mark on account of not providing a uniform graphical representation or being ambiguous. The Assistant Commissioner held that Frucor’s registration is sufficiently clear and not defective for want of precision, and that the most memorable or main colour that catches the eye of reasonable consumers is the appropriate way to understand the use of ‘predominant’ in this context. Energy Beverages again emphasised that that approach is out of step with the approach taken in the UK and Europe, which consider the use of ‘predominant’ or ‘significant’ in the mark description as not satisfying the clarity, precision, self-containment, durability and objectivity requirements of a sign that qualifies as a trade mark. It was also argued that the distinction between infringement provision 89(1)(a), which does not require a likelihood of confusion, and infringement provisions 89(1)(b)&(c), which do require a likelihood of confusion, would be impossible to make if the scope of the mark is insufficiently precise. This in turn could result in an unduly wide scope of protection compared to the actual use made.
The Judge held that the strict European approach is not appropriate in the New Zealand context and that the practice of using such descriptions for colour marks is appropriate if the distinctiveness has been established through use, with protection only extending to the predominant colour – the remainder of the get-up being a matter of indifference. While the distinction between infringement provisions 89(1)(a) and 89(1)(b)&(c) can be harder to make from the description of colour marks, the Judge considered the description used sufficiently limiting and objective, even though whether a third party has made predominant use of a colour can require judgment.
Regarding the non-use ground, Energy Beverages appealed the Assistant Commissioner’s finding that the mark should be defined by the written description rather than the image on the register. The Assistant Commissioner’s finding in this regard did not depend upon their acceptance of the explanation for the image being a different shade of green, rather it was supported by the written description includes the phrase “as shown in the representation attached to the application”. While acknowledging that a written description is required for colour marks, Energy Beverages argued that did not necessarily mean the written description takes priority over the colour sample, and that the public is entitled to rely upon the register as being accurate. All the more so where the written description refers to the representation attached to the application when that representation is no longer available to the public.
However, the Judge found that the IPONZ Practice Guidelines for colour marks tipped the balance in favour of the written description having primacy. While members of the public can be misled by the incorrect representation of the filed colour sample, competitors could be expected to check the image on the IPONZ database against the Pantone colour if they have doubts. Given that the discrepancy was not the direct fault of Frucor, the Judge considered revocation would not be justified or appropriate where the mark as filed continues to be used. Rather, the appropriate action is to apply for the colour sample to be amended, as Frucor now has.
Nothing But Foreign Reputation Insufficient for Opposition
In Kiwi Fresh Orange Company Limited v Monde Nissin (Australia) Pty Ltd 2020 NZIPOTM 26, despite spill-over reputation from the Australian market, the Assistant Commissioner declined to find a likelihood of deception or confusion due to the low distinctiveness of Monde Nissin’s marks.
In November 2015 Kiwi Fresh applied to register both a device mark and the word mark Grove “Nothing But” in respect of fresh fruit and fruit juices, which they began selling from that date. After being accepted these were opposed by Monde Nissin on the basis of their reputation in the marks NUDIE NOTHING BUT and NOTHING BUT in relation to fruit juices and on the basis that the applications were made in bad faith.
Monde Nissin’s marks have been used in Australia since 2010 and have an established reputation and market share there in the fruit juice, coconut water and vegetable juice markets. In May 2015 they began exploring the possibility of expanding into the New Zealand market and filed applications for their marks in February 2016. The NUDIE NOTHING BUT mark proceeded to registration, but the NOTHING BUT mark has been held in abeyance pending the outcome of the opposition to Kiwi Fresh’s accepted applications.
Opposition on the basis that use of the mark would be likely to deceive or confuse (section 17(1)(a)) first requires the opponent to establish a reputation in their mark in the New Zealand market at the application date of the opposed mark, with that reputation only at the level of awareness, cognisance or knowledge.
It was claimed that sample products of the opponent were sent to a New Zealand food distributor in May 2015, but the relevant email correspondence did not show use of the relevant marks. The opponent also sought to rely upon its website being accessible to New Zealanders, but given that the evidential extracts post-dated the application date it was unclear whether the relevant marks were used on the website prior to that date and in any case the number of New Zealand visitors to the website before that date was minimal. The opponent’s social media posts showed use of the marks prior to the relevant date, but whether those pages were viewed by New Zealanders prior to the relevant date was unclear.
The opponent also sought to rely upon spill-over reputation on the basis of its established reputation is Australia in conjunction with the significant volume of travellers between the countries. The Assistant Commissioner found it reasonable to assume that sufficient travellers from New Zealand would have been exposed to the marks to establish a level of reputation for those marks in New Zealand that satisfies the initial onus on Monde Nissin – but little more than that. While there was some use evidence for the NUDIE NOTHING BUT mark, it was noted that separate use of the NOTHING BUT mark was still in close proximity to the NUDIE mark and so functioned as a secondary mark and usually in a descriptive sense – such as ‘nothing but 21 oranges’.
Monde Nissin also sought to rely upon the finding in the case Muzz Buzz Franchising Pty Ltd v JB Holdings (2010) Ltd [2013] NZHC 1599 at [74] that Australia and New Zealand can be treated as a single economic market. However, the Assistant Commissioner noted first that subsequent section 17(1) cases have emphasised that it is reputation in New Zealand that matters, and secondly that the present case is distinguishable from Muzz Buzz as there was no evidence of proactive exploitation of the opponent’s marks. It was also noted that in Muzz Buzz the Judge did not start with an assumption of a single economic market and still required there to be some reputation in the mark in New Zealand.
In comparing the actual use of the opponent’s marks to the Grove “Nothing But” mark the Assistant Commissioner noted that the generally important first element or word is distinct in each case. It was also noted that the commonly understood meaning of ‘nothing but’ is ‘only’ and conveys concepts of purity, simplicity, wholesomeness, and a product that is not mixed with other substances, and that the opponent’s marks mostly use the phrase in a descriptive sense or to allude to the contents of the goods. In respect of the applicant’s mark the Assistant Commissioner noted that Grove is the more distinctive part, and that while it alludes to juices made from fruit grown on trees when used in relation to such goods, the concept of a small group of fruit trees is not contained in the opponent’s marks. Viewing the marks as a whole the Assistant Commissioner found the similarities of the marks to be at the lower end of the spectrum and that it was even lower in respect of the applicant’s device mark. Given the above, despite the opposed goods being the same as or similar to the opponent’s goods, being marketed towards the same consumers and involving low level purchasing decisions, it was held that a significant number of consumers would be unlikely to be deceived or confused by normal and fair use of the opposed marks – even with taking into account imperfect recollection.
Monde Nissin’s bad faith opposition ground centred on the fact that Kiwi Fresh’s sole director has substantial experience in the fruit juice market and would have been very aware of the significant reputation that the opponent’s marks had obtained in the Australian market. It argued that Kiwi Fresh’s conduct in adopting marks that contain the opponent’s mark or a key element thereof fell short of the normal standards of acceptable commercial behaviour as they sought to unfairly capitalise on the opponent’s reputation therein. Kiwi Fresh countered that this was conjecture and there is no absolute prohibition on a trader registering a foreign mark for use in New Zealand as bad faith is determined in relation to first use or reputation in New Zealand and that in any case the marks are insufficiently similar. The Assistant Commissioner held that bad faith was not established. Even if awareness of another party’s marks is shown, on its own this is insufficient to establish bad faith, which requires a basis for ownership of the same or confusingly similar marks in New Zealand.
Amendment Act Will Provide New Procedures for Challenging Use Claims
The Trademark Modernisation Act 2020 has the focus of improving the accuracy and integrity of the register and seeks to achieve this through new procedures for challenging inaccurate claims of use in applications and registrations. The Act was signed into law on 27th December 2020 and will be implemented by and take effect on 27th December 2021 unless indicated otherwise below.
New Ex-Parte Proceedings for Removal or Re-Examination
Third-parties (or the USPTO Director) will be able to institute proceedings to have a registration removed or re-examined on the basis that it has either never been used in commerce or was not used before a particular relevant date. Such petitions need to establish a prima facie basis for the allegation and be supplemented with evidence to the effect that reasonable investigations were conducted to determine whether the trademark has been used in commerce.
For the removal action a non-use allegation in respect of some of all of the goods or services needs to be made within the period of 3 to 10-years after the registration date. It will also be possible to file this allegation directly with the TTAB within the same period. The non-use re-examination procedure is used where the alleged non-use is in relation to a particular relevant date such as at the filing date if use in commerce was claimed, or, for applications filed on an intention to use basis, the date of an amendment to allege use or that the time period for filing a statement of use has expired. Such re-examination actions need to be made within 5-years from the registration date.
Where such petitions are granted the Director will require the registrant to respond with evidence of use or excusable non-use. If some or all of the challenged goods or services are removed the registrant will have a right of appeal to the TTAB. Where the USPTO determines that the trademark has been used in relation to some or all of the challenged goods or services those goods or services will be immune from new or further ex-parte removal or re-examination challenges.
Flexibility for Office Action Response Periods
The USPTO will have discretion to shorten the current six-month time limit for responding to an office action down to a minimum of 60-days. There will also be discretion as to the number and duration of extensions of time (up to the full 6-months) that can be granted, and these will be subject to extra fees.
Third-Party Submissions During Examination
Currently the USPTO allows third-parties to submit evidence prior to registration regarding a trademark’s registrability – known as letters of protest. The Act formalises this practice with effect from 2nd January 2021, making them subject to a $50 fee and requiring the USPTO to make a (non-reviewable) decision on whether to include the evidence in the application within 2-months from receipt. Such submissions need to specify the legislative provisions that the examiner needs to consider the evidence in relation to.
Rebuttable Presumption of Irreparable Harm
Where it is found that a trademark has been infringed or that there is a likelihood of success on the merits the trademark owner will now be entitled to a rebuttable presumption of irreparable harm if they are seeking injunctive relief. This will make it easier for trademark owners to enforce their rights in Federal Courts.
4. Copyright
Location of First Disclosure Crucial for Unregistered Design Rights
While the end of the Brexit transition period has seen the creation of UK equivalents for registered EU IP rights, going forward the location of first disclosure of a product will determine whether UK or EU unregistered design rights can be obtained.
UK unregistered designs only protect shape and last the lesser of ten years from the end of the calendar year in which they were first made available or fifteen years from the end of the calendar year in which they were first recorded in a design document. Unregistered community designs (UCDs) protect many aspects of a product, including colours, patterns, logos and material and last three years from their first disclosure.
Prior to the end of the transition period if the first disclosure of a product occurred within the UK it would qualify as both a UK unregistered design and as a UCD. UCD rights existing at the end of the transitional period will continue to be recognised as UCD rights in the UK for their remaining EU term (maximum 3-years) and will be known as a continuing unregistered design.
Following the end of the transition period first disclosure of a product within the UK no longer qualifies as a UCD. However, from 1st January 2021 a UK-only equivalent of the UCD has been enacted and is known as a Supplementary Unregistered Design (SUD). Hence, the first disclosure of a product within the UK now qualifies as a UK unregistered design and as a SUD. Importantly though, such first disclosure in the UK can be invalidating for a UCD and vice-versa if the first disclosure is in the EU. In the case of simultaneous first disclosure in both the UK and the EU it appears that neither would invalidate the other, but the specifics of the disclosure may make it arguable that it was disclosed towards one of those jurisdictions and not the other.
UK unregistered designs can only be obtained by qualifying persons, who are deemed to be either a person who habitually resides in a qualifying country or a legal entity that is formed in and carries on substantial business in a qualifying country. From 1st January 2021 EU member states were removed from the list of qualifying countries, which now consists of the UK, New Zealand, Hong Kong and various overseas territories and dependencies.
While UK unregistered designs only protect shape, on a less is more basis this can give them broader protection than a UCD or SUD in which protection is limited to the combination of design attributes. Hence, for a UK unregistered design the court would not take into account differences in material, colour or patterning when deciding whether infringement has occurred. Although UK unregistered designs last significantly longer than a UCD or SUD, during the last 5-years of their duration they are subject to licences of right.