July 2022
1. General
Applicant Friendly Changes to Japanese Patent and Trade Mark Practice Approved
On 15th July 2022 the Japanese Cabinet approved some notable applicant friendly changes to Japanese patent and trade mark practice, which will take effect from 1st April 2023.
Patents: Where a patent right has lapsed due to the expiring of the procedural period restoration can be requested. However, currently it is not easy to obtain restoration as the requirement of having a legitimate reason is hard to satisfy, with the following types of reasons generally being insufficient: improper management of deadline by a patent attorney; a coincidence of bad luck; or there were special circumstances.
From 1st April 2023 restoration requests in respect of failure to meet the procedural period will only need to meet the standard of not being caused by wilful misconduct if in respect of any of the following actions where the indicated status on or after 1st April 2023 is satisfied:
- translation of foreign language application or PCT application (for pending applications);
- patent application claiming priority (for applications filed on or after 1st April 2023);
- request for examination; (where request for examination filed on or after 1st April 2023) or
- late payment of annuity (patents).
Trade Marks: Unlike most contracting states to the Madrid Protocol, Japan requires fees to be paid via the International Bureau when grant of protection is issued in addition to the designation payment at the time the application for International Registration is filed. As not all applicants are aware of Japan’s two-stage fee payment system many Japanese designations have lapsed on account of failure to pay the grant fee.
From 1st April 2023 Japan will align with most other contracting states by only requiring payment at the filing stage. This will mean the filing fee for Japan will increase, although the amount has yet to be specified. In the interim, if an applicant misses the payment deadline for the grant fee and that deadline was up to two-months ago, they can request continued processing under rule 5bis of the Common Regulations. This will involve an addition fee, but will be cheaper than refiling.
2. Designs
UK Government Issues Response to Consultation on UK Design Protection
Following the completion of the earlier announced consultation on UK design protection, and in light of the responses received, the UK Government has issued its response, indicating the aspects of the law that are likely to be reviewed or be the subject of further investigation.
Registered designs - search and examination
Stakeholder feedback indicated the importance placed by them on the speed and value of the current design registration service and raised concerns that this would be compromised by re-introducing a search requirement. While acknowledging the increased time involved, the government considers that searching will increase certainty about a design registration’s validity and so will further consider options for a search and examination system. It looks likely that an AI search system will be utilised and that an Australian style two-tier examination system will be adopted so that designs can be registered reasonably quickly, but not be enforceable until a more substantive examination has been successfully completed. The government did not state any preference regarding the introduction of either an opposition procedure or a bad faith provision, but it was noted that there was little support for either. The government will also give consideration to extending its involvement in the WIPO Digital Access Service (WIPO-DAS) system to designs.
Simplifying the designs system
The government acknowledges that simplifying the overlapping protections available via copyright, unregistered designs and registered designs is desirable, particularly for SMEs. Currently there are 3 types of unregistered design right, although that will become 2 from 2024. There was wide support for effectively reducing this to one by harmonising key provisions in each. The government will also further consider the relationship between designs and copyright law and whether reform is needed or only further guidance.
Disclosure of supplementary unregistered designs
The UK supplementary unregistered design and the unregistered community design each require first disclosure in the UK or EU respectively. The government recognises that further guidance on what constitutes disclosure is warranted, especially in regards to whether simultaneous disclosure in the UK and the EU can allow for valid unregistered design rights in each jurisdiction. Additional stakeholder views and evidence in this regard is sought.
Future technologies
While recognising that allowing filing in additional file formats would be desirable, the government also recognises that it could increase complexity when filing in multiple territories. The option of ceasing to allow the filing of physical specimens was widely supported. It was recognised that the impact of emerging technologies such as 3D and 4D printing, AI and blockchain on design protection and enforcement should be kept under review.
Deferment provision for designs
The government acknowledges that deferring publication of a design is desirable for valid commercial reasons, although it needs to be balanced with provisions for prior use rights or co-pending applications. However, it will consult further on whether to retain the current deferment period of up to 12-months from filing or to increase it to 18-months or 30-months.
Enforcement
The government recognises the cost of enforcing rights can be a barrier to enforcement, especially for individuals and SMEs, and will further consider options such as a designs opinion service or allowing registered designs into the small claims track of the Intellectual Property Enterprise Court. There were opposing views on whether criminal sanctions should be extended to the intentional infringement of unregistered design rights, but there was little supporting evidence for either view. Consequently the government seeks further supporting evidence before deciding on this.
3. Trade Marks
Opposition to GORGONZOLA Certification Trade Mark Application Rejected
In Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated 2022 NZIPOTM 13 an Assistant Commissioner (AC) was not persuaded that GORGONZOLA has become a descriptive or generic term for cheese in New Zealand.
GORGONZOLA has been a Protected Designation of Origin (PDO) in the EU since 1996. PDO’s are a particularly strict indication of geographical origin. To receive PDO status the entire product must acquire its unique properties by being traditionally and entirely manufactured (prepared, processed and produced) within the specified regions. This contrasts with protection as a geographical indication, which requires that the entire product must acquire its unique properties by being traditionally and at least partially manufactured (prepared, processed or produced) within the specified regions. Through free trade agreements and other diplomatic efforts the EU has been encouraging other countries to recognise EU indications of geographical origin in their legislation concerning geographical indications or denominations of origin. Current jurisdictions in which some form protection is available for GORGONZOLA can be found here.
New Zealand’s geographical indications legislation doesn’t yet extend to foodstuffs, as it has so far been limited to the TRIPs minimum of wine and spirits, and the names for these do not require meeting the PDO standard in order to be protected as a geographical indication. This context led the Italy based Consorzio to apply to register GORGONZOLA as a certification trade mark in respect of cheese in October 2015. In relation to goods a certification mark is a sign that is capable of distinguishing goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified. For certification marks the applicant is also required to file rules governing use of the mark within 6-months. The Consorzio’s rules regarding qualifying use of GORGONZOLA relate to a unique combination of physical, organoleptic, chemical and chemo-physical characteristics for the cheese produced. According to the Consorzio GORGONZOLA is a distinctive name applied to a specific type of cheese, produced in a particular region of Italy using traditional methods, which cannot be exactly replicated elsewhere.
In July 2018 Consorzio’s application was accepted by IPONZ subject to being endorsed as registered under section 18(2), which allows for acquired distinctiveness on account of use or any other circumstances. In opposing the accepted application the Association argued that in New Zealand Gorgonzola is a generic name for a type or style of blue-vein cheese and that it is too late to assert otherwise.
The AC noted that on account of Gorgonzola being indicative of the geographical origin of Gorgonzola cheese, the applied for mark does not satisfy section 18(1)(c) or the catch-all provision 18(1)(b), and so found the opposition made out under those grounds. Consequently the registrability of GORGONZOLA was dependent upon the exception provided under section 18(2).
The AC then noted the Australian decision rejecting GORGONZOLA as a certification mark due to a long and on-going history of use of that term to describe a style of cheese that may but need not emanate from Italy, and so there was found to be a need for other traders to use that term for its descriptive properties. Also noted was the UK decision finding STILTON to qualify as a certification mark for cheeses due to the sufficiently long use of that term to exclusively denote cheeses manufactured by a particular process in the counties of Derbyshire, Leicestershire and Nottinghamshire. Interestingly the village of Stilton is not in any of those counties, but its name is used as the relevant cheese has a long history of being sold there.
The AC then held that GORGONZOLA having PDO status in the EU does not by itself amount to “other circumstances” for section 18(2) purposes, and that the distinctiveness of GORGONZOLA must be considered from the perspective of the average consumer perceiving the mark used in relation to cheese. The Association argued that Gorgonzola is simply a method of making cheese and anyone with the recipe or knowing the method can make it and legitimately describe it as Gorgonzola. They led evidence of a number of non-certified users of Gorgonzola in relation to cheese in New Zealand. The largest of these was Puhoi Valley Cheese Company who used ‘Gorgonzola style’. However, the AC took that to indicate that the cheese is not Gorgonzola but seeks to emulate the characteristics of Gorgonzola, as there would be no need to use “style” if Gorgonzola were a generic description for those characteristics. The AC noted that the lack of evidence of widespread and long-standing use of Gorgonzola generically counted against the Association’s position. The Association’s evidence also included declarations by experienced New Zealand based cheesemakers including the head trainer at the New Zealand Cheese School and members of the New Zealand Specialty Cheesemakers Association stating that Gorgonzola is a generic description and that consumers do not perceive the cheese as needing to have a specific origin. However, the AC questioned their independence and found their views to be imprecise or too general. While the AC found there was some evidence of Gorgonzola being used descriptively in relation to cheese, overall the AC favoured the Consorzio’s evidence as representing the state of the market from the perspective of the average consumer and so found acquired distinctiveness to be made out.
The way in which the AC downplayed the Association’s evidence and arguments could give rise to grounds for appeal. However, the subsequent confirmation that New Zealand and the EU concluded their FTA negotiations and that many EU PDO’s and GI’s (including GORGONZOLA) will eventually be protected in New Zealand as GIs for foodstuffs in addition to wine and spirits makes an appeal unlikely.