June 2016

1. General

New Zealand

Select Committee proposes significant changes to ACVM Bill
The Primary Production Committee has now reported back with an amended Agricultural Compounds and Veterinary Medicines Bill.

The Bill was introduced in August 2015 and, as reported, it extended protection for confidential information given in support of an application for the registration of an innovative agricultural compound 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. Obtaining the 8-year maximum would have required obtaining three 1-year extensions for each new use authorised as a result of a successful variation application.

However, the amended Bill now proposes extending the base term of data protection for innovative trade name products (TNP) from 5-years after registration to 10-years after registration. While noting that this will result in less competition during the protection period, it is asserted that the stronger protection will result in greater competition in the medium to longer term from more product registrations. The variation application provisions are replaced by provisions that extend the protection period for applications relating to a new use or method of use by the later of:

• the end date of the protected period for confidential information supporting the innovative TNP application that resulted in the registration of the product (10-years after registration); and
• the date that is 5 years after the date on which the Director-General grants or refuses to grant the application to authorise a new use or method of use.

It is asserted that this will encourage early applications to register new uses or methods of use, although it will also result in longer protection where the new use is introduced later.

For non-innovative TNP’s the amended Bill recommends increasing the protection period from 3-years to 5-years after the application is decided. New uses of non-innovative TNP’s are also recommended to increase to 5-years after the new use application is decided.

The qualifying criteria for a new use or method of use has been broadened from enabling a product to be used on an additional animal or plant species to: varying one or more conditions on an ACVM registration to permit change in the purpose for which an agricultural compound can be used, how or when the agricultural product is applied, or the withholding period for the product.

A provision has also been introduced to allow for protection of new data supplied during a re-assessment of a registered TNP. Such data would be protected for 5-years from the date of the re-assessment decision.

The amendments would not be retrospective, but would apply to new uses or methods of use or reassessments after the commencement date in respect of TNP’s applied for or registered before the commencement date.

Russian Federation

Cease and Desist letters required prior to litigation
With the aim of decreasing the number of court cases, since the 1st June 2016 claimants who think their IP rights have been infringed must first submit a cease and desist letter and then wait for 30 days before filing a court action. However, this change makes enforcement of IP rights more difficult, particularly where the infringing activity occurs online. Obtaining contact details of online infringers can be frustrated by registrars that refuse to disclose their client’s personal data.

United Kingdom

Brexit vote means UK IP rights will eventually require separate consideration
The recent vote which favoured the United Kingdom leaving the European Union has opened up a range of options for legislative changes and the resultant consequences will affect many activities.

The current uncertainty about the likely changes extends to the timeframe in which the changes will be effected. The Article 50 exit mechanism specifies that the UK would leave the EU at the earlier of the withdrawal agreement coming into force or two years after the date of its notification of withdrawal. However, this period can be extended by unanimous decision of the Council in agreement with the UK government. Given the complexity of the task many commentators consider that negotiations will take over two years and possibly up to 10 years.

Until the withdrawal agreement is finalised or comes into effect by default the current intellectual property rights in the UK and EU will remain unchanged by the vote.

Given that the European Patent Convention (EPC) is not part of the EU, UK businesses and individuals will still be able to file patents via the EPC. However, given that membership of the EU is necessary for the forthcoming Unitary Patent (and Unified Patent Court), EPC patents will need to continue being validated in the UK to have effect there.

In contrast, EU registered trade marks and designs currently automatically cover the United Kingdom. This path to obtaining such IP rights in the United Kingdom will no longer be available once the exit takes effect. Yet to be decided is what status such EU applications and registration prior to the exit taking effect will have after it takes effect. However, it would appear likely that a pragmatic solution will apply, such as transitional arrangements specifying that the rights will (automatically) convert into UK applications and registrations.

2. Patents

PCT

Amendments to PCT Regulations enter into force
With effect from 1st July 2016 several amendments to the PCT Regulations will enter into force. Notable changes include:

• Rules 48 (International Publication) and 94 (Access to Files) will allow applicants to make a reasoned request that information be omitted from the published version of an international application or the associated files if it does not obviously serve the purpose of informing the public about the international application, it would prejudice the personal or economic interests of any person and there is no prevailing public interest to have access to that information. This will allow the removal of certain irrelevant information, normally included accidentally in the international application or associated documents.
• The force majeure provisions of Rule 82quarter (Excuse of Delay in Meeting Time Limits) will be extended to include the missing of a time limit due to a general failure of electronic communications services in the area where the interested party resides. Such an outage will not automatically excuse a failure to meet a time limit. It will be necessary to provide evidence that the outage took place, allege that the outage prevented the time limit being met, and that relevant action was subsequently taken as soon as reasonably possible.

3. Trade Marks

New Zealand

Smoke beginning to clear on plain packaging legislation
The Ministry of Health has released a consultation document concerning draft regulations to standardise tobacco products and their packaging, including plain packaging of cigarettes. The current Bill, which is to be renamed as the Smoke-free Environments (Tobacco Standardised Packaging) Amendment Act, will, at the latest, come into force 18-months after it receives royal assent.

The draft regulations are set out in four parts:

• Part 1 sets out general requirements that will apply to all tobacco products (subpart 1) and all tobacco packages (subpart 2) respectively.
• Part 2 contains provisions that apply only to cigarettes, cigarette packs and cigarette cartons.
• Part 3 relates to loose tobacco packaging.
• Part 4 covers packaging for cigars.

Consultation issues and questions are set out in the consultation document under two headings.

• Size and quantities of tobacco products.
• Permitted markings on tobacco packages.

In addition to the standardised text font, colour and size and the background colour of tobacco packages, the regulations also contain the following restrictions:

• Packages must not contain inserts;
• The package must not contain or make any scent that could have the effect of promoting the product;
• The package must not contain any noise making feature that could have the effect of promoting the product;
• The package must not contain any feature that is designed to alter the package after sale.

Submitters can also suggest other additional features to increase the effectiveness of standardised packaging and make other comments on the content of the draft regulations. Submissions are requested to be made using the response form provided (docx, 29 KB) and sent by email to standardisedtobacco@moh.govt.nz by 5pm Friday 29 July 2016.

United States of America

USPTO seeks heightened powers for verifying scope of use
The USPTO is seeking feedback on a proposal to amend the Trade Mark Regulations to allow the USPTO to obtain increased verification that a trade mark is in use.

Currently between the 5th and 6th years of registration owners are required to supply an affidavit or declaration to the effect either that the trade mark is in continuing, good-faith commercial use or that there is excusable non-use. There is also a requirement to supply at least one specimen of use for each class, although this can be satisfied by photographic evidence. Provided these criteria are satisfied the USPTO does not investigate further.

However, in a 2012 proof of use pilot study it was found that many owners were unable to verify use of other goods or services in their specifications, even though their affidavit stated all the goods or services were in use.
The amendment proposal will allow the USPTO to conduct random audits on up to 10% of the use affidavits where the mark is registered in respect of more than one good or service per class and require the owner to provide proof of use for some of the additional goods or services. Comments on the proposal can be made via the webpage by 22nd August 2016.

TTAB clarifies the when and who of use
In Noble Home Furnishings LLC v Floorco Enterprises LLC the Trademark Trial and Appeal Board (TTAB) clarified when an intent to use application needs to be used and when use by a parent entity can count as use by the subsidiary entity.

Floorco’s intent to use application for NOBLE HOME was filed in January 2008 and its statement of use was filed in August 2011, after which it was registered in November 2011. Noble petitioned for cancellation of Floorco’s registration based on non-use. The evidence showed that Floorco last used the mark in July 2009. However, the TTAB held that for intent to use applications the non-use period does not start until the statement of use was filed (in August 2011). Nonetheless, there was still a three year period of non-use, and so a prima facie case of non-use had been established.

Floorco tried to counter the prima facie case of non-use by leading evidence that, while no sales were made, the relevant goods were sporadically marketed and advertised for sale. However, the marketing and advertising was done by Floorco’s parent company Furnco International Corporation. The Trade Mark Act allows for use by a related company to count as use by the owner of the mark if such use of the mark is controlled by the owner.

However, in this case, as the parent company, Furnco was taken to be controlling the use of the mark, and Floorco was unable to provide evidence of any licence or other agreement to counter that presumption. Consequently, the TTAB held that Furnco’s use could not count as use by Floorco, and nor could they be taken as evidence that Floorco intended to resume use of the mark.