March 2022
1. General
IPONZ Case Management System Updates
On 31st March 2022 IPONZ introduced a number of changes to its case management system. Some of the changes are minor tweaks, bug fixes or additional explanations that allow the relevant features of the system to function as intended or provide further clarification. However, there are also some enhancements aimed at providing more options as well as automated checks to highlight when potentially non-complying data has been entered. Notable changes are as follows:
- The Trade Mark Specification Builder now allows specifications to be exported into the trade mark application form in .xml format. The trade mark application form also allows the goods and services from any trade mark on the register to be imported into the specification.
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When a custom (non-pre-approved) term is added to an application’s specification four automated filters will be applied which will result in direct feedback being given if the term is not considered appropriate. Namely:
1. If a custom term cannot be accepted in the current class but is pre-approved in another class, it will suggest moving the term to the appropriate class.
2. If a custom term contains a registered trade mark that shouldn’t appear in a specification an alternative phrasing will be suggested.
3. If a custom term contains keywords which indicate it may be too broad it will query whether the keywords accurately reflect the intended use of the trade mark.
4. If a term is duplicated in your specification it will be suggested to remove the duplicate term. - Organisations that maintain multiple case management system user accounts can now organise some of those accounts into teams. Each team will have a designated team contact who will receive all email communications for cases delegated to that team contact. Other members of that team will be able to view that case’s discussions and/or respond to its tasks. While this could be beneficial it is also subject to a number of restrictions that may make it inappropriate for some user account holders.
- When filing a provisional patent application, the option to upload the provisional specification to the WIPO Digital Access Service (WIPO DAS) will be selected by default.
- When updating priority claims for a patent application after examination has been requested, there is now an option to add a WIPO DAS code to these claims.
- The section 71 deadline by which a patent application under examination needs to be placed in order for acceptance is now visible on the case file in the public patents register.
2. Patents
Recent IPONZ Patent Examination Manual Updates
The IPONZ Patent Examination Manual has recently been updated in relation to the section 67 provisions that set a response deadline for examination reports and in relation to 'reach through' claims under section 39.
The updates to further specify its practice in relation to section 67, which requires applicants to respond to an examination report by a deadline set by the Commissioner, notably make the following changes:
- Clarifying that a response counts as a substantive response for section 67(6) purposes if it is clear that the applicant is attempting to overcome objections and is responding in good faith.
- If a substantive response has been filed the date for responding to a subsequent examination report will be the longer of the deadline for responding to the previous examination report or 3-months from the subsequent examination report (extendable by 1-month).
- If a response is found to be non-substantive, then the date for responding to a subsequent examination report will be the longer of the deadline for responding to the previous examination report or 1-month from the subsequent examination report (extendable by 1-month).
As before, any new deadline under section 67 cannot extend the deadline under section 71 for putting the application in order for acceptance.
The update in relation to reach through claims under section 39 removes the following paragraph 77:
77. Other types of reach through claims are where there is a claim to an object and then claiming further objects when the first object is in connection with it. For example if the invention was a new paint, then claiming a road which the paint had been applied to could be classed as a reach through claim.
CAFC Admonishes District Court’s Off-Target Means-Plus-Function Analysis
In Dyfan LLC v Target Corporation 21-1725 the Court of Appeal for the Federal Circuit (CAFC) reversed a District Court decision on the basis that it had wrongly found that the relevant claims were in means-plus-function format.
The patents in contention have a shared specification and concern systems for location based triggers for mobile phones. The system is most likely to be used in shopping mall buildings, and involves the use of short range communication units (connected via a server to the internet) that can broadcast location relevant messages to mobile devices within communications range.
In response to an infringement action by Dyfan, Target argued that each of the asserted claims included limitations that should be construed as means-plus-function limitations. On the basis that the specification failed to disclose structure corresponding to these means-plus-function limitations Target argued that the claims were invalid as indefinite. In November 2020 the District Court issued a claim construction order in which it concluded that the disputed (1) “code” / “application” limitations and (2) “system” limitations were invalid as indefinite. For the “code” / “application” limitations the District Court found there to be no algorithms disclosed and so concluded that there was no corresponding structure. The “system” limitations were likewise found indefinite for lack of corresponding structure as they were found to recite purely functional language.
The CAFC noted that under the section § 112 ¶ 6 provision the patent applicant has two choices, being either:
(1) recite, in the claim, a function without reciting structure for performing the function and limit the claims to the structure, materials, or acts disclosed in the specification (or their equivalents), in which case § 112 ¶ 6 applies, or
(2) recite both a function and the structure for performing that function in the claim, in which case § 112 ¶ 6 is inapplicable.
In practice, the presence or absence of the term “means” in a claim creates a presumption that the claim either is or is not in means-plus-function format respectively. To rebut the presumption that a claim is in means-plus-function format a challenger must demonstrate that the claim term fails to recite sufficiently definite structure. The presumption that a claim is not in means-plus-function format can be displaced by the presence of nonce words in the claim, which reflect nothing more than verbal constructs and so are considered tantamount to the term “means”. The determination of whether the words of a claim are understood to have a sufficiently definite meaning as the name for structure is made in relation to persons of ordinary skill in the art.
The following claim extract was taken by the parties as representative of the “code” / “application” limitation:
said code, when executed, further configured to . . . after the first visual information is caused to be output based on the first location-relevant information; after the at least one mobile device is moved in the building; and in response to the receipt, from the at least one server and via the second wireless communications protocol, of the second response message including the second lo-cation-relevant information: cause to be output, via the at least one mobile device, the second visual information based on the second location-relevant information . . . .
As this did not use the term “means” the onus was on Target to show that persons of ordinary skill in the art would not have understood the “code” / “application” limitations to connote structure in light of the claim as a whole. The District Court concluded that Target satisfied that onus. However, the CAFC found that the District Court wrongly arrived at that conclusion by ignoring the evidence given by Target’s expert, Dr Goldberg. Dr. Goldberg testified that the term “application” would have been commonly understood to mean a computer program intended to provide some service to a user and that structure was likewise connoted by the term “code” which in context means a bunch of software instructions. In further accordance with Dr Goldberg’s testimony specific algorithms were not required as the person of ordinary skill in the art would know that the claimed function of displaying information could be implemented using “off-the-shelf” code or applications.
The representative claim for the “system” limitation also did not use the term “means”. Again the District Court concluded that Target satisfied the onus upon it on the basis that the term “system” functioned as a nonce word, being a verbal construct that is not recognised as the name of structure. The CAFC agreed that in a vacuum the term “system” may well be a nonce word, but in the context of the representative claim found that it connoted structure. In particular, structure for the “system” limitation in the wherein clause derive antecedent basis from the “system” recited in the preamble, which the claim states comprises “a building” having “a first broadcast short-range communications unit,” “a second broadcast short-range communications unit,” “code” executed by at least one “mobile device,” and “at least one server.”
In the alternative case that “system” connotes some structure, the District Court contended that the claims do not specify which of the components in the system performs the recited function and that it is possible that an unspecified black box component in lieu of the recited components performs the specified function. Again the CAFC looked to the claim limitations preceding the wherein clause to establish that it is the code that performs the function recited in the wherein clause.
3. Trade Marks
Significant Use of Mark in Sponsorships Assists Pirelli’s Opposition to Similar Mark
In Rodin Cars Limited v Pirelli Tyre S.P.A. [2022] NZIPOTM 4 Pirelli’s sponsorships of various highly viewed events partially made up for its lack of New Zealand trade or consumer related evidence on confusion.
Pirelli opposed Rodin’s application for FZERO for a wide range on goods and services in classes 7, 12, 37, 40, 41 and 42 on the basis of both its registration for PZERO in class 12 for various vehicle tyres, wheels, inner tubes, rims and parts and fittings and its use of that mark and the substantially identical mark P ZERO.
Pirelli contended that the FZERO mark would be likely to deceive or cause confusion (s. 17(1)(a)), conflict with its similar prior registration (s. 25(1)(b)) and conflict with its well-known mark (s. 25(1)(c)).
Reputation:
Pirelli have a long history of manufacturing tyres and associated items and positions itself as a producer of high end tyre related goods for high performance vehicles. The first P ZERO tyre launched in Italy in 1987 and they have been promoted and sold in New Zealand since at least 2006. The P ZERO brand also features in many motorsport events which Pirelli is a sponsor of. Pirelli have been the exclusive supplier of tyres for Formula 1 cars since 2011 and for the Electric GT Championship since 2017, both of which display the P ZERO brand on the unenclosed tyres. Pirelli’s P ZERO tyres have also been used in the World Rally Championship which has taken place in New Zealand on numerous occasions. In 2013 Pirelli’s sponsorship of Team New Zealand’s boat at the highly viewed 35th America’s Cup even resulted in the P ZERO mark being on the boat’s rudders which were visible above the waterline when the boat was foiling.
Similar Prior Registration:
The Assistant Commissioner first considered the opposition under section 25(1)(b) on the basis of Pirelli’s PZERO registration, which proceeds on a notional basis of assumed fair use of the registered mark without taking into account the reputation in that mark. With the exception of whole vehicles in class 12, the Assistant Commissioner considered the rest of the goods in classes 7 and 12, which relate to parts for vehicles and machines for vehicle maintenance and modification, to either be the same or similar to the goods of the registered mark on account of involving similar uses and users. The application’s class 37 specification covered services related to the maintenance and repair of motor vehicles. This was found to be sufficiently similar as Pirelli’s goods or information about them may sometimes be expected to be involved in the provision of the services. The class 40, 41 and 42 specifications are not restricted to vehicle related services, but to the extent that they do they were found to be similar to the goods specified in Pirelli’s registration. The Assistant Commissioner found the visual similarity of the two marks to be very high, with the marks being the same length and the different first letters being visually similar. Given the different pronunciations of those first letters the marks were found to have a low to moderate aural similarity. A moderate to high conceptual similarity was found, with the lead letter of each mark not being shown to have any particular significance and so being somewhat arbitrary. These findings led the Assistant Commissioner to conclude overall that FZERO is similar to PZERO. However, when considering the likelihood of deception or confusion, the Assistant Commissioner only found that to be the case where the application’s goods or services relate to tyres, vehicle wheels, and parts and fittings for tyres and wheels and so required removal of references thereto along with disclaimers thereto. The Assistant Commissioner found support for the limited scope of that prohibition from the High Court case Automobile Club De L'Ouest, Aco v South Pacific Tyres New Zealand Limited CIV 2005-485-248, which also involved tyres and found essentially the same disclaimer appropriate where both parties claimed rights in the mark LE MANS.
Likelihood of Deception or Confusion:
Nonetheless, Pirelli was found to have a stronger case under the consumer protection ground of section 17(1)(a). Pirelli’s reputation in the PZERO mark was sufficient to put the onus on Rodin to establish that normal and fair use of the FZERO mark would not be likely to deceive or confuse a substantial number of persons. Particularly in light of its use in sponsorships the public’s awareness of the PZERO mark was found to create a reputation that is wider than the goods it was registered in respect of. The Assistant Commissioner found confusion or deception would be likely for any goods or services in the application for the FZERO mark that relate to vehicles and/or motor sports, which resulted in the entire specifications for classes 7, 12 and 37 of Rodin’s application being removed along with significant portions of the class 40, 41 and 42 specifications.
Prior Well Known Mark:
At this point Pirelli might have considered it could mop up the remaining class 40, 41 and 42 services of Rodin’s application through its section 25(1)(c) ‘well known’ mark ground of opposition. However, despite acknowledging that it is not necessary for a trade mark to be “iconic” in order for it to be “well known”, the Assistant Commissioner held there was insufficient evidence to conclude that the PZERO mark is well known amongst those interested in high performance tyres in New Zealand. There was no evidence from anyone in the tyre trade in New Zealand, nor any survey evidence. There was no corresponding New Zealand evidence to the evidence which led to the mark being held to be well known in Australia. The Assistant Commissioner downplayed the above noted reputation mainly attained via various sponsorships of high viewer events, noting that a 2008 High Court decision cast doubts on what can be inferred about such reputation in the absence of market survey evidence regarding brand awareness. Yet such sponsorships would involve several millions of dollars, which contrary to another of the Assistant Commissioner’s findings, would at least be indicative of the value associated with the mark. Further, some of that sponsorship specifically involved events in New Zealand. Nonetheless, the Assistant Commissioner proceeded to further consider the section 25(1)(c) ground on the assumption that the PZERO mark is well known. For the goods and service that had already been found to be similar the Assistant Commissioner held there was insufficient evidence that Pirelli’s interests would be prejudiced. The Assistant Commissioner was not willing to infer prejudice to Pirelli’s interests despite Pirelli contending that consumers would likely be confused regarding the origin of the goods or that there is some association or affiliation with their own goods or that the FZERO brand is related to the PZERO brand. For the goods and services that were not found to be similar the opponent has the additional requirement of showing that use of the applicant’s mark would be taken as indicating a connection on the course of trade with the opponent. Despite having found the marks to be similar, the Assistant Commissioner considered that the link was too tenuous to indicate such a connection.
Concluding Remarks:
While Pirelli might consider the Assistant Commissioner’s findings in relation to its prior similar registration of little comfort, the reputation it established in its mark through various sponsorships compensated for that in relation to similar goods and services under the consumer protection ground. Pirelli could feel aggrieved about the finding that there was insufficient evidence to show that its mark is well known or that its interests were not prejudiced. However, given that Rodin has an unchallenged registration for RODIN FZERO in class 12 covering all the goods, including tyres, that were removed from the specification for its FZERO application, there is little to be gained from appealing the decision.