October 2013

1. General

Australia

New Patent and Trade Mark Attorneys Code of Conduct Introduced
The Professional Standards Board for Patent and Trade Marks Attorneys has now issued the Code of Conduct for Patent and Trade Marks Attorneys 2013. The Code will replace the current code of conduct from the 23rd November 2013. Under the Trans-Tasman Patent Attorney Bilateral Arrangement the current code of conduct applies to New Zealand Patent Attorneys until the Trans-Tasman code of conduct is developed and approved. The newly issued Code does not refer to itself as a Trans-Tasman code, however it does recognize IPONZ as a regulatory authority that registered attorneys would deal with.
The Code of Conduct:
 explains to registered attorneys the standards of professional conduct that they are expected to meet in their practice as registered attorneys
 aligns those standards with the behaviours expected of other comparable professionals
 makes it clear to users of the services of registered attorneys what they should expect
 provides a framework for the Board to readily determine whether the conduct of an attorney should be the subject of disciplinary proceedings before the Patent and Trade Marks Attorneys Disciplinary Tribunal.

2. Patents

Europe

EPO to Relax Restrictions on Divisional Filings
On 1st April 2010 the EPO introduced restrictions to the filing of divisionals in an attempt to reduce examination backlogs and provide legal certainty for third parties and the EPO. From 1st April 2010 applicants were only able to file divisional applications on their own initiative up to 24-months after the first examining division communication for the earliest application in a sequence of divisional applications.
However, the EPO has now advised that with effect from 1st April 2014 the 24-month time period for filing divisionals will be repealed. Consequently, divisional applications will be able to be made from parent applications that are still pending on or after that date even if the 24-month time period has lapsed.
The EPO will from that date replace the 24-month time period with extra fees for filing second or subsequent generation divisionals. Those fees are not yet available, but are planned to progressively increase with each generation of divisional up to a maximum level.

New Zealand

Trans-Tasman Single Application and Examination Another Step Closer
As part of progression towards a Single Economic Market (SEM) Cabinet approval has now been given for the Trans-Tasman Single Application Process (SAP) and Single Examination Process (SEP). Under the SAP simultaneous applications in both countries will be able to be filed via either the IPONZ or IP Australia websites. This is expected to be in place in March 2015, being 6-months after the commencement of the New Zealand Patents Act 2013. Eventually, an examiner from the office whose website is used for the SAP will examine both applications according to the law in each country. However, initially this will be done through a pilot program and involve public consultation. The decision on whether to fully roll-out the SEP is not expected to be made until 2017. Now that Cabinet approval has been given the required changes to the forthcoming Patents Act 2013 will be included as part of the yet to be introduced Patents (Trans-Tasman Patent Attorneys) Amendment Bill. Further detailed work on implementation will also be undertaken in the interim.

PCT

PCT Regulations to be Modified
The Assembly of the PCT Union recently adopted changes to the PCT Regulations that will enter into force on 1st July 2014. The following changes will take effect:
 The International Preliminary Examination will include a ‘top-up’ search. The main purpose of the top-up search will be to find relevant prior art that became available after the International Search was completed.
 For international applications filed on or after 1st July 2014 the written opinion of the International Searching Authority will be published from the date of international publication, rather than 30-months from the priority date as currently occurs.

5 Largest IP Offices to Offer a Joint PCT-PPH Program
The world’s 5 largest IP offices, the EPO, JPO, KIPO, SIPO and USPTO, will from 1st January 2014 offer a joint PCT-PPH (Patent Prosecution Highway) program. Under the program a positive written opinion on patentability by one of those offices acting as the ISA, IPEA or IPRP can be used to request accelerated processing before the other offices. Existing bi-lateral and tri-lateral PCT-PPH arrangements between these offices are integrated into the new all-inclusive program.

ePCT System Now Allows International Bureau to be Receiving Office
The ePCT system now allows for International Applications to be filed with the International Bureau as Receiving Office (RO/IB). The software contains validation features allowing data checks to be made against the IB’s database during preparation of the application as well as detecting formality errors that can be corrected before filing. It is also possible to share access rights to a new international application while it is still being prepared.

3. Trade Marks

China

China to bring Trade Mark Law into Closer International Harmonisation
With effect from 1st May 2014 the following amendments to the Chinese Trademark law will take effect:
 Sound marks will be registrable.
 Multi-class applications become possible.
 E-filing becomes an option.
 The time period for pre-paying renewal will be extended from 6-months to 12-months prior to the renewal due date. Also, the grace period for late renewal will be extended from 6-months to 12-months after the renewal due date.
 Opposition on relative grounds will be limited to interested persons rather than any person. Any person can still oppose on absolute grounds.
 Infringement will require a likelihood of confusion in addition to there being use of the same or similar marks on the same or similar goods.
 The range of activities that constitute assisting trade mark infringement will be broadened.
 Increased fines and the ability to determine compensation on the basis of royalty rates if actual losses or infringer’s profits cannot be determined.
 The range of people who can be held to have filed in bad faith will be extended to cover anyone who has signed contracts, conducted business or maintained a commercial relationship with the true owner.
 Prior used marks will not be prevented from use on the basis of a subsequent registration. However, the registrant will be able to require the prior user to add a distinguishable indication to their prior used mark. The registrant will not obtain compensation if they have not used their mark in the last 3-years.

New Zealand

Continued Processing Can Result in Coexisting Registrations
New Zealand’s accession to the Singapore Treaty was effected by the Trade Marks Amendment Regulations 2012. Amongst other changes the amendment regulations inserted regulation 62A to the Trade Mark Regulations 2003 allowing for continued processing of an abandoned application where the expired deadline is less than 2-months ago provided all outstanding objections are dealt with in the continued processing application. IPONZ has now updated its related practice note. The initial practice note allowed for revocation of a subsequently accepted mark. However, IPONZ has now acknowledged that there is no legislative basis for such revocation of acceptance. The new practice note states that a successful continued processing application can result in 2 marks that are the same or similar coexisting on the register. IPONZ will inform both parties of the coexistence, and the owner of the first filed mark will need to bring proceedings if coexistence is untenable.

United Kingdom

Scrabble Tile Mark Registration Invalid due to Too Many Combinations
The Court of Appeal recently upheld a High Court decision which found that Mattel’s Scrabble Tile Mark registration is invalid. The Tile Mark registration is for a 3-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.
Zynga operates a digital game called SCRAMBLE which Mattel claims infringes 4 of it trade marks. This decision only concerns one of those marks. Mattel argue that the degree of precision required for the registration of a trade mark depends on the mark itself and its distinctive character and that for any mark there is a degree of permissible variation in its graphical representation. It was further argued that in order to determine whether there is “a sign” which is capable of being represented graphically, it is necessary to know what its distinctive character is.
Zynga alleges that the Tile Mark registration is an attempt to make a trade mark do the job of a patent by way of a potentially perpetual monopoly over a huge variety of permutations, presentations and combinations. Zynga agreed with the trial Judges finding that the Tile Mark was not a sign and was not capable of being represented graphically and that these defects could not be remedied by acquired distinctiveness.
The Court of Appeal rejected Mattel’s submissions and held that the Tile Mark is not a sign as it covers too many variations and is not capable of graphical representation as it does not satisfy the requirements of clarity, precision and objectivity.