September 2015

1. Patents

United Kingdom

Judge Prescribes Swiss-Form Claim Infringement Remedy
In Generics (UK) Ltd v Warner-Lambert Company LLC the Judge backed a proposal that would reduce the likelihood of infringement of patents with swiss-form claims.

Warner-Lambert, a subsidiary of Pfizer Inc, held a patent with claims in the swiss-form directed towards using pregabalin for treating pain. Patent protection for the substance pregabalin had recently expired and Actavis intended to launch a generic pregabalin product for the treatment of epilepsy and general anxiety disorder. Warner-Lambert were particularly concerned that such generic versions of pregabalin might be subject to ‘off-label’ prescriptions for treating pain and thereby infringe its swiss-form patent. However, it was also acknowledged that such infringement would be due to doctor prescribing practices and that this was something Generics were unable to influence.

Prescribing doctors standardly identify drugs by their international non-proprietary (or generic) name, which in this case is pregabalin. Generic prescribing is encouraged at all levels of the healthcare system including the clinical software used by doctors. Further, it is rare for prescriptions to identify the condition for which the drug has been prescribed, and this is unlikely to change, particularly on account of respecting patient confidentiality. Where the prescription is written generically, the pharmacist is free to dispense a branded drug or a generic one, the latter of which are generally much cheaper than the former.

In light of this, the Judge invited the Secretary of State for Health to put in place a system separating the patented market for a substance from the generic market. In particular, it was suggested that this would best be achieved by ensuring that prescribers write prescriptions for the patented indication by reference to the patentee’s brand name and write prescriptions for non-patented indications by reference to the substance’s generic name. In the case at hand the point became somewhat moot. While the Judge rejected the invalidity attack on the patent based on obviousness, the patent was held to be invalid for insufficiency.

2. Designs

United Kingdom

UK Considers National Accession to Hague Agreement
The UKIPO has opened a consultation on possible accession by the UK to the Hague Agreement for Industrial Designs. Japan and the USA recently joined, and Australia is beginning to consider joining.

The UK currently has access to the Hague Agreement on account of the EU becoming a member in 2008. However, national accession is proposed since the Hague Agreement is unlikely to be used by small and medium sized businesses that only want protection in the UK and non-EU countries. It will also be cheaper for non-UK companies that do not want protection in the EU to designate the UK directly from a Hague application.

The UKIPO proposes to require applicants to file directly with WIPO as there is no base registration requirement such as applies for Madrid Protocol trade mark filings. In examining such applications the UKIPO proposes that any decision to refuse notifications would be sent not more than 6-months from the publication of the international registration. The UKIPO does not have an EU-UK designs register and it is likewise proposed that it would not create a Hague-UK designs register.

3. Trade Marks

Australia

Legislation Proposed to Prevent Monopolization of Iconic Symbols
The Trade Marks Amendment (Iconic Symbols of National Identity) Bill 2015 was recently introduced. If passed, the amendments contained in the Bill will prohibit the registration of trade marks which are of national significance or iconic value to the people of Australia. They will also ensure that any trade marks that currently purport to restrict the use of a symbol of national significance or iconic value will be removed from the register of trade marks.

In its current form the Bill would only affect trade marks that consist of or nearly resemble signs which are of national significance or iconic value to the people of Australia. In particular, it would not appear to affect the registrability of marks that contain such signs as a minor element. Provided the presence of the sign in the mark does not purport to restrict others use of that sign this Bill does not appear to affect such marks.

New Zealand

Court of Appeal Considers Daimler's Mercedes Device Appeal Pointless
In Daimler AG v Sany Group Co Ltd the Court of Appeal did not uphold Daimler’s appeal of a High Court judgment which upheld the Assistant Commissioner of Trade Marks decision to accept Sany’s application.

Sany’s trade mark application for a device mark featuring three pointed elements piercing a circle above the word SANY, where the base of each point is non-intersecting and slightly off-centre. Daimler opposed on the basis of its ‘Mercedes’ marks comprising a circle containing three pointed elements (in the same orientation as the Sany device), where the base of each point is mutually intersecting and centred within the circle. In keeping with its initial opposition grounds, Daimler alleged that Sany’s mark would be likely to deceive or cause confusion; is contrary to New Zealand law; and would be likely to be taken as indicating a connection in the course of trade with Daimler’s well known marks and that this would be likely to prejudice Daimler’s interests.

In the High Court the Judge considered that Sany discharged its onus of establishing that there was an absence of confusion or deception, even when taking into account transactions across world markets. In comparing the marks the Judge held that, even if the presence of SANY in Sany’s device mark is ignored, both visually and conceptually the device marks are dissimilar. Daimler’s marks were held to be well known in New Zealand, but, in the absence of sufficient similarity between the marks, this was held not to be of any assistance to Daimler’s case.

The Court of Appeal agreed with the High Court’s assessment that for the respective marks the differences outweighed the similarities and that one mark does not suggest the other. The simplicity and symmetry of Daimler’s device mark were distinguishing features, which contrasted with Sany’s complicated asymmetrical device, which was suggestive of rotational movement. The possibility of confusion was found to be further reduced by the likelihood that prospective purchasers of either party’s products would be discerning and reasonably knowledgeable.

The Court of Appeal also found that even when taking into account fair and notional use rather than just actual use, this did not alter the conclusion that the respective marks are not similar and that use of Sany’s mark is not likely to deceive or confuse.

As with the High Court the Court of Appeal considered that the extra protection given to well known marks was not engaged when the marks are not sufficiently similar. This was held to be the case even on the lesser requirement of only requiring an essential element of Sany’s mark to be identical or similar to Daimler’s well known mark.

United States of America

USPTO Allows Amendment of Goods or Services due to Technological Evolution
A trade mark proprietor may have continuously used their trade mark, but the manner or medium of how the goods or services are offered to consumers could have changed due to technological evolution. A consequence of such change could be that the trade mark is liable for removal due to non-use in relation to the specification of goods or services. In recognition of this, on 1st September 2015 the USPTO commenced a pilot program that allows the specification of goods or services for some trade mark registrations to be amended to allow for changes in technology. Application to make such amendments to registered trade marks are made by way of petition and need to satisfy the following criteria:

• The proprietor must no longer be using the mark in relation to the specified ‘old technology’ along with their ‘evolved technology’. Protection of such dual use would require a new application.
• The mark must still be used on goods or services that reflect the same underlying content or subject matter, and so cannot be used to add unrelated goods or services. However, it is possible to change the classification of the goods or services, even including changing from goods to services or vice versa.
• That in the absence of an amendment under the program it would be forced to delete the original goods or services and thus lose protection.
• Provide a new specimen of use and the new first use dates for the ‘evolved’ goods. The register will still record the original first use dates.

For US registrations that are based on Madrid Protocol registrations the scope of amendment that is possible during the first 5-years from the international registration date will be limited by the scope of the specification of the international registration. Any incontestable status will be lost and cannot be attained in relation to the evolved goods or services for a period of 5-years from acceptance of the amendment. The USPTO will perform a new search to assess any possible third-party harm in allowing the amendment. Accepted amendments will be published.

4. Copyright 

New Zealand

Exemption from Infringement Notice Obligations now Open-Ended for Cellular Mobile Network Operators
The Copyright (Infringing File Sharing and Cellular Mobile Networks) Order 2015 has repealed section 122S(2) of the Copyright Act 1994 from 30th September 2015.

Section 122C(1) of the Copyright Act 1994 creates obligations on an Internet protocol address provider (IPAP) where a rights holder has informed the IPAP of an IP address at which an infringement of its copyright is alleged to have occurred as a result of file sharing. In particular the IPAP must match the IP address with the account holder and send the account holder an appropriate infringement notice within 7 days.

Section 122S(1) provides that an IPAP need not comply with their obligation to match the IP address of an alleged infringer with the account holder in respect of the services it provides by way of a cellular mobile network. Section 122S(2) had specified that section 122S(1) would be repealed from 30th September 2015. Consequently, the current Order has the effect of making the exemption for IPAP’s obligations in respect to cellular mobile networks open-ended.