September 2016

1. Patents

Australia

Swiss-Style Claims held Eligible for Extension of Term
In AbbVie Biotechnology Ltd v Commissioner of Patents the Administrative Appeals Tribunal of Australia (AATA) held that swiss-style claims are valid subject matter for an extension of term application.

In August 2015 an APO hearing decision rejected AbbVie’s application to extend the term of three patents with swiss-style claims. The swiss-style patents are multi-generational divisionals of a parent patent which, along with its divisionals, is due to expire on 10th February 2017. Some of the other divisionals have been granted an extension of term until 10th December 2018. The extension of term on the swiss-style patents was rejected on the basis that they do not satisfy all of the statutory criteria for an extension of term application. In particular, section 70 of the Patents Act 1990 states:

(2) Either or both of the following conditions must be satisfied:
(a) one or more pharmaceutical substances per se must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification;
(b) one or more pharmaceutical substances when produced by a process that involves the use of recombinant DNA technology, must in substance be disclosed in the complete specification of the patent and in substance fall within the scope of the claim or claims of that specification.

The hearings officer held that section 70(2)(b) applies to a product as such and so does not extend to the therapeutic use of the product as is the case with a swiss-style claim. The hearings officer held that holding otherwise would be contrary to the purpose of the Act, since patents covering new therapeutic uses of old substances produced by old processes should not be extended.

However, the AATA placed a different construction on section 70. The AATA agreed with AbbVie’s argument that the words “per se” in subsection 70(2)(a) were added following the use of the phrase in the judgement Astra Lakemedel Aktiebolag v Commissioner of Patents and so should be construed accordingly. In particular, the phrase should be taken to distinguish between those products which were the subject of a product only patent compared to those pharmaceutical substances which were the subject of a process patent. On this construction section 70(2)(b) is intended specifically for extension of patents relating to pharmaceutical products produced by a process that involves recombinant DNA technology and which, as part of their specification, include a particular application. Further, while swiss-style claims were not widely recognised in Australia at the time of the legislative amendment, they would have been known to the drafters of the legislative amendments. The AATA held that the only requirement, for extension of a patent for a substance produced by recombinant DNA technology, is that it be disclosed in the complete specification of the patent and fall within the scope of the patent. It found that section 70(2)(b) does not exclude swiss-style claims and stated that if the legislature had intended to exclude such claims it could have done so by including “per se” after the word “process”.

New Zealand

Restrictions Proposed for Divisionals of 1953 Act Patents
The Ministry of Business, Innovation & Employment are seeking feedback on a proposal to amend the transitional provisions of the Patents Act 2013 so as to limit the filing of divisionals from applications filed under the Patents Act 1953. Submissions need to be filed by 5pm Friday 14th October 2016. It is proposed that section 258 of the Patents Act 2013 will be amended to either:

• only allow divisional applications to be filed from applications made under the Patents Act 1953 up until a yet to be specified date; or
• where a divisional application is made from an application under the Patents Act 1953 after a yet to be specified date, then such applications will be examined for obviousness in line with the practice under the Patents Act 2013.

PCT

Cambodia to Join PCT
From 8th December 2016 Cambodia (KH) will be bound by the PCT. Hence, international applications filed on or after 8th December 2016 will automatically designate Cambodia.

2. Trade Marks

Europe

Scope of Infringement of EU Trade Mark Clarified
In Combit Software GmbH v Commit Business Solutions Ltd a Court of Justice of the European Union (CJEU) has clarified the territorial scope for infringement of a European trade mark when the use of another sign is judged to be misleading or deceptive in relation to that mark only in a portion of the European Union.

Combit has EU and German registrations for combit and sought to stop Commit from using Commit in relation to software. Following earlier appeals the Higher Regional Court of Düsseldorf, Germany held that there was a likelihood of confusion between the two marks in German speaking member states while there would not be a likelihood of confusion between the two marks in English speaking member states. It considered that this created uncertainty regarding the unitary character principle in Article 1(2) of Regulation 207/2009 which states:

‘An EU trade mark shall have a unitary character. It shall have equal effect throughout the Union: … .’

Consequently, the Düsseldorf Court referred the following questions to the CJEU:

(a) In assessing the likelihood of confusion, is the perspective of the average consumer in some Member States or that of a fictive EU average consumer decisive?
(b) If there is a likelihood of confusion only in some Member States, has the EU trade mark been infringed across the European Union, or must the Member States be differentiated individually?’

The CJEU noted that EU trade mark law protects against the use or registration of marks having a likelihood of confusion with an existing registration as well as more generally protecting against any use which adversely affects the trade marks function of indicating origin. A likelihood of confusion on the part of average consumers in any EU member state is sufficient to warrant exercising that right of protection, and so the test does not require consideration from the perspective of a fictive EU average consumer. However, where the likelihood of confusion or other adverse affect on a trade mark’s indication of origin function is only in part of the EU, the territorial scope of the prohibition on use is likewise restricted to that part. Such restriction is required to prevent interfering with legitimate trade or otherwise give the proprietor rights that go beyond the exclusive rights conferred, and so any prohibition order needs to be absolutely clear regarding which parts of the EU are and are not covered by it. Such restriction does not adversely affect the unitary character of EU trade marks, since the proprietor’s right to prohibit all use which adversely affects their trade mark’s indication of origin function is preserved.

Distinctiveness of Sound Marks Considered
In Globo Comunicacao e Participacoes SA v EUIPO a General Court of the European Union held that a telephone dial tone was too banal or devoid of distinctive character to constitute a trade mark.

The mark applied for consisted of the repetition of a sound that resembled a ringtone, which was represented by a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps. Both the examiner and Board of Appeal rejected the mark as being devoid of distinctive character variously on account of not including elements capable of distinguishing it from other marks and consisting of nuances that were likely to escape the target consumer’s attention. Before the current appeal the specification for the PLIM PLIM sound was restricted to media related goods and services in classes 9, 38, 41.

The applicant argued that sound marks should be examined on the same criteria as word and figurative marks, and that while the sound mark is short in duration it is characterised by the repetition of a specific sound which makes it easier for consumers to identify and remember.

The General Court noted from precedent that while the criteria for assessing distinctiveness is the same for various categories of trade marks, the relevant public’s perception of a mark can make it more difficult to establish the distinctiveness of a mark in certain categories compared to others. In this regard it was noted that in general the public is less inclined to perceive a sound as a trade mark compared to words or figurative elements. However, it was also noted that for television broadcasting and other media related goods and services sound elements such as jingles or melodies are regularly used to identify products and services with particular undertakings.
Nonetheless, the General Court held that a sound mark consisting of a mere banal combination of mono-tonal notes could not function as a trade mark since it only refers to itself and nothing else and has insufficient nuances to be equated with a jingle or melody. Such marks will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin, unless it has achieved distinctiveness through use – which was not a subject of the appeal.

New Zealand

Standardised Packaging of Tobacco Products Legislation Ready to Commence
The Smoke-free Environments (Tobacco Standardised Packaging) Amendment Act 2016 was assented to on 14th September 2016 and will commence on the earlier of either a date appointed by the Governor-General by Order in Council or the 14th March 2018.

The amendment Act provides for the standardised or plain packaging of tobacco products that are sold or offered for sale. The specifics of the standardised packaging will be specified in regulations, which will eventually issue from the Governor-General by Order in Council. However, the amendment Act provides that the regulations may without limitation do any or all of the following:

(a) require a tobacco product, or the package for a tobacco product, to be a prescribed size and shape:
(b) prohibit a tobacco product, or the package for a tobacco product, from displaying any words or other marks unless they are specifically permitted:
(c) specify types of words or other marks that are permitted to be displayed on a tobacco product or the package for a tobacco product (for example, bar codes or marks used to record manufacturing information or to detect legitimate products or packages):
(d) specify requirements for the display of the permitted words or marks, including the circumstances and manner in which the words or marks are to be displayed (for example, the typeface or font, size, colour, and position of the words or marks):
(e) prohibit any type of feature from a tobacco product or the package for a tobacco product (for example, any feature designed to promote the product by changing the appearance of the product or package after retail sale or by making a noise or smell):
(f) prescribe the number of cigarettes or the weight of loose tobacco that must be contained in a package (subject to pre-existing minimums):
(g) specify separate requirements or options for different parts of a product or a package (for example, any plastic or other wrapping must be consistently transparent, uncoloured, and unmarked)

The amendment Act will also amend the Designs Act 1953 by specifying that the Commissioner of Designs may register a design even if its use is restricted or prohibited under the Smoke-free Environments Act 1990.

The transitional provisions provides that there is no transitional period for manufacturers, packagers or importers, but that distributors will have a 6-week transitional period and other relevant persons who sell or supply tobacco products will have a 12-week transitional period.

Select Committee Refines Proposed Geographical Indications Legislation
The Primary Production Committee has reported back on the Geographical Indications (Wine and Spirits) Registration Amendment Bill. It recommends the following changes:

• Inserting a provision to the effect that the Bill will come into effect at the latest on 1st July 2018;
• It agrees with IPONZ’s recommendation that the first renewal fee be due 5-years after registration, with subsequent renewals due every 10-years after that;
• The right to continue using a term in trade by a party who has made continuous use of the term has been extended to apply to a person who acquires the right to the use of that term, provided they continue to use it;
• Providing procedures for those opposing the registration of a geographical indication;
• Specifying that the Registrar must give notice of a proposed removal of a registered geographical indication;
• Provide that the Registrar can only amend a geographical indication if the alteration is necessary, will not substantially alter the character of the geographical indication and is not likely to mislead the public.
• Amending the Trade Marks Act 2002 so as to clarify that a trade mark application can be refused on the basis of a geographical indication application that, if achieves registration, would have an earlier deemed date of registration.