IP Australia Recognised as an International Search Authority by the USPTO: http://www.ipaustralia.gov.au/pdfs/news/USPTO_IPA_Pressrelease.pdf
IP Australia and the United States’ Patent and Trademark Office (USPTO) have announced an agreement which will see IP Australia act as an international search and examination authority for international applications filed with the USPTO under the Patent Cooperation Treaty (PCT).
The media release said that the "arrangement follows the successful conclusion of a pilot program between IP Australia and the USPTO which focussed on search and examination of PCT applications."
Friday, July 25, 2008
Tuesday, July 22, 2008
ACIP Releases Issues Paper: Review of Patentable Subject Matter
Threshold test and its relevance to Manner of Manufacture: http://www.acip.gov.au/library/Patentable%20Subject%20Matter%20Issues%20Paper.pdf
The Advisory Council on Intellectual Property (ACIP) has recently released an Issues Paper regarding a review on the adequacy of the manner of manufacture test as the threshold requirement for patentable subject matter under Australian law, and the historical requirement that an invention must not be generally inconvenient.
The Paper provides an insightful historical and international context for the debate on patentable subject matter and its outer limits. The table at page 23, tracing the relevant tests, is illustrative.
Of particular note was the Paper’s discussion on the threshold test and whether it remains applicable law in a post-Lockwood landscape. At page 27, the Paper states:
“From Lockwood v Doric it is not clear whether the threshold test articulated in Philips v Mirabella still stands. Some commentators have said that the decision has appropriately made it more difficult to revoke a patent on the grounds of non-inventiveness. The Philips v Mirabella decision meant there was effectively two tests for both novelty and inventiveness - one based only on the information in the specification and the other based on what is known from the prior art. Some argued that the threshold test was necessary because the tests based on the prior art are too narrow and difficult to sustain, and so do not eliminate all undeserving patents. The main argument against the test is that combining novelty and inventive step with the manner of manufacture test unnecessarily complicates understanding and administration of patent law. Also, it was in an applicant’s interest to disclose less about the prior art in their specification in order to reduce the likelihood of this information being used against them.
The Paper then states: “An important issue is therefore whether a threshold of inventiveness still exists and the appropriateness of this.”
The Paper also provides a series of questions to provoke further thought and debate on the current law. What is said at 57 is pertinent to the threshold test:
“E. Threshold of inventiveness
It is unclear whether the threshold of inventiveness established in Philips v Mirabella still stands – see Part 7.2.3. It is questionable whether such a threshold meets the objectives of the system. If it does, it may need to be reinstated through legislation. If it doesn’t, its removal may also need to be ensured through legislation. Some options for achieving this are:
• modifying the definition of invention so that it no longer refers to a manner of manufacture in any form, but merely means the subject of a patent application;
• removing the definition of invention;
• replacing the concept of manner of manufacture in the Act with a new concept that purely relates to inherently patentable subject matter.”
Submissions on the above issues, amongst others, are due on 19 September. Given the importance of the debate on the threshold issue and its obvious broader overlap with inventive step and evidentiary issues arising under that test, the ACIP Paper is a timely analysis. It quite possibly feeds into other reviews currently under domestic debate, as previously covered on IPROO:http://www.iproo.net/2008/06/ip-australia-improvement-to-australian.html
The Advisory Council on Intellectual Property (ACIP) has recently released an Issues Paper regarding a review on the adequacy of the manner of manufacture test as the threshold requirement for patentable subject matter under Australian law, and the historical requirement that an invention must not be generally inconvenient.
The Paper provides an insightful historical and international context for the debate on patentable subject matter and its outer limits. The table at page 23, tracing the relevant tests, is illustrative.
Of particular note was the Paper’s discussion on the threshold test and whether it remains applicable law in a post-Lockwood landscape. At page 27, the Paper states:
“From Lockwood v Doric it is not clear whether the threshold test articulated in Philips v Mirabella still stands. Some commentators have said that the decision has appropriately made it more difficult to revoke a patent on the grounds of non-inventiveness. The Philips v Mirabella decision meant there was effectively two tests for both novelty and inventiveness - one based only on the information in the specification and the other based on what is known from the prior art. Some argued that the threshold test was necessary because the tests based on the prior art are too narrow and difficult to sustain, and so do not eliminate all undeserving patents. The main argument against the test is that combining novelty and inventive step with the manner of manufacture test unnecessarily complicates understanding and administration of patent law. Also, it was in an applicant’s interest to disclose less about the prior art in their specification in order to reduce the likelihood of this information being used against them.
The Paper then states: “An important issue is therefore whether a threshold of inventiveness still exists and the appropriateness of this.”
The Paper also provides a series of questions to provoke further thought and debate on the current law. What is said at 57 is pertinent to the threshold test:
“E. Threshold of inventiveness
It is unclear whether the threshold of inventiveness established in Philips v Mirabella still stands – see Part 7.2.3. It is questionable whether such a threshold meets the objectives of the system. If it does, it may need to be reinstated through legislation. If it doesn’t, its removal may also need to be ensured through legislation. Some options for achieving this are:
• modifying the definition of invention so that it no longer refers to a manner of manufacture in any form, but merely means the subject of a patent application;
• removing the definition of invention;
• replacing the concept of manner of manufacture in the Act with a new concept that purely relates to inherently patentable subject matter.”
Submissions on the above issues, amongst others, are due on 19 September. Given the importance of the debate on the threshold issue and its obvious broader overlap with inventive step and evidentiary issues arising under that test, the ACIP Paper is a timely analysis. It quite possibly feeds into other reviews currently under domestic debate, as previously covered on IPROO:http://www.iproo.net/2008/06/ip-australia-improvement-to-australian.html
Monday, July 21, 2008
Evidence On Appeal From the Patent Office
Sherman v Commissioner of Patents [2008] FCA 1026 (9 July 2008)
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1026.html
This case concerned an appeal from the decision of the Commissioner of Patents to uphold an opposition to the subject patent finding that the applicant was not entitled to the patent, and that the invention was not novel, and did not involve an inventive step.
Pursuant to O 6 r 8(b) of the Federal Court Rules the Commissioner was added as a respondent when the opponent withdrew from the proceeding.
When the Respondent sought to submit an affidavit of the delegate and to tender the exhibits thereto the applicant objected that elements of the evidence did not meet the requirements of the Evidence Act 1995 (Cth).
Jessup J found for the Applicant stating that the proceeding on foot, ‘... is a final proceeding in the original jurisdiction of the court, the resolution of which will establish binding rights and obligations.’
His Honour went on to, ‘ ... reject the Commissioner’s submission that the provisions of the Evidence Act do not apply in relation to material that was before the delegate. I regard the proceeding as a conventional one in the original jurisdiction of the court, in which the questions which were before the delegate are again in controversy, and must be decided on the evidence that is tendered and admitted here. The admission of that evidence is, in my view, regulated by the Evidence Act in the normal way.’ Concluding that, ‘the Commissioner has, in my view, insuperable problems under s 59(1) of the Evidence Act.’
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1026.html
This case concerned an appeal from the decision of the Commissioner of Patents to uphold an opposition to the subject patent finding that the applicant was not entitled to the patent, and that the invention was not novel, and did not involve an inventive step.
Pursuant to O 6 r 8(b) of the Federal Court Rules the Commissioner was added as a respondent when the opponent withdrew from the proceeding.
When the Respondent sought to submit an affidavit of the delegate and to tender the exhibits thereto the applicant objected that elements of the evidence did not meet the requirements of the Evidence Act 1995 (Cth).
Jessup J found for the Applicant stating that the proceeding on foot, ‘... is a final proceeding in the original jurisdiction of the court, the resolution of which will establish binding rights and obligations.’
His Honour went on to, ‘ ... reject the Commissioner’s submission that the provisions of the Evidence Act do not apply in relation to material that was before the delegate. I regard the proceeding as a conventional one in the original jurisdiction of the court, in which the questions which were before the delegate are again in controversy, and must be decided on the evidence that is tendered and admitted here. The admission of that evidence is, in my view, regulated by the Evidence Act in the normal way.’ Concluding that, ‘the Commissioner has, in my view, insuperable problems under s 59(1) of the Evidence Act.’
Thursday, July 17, 2008
Book Launch – Innovation in Australia: what is the role of IP?
Yesterday was the launch of the book, titled: “Measured Success, Innovation Management in Australia.” The launch took place at Melbourne University’s law school and was the product of joint work between the Business School: http://www.mbe.edu/ and IPRIA: http://www.ipria.org/
The book provides a summary of Australian case studies as to how Australian companies (sometimes in collaboration with global players) have achieved varying success in dominating their “niche global market".
While I am only in the early chapters, I found the following passage of interest with respect to the Extended Wear Contact Lens Project at page 21:
“Adrian Hunter went beyond the usual practice of inviting patent attorneys to attend the first meeting of the project. He invited them to attend all of the quarterly meetings for the five-year duration of the project....
In addition to allowing the patent attorneys to think about their patent strategy very early on in the process, this experiment facilitated two fundamentally important information transfers of tacit knowledge, one from the patent attorneys to the scientists, and the other from the scientists to the patent attorneys...
The scientists started to understand, at a much deeper level, the notion of a patent as a strategic weapon...the patent attorneys learned what it was that the scientists had actually created...The consequences of these information transfers were quite dramatic...”
The book is providing a fascinating read and I recommend it to anyone who is engaged in the innovation debate that is the focus of national attention and where IP fits into the equation....See the following website for further updates on the debate and the expected Green Paper at the end of July: http://www.innovation.gov.au/innovationreview/Pages/home.aspx
The book provides a summary of Australian case studies as to how Australian companies (sometimes in collaboration with global players) have achieved varying success in dominating their “niche global market".
While I am only in the early chapters, I found the following passage of interest with respect to the Extended Wear Contact Lens Project at page 21:
“Adrian Hunter went beyond the usual practice of inviting patent attorneys to attend the first meeting of the project. He invited them to attend all of the quarterly meetings for the five-year duration of the project....
In addition to allowing the patent attorneys to think about their patent strategy very early on in the process, this experiment facilitated two fundamentally important information transfers of tacit knowledge, one from the patent attorneys to the scientists, and the other from the scientists to the patent attorneys...
The scientists started to understand, at a much deeper level, the notion of a patent as a strategic weapon...the patent attorneys learned what it was that the scientists had actually created...The consequences of these information transfers were quite dramatic...”
The book is providing a fascinating read and I recommend it to anyone who is engaged in the innovation debate that is the focus of national attention and where IP fits into the equation....See the following website for further updates on the debate and the expected Green Paper at the end of July: http://www.innovation.gov.au/innovationreview/Pages/home.aspx
Tuesday, July 15, 2008
Trade Marks Manual of Practice and Procedure - Revision of Part 3
The following Official Notice about Revision of Part 3 – Filing Requirements for a Trade Mark Application - Revised to clarify practice in relation to ownership requirements for applications and filing requirements for TM Headstart is to be published in Australian Official Journal of Patents, Trade Marks and Designs on 30 July 2008.
Revision of Part 3 – Filing Requirements for a Trade Mark Application - Revised to clarify practice in relation to ownership requirements for applications and filing requirements for TM Headstart
Part 3 of the Trade Marks Manual has been updated to:
· clarify that ownership details which meet minimum filings requirements (such as where the applicant is a trust or unincorporated entity) may not meet ownership requirements otherwise required by the Act; and
· include information relating to filing requirements for TM Headstart applications
Revision of Part 11 – Convention Applications – Revised to remove transitional provisions and clarify requirements for an application claiming convention priority
Part 11 of the Trade Marks Manual has been updated to remove transitional provisions for convention applications and clarify the requirements for applications claiming convention priority, particularly where priority is claimed from an application lodged with an international treaty organisation.
Revision of Part 3 – Filing Requirements for a Trade Mark Application - Revised to clarify practice in relation to ownership requirements for applications and filing requirements for TM Headstart
Part 3 of the Trade Marks Manual has been updated to:
· clarify that ownership details which meet minimum filings requirements (such as where the applicant is a trust or unincorporated entity) may not meet ownership requirements otherwise required by the Act; and
· include information relating to filing requirements for TM Headstart applications
Revision of Part 11 – Convention Applications – Revised to remove transitional provisions and clarify requirements for an application claiming convention priority
Part 11 of the Trade Marks Manual has been updated to remove transitional provisions for convention applications and clarify the requirements for applications claiming convention priority, particularly where priority is claimed from an application lodged with an international treaty organisation.
Monday, July 14, 2008
Reiss Holdings – Late Evidence and the Removal of Trade Marks
Network Clothing Company v Reiss Holdings Ltd [2008] ATMO 35 (27 May 2008): http://www.austlii.edu.au/au/cases/cth/ATMO/2008/35.html
The Trade Mark Office has recently dealt with the issue of filing late evidence and its implication in s92 proceedings for the removal of a trade mark from the Register.
The opposition dealt with three issues described at [11]:
“…. The first relates to the proposed direction under regulation 5.16 to set a new date for the filing of evidence in support of the opposition. The second deals with Network’s request that the Registrar invoke the provisions of s224(1) and s224(3) due to an office error and..”
The third issue was perhaps of most interest, but interrelated with the issues above. It was addressed at [20] and was in relation to the Registrar’s failure to comply with section 97 of the Act.
Section 97(1) of the Act provides that ‘If there is no opposition to an application to the Registrar under subsection 92(1), the Registrar must remove the trade mark from the Register in respect of the goods specified in the application.
As a notice of opposition was not lodged within the requisite timeframe Reiss argued that the Registrar had no discretion and must remove the trade mark from the Register.
At [37]-[40] the Hearing Officer said:
37. The early filing of a copy of Network’s notice of opposition and evidence has established that it was Network’s clear intention to oppose the removal of its trade mark. I have come to the conclusion that had Network been informed of the shortcomings of their opposition, such notification being the normal course of events, then the owner would most likely have filed again in the correct timeframe and have served the documents as required. Indeed, when notified by letter dated the 29th August 2007, a letter which effectively took the place of the notification that should have been sent in May 2007, they quickly took steps to meet all requirements within the specified timeframe. This again demonstrated Network’s intention of mounting a serious opposition.
….
39. As the lapse in time between 11th September and the date of this decision should not be used to compound the initial error made by IP Australia, I propose a direction under regulation 5.16 to allow the opponent 3 months from the date of this decision to file and serve their evidence in support in accordance with regulation 5.7. Such an exercise requires that both parties be allowed to make representations in the matter prior to giving the direction.”
The Trade Mark Office has recently dealt with the issue of filing late evidence and its implication in s92 proceedings for the removal of a trade mark from the Register.
The opposition dealt with three issues described at [11]:
“…. The first relates to the proposed direction under regulation 5.16 to set a new date for the filing of evidence in support of the opposition. The second deals with Network’s request that the Registrar invoke the provisions of s224(1) and s224(3) due to an office error and..”
The third issue was perhaps of most interest, but interrelated with the issues above. It was addressed at [20] and was in relation to the Registrar’s failure to comply with section 97 of the Act.
Section 97(1) of the Act provides that ‘If there is no opposition to an application to the Registrar under subsection 92(1), the Registrar must remove the trade mark from the Register in respect of the goods specified in the application.
As a notice of opposition was not lodged within the requisite timeframe Reiss argued that the Registrar had no discretion and must remove the trade mark from the Register.
At [37]-[40] the Hearing Officer said:
37. The early filing of a copy of Network’s notice of opposition and evidence has established that it was Network’s clear intention to oppose the removal of its trade mark. I have come to the conclusion that had Network been informed of the shortcomings of their opposition, such notification being the normal course of events, then the owner would most likely have filed again in the correct timeframe and have served the documents as required. Indeed, when notified by letter dated the 29th August 2007, a letter which effectively took the place of the notification that should have been sent in May 2007, they quickly took steps to meet all requirements within the specified timeframe. This again demonstrated Network’s intention of mounting a serious opposition.
….
39. As the lapse in time between 11th September and the date of this decision should not be used to compound the initial error made by IP Australia, I propose a direction under regulation 5.16 to allow the opponent 3 months from the date of this decision to file and serve their evidence in support in accordance with regulation 5.7. Such an exercise requires that both parties be allowed to make representations in the matter prior to giving the direction.”
Sunday, July 13, 2008
Hearing Officer finds that AVANTI does not look like VIVENTE
Sheppard Industries Ltd v Gemini Bicycle Centres Pty Ltd [2008] ATMO 42 (29 May 2008): http://www.austlii.edu.au/au/cases/cth/ATMO/2008/42.html
In this matter, Sheppard Industries opposed the registration of three trade mark applications: 1065796, 1066360 and 1066364(12) using the name, VIVENTE.
All three applications were respect to bicycles.
The opponent, in its notice of opposition, nominated a wide variety of grounds but ultimately relied on ss 44 and 60 of the Act. The Hearing Officer noted that while both sections are not “similar in their structures, they share a common element” being whether the conflicting trade marks are either substantially identical or deceptively similar.’
The tests for that common element is found in the well-known case, Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415
In applying the relevant law, the Hearing Officer found against the opponent. At [32], emphasis was placed on the comparisons between the marks used as a whole:
“32. I note the evidence that, while some bicycles may be expensive, many consumers would have their minds more on suitability for intended purpose, or size, than on trade marks. Even so, I am not satisfied that the opponent has established its ground. I appreciate the similarities to which Mr Hayes drew my attention. However, a letter-by-letter analysis is not appropriate. These trade marks will be used as wholes and recollected, imperfectly or otherwise, based on usage as wholes. To my mind, even when I allow for the emphasis that both traders give to diagonal strokes in the competing marks, AVANTI does not look like VIVENTE, either in upper case or in forms such as the parties have adopted. They both give an impression of being Italian words, or perhaps French, but that is the end of the matter. Likewise, there is no persuasive evidence that the trade marks will sound alike, though I admit that Mr Hayes demonstrated that, with a New Zealand accent, the issue has more merit than might otherwise be thought.”
In this matter, Sheppard Industries opposed the registration of three trade mark applications: 1065796, 1066360 and 1066364(12) using the name, VIVENTE.
All three applications were respect to bicycles.
The opponent, in its notice of opposition, nominated a wide variety of grounds but ultimately relied on ss 44 and 60 of the Act. The Hearing Officer noted that while both sections are not “similar in their structures, they share a common element” being whether the conflicting trade marks are either substantially identical or deceptively similar.’
The tests for that common element is found in the well-known case, Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415
In applying the relevant law, the Hearing Officer found against the opponent. At [32], emphasis was placed on the comparisons between the marks used as a whole:
“32. I note the evidence that, while some bicycles may be expensive, many consumers would have their minds more on suitability for intended purpose, or size, than on trade marks. Even so, I am not satisfied that the opponent has established its ground. I appreciate the similarities to which Mr Hayes drew my attention. However, a letter-by-letter analysis is not appropriate. These trade marks will be used as wholes and recollected, imperfectly or otherwise, based on usage as wholes. To my mind, even when I allow for the emphasis that both traders give to diagonal strokes in the competing marks, AVANTI does not look like VIVENTE, either in upper case or in forms such as the parties have adopted. They both give an impression of being Italian words, or perhaps French, but that is the end of the matter. Likewise, there is no persuasive evidence that the trade marks will sound alike, though I admit that Mr Hayes demonstrated that, with a New Zealand accent, the issue has more merit than might otherwise be thought.”
Friday, July 11, 2008
Smart Home Solutions - a failure to distinguish mark from services
Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39: http://www.austlii.edu.au/au/cases/cth/ATMO/2008/39.html
As promised, IPROO is posting the recent decisions made available by the Australian Trade Marks Office.
One of those decisions involved analysis of section 41 of the Trade Marks Act: Complete Technology Integrations v Smart Home Solutions.
Despite lengthy and “comprehensive evidence”, the Hearing Officer found that the registered mark, SMART HOME SOLUTIONS, lacked any inherent adaptation to distinguish under s 41(3) and also that there was no evidence of factual distinctiveness at the relevant date pursuant to s 41(6) of the Act. Branson J’s cascading framework in relation to s 41 in Blount Inc v Registrar of Trade Marks [1998] FCA 440 was relied upon.
The mark was in relation to Class 37, being: “Installation, repair, maintenance and construction services in relation to electrical and electronic apparatus and equipment including control equipment and apparatus for controlling domestic lighting installations, lighting, lighting systems, lighting apparatus, lighting equipment, data equipment and systems, video and DVD equipment and systems, audio and audio-visual equipment and systems, climate control equipment and systems, security equipment and systems, home automation systems”
In finding against the registered mark, the Hearing Officer said at [56]-[58]:
“56. Nor…do I consider that the opposed trade mark had moved any way towards distinguishing the applicant’s services at the relevant date. The words SMART HOME SOLUTIONS, like the examples of the words ‘catering solutions,’ or ‘management solutions,’ are a simple statement of what the services are, or provide, such that any traders are likely to need or require to use them in respect of their similar services without improper motive. These words have not altered their meaning through use to indicate the services only of the applicant whether in Sydney or elsewhere in Australia – consequently the trade mark as a whole does not distinguish the services of the applicant.
57. The opponent has established its ground of opposition under section 41 of the Act.
58. There is no need for me to consider the ground under section 59.”
As promised, IPROO is posting the recent decisions made available by the Australian Trade Marks Office.
One of those decisions involved analysis of section 41 of the Trade Marks Act: Complete Technology Integrations v Smart Home Solutions.
Despite lengthy and “comprehensive evidence”, the Hearing Officer found that the registered mark, SMART HOME SOLUTIONS, lacked any inherent adaptation to distinguish under s 41(3) and also that there was no evidence of factual distinctiveness at the relevant date pursuant to s 41(6) of the Act. Branson J’s cascading framework in relation to s 41 in Blount Inc v Registrar of Trade Marks [1998] FCA 440 was relied upon.
The mark was in relation to Class 37, being: “Installation, repair, maintenance and construction services in relation to electrical and electronic apparatus and equipment including control equipment and apparatus for controlling domestic lighting installations, lighting, lighting systems, lighting apparatus, lighting equipment, data equipment and systems, video and DVD equipment and systems, audio and audio-visual equipment and systems, climate control equipment and systems, security equipment and systems, home automation systems”
In finding against the registered mark, the Hearing Officer said at [56]-[58]:
“56. Nor…do I consider that the opposed trade mark had moved any way towards distinguishing the applicant’s services at the relevant date. The words SMART HOME SOLUTIONS, like the examples of the words ‘catering solutions,’ or ‘management solutions,’ are a simple statement of what the services are, or provide, such that any traders are likely to need or require to use them in respect of their similar services without improper motive. These words have not altered their meaning through use to indicate the services only of the applicant whether in Sydney or elsewhere in Australia – consequently the trade mark as a whole does not distinguish the services of the applicant.
57. The opponent has established its ground of opposition under section 41 of the Act.
58. There is no need for me to consider the ground under section 59.”
TMO makes 10 decisions available on austlii
The Australian Trade Mark’s Office has recently made available 10 decisions on austlii. One of those decisions was posted earlier this week: Google, Inc v Dmitri Rytsk [2008] ATMO 40 http://www.austlii.edu.au/au/cases/cth/ATMO/2008/40.html, which involved the issue of family marks. The decisions include:
- The Men's Gallery Australia Pty Ltd v Platinum 253 Pty Ltd [2008] ATMO 32 (12 May 2008)
- Apple Computer Inc. v Gundy Computer Services Pty Ltd [2008] ATMO 33 (20 May 2008)
- Richard James Lifford Hewitt Trustee for the Hewitt Trust v Abercromby's Real Estate Pty Ltd [2008] ATMO 34 (20 May 2008)
- De Beers Centenary AG v Shenzhen Millenium Star Industry Development Co [2008] ATMO 36 (21 May 2008)
- The Prince's Trust v Fashion Rocks Pty Ltd [2008] ATMO 38 (21 May 2008)
- Choi Kwang Do Martial Art International Inc v Rod Cook [2008] ATMO 37 (22 May 2008)
- Network Clothing Company v Reiss Holdings Ltd [2008] ATMO 35 (27 May 2008)
- Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39 (27 May 2008)
- DCK Australia Pty Ltd v Vincona Pty Ltd [2008] ATMO 41 (29 May 2008)
- Sheppard Industries Ltd v Gemini Bicycle Centres Pty Ltd [2008] ATMO 42 (29 May 2008)
For those interested in reading the decisions, they can be found at http://www.austlii.edu.au/au/cases/cth/ATMO/2008/ and summaries will be posted on IPROO over the course of the next 10 days.
- The Men's Gallery Australia Pty Ltd v Platinum 253 Pty Ltd [2008] ATMO 32 (12 May 2008)
- Apple Computer Inc. v Gundy Computer Services Pty Ltd [2008] ATMO 33 (20 May 2008)
- Richard James Lifford Hewitt Trustee for the Hewitt Trust v Abercromby's Real Estate Pty Ltd [2008] ATMO 34 (20 May 2008)
- De Beers Centenary AG v Shenzhen Millenium Star Industry Development Co [2008] ATMO 36 (21 May 2008)
- The Prince's Trust v Fashion Rocks Pty Ltd [2008] ATMO 38 (21 May 2008)
- Choi Kwang Do Martial Art International Inc v Rod Cook [2008] ATMO 37 (22 May 2008)
- Network Clothing Company v Reiss Holdings Ltd [2008] ATMO 35 (27 May 2008)
- Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39 (27 May 2008)
- DCK Australia Pty Ltd v Vincona Pty Ltd [2008] ATMO 41 (29 May 2008)
- Sheppard Industries Ltd v Gemini Bicycle Centres Pty Ltd [2008] ATMO 42 (29 May 2008)
For those interested in reading the decisions, they can be found at http://www.austlii.edu.au/au/cases/cth/ATMO/2008/ and summaries will be posted on IPROO over the course of the next 10 days.
Wednesday, July 9, 2008
Family Marks – what is the reach of Google as a trademark?
Google, Inc v Dmitri Rytsk [2008] ATMO 40 http://www.austlii.edu.au/au/cases/cth/ATMO/2008/40.html
In a decision made available on austlii yesterday, the Australian Trade Mark’s Office has found in favour of Google’s opposition to a purported registered trade mark, ‘googlebay’.
The registration was opposed on ss 44 and 60 grounds. Both grounds were upheld.
The Hearing Officer found that the Google name is highly distinctive. This, coupled with the expectation that GOOGLE and googlebay could be considered as part of a ‘family’ of marks owned by Google supported the finding against the registered trade mark. While not cited, the reasoning would seem consistent with the Federal Court’s holding in Scotch Whisky Association v De Witt [2007] FCA 1649 (2 November 2007), where family marks were discussed at some length at [74]-[81]: http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCA/2007/1649.html?query=^scotch%20whisky
Paragraphs [23]-[27] are illustrative of the Hearing Officer’s decision on the family marks aspect of the case:
“23. Concerning the matter of contextual confusion I need to consider whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that ‘googlebay’ would be seen as a member of the ‘family’ of GOOGLE trade marks of the opponent because of a commonality that has been produced by a mutual feature (or features).
24. Where is the link in the present matter that would allow me to suppose a commonality? The word GOOGLE according to The Macquarie Dictionary Online (2008) has meanings of: ‘to search for information on the internet’, ‘to search the internet for information about ..’ and ‘an instance of such a search [trademark Google an internet search engine]’.
25. The word GOOGLE did not have a dictionary meaning prior to the existence of the internet. It is now seen as a trade mark with a meaning strongly associated with the internet as the name of a search engine. The coined ‘word’ EBAY[1] also has a strong internet association – as being a website that exists for parties to trade in goods and services on-line. Joining the words GOOGLE and EBAY to form the single entity ‘googlebay’ will provide the purchasing public with a link to these meanings (as no other is available) and an expectation that the applicant’s services form part of the opponent’s business.
26. The ‘surrounding circumstances’ that ‘have to be taken into consideration’ may include the public perception that functions of the internet continue to expand rapidly. The general public could readily see ‘googlebay’ as some form of new internet business of the opponent. This is particularly so because of the highly distinctive nature of the word GOOGLE which produces a strong association with the opponent and the opponent’s services. This sort of expectation, in my view, if sufficient to reinforce the thinking that the trade marks GOOGLE and googlebay are part of a ‘family’ of marks owned by the opponent. Thus, I find that the opposed trade mark is deceptively similar to the opponent’s GOOGLE trade mark – based on the strength of the expectation that the respective services have the same source.
27. From the foregoing I have found that the opponent has established its opposition under section 44 of the Act.” (Author’s Emphasis)
In a decision made available on austlii yesterday, the Australian Trade Mark’s Office has found in favour of Google’s opposition to a purported registered trade mark, ‘googlebay’.
The registration was opposed on ss 44 and 60 grounds. Both grounds were upheld.
The Hearing Officer found that the Google name is highly distinctive. This, coupled with the expectation that GOOGLE and googlebay could be considered as part of a ‘family’ of marks owned by Google supported the finding against the registered trade mark. While not cited, the reasoning would seem consistent with the Federal Court’s holding in Scotch Whisky Association v De Witt [2007] FCA 1649 (2 November 2007), where family marks were discussed at some length at [74]-[81]: http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/FCA/2007/1649.html?query=^scotch%20whisky
Paragraphs [23]-[27] are illustrative of the Hearing Officer’s decision on the family marks aspect of the case:
“23. Concerning the matter of contextual confusion I need to consider whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that ‘googlebay’ would be seen as a member of the ‘family’ of GOOGLE trade marks of the opponent because of a commonality that has been produced by a mutual feature (or features).
24. Where is the link in the present matter that would allow me to suppose a commonality? The word GOOGLE according to The Macquarie Dictionary Online (2008) has meanings of: ‘to search for information on the internet’, ‘to search the internet for information about ..’ and ‘an instance of such a search [trademark Google an internet search engine]’.
25. The word GOOGLE did not have a dictionary meaning prior to the existence of the internet. It is now seen as a trade mark with a meaning strongly associated with the internet as the name of a search engine. The coined ‘word’ EBAY[1] also has a strong internet association – as being a website that exists for parties to trade in goods and services on-line. Joining the words GOOGLE and EBAY to form the single entity ‘googlebay’ will provide the purchasing public with a link to these meanings (as no other is available) and an expectation that the applicant’s services form part of the opponent’s business.
26. The ‘surrounding circumstances’ that ‘have to be taken into consideration’ may include the public perception that functions of the internet continue to expand rapidly. The general public could readily see ‘googlebay’ as some form of new internet business of the opponent. This is particularly so because of the highly distinctive nature of the word GOOGLE which produces a strong association with the opponent and the opponent’s services. This sort of expectation, in my view, if sufficient to reinforce the thinking that the trade marks GOOGLE and googlebay are part of a ‘family’ of marks owned by the opponent. Thus, I find that the opposed trade mark is deceptively similar to the opponent’s GOOGLE trade mark – based on the strength of the expectation that the respective services have the same source.
27. From the foregoing I have found that the opponent has established its opposition under section 44 of the Act.” (Author’s Emphasis)
Tuesday, July 8, 2008
Austal Ships provides clarity on Section 40
Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 (3 July 2008)
http://www.austlii.edu.au/au/cases/cth/FCAFC/2008/121.html
In a recent decision, the Full Federal Court has provided further clarity regarding the application of s 40(2)(b) of the Patents Act finding in favour of the patentees of a hull design. Their Honours also upheld Tamberlin J’s findings on infringement.
Turning to the appellant’s claim alleging lack of clarity, the Full Court recited the principles stated in Kimberley-Clark and Flexible Steel at [12]-[13]. Blanco White was also cited with approval providing a standard upon which the ground is assessed at [14]:
“In the past, the standard of clarity required has indeed been put as high as this, that there must be “no serious difficulty” in construing the claims, and that the claims must be capable of construction by rival manufacturers without the assistance of experienced counsel. Claims have, however, habitually been held valid, by all courts, that could not pass such a stringent test. Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.”
In summary, their Honours placed emphasis on the proposition that clarity of a patent will depend on matters of degree as long as there is a “workable standard” at [81]. Two expressions that were examined in claim 1 were “substantial portion” and “narrow waisted” with respect to the hull of the vessel.
In finding that the expressions satisfied the section 40 requirement, an analogy was drawn with the facts in Martin at [23]. Reliance was then placed on Dixon CJ’s observations in that decision which are worth reciting at [25]:
“If an ambiguity is purposely introduced in order to produce a vagueness in the boundaries of a monopoly this purposeful introduction of an ambiguity destroys the patent, whether the ambiguity be great or small. Here there is no reason to suppose that there was any such design. The following passage, however, in the judgment of Lord Parker describes what is the duty of the court and provides the test of ambiguity:
Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification. It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void. Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may avoid the Patent…”
The Full Court held that the there was nothing “misleading about the specification”, which has perhaps added a further consideration to the s 40 analysis that will be borne out in future decisions.
What is also interesting about the decision is that the claim was one directed toward multiple variables of the hull’s design that took into account design parameters, size, speed, draft and “many other matters” at [32]. The Court took into consideration these multiple variables and pointed to the fact that they provided the necessary context which made precise definitions an “arbitrary restriction on the inherent variability of the” design: see [35]. Dixon CJ’s observations in Martin were relied upon to support this conclusion.
http://www.austlii.edu.au/au/cases/cth/FCAFC/2008/121.html
In a recent decision, the Full Federal Court has provided further clarity regarding the application of s 40(2)(b) of the Patents Act finding in favour of the patentees of a hull design. Their Honours also upheld Tamberlin J’s findings on infringement.
Turning to the appellant’s claim alleging lack of clarity, the Full Court recited the principles stated in Kimberley-Clark and Flexible Steel at [12]-[13]. Blanco White was also cited with approval providing a standard upon which the ground is assessed at [14]:
“In the past, the standard of clarity required has indeed been put as high as this, that there must be “no serious difficulty” in construing the claims, and that the claims must be capable of construction by rival manufacturers without the assistance of experienced counsel. Claims have, however, habitually been held valid, by all courts, that could not pass such a stringent test. Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.”
In summary, their Honours placed emphasis on the proposition that clarity of a patent will depend on matters of degree as long as there is a “workable standard” at [81]. Two expressions that were examined in claim 1 were “substantial portion” and “narrow waisted” with respect to the hull of the vessel.
In finding that the expressions satisfied the section 40 requirement, an analogy was drawn with the facts in Martin at [23]. Reliance was then placed on Dixon CJ’s observations in that decision which are worth reciting at [25]:
“If an ambiguity is purposely introduced in order to produce a vagueness in the boundaries of a monopoly this purposeful introduction of an ambiguity destroys the patent, whether the ambiguity be great or small. Here there is no reason to suppose that there was any such design. The following passage, however, in the judgment of Lord Parker describes what is the duty of the court and provides the test of ambiguity:
Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification. It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void. Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may avoid the Patent…”
The Full Court held that the there was nothing “misleading about the specification”, which has perhaps added a further consideration to the s 40 analysis that will be borne out in future decisions.
What is also interesting about the decision is that the claim was one directed toward multiple variables of the hull’s design that took into account design parameters, size, speed, draft and “many other matters” at [32]. The Court took into consideration these multiple variables and pointed to the fact that they provided the necessary context which made precise definitions an “arbitrary restriction on the inherent variability of the” design: see [35]. Dixon CJ’s observations in Martin were relied upon to support this conclusion.
Friday, July 4, 2008
Trade Marks, Constructive Trusts & Avoiding Cheaper Options
Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970 (26 June 2008)
http://www.austlii.edu.au/au/cases/cth/FCA/2008/970.html
In a decision handed down late last week, Gordon J found in favour of Liquid Engineering in relation to a number of separate trade marks the subject of various, and in Gordon J's words, 'inapposite claims'.
In relation to the registered mark 'Liquid Engineering', the Edward's use of the word 'liquideng' was found to be deceptively similar with Gordon quoting extensively from Gallo at para 19,'Whether a mark is "deceptively similar" is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark...It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same...Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense...'
At para 26 Gordon J added 'It is axiomatic that neither proof of intent nor any element of culpability is required to make out a case of trade mark infringement: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39]; see also Gallo at [58]. However, it is also true that where intent to deceive is established, "it should be presumed" that the impugned mark is in fact likely to deceive or confuse: Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 657. In such a case, the onus to rebut the presumption then falls upon the alleged infringer.
The other two marks 'Exit Rust' and 'Fuel Set' were the subject of a cross claim and her honour held, at para 65, 'where an application for registration is made by other than the true owner, the Court may rectify the situation by imposing a constructive trust on the application and subsequent registration from the date on which the application was lodged and additionally or alternatively rectifying the Register through substitution of the true owner's name: Figgins Holdings Pty Ltd v Registrar of Trade Marks (1995) 59 FCR 147 at 149.' And concluded at para 66, 'As the true beneficial owner of the registered marks from 8 April 2003, LE 2003 is entitled to assert claims against the respondents for any unauthorised, infringing use under the s 120 of the TMA principles identified earlier. I consider that an ordinary person would likely be confused or deceived by the respondents' use of the "Fuel Set" and "Exit Rust" marks in relation to the same goods as LE 2003.'
Our readers may wish to note that constructive trusts are increasingly being relied up in IP matters - see par 137 of Global Brand (although in that case, Sundberg J did not have to decide the point): http://www.iproo.net/2008/05/goods-or-shape-of-goods-as-trade-mark.html
Gordon J ordered Edwards and related parties to pay damages and costs but also ordered that Liquid Engineering pay the costs of the initial part of the proceeding for the action brought under section 92 stating at para 11, while 'LE 2003 contends that such an approach would have the effect of discouraging parties from availing themselves "of the opportunities afforded by the TMA to resolve [trade mark disputes] by application to the Registrar, rather than by the more expensive alternative of Federal Court litigation." That submission, while perhaps unobjectionable as a general proposition, is not appropriate here, where it was apparent that s 92 of the TMA was not apt to raise the real issue between the parties in this case. Parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper; such a strategy may, as this case shows, backfire and if that occurs, it will result in more costs being incurred than if the best claim was brought in the first place. If a dispassionate analysis suggests that the client's only realistic chance of success requires resort to a more expensive forum, then that is the advice an independent adviser should give.’
http://www.austlii.edu.au/au/cases/cth/FCA/2008/970.html
In a decision handed down late last week, Gordon J found in favour of Liquid Engineering in relation to a number of separate trade marks the subject of various, and in Gordon J's words, 'inapposite claims'.
In relation to the registered mark 'Liquid Engineering', the Edward's use of the word 'liquideng' was found to be deceptively similar with Gordon quoting extensively from Gallo at para 19,'Whether a mark is "deceptively similar" is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark...It is necessary to make an attempt to estimate the effect or impression produced on the mind of persons of ordinary intelligence and memory. It is the impression or recollection which is carried away and retained that is necessarily the basis of any mistaken belief that the challenged mark is the same...Whether a mark is likely to deceive or cause confusion is, in the end, a question of impression and common sense...'
At para 26 Gordon J added 'It is axiomatic that neither proof of intent nor any element of culpability is required to make out a case of trade mark infringement: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39]; see also Gallo at [58]. However, it is also true that where intent to deceive is established, "it should be presumed" that the impugned mark is in fact likely to deceive or confuse: Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 657. In such a case, the onus to rebut the presumption then falls upon the alleged infringer.
The other two marks 'Exit Rust' and 'Fuel Set' were the subject of a cross claim and her honour held, at para 65, 'where an application for registration is made by other than the true owner, the Court may rectify the situation by imposing a constructive trust on the application and subsequent registration from the date on which the application was lodged and additionally or alternatively rectifying the Register through substitution of the true owner's name: Figgins Holdings Pty Ltd v Registrar of Trade Marks (1995) 59 FCR 147 at 149.' And concluded at para 66, 'As the true beneficial owner of the registered marks from 8 April 2003, LE 2003 is entitled to assert claims against the respondents for any unauthorised, infringing use under the s 120 of the TMA principles identified earlier. I consider that an ordinary person would likely be confused or deceived by the respondents' use of the "Fuel Set" and "Exit Rust" marks in relation to the same goods as LE 2003.'
Our readers may wish to note that constructive trusts are increasingly being relied up in IP matters - see par 137 of Global Brand (although in that case, Sundberg J did not have to decide the point): http://www.iproo.net/2008/05/goods-or-shape-of-goods-as-trade-mark.html
Gordon J ordered Edwards and related parties to pay damages and costs but also ordered that Liquid Engineering pay the costs of the initial part of the proceeding for the action brought under section 92 stating at para 11, while 'LE 2003 contends that such an approach would have the effect of discouraging parties from availing themselves "of the opportunities afforded by the TMA to resolve [trade mark disputes] by application to the Registrar, rather than by the more expensive alternative of Federal Court litigation." That submission, while perhaps unobjectionable as a general proposition, is not appropriate here, where it was apparent that s 92 of the TMA was not apt to raise the real issue between the parties in this case. Parties should not be encouraged to bring inapposite claims on the grounds that they are cheaper; such a strategy may, as this case shows, backfire and if that occurs, it will result in more costs being incurred than if the best claim was brought in the first place. If a dispassionate analysis suggests that the client's only realistic chance of success requires resort to a more expensive forum, then that is the advice an independent adviser should give.’
Wednesday, July 2, 2008
IPRoo gets its own domain
Just a quick note to let you know that IPRoo can now be found at IPRoo.net.
Thanks for your support to date, we're delighted with the growing readership.
Please do come and add your comments or get in touch with any one of us 'offline' to make comments or raise any concerns.
Cheers
Duncan, Rob and Ben
Thanks for your support to date, we're delighted with the growing readership.
Please do come and add your comments or get in touch with any one of us 'offline' to make comments or raise any concerns.
Cheers
Duncan, Rob and Ben
Tuesday, July 1, 2008
IceTV – Final Orders
Nine Network Australia Pty Ltd v IceTV Pty Ltd [2008] FCA 925 (27 June 2008) - http://www.austlii.edu.au/au/cases/cth/FCA/2008/925.html
Consistent with the reasons in the Full Court decision on 8 May 2008, final orders in the recent IceTV decision have been handed down. A link to the a previous blog on these proceedings can be found at http://iproo.blogspot.com/2008/05/copyright-protection-for-tv-guides.html
Consistent with the reasons in the Full Court decision on 8 May 2008, final orders in the recent IceTV decision have been handed down. A link to the a previous blog on these proceedings can be found at http://iproo.blogspot.com/2008/05/copyright-protection-for-tv-guides.html
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