Ellis Terry Overturns Restrictive Amendment Practice

Applicants in New Zealand have been suffering under a restrictive amendment practice adopted by IPONZ that would have left applicants unable to remedy potentially fatal deficiencies. Ellis Terry recently took a case1 to a hearing that has overturned this practice.

New Act and Regulations

Under the new Patents Act 2013 it is a requirement that all claims must be “supported” by matter disclosed in the specification. The regulations governing the process for amendment of the specification also use the word “support”.

IPONZ Practice

IPONZ interpreted the regulations to require “support” (as used in the Act) for any amendment to either the description or claims. This practice was adopted despite the fact that the Act specifically provides for the post-dating of amendments; post-dating could clearly only occur in the case of unsupported amendments.

The issue in question

It is uncertain under the new Act whether classical inutility (where a claim is invalid if it fails to meet the objects of the invention) still exists, although the IPONZ website says that classical inutility does still apply, as is the case in Australia by virtue of an explanatory memorandum to a similar section.

In the case in question an amendment was requested to amend objects of the invention by adding the alternate object “to at least provide the public with a useful choice”. Such amendment had been routinely allowed under the previous Act.

IPONZ objected that there was no “support” for the added words. It is true that there was no wording that could be pointed to that provided “support” (as used in the Act) for this wording. Failure to allow such an amendment could have left the applicant with an incurable flaw that could render its patent invalid with no way to remedy the situation. This would have put foreign applicants, unaware of this arcane ground of invalidity, in a perilous position.

Decision

Upon reviewing the statutory context the hearing officer ruled that the regulations did not impose a substantive requirement for specific support for every amendment. Rather, the regulations are procedural and are intended to expedite the examination process; an applicant relying on support in the original specification for an amendment should point to support so an examiner does not have to ‘go hunting’. The hearing officer indicated that support may not be required for deletions or amendments to improve conciseness. The addition of ‘or to at least provide the public with a useful choice’ was allowed.

This is a welcome decision that will relieve applicants that have been faced with exasperating support objections.

Trade mark protection – What should you register?

Picture this; you develop a trade mark for a hat, do some due diligence, find it is clear and secure a trade mark registration for “hats”. Fast forward five years, and business is going well. You’re thinking about expanding your product range into “belts” and invest a lot of money into the new product. Then on launch day, you find out someone else is using just about the same trade mark on “belts”. Worse still, these other people have a trade mark registration and they are now suing you for trade mark infringement.

What could you have done to avoid this situation?

Under New Zealand law there is no requirement for the filer of a trade mark application to show that it has used its trade mark in New Zealand in order to gain registration. This allows applicants to claim an area of exclusive right which is actually broader than the area where the trade mark is currently being used and to mark out areas of potential future growth.

A key benefit in spending the time and money in securing a broad registration at the outset is the fact you do not need to show evidence that your trade mark is in use before you sue for trade mark infringement. This means you could use your broad trade mark registration rights to stop other traders encroaching into your future growth areas.

By comparison, an action under the Fair Trading Act or for passing off requires that you have a reputation in trade before you assert your rights. By their nature, these actions are limited to the area where you are actually using your trade mark. A broadly scoped registration will therefore mean you could sue on more rights than if seeking to sue under the Fair Trading Act and/or for passing off.

The next question is how broad is too broad?

The fact that you have a registered trade mark does not mean that it is invulnerable to attack by third parties. If you file for goods where you have no real intention to the trade mark, the registration may be immediately vulnerable to removal from the Register.

Further, once a trade mark registration is more than 3 years old, it is vulnerable to removal in relation to all the goods and services described in the registration where no use has been made.

If your registration is obviously too broad, an attempt to sue for trade mark infringement could result in a counter-suit for removal of the trade mark registration.

A good rule of thumb therefore is focus your trade mark on your goods and services, and cover what you are using, but to also bear in mind the option to seek more rights.

The skill in crafting application descriptions which allow the owner to focus rights to their best advantage is developed through years of reviewing the Register, the market place and recent trends in examination for trade mark applications, removal actions and infringement action.

Our recommendation is to always take advice before filing applications. Extra outlay in the early stages of a filing strategy could avoid litigation and argument in the future.

Ellis Terry features in 2018 Managing IP Results

Ellis Terry is, in 2018, once again ranked by Managing IP as one of New Zealand’s preeminent firms for patent prosecution.

For more information see here.

Brexit Trade Mark Changes Update

State of Play So Far

  • 23 June 2016 referendum held in the United Kingdom (UK) to decide whether to leave the European Union (EU) was held – 52% majority to depart.
  • 29 March 2017, Article 50 of the Treaty of the EU was invoked and started the ball in motion.
  • 29 March 2019 due date for UK to leave.

Current Trade Mark Laws

For many years a cost-effective way to secure trade mark protection across all Member States of the EU has been to file a European Trade Mark (EUTM) application.

Not only is the cost of filing a EUTM much less than filing separate National trade mark applications in 28 countries, use in any one Member State is deemed sufficient to support the entire EUTM. This means traders did not need to show use throughout all Member States to benefit from a Register right throughout the EU.

Under current timetables, following 29 March 2019 the UK will no longer be part of the EU and will not benefit from rights as an EU Member State.

Effect on Validity of Current EUTM Registrations

Once the UK is no longer an EU Member State there will be certain immediate impacts on EUTM registrations:

  • Registered rights in an EUTM will no longer cover the UK.
  • Use in the UK will no longer be enough to support an EUTM registration.
  • Seniority claims in EUTMs based on UK registrations will no longer have effect.
  • Reference to the EU as a legal jurisdiction will no longer extend to include the UK.

What Could Happen

Laws to manage what will happen to UK rights previously encompassed by EU laws are still being drafted, so there is still much uncertainty around the EUTM. Recent reporting envisages three possible options for current EUTM rights:

  • EUTM registrations could automatically be translated to corresponding UK registration rights; or
  • Having an EUTM registration could create an option for the applicant to seek UK registration using the EUTM as a priority base. UK registration will issue after examination of the UK application under the UK trade mark laws; or
  • EUTM registration rights in the UK could simply cease to have effect in the UK, with no provision to translate those rights to a UK registration.

What Should You Do Now?

Identify your true market.

You should first identify where your market is situated. You should ask yourself if your business is truly European in its spread, or focussed on the UK.

If you are focussed on the wider European market, you must consider whether your current use is enough to support an EUTM. For example, can you show use of your trade mark in EU Member States outside of the UK which will continue to support your EUTM?

Keep your UK and EU trade marks in force.

If you have EUTM or UK trade mark registrations due for renewal in the next year or so, and assuming the trade mark and the coverage is current, we recommend you do not let these listings lapse.

While there are indications that there will be an opportunity to create UK register rights out of EUTM registrations, nothing has been released regarding process, cost or effect. Until it is clear what will happen, we recommend you keep your current registrations to ensure you retain valuable priority claims.

Update any out of date Register rights.

If your current trade mark coverage is out of date because the trade mark is “old” or the goods and services are not current, think about filing now in the UK and EU to give you a “belts and braces” approach in advance of new laws being enacted.

Do not forget about third party agreements.

Many legal documents such as co-existence or settlement agreements will refer to the EU where the actual market interest may include or be factually limited to the UK. Separate provisions for the UK may not have been included. After 29 March 2019, there is no automatic extension into the UK of obligations and restraints that are effective in the EU.

Any EU agreements should be reviewed to see whether clarification is required to ensure the UK is covered.

Geographical Indications for Wines and Spirits now Registrable in New Zealand

The Geographical Indications (Wine and Spirits) Registration Act 2006 (“the Act”) and the associated regulations came into force on 27 July 2017.

The Act creates a Register where geographic locations in New Zealand can now be registered as Geographical Indications (“GIs”) and where GIs registered overseas can be recorded. Use of the registered GIs are then reserved for wines and spirits from those areas.

Applications for GIs are made at the Intellectual Property Office of New Zealand (“IPONZ”). The Act provides tools to allow IPONZ to determine if a location is geographically indicative of the wine or spirits from a particular area. This includes an assessment of the impact the terroir of a location has on wine or spirits from that area. Since 27 July 2017, applications for registration have been lodged for a number of well-known wine regions as GIs.

The most obvious impact registration of GIs will have on wine retailers is the restriction that will be imposed on the way in which GIs can be used on wine labels. If a wine is made from grapes sourced from a variety of different locations, use of a GI on the label may breach the new Act.

There is also the potential for branding based on locations to become less distinctive over time because of the development and registration of new GIs.

It is worth noting that the Act does not limit the registration of New Zealand GIs to locations identified on a standard map. New areas can be identified as significant for a style of wine or spirit. Provided those areas meet the criteria set out by the Act, those areas can then be registered as GIs.

The registration of new GIs over time means that limitations on wine retailers and producers will also change.

We recommend that all wine producers and retailers review their current labelling as well as their plans for brand development to ensure that branding steers clear of potential breaches of the Act.

With a wealth of experience in working with renowned New Zealand wineries, Ellis Terry is well-placed to assist in identifying limitations to use of geographic names in New Zealand and in identifying and protecting strong trade mark rights for importers and exporters alike.

NZ joins Global Patent Prosecution Highway

New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme on 6 July 2017. The GPPH is an agreement between patent offices around the world that provides a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.  The patent offices participating in the GPPH pilot programme include some of New Zealand’s largest export partners including Australia, Canada, Japan, South Korea and the United States.  At present the European Patent Office (EPO) and China (SIPO) are not part of the GPPH pilot programme.  Both are members of the IP5 Patent Prosecution Highway (EPO, JPO, KIPO, SIPO and USPTO) so they may join the GPPH at a letter stage.

Expedited examination may lead to the earlier grant of a patent, this is particularly advantageous in some of the participating counties that have traditionally been slow (5 – 10 years) to examine patent applications.  While GPPH does not guarantee grant of a patent in a participating office, GPPH speeds up examination for the patent application and an allowance or grant in one of the offices gives an earlier indication of the scope of protection that will likely be allowed in other participating countries.  Such information is valuable when making decisions with respect to overall commercialisation strategy.  If filing a GPPH request in New Zealand, IPONZ is usually respectful of other offices and is likely to apply findings of other offices unless there is good basis to find otherwise.

Examination in the New Zealand Patent Office is usually reasonably fast compared to other countries.  Overseas and New Zealand based applicants, can use the accepted claims of their New Zealand patent application and the GPPH to expedite examination of corresponding applications in other participating countries.  Alternatively, overseas applicants can use accepted/allowed/granted claims of a corresponding application from a GPPH member country to expedite examination of their New Zealand patent application.

Should I use GPPH?

The decision to use or not to use the GPPH program depends on your IP and commercial strategy and your current patent portfolio. The use of the GPPH provides another tool that can be integrated into your overall IP strategy.

The requirements of New Zealand and Australia are similar and so the GPPH can be used cost effectively for both countries through one agent, as both countries require similar concordance tables and an application prepared for New Zealand could be applied in Australia with minimal adjustment allowing the same work product to be used in both countries.

For more information and expert commentary, go here.

China’s Official Trade Mark Fees Reduced by 50%

As of 1 April 2017, the Chinese Trademark Office has reduced a number of official trade mark fees by 50%. It has done this as part of the Chinese government’s effort to encourage entrepreneurship and innovation.

The 50% reduction in fees covers:

  • Filing trade mark applications
  • Renewing trade mark registrations
  • Opposing trade mark applications
  • Cancelling trade mark registrations
  • Recording updates to existing owner details on the Register
  • Recording assignments of trade mark rights on the Register

New Zealand brand owners may perceive the fee reductions to be relatively modest, and not particularly advantageous. However, they should be aware that the reduction in fees may incentivise trade mark squatters to file trade mark applications in bad faith, which is an ongoing problem in China. This problem is exacerbated by the fact that China’s trade mark system is based on a ‘first to file’ rather than a ‘first to use’ principle.

We recommend you review your existing trade mark portfolio in China, with a view to filing new applications and/or updating Register details for your existing Chinese trade mark registrations.

We also refer you to a previous Ellis Terry article which contains helpful information about protecting your trade marks in China.

If you are interested, please contact us to discuss how you can protect your trade marks in China in more detail.

Disclaimer: This article is intended to provide general information only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Ellis Terry named New Zealand IP Prosecution Firm of the Year at Managing Intellectual Property Awards ceremony

We are delighted to announce that Ellis Terry was awarded the New Zealand Prosecution award for 2017 at the Managing IP Global Awards on 9 March 2017. The Managing IP Global Awards recognise the best Intellectual Property firms in the world.

The annual awards ceremony, which took place at The Savoy in central London, saw over 250 IP professionals celebrate successes and achievements within the international IP world.

Among the accolades this year was Managing IP’s first ever prosecution award for New Zealand, presented to Ellis Terry for its outstanding work in prosecuting patents, trade marks and designs. The increased number of awards for the New Zealand category acknowledges the growing importance of the New Zealand IP landscape.

Ellis Terry partner Blayne Peacock said “we are thrilled to accept this award and the acknowledgement of our clients and colleagues around the world. The team at Ellis Terry has worked tirelessly to help protect and enforce innovation for New Zealand based organisations for many years. This recognition is a testament to the success of our clients in their chosen markets and to the high quality of research and development, and products, coming out of kiwi technopreneurs”.

For more information, please visit: http://www.managingip.com/Article/3668349/Awards/Managing-IP-Global-Awards-Winners-2017.html.

About Ellis Terry

Ellis Terry has offices in Auckland and Wellington and practices in all aspects of intellectual property law. Established to serve a local and international client base, but with a strong New Zealand client focus, we advise on patents, trade marks, registered designs, copyright, litigation and commercial law. We do more than just protect ideas, creativity and brands. We put the legal issues into their proper commercial context so that intellectual property can be managed just like any other business asset. We think outside the box to help develop successful commercial strategies and to implement them through our network of funders, advisors and businesses.

Ellis Terry offers legal assistance to innovative entrepreneurs and corporations in a range of industries. Creators of artistic works, inventors and designers from diverse specialist fields, including mechanical, electrical and computer engineering, have sought our guidance. Our trade marks team works with clients from a variety of industries, including the food and beverage, pharmaceutical, technology, film and entertainment, insurance, farming and agricultural, building, clothing and textiles, automotive and wine industries.

About Managing IP

Founded in 1990, Managing IP is the leading source of news and analysis on intellectual property developments worldwide.

The annual Managing IP Global Awards are the premier international awards for the intellectual property profession. The awards are based on extensive research and interviews with practitioners worldwide. A team of researchers based in London, Hong Kong and New York contact firms and clients in 75 jurisdictions to ask them for information and feedback.

Managing IP is part of the Euromoney Legal Media Group. Euromoney Institutional Investor PLC is listed on the London Stock Exchange.

Protecting the Material World

21 October 2016

Season after season, upmarket designers produce runway looks which are then swiftly replicated and manufactured by more affordable chain stores. This practice – known as fast fashion – fuels the global fashion industry. But while some participants in this copycat economy simply draw inspiration from current styles and trends, there are others who push the boundaries by copying designs outright.

Copied designs can be attractive to consumers who would be reluctant, for instance, to pay $700 for a Self-Portrait dress when they could simply purchase a ‘Self-Portrait style dress’ from alibaba.com for around $30. But for the fashion industry as a whole, these cheap knock-offs can tarnish the exclusivity and desirability of leading brands and take money out of the hands of the talented designers who created the dress in the first place.

This is why Intellectual Property (IP) laws are a critical part of the multibillion-dollar fashion industry. These laws strive to protect the interests of designers, without going so far as to stifle healthy competition. That said, designers still face a number of obstacles when it comes to defending their IP. There is time and cost involved with pursuing infringers every season, as well as reputational issues, including opening themselves up to attacks on social media for ‘bullying’ smaller players.

Copyright

Copyright is an unregistered IP right which protects original creative works, including clothing designs, for up to 16, or even 25 years, depending on the particular article.

Last year, the New Zealand Court of Appeal upheld a claim by G-Star RAW that Jeanswest had infringed the copyright in their 5602 Elwood Jean. While Jeanswest only made $325 profit from selling its version of the jeans, the Court awarded G Star $50,000 in damages, plus interest and legal fees.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Registered Designs

A registered design can protect the external appearance of a manufactured article for a specified period of time, as long as it is new or original. While it may be impractical and costly for a designer to register every style they produce, a registered design might give valuable exclusivity to special cuts that will feature over a number of seasons, but in different colourways or fabrics. The catch is that the design application must be filed with the Intellectual Property Office before the garment is “published” to the world, so designers are well-advised to plan in advance.

Across the ditch, high profile designer Toni Maticevski recently announced on Instagram that his unique ruffle styles are now protected by Australian Design Registrations. It will be interesting to see if more Australasian designers with stand-out styles will follow suit.

Toni Maticevski

Extracts of Toni Maticevski’s Designs from the Official Australian Design Register

Registered Trade Marks

It is vital for designers to protect their brand names and logos. Consumers rely on branding to differentiate the products and services of one designer from another. They are loyal to brands they enjoy and have grown to trust.

Some designers will go to great lengths to protect their branding from unauthorised use, and rightly so. The exclusivity of designer brands is part of the reason why fashion houses like Chanel can command luxury prices year after year.

Registered trade marks are an especially valuable tool to counteract domain name squatters and similarly-named rivals. Infamous trade mark disputes involving New Zealand designers include RUBY vs Rubi Shoes, and Trelise Cooper vs Tamsin Cooper.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

If designers are to thrive in the cut-throat world of the fashion industry, they need to understand how far they can go in looking for inspiration from other designers, as well as how they can safeguard their own livelihood from copycats. Consumers should also be mindful of the creative efforts which have gone into their favourite designs. While that $30 ‘Self Portrait style dress’ may seem tempting, it is this type of mind-set which is derailing the innovations of the fashion world.

Disclaimer: This article is intended to provide general information relating to New Zealand only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Ellis Terry named among world’s top patent professionals

Ellis Terry is proud to announce that John Terry and Blayne Peacock have again featured in the Managing IP survey and IAM Patent 1000 survey for 2016 under patent prosecution and patent litigation. The IAM survey refers to Ellis Terry as “New Zealand’s foremost specialists for all things electronics and mechanical”. Blayne has also been recognised as an expert in patent prosecution, copyright and litigation in the 2016 edition of Asia IP Experts.

Read more here.