RECENT NEWS

Key changes under the Patents Act 2013 (the “New Act”)

Effective 13 September 2014

Higher Thresholds

  • Change from local novelty (known or used in New Zealand) to absolute novelty (known or used anywhere).
  • Patentability threshold changes from ‘benefit of the doubt’ to ‘balance of the probabilities’.
  • Examination will include “obviousness” rather than just simple novelty.
  • Computer software protection is likely to be more restricted.

New Procedures

  • Increased filing, examination and maintenance fees – renewal fees will be payable annually from the 4th year of filing.
  • Examination must be requested instead of the old automatic examination system.
  • Automatic publication of all New Act applications 18 months from filing – no more submarine patents hidden from view.

Challenge Options

  • Third Party Notifications can be lodged by any interested party challenging the novelty or inventiveness of a published application and the Commissioner must consider the objection.
  • Re-examination of a patent application or granted patent may be requested by any interested party.
  • Opposition remains with stronger grounds than under the Old Act.
  • Revocation before the Commissioner or the Court is available throughout the life of a patent (previously only available before the Commissioner for one year after grant).

Old Act Cases (Patents Act 1953 continues to apply)

  • “Old Act” cases are those where a “complete specification” is filed before 13 September 2014.
  • Old Act cases will be examined under the provisions of the Old Act (Patents Act 1953).
  • A divisional from an Old Act case will be treated as an Old Act case.
  • A PCT national phase application entering New Zealand before 13 September 2014 will be treated as an Old Act case but a pending PCT application filed before 13 September 2014 that has not entered the national phase in New Zealand will be a New Act case.
  • The validity of Old Act cases will be determined under the Old Act grounds.

Strategic Issues

Filing

Complete specifications filed before 13 September 2014 will enjoy the more lenient provisions of the Old Act. Consideration should be given to:

  1. Completing any provisional application already filed before 13 September 2013.
  2. Filing any new application as a complete in the first instance before 13 September 2014.
  3. Entering the national phase in New Zealand for any pending PCT application before 13 September 2014.

Challenges to Validity

  1. New Act Re-examination will be cheap but an interested party cannot participate further after a request is filed.
  2. New Act Opposition will be a more powerful option with the enhanced grounds of opposition and has the key advantage of suspending grant.
  3. Old Act Oppositions may be refiled as New Act revocation proceedings, gaining the stronger revocation grounds under the Old Act and simple balance of probability applies rather than the benefit of the doubt.
  4. New Act Revocation before the Commissioner offers a more cost effective challenge option for older patents.

Important: This note is intended to provide general information as to changes when the Patents Act 2013 comes into force. Other factors may be relevant in developing a strategy for a particular situation and you should seek our advice before deciding upon a strategy.

The “Jandal Scandal” Takes a New Twist

In a scandal of jandal proportion, Stuff is reporting an army of fanatics has formed following the stoush which emerged yesterday regarding the monopolisation of this quintessential kiwi word.

Yesterday a Hamilton based online retailer lastseason.co.nz received a cease and desist letter from Stanford Industries Limited asking it to cease using the word “jandal” to advertise its footwear, claiming breaches of trade mark law.

The website owners have now taken to the social networking site Facebook seeking public support for their use of the term “jandal”. The page “Jandal Scandal” currently has 909 likes.

Stanford Industries Limited is the owner of two New Zealand trade mark registrations for JANDALS (nos 60683 and 108195) for goods including footwear.

The registration of a trade mark grants its owner nationwide exclusivity in a trade mark. However, registration is only part of the picture, and trade mark registrations may be attacked or challenged.

The purpose of a trade mark is to differentiate the goods or services for which it is registered from those of other traders.

If a trade mark can no longer serve to differentiate the particular goods or services because it has become generic or descriptive when used in relation to those goods or services, it can no longer serve its fundamental purpose.

Under the Trade Marks Act 2002 a trade mark may be revoked if, as a consequence of “inactivity of the owner, the trade mark has become a common name in general public use for a product or service in respect of which it is registered”.

This is known in trade mark law as “genericism”. Some examples of words which were formerly the subject of trade mark registrations in the United States, but which have later been found to be generic are:

AQUA-LUNG
ESCALATOR
HEROIN
KEROSENE
THERMOS
YO-YO
ZIPPER

It has been suggested by some commentators that the trade mark JANDALS has obtained this generic status in the minds of New Zealanders.

Another level of attack lastseason.co.nz may have open is revocation on the basis of “non-use”. Under New Zealand trade mark law a registration may be revoked if “at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered”.

So far two New Zealand intellectual property law firms have offered to take up the case for lastseason.co.nz, namely Catalyst Intellectual Property and James and Wells, so the end of this particular saga does not appear imminent.

Please visit www.ellisterry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you would like to discuss any issues relating to avoiding genericism in your brand.

Revision in Chinese trade mark law

On 30 August 2013 China’s Standing Committee of the National People’s Congress revised China’s trade mark law passing the “Decision on Revising the Trademark Law of the People’s Republic of China”.

The changes will significantly align prosecution procedures with international norms, and will improve trade mark owners’ ability to enforce their intellectual property rights against infringers.

Some of the key changes are outlined below.

General changes include:

  • a “good faith” requirement is introduced for trade mark applicants;
  • agents must now inform clients if a trade mark they intend to apply for cannot be registered; and
  • agents may not accept instructions if the agent knows the client is applying to register a trade mark in bad faith.

Procedural changes include:

  • the China Trade Mark Office will introduce an online filing procedure and will now allow multiclass applications;
  • the Office must issue its examination report within nine months of the filing date;
  • trade marks can now be renewed from 12 months prior to the expiration date;
  • accepted applications will now be published for a period of three months during which an interested party may oppose the registration of the mark; and
  • in an attempt to curb oppositions made in bad faith, only parties with prior rights will be able to lodge oppositions.

Enforcement changes include:

  • unauthorised use of “well-known” trade marks or taking advantage of “well known” branding in a manner that leads to consumer confusion or deception will become an offence;
  • there is an increase in statutory damages for trade mark infringement from RMB 500,000 to RMB 3 million;
  • the changes introduce a fair use standard and owners of trade mark registrations will not be permitted to stop the fair use of generic names and designs, the model numbers of goods, place names, and expressions of the quality, primary raw materials, functions, intended purposes, weight, quantity, or other characteristics of the goods; and
  • a party alleged to have infringed a trade mark registration will be able to defend an infringement action if the trade mark the subject of the registration has not been used in the past three years.

The changes will simplify China’s complex prosecution procedures, and address international concerns relating to bad faith applications and a lack of clear remedies for infringement.

The changes to China’s trade marks law will take effect from 01 May 2014.

Since the New Zealand-China Free Trade Agreement signed in 2008 China has become New Zealand’s fastest growing trading partner.

Please visit www.ellisterry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you would like to discuss any issues relating to protecting or enforcing your brand in China.