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2. inventors and patents

IP Update/3rd Quarter 2014
ReMarks
In this issue 1 Onerous New Requirements Slow Down Trade Mark Registration Process in China / Material Girl the Face
of Change in Australian Trade Mark Opposition Proceedings 2 US Public Organisations Leading Genomic Research,
with Europe and Asia Catching Up 3 Marks & Clerk Solicitors helps Virgin Media to series of patent victories in the
UK High Court 4 Modernising UK IP law – Intellectual Property Act 2014 / Cancelled Redskins US Trade Marks Raises
Questions in Europe 5 The UKIPO’s Fast-Track Opposition Procedure – The First Six Months / Implications of the New
Technology Transfer Block Exemption 6 Patent Box One Year In / Judge-Made Prohibition May Discourage Future
Pharmaceutical Inventions in Canada 7 China Setting Up New IP Court / A Mouse that Can Roar – Using the Australian
Innovation Patent System 8 Colour Trade Marks in Australia – It’s not Simply a Question of What’s in the Colour?
Onerous New Requirements Slow Down
Trade Mark Registration Process in China
The stricter trade mark filing
requirements recently introduced by
the China Trademarks Office (CTO)
are creating headaches for trade mark
owners and their attorneys. These
onerous regulatory changes were
introduced with the implementation of
the new China Trade Mark Law and
Regulations on 1 May 2014. The net
result of the changes is unavoidable
delay in instituting any action before the
CTO.
Additional documents are now required
when applying to register, assign,
oppose, cancel or take any other action
before the CTO. A copy of a signed
power of attorney is no longer sufficient.
It is necessary to produce the following
documents at the time of filing:
• A power of attorney with the
original signature of an authorised
representative of the applicant;
• A photocopy of the applicant’s
Certificate of Incorporation, or
Certificate of Good Standing. Initially,
the CTO required this document to
bear the same original signature, but
it will now accept an unsigned copy.
Following widespread complaints, the
CTO also agreed to waive a further
requirement for a Chinese version of
the application form signed by the
same authorised representative of the
applicant.
For oppositions, the new requirements
effectively shorten the opposition period
for foreign opponents by about seven
days to take account of time spent
obtaining and dispatching the original
signed power of attorney to China
for filing. An original signed power of
attorney must be tendered when filing
opposition; it cannot be tendered within
the three-month period allowed for filing
supplementary evidence.
To expedite the filing process before
the CTO, we are recommending
that clients authorise Marks &
Clerk Beijing to sign standard form
documents on their behalf. We will
provide a general power of attorney
for this purpose on request.
The Trademarks Appeals Board
(TAB) has adopted less stringent
requirements. While it does now
require a signed Power of Attorney
with the original signature, a copy will
be accepted at the time of filing so
long as the original signed document is
submitted within 3 months. A simple
photocopy of the applicant’s Certificate
of Incorporation without any signature
must also be submitted.
Sandra Gibbons
sgibbons@marks-clerk.com
Marks & Clerk, Hong Kong (China)
Material Girl the
Face of Change in
Australian Trade
Mark Opposition
Proceedings
Australian Trade Mark No. 901355
“MATERIAL GIRL” has been the face
of the first decision from the Trade
Marks Office concerning a grant of an
extension of time for filing evidence
under the new test brought in by the
“Raising the Bar” Act. In an effort to
reduce delays in the resolution of
opposition proceedings, the new Act
has brought into play a more rigorous
and narrower test. Now, to obtain
a grant of extension of time when
evidence is concerned, it must be
demonstrated that the applicant acted
promptly and diligently at all times during
the relevant period or that “exceptional
circumstances” exist. Previously, an
extension of time could be granted if
there were “compelling reasons to do
so”, including business considerations
and the extent to which the evidence
was relevant to the outcome of the
opposition. In its decision, the Office
communicated that it intends to strictly
enforce the new provisions.
Sarah Poole
spoole@marks-clerk.com.au
Marks & Clerk, Melbourne (Australia)
2
ReMarks
IP Update/3rd Quarter 2014
US Public Organisations Leading Genomic Research, with Europe
and Asia Catching Up
Intel
BGI-Shenzhen
Abbott
24
23
University of California
Columbia University
35
25
Harvard University
70
50
National Institutes of Health
80
Roche
75
Pacific Biosciences
100
Illumina
Patent filings
125
Life Technologies
150
20
20
20
17
15
15
0
Organisation
Top applicants for synthetic biology inventions since 2003
publications since 2003. However, Europe and Japan feature
strongly too with 739 and 520 publications respectively.
Personalised medicine
Since 2007 the EU has committed over €1 billion of research
funding to personalised medicine. However, US public
organisations are, at the moment, leading the way with
research into personalised medicine. Of the top applicants,
over half are public bodies, and most of those are US
research agencies, hospitals or universities.
25
0
61
Bayer
68
Oncotherapy
Science
72
US Department
of Health
80
Novartis
INSERM
81
University of Southern
California
50
85
46
45
Roche
75
National Institutes of Health
100
127
Johns Hopkins
University
304
125
University of
California
150
Patent filings
Launched at the BIO International Convention in San Diego
this June, the Marks & Clerk Life Sciences Report 2014:
Genome 2.0 looks at the state of genomic research 10 years
on from the mapping of the human genome.
Since the end of the first era of genome sequencing with
the conclusion of the human genome project, the challenge
has been to apply the knowledge and the data generated
to practical applications. It is not enough to simply identify
a particular gene associated with a disease, or to identify a
gene coding for a particular cellular pathway. Rather, we now
have the ability to pinpoint a specific genetic variation in a
specific patient which can predict sensitivity to certain drugs.
Our report looks at three key fields that define “Genome
2.0”, the new era of genomics, medicine, and industrial
biotechnology we are now entering: sequencing technology,
personalised medicine and the emerging technology of
synthetic biology. Patent applications over the last 10 years
in these areas were analysed to identify where innovation is
coming from, and where it is going.
According to the research, personalised medicine and
synthetic biology are showing real commercial promise,
though public organisations outnumbered private
organisations among the top filers of patent applications
related to these fields. Meanwhile, in the more mature
sequencing technology market, established private
organisations outpace public entities, with past disruptive
technologies such as next generation sequencing having
become standard practice and new disruptive technologies
emerging that can further challenge the status quo.
US public organisations file a particularly high number of
patents in personalised medicine and synthetic biology, with
the National Institutes of Health (NIH) the only organisation to
feature among the top 10 assignees for patent applications
in all three areas of technology.
Innovation in Europe is driven by relatively few organisations,
including Swiss-based Roche and French public research
bodies.
Sequencing technology
Unlike the other areas of technology analysed in this
report, private companies appear to be the leading patent
applicants in sequencing technology. The two largest
players in the sequencing technology field are Illumina and
Life Technologies (now Thermo Fisher Scientific). However,
smaller companies with disruptive technologies such as UKbased Oxford Nanopore Technologies and China-based BGI
Shenzhen have also emerged in recent years.
Looking at the key territories for total patent applications
filed, again, the US is a long way in front with a total of 2,871
Organisation
Top applicants for personalised medicine inventions since 2003
While the number of patent families applied for by the leader,
the NIH, has fallen over recent years, others – notably the
French organisations, the Centre National de la Recherche
Scientifique (CNRS) and the Institut National de la Santé et
de la Recherche Médicale (INSERM) – have become more
active in the field.
Between 2003 and 2011 over half of each of the top five
applicants’ patent families related to cancer.
continued on page 3
ReMarks
IP Update/3rd Quarter 2014
3
US Public Organisations Leading Genomic Research, with Europe
and Asia Catching Up cont'd
0
Zhejiang University
28
Riken
University of Jiangnan
33
Nanjing University
25
49
Russian Department of Higher
Education and Research
50
Bristol-Myers Squibb
75
University of California
100
National Institutes of Health
Patent filings
125
Russian Government
150
Russian Department of Science
Synthetic biology
27
25
24
23
21
20
20
Organisation
Top applicants for sequencing technology inventions since 2003
Marks & Clerk
Solicitors helps
Virgin Media to
series of patent
victories in the UK
High Court
July 2014 saw an eighth patent claim
brought against Virgin Media and TiVo
comprehensively dismissed by the UK
High Court. The claim had been brought
by Rovi, the US television patent-holding
company. This follows similar judgments
against Rovi handed down in March
and May, which also held Virgin Media
and TiVo as victors in the dispute: eight
patents owned by Rovi have now been
revoked by the UK Court. Virgin Media
is represented in all cases in the litigation
by Marks & Clerk Solicitors.
The litigation is complemented by
around 40 oppositions filed against Rovi
patents granted by the EPO, which are
being handled by Marks & Clerk Patent
and Trade Mark Attorneys.
Will Cook
wcook@marks-clerk.com
Marks & Clerk Solicitors, London (UK)
At first glance, the figures for patent applications in this area
appear dramatically different from the other sub-sectors
analysed in this report, with the Government of Russia
topping the list of applicants and the Russian Department
of Science and the Russian Department of higher Education
and Research following closely behind. Similarly, Chinese
universities and institutions are heavily represented in the
rankings. However, these entities do not tend to file widely
outside their home country. This strongly suggests reasons
for filing other than simply protecting technology.
The main split in the data seems to be the distinction
between private corporations and public bodies. By far
the majority of applications are made in the name of public
bodies. Private organisations file relatively few applications.
This may indicate that the technology is still at a relatively
early stage, coming primarily from research institutes and
universities.
Gareth Williams
gwilliams@marks-clerk.com
Marks & Clerk, Cambridge (UK)
SIPO to Help Fight Online Patent
Infringement
In May 2014, the Chinese State Intellectual Property Office (SIPO) issued a
notice that regional SIPO departments and (government) rights protection
entities have agreed to specific responsibilities and set up an e-Commerce
Patent Rights Enforcement plan to help fight online patent abuse.
The responsibilities and tasks agreed to include: (i) quickly deleting / blocking
links to infringing products for obviously-infringing activities; (ii) deleting or
blocking links for relatively-complex patent infringing activities with a proper
advisory opinion showing infringement; (iii) timely deleting or blocking links
to infringing products and closing down online stores for complex patent
infringement cases as per mediation or settlement decisions; and (iv)
investigating and punishing counterfeit patent activity in the e-commerce
sector.
The promulgation and dissemination of this plan shows that the Chinese
government takes online patent infringement seriously. Patent owners will be
reassured that there are indeed measures in place which will assist them in
fighting online infringement. We especially hope that the clarification of the
previously-confusing overlapping areas of responsibility will make the system
more efficient and transparent. And going forward, we hope that further clarity
and support for legitimate rights owners will result as this plan is actually
implemented by the Government.
Michael Lin
mlin@marks-clerk.com
Marks & Clerk, Hong Kong (China)
4
Modernising UK IP
Law – Intellectual
Property Act 2014
On 14 May 2014 the Intellectual
Property Act 2014 received Royal
Assent. The main purpose of the Act
is to modernise certain aspects of
intellectual property law, making it
clearer and more accessible. It is hoped
that this will increase legal certainty for
all. Many of the provisions of the Act will
come into force in October this year,
with others following in 2015.
Standout aspects of the Act include:
Implementing the Unified Patent
Court Agreement (UPCA) – The Act
ratifies the UPC Agreement signed in
2013. The effect of this new patent
regime in Europe will be to introduce
a unitary patent granted by the EPO
that is effective over most of the EU,
enforced by a new pan-European court
system. This should reduce the cost
of obtaining and enforcing patents in
Europe, partly by relaxing translation
requirements and harmonising the law.
Introduction of a new registered
designs opinions service – The Act
enables the UKIPO to provide a nonbinding opinions service for registered
designs. The opinions service can
provide opinions as to whether a UK
registered design is valid or infringed by
a particular product. This will provide a
relatively cheap way for businesses to
obtain an indication as to the likelihood
of success of a registered design
infringement or validity action before
going to court.
Criminal offence of unauthorised
copying of a registered design in
the course of business – The Act
criminalises deliberate copying, without
permission, of a UK or Community
registered design in the course of
business. The potential penalties the
offence carries include a fine and/or
a prison sentence of up to 10 years.
Criminalisation of deliberate copying of
a registered design is hoped to deter
businesses from copying the designs of
others.
Other aspects of the Act include
accession to The Hague Agreement
relating to registered designs, clarifying
ownership of UK design right, and
enabling the marking of patented
products with an internet link.
Jack Stevenson-Hill
jshill@marks-clerk.com
Marks & Clerk, Manchester (UK)
ReMarks
IP Update/3rd Quarter 2014
Cancelled Redskins US Trade Marks
Raises Questions in Europe
The Trademark Trial and Appeal
Board (TTBA) of the USPTO cancelled
six trade mark registrations of the
Washington Redskins NFL team on 18
June (Blackhorse v Pro Football Inc.).
The trade mark registrations have been
cancelled for being disparaging of Native
Americans. Many articles and reports on
this decision have appeared following
the decision, which has caused a lot of
controversy. This decision is the latest
in a long standing legal battle which
began in 1992. A decision was issued
in 1999 cancelling the registrations but
this was overturned on appeal in 2003.
It appears from the press that team is
planning to appeal this latest decision
from the TTBA. The six cancelled trade
mark registrations will remain in force
until the appeals process is completed.
The decision is also connected to a
growing and longstanding US state
governmental call to ban the use of
ethnic names for sports teams.
Is it possible that this latest US decision
could increase the awareness of UK
and EU authorities in challenging
applications for trade marks that are
potentially contrary to public policy and
morality? Might this latest US decision
encourage the filing of cancellation
actions against existing trade marks on
these grounds? UK and EU authorities
already refuse to register words or terms
that could be considered potentially
contrary to public policy and morality,
but there is no guarantee that a word/
term might go unnoticed.
The Washington Redskins own similar
trade mark registrations in the UK and
Europe (as a CTM). Their existence
raises the question of whether an
attempt could be made to have them
cancelled here. Could and would the
term ‘Redskins’ be considered a racial
slur in the UK or other countries of the
EU contrary to Section 3(3)(a) of the
1994 Trade Mark Act or Art. 7(1)(f) of
the CTMR? An important question
likely to be raised is whether the term
‘Redskins’ is considered a racial slur in
this jurisdiction.
It is clear that the UKIPO and OHIM will
not accept any trade mark application
that it considers to be offensive to any
ethnic group and has OHIM has already
refused applications for such marks.
The mark PAKI was refused in 2009
as an offensive racial slur to people of
Pakistani or Indian origin used in the UK
and Ireland. Similarly PAKIS was refused
in 2007, as was SUDACA.
There are, however, CTM registrations
for GRINGO, a UK national registration
and an international registration
designating the UK for DAGO, as well
as a UK trade mark for FRENCHY.
These registrations are quite recent.
The current decision from the US TTBA
might raise concerns, resulting in a
closer look at the issues involved. If
so, this could lead to more decisions
refusing registration of such marks in
the EU and perhaps action to cancel
any existing registrations by offended
minority groups, as in the US.
In the past such marks may have been
acceptable that are today considered
politically incorrect. One such famous
British example is the ‘golliwogg’ or
‘golly’ (a doll characterised by black
skin, eyes rimmed in white, clown lips
and frizzy hair) which was popular
after WWII. Controversy arose when
the character/mascot Golly (until
1980 known as the ‘Gollliwog’) used
by the jam producer Robertson’s
was condemned as a racist symbol.
Robertson’s ceased using the jam and
marmalade jar character Golly in 2001
after 91 years.
The decision from the TTBA is not
yet final and it may be appealed. No
actions appear to have been taken to
date by the offended body against the
REDSKINS registrations outside the
US. If its action is ultimately successful,
it will be interesting to see if it is willing
to raise the issue elsewhere. If so, this
could encourage other ethnic/national
groups to take action against existing
registrations which they consider
disparaging. Either way, the decision
has likely been brought to the attention
of UKIPO and OHIM examiners and
they may be more careful when
examining applications for marks that
may be derogatory to ethnic groups or
nationalities going forward.
Hernán Ríos
hrios@marks-clerk.com
Marks & Clerk, London (UK)
ReMarks
IP Update/3rd Quarter 2014
5
The UKIPO’s Fast-Track Opposition Procedure – The First Six
Months
Over the past years the UKIPO has
adopted a policy of becoming more
“user friendly” and has introduced
procedures to make it easier, quicker
and cheaper to register trade marks
and to take or defend actions. One
such recent initiative has been the
introduction of a new fast-track trade
mark opposition procedure on 1
October 2013.
Key attractions are that the standard
official opposition fee of £200 is
halved to £100 and cases should be
determined within six months instead
of 12 to 18 months in standard
oppositions. The fast-track opposition
procedure accordingly appears
particularly attractive to individuals and
SMEs. However, there are significant
limitations to the fast-track procedure.
The first fast-track opposition decision
was issued in March in relation to an
application to register the trade mark
e-Vap for electronic cigarettes. At the
end of March, the UKIPO issued a press
release stating that only 10 per cent of
all oppositions had been filed under the
fast-track procedure, which appears
somewhat disappointing.
The reason for this low take-up
could be that oppositions are rarely
straightforward enough to qualify for
the fast track and it may not be sensible
for an opponent to limit its case at the
outset by choosing this option.
In many opposition cases, for example,
it is appropriate to rely on pending
applications and unregistered or
so-called “common law” marks,
which are not permitted in fasttrack oppositions. The fast track’s
requirement for filing proof of use upon
opposition is also onerous and the
evidence necessary for oppositions is
frequently not available by the required
deadline.
It will be interesting to see how the
new fast-track procedure pans out and
whether the initial poor take-up of 10
per cent improves.
Dawn Moodie
dmoodie@marks-clerk.com
Marks & Clerk, Edinburgh (UK)
Implications of the New Technology Transfer Block Exemption
Article 101 of the Treaty on the
Functioning of the European Union
prohibits European commercial entities
from entering into agreements and
activity which will prevent, restrict
or distort competition within the EU
market. However, the prohibition will
not be applied (i.e. the arrangement in
question will be exempted) where the
agreement or activity in question aids
“the production or distribution of goods
or…technical or economic progress”.
The Technology Transfer Block
Exemption Regulation (TTBER) is the
legal mechanism that exempts certain
technology transfer agreements from
Article 101 where those agreements
promote innovation and progress.
On 1 May 2014 the EU introduced
a new TTBER and updated the
accompanying Technology Transfer
Guidelines and several note-worthy
changes have been made.
Firstly, the old TTBER allowed a licensor
to restrict not only active sales (sales
stemming from proactive marketing)
but also passive sales (sales stemming
from unsolicited orders or enquiries) to a
territory or customer category reserved
for one licensee for two years after that
licensee began sales. Under the new
TTBER any restriction on passive sales
is no longer automatically permissible
(exempt) but must now be assessed on
a case-by-case basis. Consequently,
this type of restriction may still be
allowed if viewed as objectively
necessary for the licensee to penetrate
a new market.
The second change concerns
improvements made to technology by
licensees. The old regime permitted
licences that either transferred
ownership of, or exclusively licensed,
any non-severable improvements of
the licensed technology to the licensor.
(Non-severable improvements are ones
which cannot be exploited without
reliance on the original intellectual
property they are derived from.)
Where severable (i.e. stand-alone)
improvements were concerned, the
licensor had to evaluate the anticompetitive effect of such provisions to
determine whether or not the TTBER
applied. Under the new regime, there
is no distinction between severable
and non-severable improvements - all
improvements may only be licensed
back non-exclusively.
Finally, perhaps the most significant
change is that the TTBER will no longer
exempt clauses in licence agreements
that allow licensors to terminate if the
licensee challenges the invalidity of the
licensed patent(s).
A Commission briefing attended by
Marks & Clerk Solicitors in May stressed
that the new TTBER only makes small
changes to the previous regime. Of
course, all new licences must comply
with the new TTBER but updating
existing agreements should require
only limited work. In practice the old
regime still governs licences entered
into before 1 May 2014 until 30 April
2015 after which they must comply
with the new regime. However, existing
licensors should not rest on their laurels
– they should start negotiations well in
advance of the deadline to ensure that
they have a TTBER-compliant licence
on 1 May 2015.
Our Commercial Team can review your
current licences and advise on the
changes required by 30 April 2015 to
comply with the new TTBER. We can
also advise on negotiations for future
licences to ensure that they fall within
the exemptions whilst also achieving
your commercial aims.
Graham Burnett-Hall
gbhall@marks-clerk.com
Marks & Clerk Solicitors, London (UK)
6
ReMarks
IP Update/3rd Quarter 2014
Patent Box One Year In
Patent Box came into force on 1 April
2013 and provides a substantially
reduced rate of corporation tax for profits
generated from a product covered by a
UK patent. The rate of corporation tax for
qualifying profits is currently 13.6 per
cent, and will reduce to 10 per cent in
April 2017. The aim of the Patent Box
scheme, as stated by HMRC, is to
provide an incentive for companies to
retain and commercialise existing patents
and to develop new innovative patented
products in the UK. Underlying this is the
stated aim of encouraging companies to
locate high-value jobs associated with the
development, manufacture and
exploitation of patents in the UK.
Although official figures are not yet
available, in the tax year 2013/14 the
Patent Box is estimated to have cost the
Treasury around £300m. The Treasury
has estimated that it will cost around £1
billion per year by the time the tax
reduction has fully tapered in in 2017.
Now that companies derive a direct
financial benefit from patents that cover
their products, following a slow start they
are, unsurprisingly, keen to find out which
of their products are covered by patents
and which are not. This shines a spotlight
on companies’ patent activity which often
was not there previously. Company
boards, which were often relatively
uninterested in the process of identifying
inventions and protecting them, now
want to know what steps are being taken
to ensure that innovations are being
identified and protected. This drives best
practice by prioritising important
questions: Why are our innovative
products not protected by patents? Why
does such a large proportion of our
patent portfolio not cover any of our
products? Who is responsible for
ensuring that our innovations are
recorded and considered for patent
protection?
Another effect of Patent Box is that
obtaining grant of a UK (or European)
patent can now be seen to have a direct
effect on a company’s bottom line. This is
obviously beneficial for in-house IP
counsel as a company’s finance director
can now see a direct financial benefit to
his or her patent expenditure (instead of
merely an often intangible one). Although
the Patent Box scheme appeared initially
to provide the most benefit to large
corporations such as pharmaceutical
companies, our experience in practice is
that SMEs are also keen to get in on the
act. We have seen SMEs attempt to
devise patentable improvements of
existing products in order to bring them
within the scope of Patent Box. The
results have been important
improvements to those products, making
the products more competitive and thus
generating more sales and profits for the
companies involved. Thus, although
Patent Box can be seen as a relatively
crude lever, there is at least anecdotal
evidence that it is driving the kinds of
behaviours that the Government is
seeking to promote.
Peter Roberts
proberts@marks-clerk.com
Marks & Clerk, Manchester (UK)
Judge-Made Prohibition May Discourage Future
Pharmaceutical Inventions in Canada
A 2014 Federal Court of Appeal
decision in the case Novartis v Cobalt
/ Zoledronate (NOC) 2014 FCA 17
affirmed the decision of the Federal
Court that Novartis’s Canadian Patent
2,410,201, with claims relating to a drug
containing zoledronic acid, is invalid.
At issue were subject matter eligibility
for patent protection and obviousness.
The Federal Court held that the claims,
including pharmaceutical composition
and Swiss "use" claims, were directed
to a patent ineligible "method of medical
treatment”, although there is no such
statutory prohibition in Canada.
One important distinction between a
patentable pharmaceutical invention and
a non-patentable "method of medical
treatment" is based on a determination
of whether a claim is reliant upon
the skill and judgment of a medical
practitioner or alternatively is directed to
a vendible product. However, what does
this mean in a case where a new and
inventive therapeutic application involves
a dosage that is intended to be offered
as a vendible product (pharmaceutical
composition)? The fact that the
pharmaceutical composition according
to the invention is put into practice with
the help of a physician so that the public
may benefit from the specified new
and inventive therapeutic application
should not change the character of the
pharmaceutical composition, albeit in a
special form, into a method.
The decision to invalidate what the
Commissioner of Patents considered
a proper claim to a new, useful and
properly disclosed invention was
based on the recitation of “intermittent
dosages” in each claim. The
characterisation of claims based on a
special type of claim element appears
to be inconsistent not only with the
guidance provided by the Supreme
Court of Canada in its twin decisions
Free World Trust, 2000 SCC 66, and
Whirlpool, 2000 SCC 67, but also with
the 2010 Federal Court and the 2011
Federal Court of Appeal decisions in the
case Amazon.com Inc. v Canada (A.G.),
which require a purposive construction
of the whole claim language, within the
context provided by the specification,
to determine a claimed invention and
whether it constitutes patentable subject
matter which falls within the broad and
inclusive definition of invention in the
Canadian Patent Act.
It is possible that this Federal Court of
Appeal decision will not only negatively
affect the pharmaceutical industry, but
may disadvantage Canada’s public
health system by discouraging future
pharmaceutical inventions.
Mathias Dormann
mdormann@marks-clerk.ca
Marks & Clerk, Ottawa (Canada)
ReMarks
7
IP Update/3rd Quarter 2014
China Setting up New A Mouse that Can Roar – Using the
IP Court
Australian Innovation Patent System
A recent Chinese Supreme Court
work report released during Chinese
parliamentary sessions 2014 has, for the
first time, aimed to set up special IP courts
in China at a national level to deal with IP
disputes in a centralised way, including all
criminal, administrative and civil cases. The
proposed IP courts are specialist courts
responsible only for IP cases and resolve
disputes relating to a wide range of IP rights
including patents, trademarks, designs,
copyrights, circuit layout designs and plant
varieties.
Noting that dramatic developments of IP
in China had led to a marked increase in
disputes, both in complexity and number,
the Supreme Court sees the new IP court
as the next major development after the
existing IP tribunals. These IP tribunals
were established as pilot schemes to
hear all IP related grievances in court, but
inconsistencies among different principles
and procedures of criminal, administrative
and civil laws in the Chinese civil law system
remained unresolved. It is not rare to see
one IP dispute subject to diverse findings
of fact and remedies under different bodies
of laws, and such uncertainty often threw
judges into great perplexity. The new IP
court is hoping to iron out this inconsistency
between various public laws and private
laws with regards to IP and set forth a
consistent and uniform rule for the judges to
follow in dealing with IP disputes.
The IP court requires dedicated judges
with backgrounds in IP issues and/or
technologies. New legislation must be
developed to give the IP court a solid legal
footing in the Chinese civil law system.
There have been various proposals made
during the parliament discussion about the
form of the IP court, including setting up
a centralised high court nationwide as the
court of last instance for IP disputes, and
forming a circuit appeal court that moves
from place to place in "circuits" in order to
serve dispersed populations in vast and
unbalanced regions. So far, no definite
answer has been given.
The new IP court is expected to bring
additional harmonisation to the Chinese
IP protection system with systems in the
UK, US, Germany, Japan, and notably, the
Unified Patent Court in Europe. It remains
to be seen, however, what form the new
IP court will take and how parties in IP
disputes can benefit therefrom.
Zephyr Su
zsu@marks-clerk.com
Marks & Clerk, Hong Kong (China)
There are two types of patents in Australia – ‘Standard’ and ‘Innovation’
patents. Exploring differences between these two patent systems provides a
commercially useful strategy for protecting inventions in Australia.
The intention of the Australian Patents Act is that the “innovative step” required
for an innovation patent is a lower threshold for patentability than the standard
“inventive step”. Combining this with rapid grant and a shortened patent term
makes the innovation patent particularly attractive to applicants that create
products with a short lifecycle, are quite simple, or may even be straightforward
adaptations of other products in the market regardless of the technology
involved. Another benefit of the innovation patent is the ability to seek rapid
certification to provide enforceable rights for litigation being no different to
standard patent rights but where infringers face a greater task invalidating an
innovation patent as compared to a standard patent by virtue of the lower
threshold innovative step.
Summarised differences between standard and innovation patents are:
Maximum
Term:
Standard Patent
20 years, 25 for some
pharmaceuticals
Cannot cover:
Human beings and processes for
their generation
Max no. of
claims
Publication:
No maximum (but fees apply at
acceptance if more than 20)
18 months from the priority date
Examination:
Mandatory pre-grant
Deadline for
examination:
Max length of
examination:
5 years from filing
No deadline
12 months (New Act) 21 months
(Old Act)
Manner of manufacture
Novelty
Inventive step (ie obviousness test)
Utility
Pre-grant
6 months
Principal
criteria for
examination:
Opposition:
Reexamination:
Divisional
applications:
Innovation Patent
8 years
In addition to standard patent
restrictions, plants, animals
(excluding micro-organisms) and
processes for their generation
5 claims
At grant (typically 1 month after filing)
Post-grant and voluntary unless
seeking to enforce the patent
against alleged infringers or 3rd party
requests exam
Same as a standard patent but
‘innovative step’ replaces ‘inventive
step’ (ie no test for obviousness)
Post-grant and post-certification
Post-grant at any person’s request Same as for standard patents
Standard or innovation patents
can be divided out within 3
months of acceptance
Must be filed before grant
Applicants may be missing out on opportunities to secure rapid and flexible
protection in Australia because the innovation patent is not often used.
Moreover, the well established standard patent and the innovation patent have
differences that can be used in concert to improve the scope and enforceability
of patent protection in Australia. Filing both simultaneously is possible.
However, “double patenting” where the same invention is granted in two or
more patents is prohibited under Australian law. Regardless, the test for double
patenting is very narrow and requires practically identical claims to be present
in the separate applications/patents. Claims with differing recitations of the
essential features, which can often be the case where an innovation patent
recites obvious features that are not acceptable for a standard patent, may be
conferred distinctly patentable by the Patent Office. Alternatively, a patentee of
a granted innovation patent could amend the co-pending standard application
under examination to include all the innovation claims verbatim, then surrender
the innovation patent once the standard application is accepted.
Matt Pini
mpini@marks-clerk.com.au
Marks & Clerk, Melbourne (Australia)
8
ReMarks
IP Update/3rd Quarter 2014
Colour Trade Marks in Australia – It’s not Simply a Question of
What’s in the Colour
The difficulties associated with obtaining trade mark
registration for a colour mark (or a word mark denoting a
colour with market relevance) were recently demonstrated
in the case of Phone Directories Company Australia Pty
Ltd v Telstra Corporation Limited [2014] FCA 373. In his
decision, Justice Murphy of the Federal Court overturned
two previous decisions of delegates of the Registrar of Trade
Marks and refused to allow Telstra Corporation Limited
(Telstra) to register either the colour yellow or the word mark
YELLOW in respect of goods and services of the relevant
telephone directories. In finding that the word YELLOW was
not inherently adapted to distinguish Telstra’s goods and
services, his Honour remarked that it is difficult to draw a
distinction between a word denoting a colour and a colour
itself when dealing with the issue of a trade mark’s inherent
capacity to distinguish. His Honour found the word mark
YELLOW to be descriptive and that it was likely that other
traders would wish to use YELLOW as a mark in a manner
likely to infringe. Further, that the colour yellow did not in
fact distinguish the designated goods and services of Telstra
at the lodgement date, and any pre-lodgement use of the
colour yellow that constituted use of the colour as a part
of other composite marks (e.g. the YELLOW PAGES logo)
rather than the colour yellow alone, was not used as a trade
mark.
By contrasting this situation with other famous examples, it
becomes clear that in order to obtain trade mark protection
for a colour mark it is not simply a question of “what’s in the
colour?”. Mars Australia had success in registering a distinct,
bespoke colour purple with respect to Whiskas cat food
in Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v
Société de Produits Nestlé SA (2010) 86 IPR 581, yet Mars
was able to demonstrate that the colour of the trade mark
was created for the Mars group in Europe “from scratch”
by investing significant sums of money into creating a new
shade of purple, together with substantial evidence of its use
over a period of almost 10 years.
Veuve Clicquot was able to successfully register its
distinct shade of orange with respect to champagne and
sparkling wines due to the extent to which it had used the
mark prior to the filing date, both in advertising material
and on champagne labels in Re Application by Veuve
Cliquot Ponsardin, Maison Fondé En 1772, (1999) 45
IPR 525; (1999) AIPC 91492. The Court found that its
use was sufficient to distinguish Veuve’s product from the
ReMarks is a quarterly newsletter produced by Marks & Clerk LLP.
Articles featured are intended to provide a summary of the subject
matter only. Readers should not act on any information without first
obtaining specialist professional advice.
www.marks-clerk.com
champagnes and sparkling wines of its competitors.
Yet Cadbury Schweppes filed a trade mark application for
the colour purple in respect of chocolate on 25 November
1998, which remained unregistered until 24 September
2009. In the intervening years several oppositions by Nestle
and Darrell Lea were filed, which lead to the decision that
Cadbury did not have an exclusive reputation in the colour
purple for chocolate in Cadbury Schweppes Pty Ltd v Darrell
Lea Chocolate Shops Pty Ltd (No 8) (2009) 174 FCR 175.
Cadbury’s were, however, successful in registering a specific
shade of purple as a trade mark, but limited to use on the
packaging of block chocolate and boxed chocolate.
Following the infamous United States decision of Christian
Louboutin S.A. v Yves Saint Laurent Am. Holding Inc., 696
F.3d 206, 228 (2d Cir. 2012) which found that red soles were
not inherently distinctive, but that use of the red Pantone No.
18 1663TP lacquer as a contrasting colour on the sole of
women’s high heels had acquired a secondary meaning as a
symbol that identifies the brand because it had been applied
so consistently, Louboutin has managed to obtain trade mark
protection in Australia with similar limitations.
So how do you obtain trade mark protection in a single
colour?
• Evidence of use in support of an application for a colour
mark will, in most cases, need to be evidence of use of
the trade mark for which protection is sought prior to the
filing date;
• Endorsements should accurately describe the way in
which the colour is intended to be used on the goods or
in relation to services;
• Avoid colours which carry connotations or market place
recognition.
Australian Trade Mark No. 1352410 in
the name of Christian LOUBOUTIN
Sarah Poole
spoole@marks-clerk.com.au
Marks & Clerk, Melbourne (Australia)
Copyright Marks & Clerk LLP, July 2014
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