Focus: Patents, Designs and Trade Marks June 2006
In this issue: Welcome to Allens Arthur Robinson Patent & Trade Marks Attorneys' round-up of news, notices and features on patent, design and trade mark-related matters.
- Trade Marks Amendment Bill 2006 A brief outline of some of the key amendments
- Proposed change to patent duty of disclosure
- IP Laws Amendment Bill - practical issues for trade mark owners
- Cadbury and its colour purple trade mark practical aspects
- AAR at INTA in Canada
- Colin Oberin retires on 31 December 2006
In brief: The Trade Marks Amendment Bill 2006 was introduced into the Australian Senate on 21 June 2006. The Bill proposes a number of significant amendments to the Trade Marks Act 1995 which we briefly outline below.
The key changes proposed by the Trade Marks Amendment Bill 2006 (the Bill) to the Trade Marks Act 1995 (the Act) relate to:
- multi-class series applications;
- incorporated associations being able to apply for collective trade marks;
- new and amended grounds of opposition;
- amendments to who can apply to remove a registration for non-use and clarification of the Registrar's discretion in non-use actions;
- reduction in the grace period for renewal of a registration; and
- changes to certain aspects of the customs provisions.
It is proposed to allow multi-class series applications. This will eliminate the current need for an individual series application in each class of interest.
Further, it is proposed to allow 'linking' of series applications, provided the applications are for exactly the same series of trade marks and have the same filing dates. These applications will then be considered as a single trade mark application.
Collective trade marks
Currently, the definition of an association in the Act excludes a body corporate. The Bill proposes to remove this exclusion and allow incorporated associations to apply for collective trade marks. It is proposed to maintain the right of unincorporated associations to own collective trade marks.
The proposed amendments include:
- an application accepted under the prior-continuous-use provisions could be opposed on the basis of a substantially identical or deceptively similar trade mark the use of which in relation to similar goods/closely related services or similar services/closely related goods has been continuous and pre-dates the use of the trade mark the subject of the accepted application;
- an application may be opposed on the ground that the application was made in bad faith; and
- the ground of opposition based on a trade mark with a reputation in Australia to be less restrictive, by removing the requirement that the opposed mark be substantially identical with or deceptively similar to the trade mark with the reputation in Australia.
An application for removal for non-use is proposed to be allowed by any person not just an 'aggrieved' person, as is presently the case.
In deciding whether or not to remove a trade mark from the Register, it is proposed to clarify the discretion of the Registrar of Trade Marks to take into account that the trade mark has been used by the owner in respect of similar goods/closely related services or similar services/closely related goods to those covered by the registration in question.
Grace period for renewals
It is proposed to allow a registered owner six months, instead of the current 12 months after the date a registration expires, in which the registration may be renewed, before it is removed from the Register.
Currently, a registered owner may give to the Customs CEO a notice in writing objecting to the importation after the date of the notice of goods that infringe the trade mark, and that notice remains in force for two years. It is proposed to extend this period to four years.
It is also proposed to replace the currently required security with a written undertaking to repay to the Commonwealth the expenses of seizing the goods.
The amendments outlined above, if enacted, are generally advantageous to trade mark owners in that they will allow more flexibility and cost reduction in applications (eg in collective trade marks and series applications) and generally expand a trade mark owner's ability to take action against accepted applications and registrations by others that are cause for concern.
The reduction in the renewal grace period to six months means that registered owners would have to make a relatively quick decision whether to save a registration if the renewal date is allowed to pass. The changes in the Customs provisions should serve to reduce the administrative burden on owners and make the use of these provisions a more attractive proposition. We shall continue to monitor the progress of this Bill through parliament, and report further developments to our clients and contacts.
In brief: For some years, the Australian Patents Act has included an obligation on applicants to disclose to the Patent Office relevant search results from corresponding applications in other jurisdictions. A new position paper from the Australian Government provides revision and clarification to the provisions. It is likely that these changes will be implemented soon, and we detail the proposals below.
A key recommendation of the Review of Intellectual Property Legislation under the Competition Principles Agreement, carried out during 2000, was the introduction of measures to reduce the likelihood of the grant of patents in Australia that would not be granted by the patent offices of Australia's major trading partners. One such measure brought in by the Patents Amendment Act 2001 as section 45(3) of the Patents Act 1990 was the imposition of a positive duty on patent applicants to disclose to the Patent Office during the course of examination the results of searches carried out by foreign patent offices on corresponding applications.
The regime for the disclosure of search results has undergone several changes since its introduction. On 19 April 2006, after lobbying from organisations such as the Institute of Patent and Trade Mark Attorneys of Australia and the International Federation of Intellectual Property Attorneys, IP Australia released a position paper outlining further reforms.
The amendments proposed in the position paper relate to:
- the timing for filing search results, and relevant official fees payable;
- the definition of a 'corresponding application';
- the position of divisional and additional applications; and
- what constitutes 'receipt' of a search result from a foreign patent office.
Currently, search results must be disclosed within six months of the search being completed or within six months of requesting examination of the application, whichever is the later. An extension of time must be requested and monthly extension fees paid to file search results outside these limits.
Under the proposed fee structure, fees will not be payable upon filing search results unless the results are filed after acceptance of the application. Further, extensions of time in which to file search results will not be required until six months after the patent has been sealed.
The results of a search carried out by a foreign patent office in respect of a 'corresponding application' must be disclosed to the Australian Patent Office. As the term 'corresponding application' is not specifically defined in the Patents Act 1990 or the Patents Regulations 1991, applicants had some difficulty in determining exactly which search results needed to be disclosed.
The position paper proposes to remedy this uncertainly by specifying that a 'corresponding application' is a foreign application which:
- provides a priority for the Australian application;
- claims, or has entitlement to, priority from the Australian application; or
- claims, or has an entitlement to a priority that is the same as the priority claimed by the Australian application.
Divisional and additional applications
The circumstances under which search results must be filed for a divisional or additional application, where search results had already filed on predecessor applications, were perceived by some applicants as unclear, due to definitional difficulties in covering multiple generations of divisional applications.
It is proposed to provide certainty in this regard by imposing a duty to file search results on all divisional or additional applications, irrespective of whether the results have already been disclosed on the parent or any other predecessor application.
Receipt of search results
A strict interpretation of the current regulations can be seen to impose a duty on applicants to disclose search results that were not received directly from a foreign patent office, but were brought to the applicant's attention by a third party. This was perceived as imposing a highly onerous burden on applicants in certain situations.
This will be remedied by a clarification specifying that a search result must be disclosed where it has been received by an applicant from a foreign patent office or from a person who conducted the search on behalf of the foreign patent office.
Implementation of reforms
The amendments proposed in the position paper, which should be implemented through changes to the Patent Regulations in the near future, represent sensible reforms to the administration of the search result disclosure regime and should be welcomed by foreign and local applicants for Australian patents. We will continue to monitor this process, and will keep our clients and contacts informed if and when the changes take effect.
In brief: In our Focus: Intellectual Property - April 2006 publication we reported on the Intellectual Property Laws Amendment Bill 2006, introduced into Parliament on 30 March 2006. The Bill was passed by the House of Representatives on 22 June 2006. Below, we consider in detail some of the practical aspects of the key trade mark changes proposed under the Bill for the revocation of acceptance and revocation of registration, the reasons behind the changes, and what those changes really mean for trade mark owners.
In relation to Australian trade marks, the Intellectual Property Laws Amendment Bill 2006 (the Bill) proposes a number of amendments to the Trade Marks Act 1995 (Cth) (the Act), the most significant being:
- changes to the grounds on which the Registrar may revoke acceptance of a trade mark application; and
- granting the Registrar power to revoke trade mark registrations in circumstances previously available only on application to the Federal Court.
Revocation of acceptance: Section 38
Trade mark owners and practitioners will be aware that section 38 the Act currently provides that before a trade mark is registered, acceptance of an application may be revoked only if there is either an error or omission during examination, or special circumstances exist.
Revocation of acceptance has therefore been difficult to establish, given the limited grounds and the uncertainty of success of such action. An example is where an examiner may have considered a prior mark in the search, but accepted the application without raising the prior mark as a citation. Such a question of judgment (or misjudgment) cannot be considered an 'error' under the Act, and hence is not a valid ground for revocation of acceptance even though the resulting registration may be clearly invalid.
Under the Bill, however, the existing s38 will be repealed and substituted with a new provision. The new provision will allow acceptance to be revoked if the Registrar is satisfied that the application should not have been accepted taking into account all of the circumstances, and if it is reasonable to revoke in all those circumstances.
The new revocation powers are therefore intended to widen the basis on which the Registrar may revoke acceptance, and would include an error of judgment or omission on the part of an examiner, and allow consideration of information about the trade mark that was not available to the Registrar at the time of examination. Examples include situations in which:
- an examiner has overlooked or discounted information that would lead, if properly considered, to the application being rejected; or
- an international application for a conflicting mark, which may have an earlier priority date but which may not yet have been filed in Australia, has not been considered by the examiner.
In the first scenario presented above, the new provisions would enable a party to base an application for revocation of acceptance on the examiner's error.
Ultimately, the intention of this provision is to allow the Registrar to exercise reasonable discretion when deciding whether to revoke acceptance. The Registrar will then be in a better position to effectively keep invalidly accepted trade marks from becoming registered, so protecting the public interest.
Turning to the practical implications of these changes, for a trade mark owner attacking another party's invalidly accepted application, the new provisions broaden the grounds on which an application may be revoked. While the Registrar is expected to use the new revocation powers sparingly (except in clear cut cases), trade mark owners whose applications may be under attack for revocation will need to carefully consider and respond to the new wider grounds, and establish persuasive reasons as to why the application was validly accepted.
It is also important to note that once introduced, this new provision will apply to applications accepted on, after or even before commencement.
Revocation of registration: Section 84A
Section 84 of the Act currently provides the Registrar with power to cancel a trade mark registration, but only on application from the trade mark owner. Otherwise, the Act provides that only a prescribed court (eg the Federal Court) may order the Registrar to cancel a trade mark registration on specific grounds.
The Bill proposes to insert a new s84A into the Act, which will provide the Registrar with the power to revoke a trade mark registration along similar lines to revocation of acceptance. That is, the Registrar will be able to revoke a registration if satisfied that the trade mark should not have been registered taking into account all of the circumstances existing when the mark was registered, and if it is reasonable in those circumstances to revoke the registration.
The circumstances to be taken into account by the Registrar in deciding whether revocation is reasonable will include, but not be limited to:
- errors or omissions leading to registration;
- Australia's obligations under international agreements;
- special circumstances;
- use of the trade mark;
- legal proceedings relating to the trade mark; and
- other action taken in relation to the trade mark.
It will not be necessary that the Registrar was aware of these circumstances at the time of registration, but only that the circumstances existed.
The new s84A provides that the Registrar must give notice to the owner of the trade mark registration and any person recorded as having a claimed interest in the registration of any intention to cancel a registration within 12 months from registration, and that those parties have a right to be heard before a final decision is made on whether to cancel a registration.
The Registrar's proposed new revocation powers under s84A are again aimed at situations where an application proceeds to registration, but where circumstances existed which should have resulted in the application being rejected. Examples may be:
- errors, omissions or misjudgment on the part of examiners; or
- delays in the filing of an international application in Australia, having an earlier priority date.
Practically, this new provision has the potential to expose trade mark owners to a further 12-month period following registration in which their registration may be contested, thus effectively introducing a de facto post-registration opposition period.
From the other party's perspective, however, an application for revocation of a registration can be based on 'all circumstances'. Hence the grounds are considerably broader than the usual opposition grounds.
The requirement that an application for revocation must be lodged within 12 months from registration represents a balance between the interests of the registered owner having a registration that is not indefinitely vulnerable to revocation, and the interests of the public in not having invalid registrations on the register.
Finally, it should be noted that the Federal Court's power to order the Registrar to cancel a trade mark registration will remain unaffected.
Revocation of registration: Section 84B: Opposition ignored
In addition to the above powers of revocation, the Bill proposes that a new s84B be inserted into the Act, to provide for circumstances where notices of opposition or extensions of time to oppose are filed in time, but due to administrative delays at the Trade Marks Office are ignored or not taken into account, or are not brought to the attention of the Registrar until after the trade mark is registered.
Section 84B will therefore oblige the Registrar in such circumstances to revoke the registration, where the Registrar is made aware of those circumstances within one month of the notice or application being lodged.
If revocation is sought on this ground, the registered owner will not have the right to be heard before the registration is revoked.
Although the above circumstances are rare and the provision is unlikely to be frequently relied upon, the provision is of significance. The owner will have no opportunity to be heard on whether registration should be revoked, even if the owner has prior use on which it may have validly secured registration.
Finally, it should be noted that the effect of revocation of a registration under either ss 84A or 84B will follow the general rule that the application for registration will revert to a pending application. The Registrar will be able to either revoke acceptance under s38 and then examine or reject the application, or if a notice of opposition or extension of time to lodge a notice of opposition has been lodged, hear the opposition.
As far as revocation of trade marks is concerned, the Bill has significant implications for owners and users of registered and unregistered trade marks. Although consideration of the Bill by the Senate has been deferred, we will continue to monitor its passage through parliament and report further progress when it happens.
In brief: The recent Trade Marks Office decision in relation to Cadbury's trade mark application for the colour purple raises the question as to whether the consistent use of a particular colour gives an applicant an exclusive right to that colour.
This decision makes clear that, in certain circumstances, the Trade Marks Office is prepared to register a colour as a trade mark. To do so an applicant has to show the following:
- intentional and consistent use of the colour to distinguish the applicant's goods and/or services from those of other traders; and
- extensive promotional activities educating the public about the use of that colour to identify applicant's goods and/or services from those of other traders, and not merely as an ornament or decoration.
In this case, an educational and marketing campaign had been extensive but ranged over only four years.
Cadbury Schweppes Pty Ltd (Cadbury) had filed an application to register a trade mark for THE COLOUR PURPLE in class 30 (chocolate). Darrell Lea Chocolate Shops Pty Limited (Darrell Lea) was successful in opposing this application to the extent that Cadbury failed to establish that the colour purple was distinctive of all of its chocolate products. However, the Registrar allowed registration of a particular shade of purple (namely, Pantone PMS 2685c) in relation to specific Cadbury goods, namely boxed chocolate and block chocolate.
Arguments advanced by Darrell Lea
The main ground of Darrell Lea's opposition was that a trade mark for the colour purple was not capable of distinguishing Cadbury's chocolate from the chocolate of other traders.
Darrell Lea argued that the colour purple could not be used as a trade mark as it has been 'generically' used by chocolate traders to indicate 'richness' and 'classiness'.
The Registrar's decision
The Registrar observed that in deciding whether or not a colour functions as a trade mark, it is necessary to determine whether the trader has used the colour in a way that distinguishes its goods from the goods of the other traders. Therefore, to be successful, Cadbury had to show extensive evidence of public recognition of the particular shade of purple as distinctive only of Cadbury's goods. The Registrar was satisfied that in the four years (from 1994 until the date of the filing of the application in late 1998) the particular shade of the colour purple was used by Cadbury as a badge of origin, and not as decoration.
Some of the persuasive evidence produced by Cadbury was:
- the colour purple has been used as a corporate colour since the 1920s and since at least 1929, for 'Dairy Milk' moulded chocolate blocks and 'Milk Tray' boxed chocolates; and
- in 1994, the entire block milk chocolate product range was relaunched using broad panels of purple. Since that time, purple has featured prominently in advertising and promotion of the entire range of moulded block milk chocolate.
The Registrar did not accept the evidence of the generic use of colour purple by the chocolate industry, as provided by Darrell Lea. However, the Registrar noted that Cadbury's use of the colour purple as the substantive colour in its packaging did not extend beyond moulded block and boxed chocolate, until after the date of the filing of the application.
Despite the limitations to a particular shade of purple and to specific chocolate goods, Cadbury's registration clearly has potential impact on others who attempt to market any chocolate product in packaging of similar colour in Australia.
With this in mind, we note that Darrell Lea has recently appealed the Registrar's decision to the Federal Court.
Further, the Full Court of the Federal Court is also about to hear the Woolworths v BP (colour green) case, another appeal where the Federal Court will have to consider questions of registrability of colour trade marks. In this case, at first instance, Justice Finkelstein decided that the colour green had become distinctive of BP's services in the marketplace.
In considering these appeals, the Federal Court will have to struggle with the issues of incorporating new and controversial colour trade marks into the traditional trade marks system, and therefore break new legal ground. We will keep you up-to-date with all the exciting developments in this area.
We were delighted to meet so many of our overseas clients and contacts at the recent INTA meeting in Toronto, Canada. As usual, the firm was strongly represented, with Andrew Butler, Tim Golder and Colin Oberin from our Melbourne Office, Jim Dwyer, Philip Kerr and Jacquie O'Brien from our Sydney office, and Ted Marr from Hong Kong in attendance. Our regular Sunday night party to say welcome and thank you to our many clients and associates from around the world was this year held at The 2nd @ Montana. As usual, this was a very popular event and a great time was had by all. We even scored a photo in the INTA Daily News.
We look forward to seeing you at future INTA meetings and indeed at other IP conferences around the world. We greatly value our close relationships with our overseas associates and clients and always enjoy meeting you in person whenever the opportunity arises. Accordingly, please let us know when you plan to attend an international IP event, or better still if you plan to visit us in Australia or elsewhere in Asia.
After a career spanning 44 years in the chemical industry and the patent attorney profession, Colin Oberin has decided to retire from the partnership at the end of 2006. In order to assist Colin in this transition and maintain the smooth functioning of our patent and trade marks attorney practice, Dr Trevor Davies will take on the role of Practice Group Leader and Andrew Butler will become Deputy Practice Group Leader from 1 July 2006.
Colin is the founder of one of our predecessor patent attorney firms and a partner in our Melbourne office. He commenced working in the chemical industry in January 1963 and, after qualifying as a chemist and specialising for some years in paints and adhesives, he joined the patent attorney profession in 1972. Colin qualified as a patent and trade marks attorney in 1974 and, following 10 years as a partner at a major Melbourne firm, Colin started the patent attorney firm of Oberins in 1987. This firm became associated with our Melbourne office in 1993 and subsequently merged with it to form what was to become the Melbourne component of our current patent and trade marks attorneys practice.
Over his long and varied career at Allens Arthur Robinson and elsewhere, Colin has represented many major clients in a wide variety of industries, including Bendigo Bank, Coles Myer, Cricket Australia, Diageo, Foster's Group, Just Jeans, LG Electronics, PaperlinX, Sega Corporation and The Body Shop, to name just a few. Colin has many friends and colleagues in overseas associate firms and in the profession generally. He also served as a member of the Trade Marks Committee of the Institute of Patent & Trade Mark Attorneys of Australia from 1986 to 2006 and has been actively involved in the Asian Patent Attorneys Association since 1995, in which he has been an Australian representative on the Trade Marks Committee since 1995 and on the Council since 1999. Colin is a co-author of the book Practical Guide to Australian Trade Mark Law (Thomson Lawbook Co) and has been a member of the Industry Reference Group of IP Australia for some years.
After his retirement from the partnership, Colin will continue to be associated with the firm as a consultant and will be available to work for the firm and for our clients on a part time basis.
- Chris BirdPartner, Allens Patent & Trade Mark Attorneys,
Ph: +61 3 9613 8259
- Dr Trevor DaviesPartner, Allens Patent & Trade Mark Attorneys,
Ph: +61 2 9230 4007