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Focus: Patents, Designs and Trade Marks

18 December 2007

In this issue: We look at the abolition of the duty of disclosure for patent applicants; the Sportsgirl trade mark case; the dangers of choosing marks of a general character; changes to the trade mark renewal grace period; and practice changes with regard to letters of consent in cases of conflicting marks. 

Patent duty of disclosure requirements abolished

In brief: The requirement to inform the Australian Patent Office of the results of prior art searches conducted by overseas patent offices has been abolished for all applications, except those that were advertised as accepted prior to 22 July 2007. Partner Chris Bird and Senior Associate Anthony Selleck report.

How does it affect you?

  • This development is good news for applicants of Australian patents, as it removes what can be a considerable administrative burden. It is no longer necessary to inform us of new search results from overseas patent offices for any currently pending applications, or accepted/granted cases that were advertised as accepted prior to 22 July 2007. However, search results that should have been notified before the above deadline, but were not, will still need to be filed.
Amending regulations

As we reported in our Client Update – 23 October 2007, regulations issued under the Australian Patents Act 1990 (Cth) (the amending regulations) have effectively abolished the requirement for applicants and patentees to file at the Australian Patent Office the results of documentary searches conducted by, or on behalf of, foreign patent offices.

The interaction between the transitional arrangements of the amending regulations and the time limits for filing search results applicable under the former regulations have the effect of abolishing the requirement to file search results for all applications that were advertised as accepted on or after 22 July 2007. 

However, the amending regulations do not excuse any past failure to comply in time with the disclosure obligations for cases that were advertised as accepted before 22 July 2007. In order to discharge the obligation to file overdue search results in such cases, applicants and patentees will be required to seek extensions of time on the grounds of a genuine error or omission, and to pay the applicable government fees.

The penalties for non-compliance with the duty of disclosure – namely a prohibition on future patent amendments to distinguish over prior art that should have been disclosed – will continue to apply for all search results that were not duly filed.

Sportsgirl wins against Sportsboy

In brief: In the Australian Trade Marks Office decision of Sportsgirl Pty Ltd v Filip Sali [2007] ATMO 71 of 22 October 2007, prior use of the unregistered trade mark SPORTSGIRL BOY on jewellery and prior use of the registered trade marks SPORTSGIRL and SPORTSKIDS for clothing were found to be an obstacle to registration of SPORTSBOY for clothing. Partner Chris Bird and Senior Associate Peter Ryan review the case.

How does it affect you?

  • Trade mark users who select names too close to those of well-known 'families' of brands should think twice, even where individual elements of marks may be common.
The facts and decision in brief

Filip Sali achieved acceptance of an application filed on 11 August 2005 for the trade mark SPORTSBOY for 'clothing, footwear, headgear, clothing accessories' in class 25. Well-known Australian clothing manufacturer and retailer Sportsgirl Pty Ltd opposed the application on virtually all grounds available under the Trade Marks Act 1995 (Cth) (the Act). Hearing Officer Iain Thompson decided the opposition solely on s44 of the Act.

Sportsgirl based its opposition on prior registrations for the stylised and unstylised trade marks SPORTSGIRL and SPORTSKIDS for clothing, and prior use of the unregistered trade mark SPORTSGIRL BOY in relation to a range of accessories including pendants, necklets, bracelets and rings. Sportsgirl submitted that such use of 'girl/boy' combinations by the same owner was well known in the clothing industry, and led evidence that Sali had mentioned to a clothing buyer that he was aware of the SPORTSGIRL brand and that 'there should be a "Sportsboy" for guys'.

The Hearing Officer focused solely on s44 of the Act and considered the well-known tests of deceptive similarity, and was of the initial view that SPORTSGIRL and SPORTSBOY were 'not strongly similar'. However, that was not the end of the matter.

Factors to be considered were:

  • Sportgirl's use of the unregistered trade mark SPORTSGIRL BOY and the registered trade mark SPORTKIDS;
  • Sali's alleged admission that there 'might be some kind of equivalence' in the marks SPORTSGIRL and SPORTSBOY;
  • Sportsgirl's reputation in the SPORTSGIRL brand; and
  • the common use of 'girl/boy' combinations in both Australia and overseas. 

The Hearing Officer, therefore, found that Sportsgirl had done 'sufficient work' to transfer the onus to Sali to establish that confusion and deception would not occur. In the absence of such evidence or submissions on that issue (Sali did not appear), and based on Sportsgirl's evidence and submissions, the Hearing Officer found that the opposition was established on the basis of s44, and there was a 'real danger of confusion' by Sali's use, or intended use, of SPORTSBOY on clothing.

Sali's application was, therefore, refused. 

Decision on 'THE LOCAL BLOKE'

In brief: Senior Associate Deborah Jackson looks at a recent decision of the Trade Marks Office that provides another cautionary lesson about choosing trade marks of a general character which are likely to be used by others for the sake of their ordinary significance.

How does it affect you?

  • If your trade mark contains descriptive or non-distinctive elements, your branding strategy should address any potential inherent weaknesses in the trade mark through careful marketing.
  • If you are opposing registration of a trade mark, you have to show, at least on the balance of probabilities, why the trade mark should not be registered.
The decision

The decision of the delegate of the Registrar of Trade Marks was in respect of an opposition by the owner of several prior registrations for trade marks containing the words YOUR LOCAL BLOKE to registration of the trade mark THE LOCAL BLOKE and logo for 'lawn and garden maintenance'. The owner also used the words LOCAL BLOKE in various forms for its agricultural and rural merchandise and services. The delegate did not consider the respective trade marks, when viewed as a whole, deceptively similar. He found that even if the respective trade marks were deceptively similar, the owner did not have a reputation in the words LOCAL BLOKE sufficient to show that use of THE LOCAL BLOKE and logo by the applicant would be likely to deceive or cause confusion. Nor were the relevant goods and services of the owner's prior registrations closely related to, or similar to, the applicant's services. The delegate also rejected the argument that LOCAL BLOKE contained a connotation, such that use of THE LOCAL BLOKE and logo would be likely to deceive or cause confusion.

Onus

The delegate observed that the onus was on the owner to show why, on the balance of probabilities, the trade mark should not be registered and specifically agreed with the observations on this issue of Justice Gyles in Pfizer Products Inc v Karam (2006) 70 IPR 599 (see IP Bulletin March 2007). He noted, however, that this matter still appeared to be the subject of debate by the Full Federal Court as to whether the bar was higher and the owner had to show why the trade mark should not be registered.

Prior reputation

The delegate observed that the owner's evidence of use of A/THE/YOUR LOCAL BLOKE 'relies on what Justice Jacob called "an unspoken and illogical assumption that use equals distinctiveness".' While conceding that the distinctiveness of the owner's prior marks was not at issue, he took the view that the local plumber or electrician was not prevented from using the same words in the same sense. The delegate drew a distinction between trade marks of a general or special character. Another problem for the owner was that the words also appeared together with another trade mark and in a manner that suggested descriptive use. To the extent that a separate reputation in the words as a trade mark might exist, he did not see how it could give rise to deception or confusion. 

Similar goods/services

The owner also tried to argue that wholesaling and retailing of rural merchandise was similar to lawn and garden maintenance services. The delegate considered that, even if the local store provided advice on lawn and garden maintenance, this was merely incidental to the operation of the store. He also rejected an argument that seeds and agriculture chemicals were closely related to lawn and garden maintenance services. Seeds, for instance, were more likely to be provided by a nurseryman, not a gardener primarily engaged in maintaining lawns and gardens.

Conclusion

Trade marks of a general character give rise to special branding and marketing issues. If you think you might own a trade mark of this nature, contact our trade mark team to discuss your trade mark advertising and promotion strategies.

Change in trade mark renewal grace period

In brief: A recent amendment to Australian trade marks legislation has resulted in a change to the trade mark renewal grace period. Trade Marks Attorney Michelle Wilson reports.

How does it affect you?

  • This change tightens up the renewal grace period for Australian trade marks. It is therefore important to take it into account in managing trade mark portfolios and the decision points for renewals.

Previously, owners were provided with a 12-month grace period from the 'renewal due' date in which to pay the renewal fee. For trade mark registrations falling due for renewal on or after 27 March 2007, the new grace period for renewal will be six months after the expiry of the renewal due date.

This brings the renewal grace period into line with the corresponding periods allowed under the Patent Act 1990 (Cth), the Designs Act 2003 (Cth) and the Madrid Protocol. 

Changes to Australian Trade Marks Office practice on letters of consent

In brief: Changes to Australian Trade Mark Office practice have recently been made in relation to the use of letters of consent as a means of overcoming prior applications/registrations cited during examination. The practice is outlined in the Trade Marks Examiner's Manual. Trade Marks Attorney Mark Williams looks at the changes.

How does it affect you?

  • These changes recognise that trade mark owners are best placed to determine whether marks can co-exist in the same market without confusion. It is likely that it will now be easier for applicants for Australian trade marks to overcome cited applications/registration through the use of letters of consent.

The Registrar will now consider a letter of consent 'persuasive', by way of overcoming a cited mark in the case where the trade marks are substantially identical, the goods and services are the same, and where the trade marks are used in the same market. In the past, the Registrar would disregard letters of consent in these circumstances, with a view to avoiding confusion among consumers. The change will bring Australian practice closer to that of the New Zealand Trade Marks Office, where a letter of consent is considered conclusive. This recognises that, in reality, competitors often decide to allow their respective similar marks to co-exist in the market.

Furthermore, the Registrar will now also consider 'general letters of consent' (which confirm that one party is prepared to consent to any trade mark applications made by another party) to be persuasive. Such a letter must identify the name of the trade mark owner providing the consent, and must identify to whom the general consent is being given. From that point on, whenever a trade mark applicant wishes to rely on a general letter of consent, they (or their agent) must also supply a letter certifying that the general letter is still valid, and indicate the application(s) to which the letter is to apply.

Christmas and New Year closure dates: IP Australia and AAR offices

Please note that IP Australia's State and Canberra offices will be closed during the Christmas and New Year period, from and including Tuesday, 25 December 2007 to Tuesday, 1 January 2008. All IP Australia offices will re-open on Wednesday, 2 January 2008.

Any deadlines falling due for patent, trade mark and design matters on the days IP Australia's offices are closed will automatically be extended to the next business day on which the office is open. While some of our staff will be on leave during the above period, we note that key staff will be here on Thursday, 27 December and Friday, 28 December 2007 for any matters that require urgent attention.

Where possible, please ensure you send us your instructions well in advance of this time. This will assist us in dealing with your matters, particularly where critical deadlines fall due around the Christmas and New Year period.

We wish all our clients and colleagues around the world Season's Greetings, and a happy and prosperous New Year. We look forward very much to working with you in 2008 and beyond.

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