Kuwait joins Paris Convention
On 2nd December 2014 Kuwait will become bound by the Paris Convention. Kuwait is already a member of the World Trade Organisation, and so, according to PCT Rule 4.10(a), it is already possible to claim priority from a Kuwait patent application for a PCT International patent application.
Nagoya Protocol entering into force
The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilisation will enter into force for ratifying countries on 12th October 2014. The Nagoya Protocol supplements the Convention on Biological Diversity (CBD). The CBD states that countries have sovereignty over the genetic resources found in their territory, and practically every country has ratified it, although the United States of America is a notable exception. However, the CBD does not contain any enforcement measures. The Nagoya Protocol effectively provides enforcement provisions for the CBD, but only for countries that have ratified the Nagoya Protocol. Currently there are 53 ratifications for the Nagoya Protocol, but these are mainly by developing nations. However, the European Union is a ratifying member.
Under the Nagoya Protocol researchers are required to secure prior informed consent from the country of origin before accessing a genetic resource. Any benefits that arise from utilizing the resource must be shared with that country. Hence, the terms and conditions of access and use of genetic resources need to be negotiated between the respective parties. It is hoped that this arrangement will improve the sustainable use of biodiversity.
United States of America
FDA creates 'Purple Book' Register of Biological Products
In addition to its well-known “Orange Book”, which lists new chemical entities, the US Food and Drug Administration (FDA) have created a “Purple Book”. Although currently sparsely populated, the Purple Book is set-up to list all biological products, including any bio-similar and interchangeable biological products, licensed by the FDA. In addition to giving the date of licensing, where known it will also give the proprietary name, reference product exclusivity expiry date and indicate whether a product has been determined to be bio-similar or interchangeable with a reference product. However, unlike the Orange Book, it is not currently set up to list patents for biologic products.
3. Trade Marks
OHIM to Object to Vague Specifications in Madrid Protocol Applications
In 2012 CIPA obtained a harmonizing ruling by the Court of Justice of the European Union (CJEU) on the scope of protection given by trade mark specifications that consist of a Nice class heading. In its ruling the CJEU held that an applicant who uses the general indications of a particular Nice class heading to identify the goods or services must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of them. Provided that the applicant states their intention that the use of the class heading is to designate all goods or services in that class, it is possible to make that designation by using the class heading.
Subsequently the International Bureau (IB) issued an Information Notice to remind applicants that it is not possible to use the class headings to specify all of the goods or services for applications made through the Madrid Protocol. Under Rule 9(4)(a)(xiii) of the Common Regulations the goods and services are to be indicated in precise terms. The IB (or Office of Origin) would not necessarily reject an application just because it contains a specification consisting of the class heading. However, if it does so in conjunction with the claim to all goods or services then it likely would.
The European Office for Harmonisation in the Internal Market (OHIM) has now issued a notice specifying that from 1st October 2014 it will object to Madrid Protocol applications designating the EU having specifications that are too broad or vague. It is particularly noted that the following class headings are too broad or vague.
Class 6: Goods of common metal not included in other classes
Class 7: Machines and machine tools
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes
Class 16: Paper, cardboard and goods made from these materials [paper and cardboard], not included in other classes
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes
Class 18: Leather and imitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes
Class 20: Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 37: Repair
Class 37: Installation services
Class 40: Treatment of materials
Class 45: Personal and social services rendered by others to meet the needs of individuals
Japan to Allow more Non-Traditional Trade Marks
Amendments were recently enacted to the Trademark Act 1959 to widen the scope of non-traditional marks that can be registered. The date that the amendments will come into force has yet to be set, but is expected to be 1st April 2015. Whereas traditional marks consist of text and / or device elements, non-traditional marks consist of 3-dimensional, colour, sound, hologram, animation, scent, touch or taste marks. Currently the only non-traditional mark allowed in Japan is 3-dimensional marks. When the amendments come into force, this will be extended to include colour, sound, hologram and animation marks.
As Japan is a first to file country any interested applicants should prepare for filing soon after the amendments come into force. Such filings can be made either directly or via the Madrid Protocol.
North Face Stumbles at Appeal Hurdle
North Face unsuccessfully appealed a High Court decision that upheld an Assistant Commissioner’s decision to allow Sanyang’s application to be registered. North Face opposed Sanyang’s device mark application on the basis of its similarity to North Face’s unregistered, but prior used, device marks. Sanyang’s device mark can be construed as a 90º clock-wise rotation of the North Face S device contained within a circle with a red background. Sanyang’s device mark does, though, use shading which gives a 3-D effect, whereas the North Face S device mark is 2-D.
The Court of Appeal first had to determine the nature and extent of North Face’s use of its device marks prior to Sanyang’s application. North Face had only established use of its S device mark on gloves and mittens, but claimed wider use based on a composite mark containing the words SUMMIT SERIES below the S device. However, the Court of Appeal held that the composite mark is indivisible and so cannot count as use of the S device. The Court of Appeal also rejected North Face’s fallback submission that the use on gloves and mittens extended ownership to all items in class 25. While items in class 25 could all be described as clothing it does not mean they are all the same kind of thing. Further, the statutory framework requires registration in respect of particular goods or services and cannot be in respect of all goods or services unless justified by use.
North Face also argued that it is the true owner of Sanyang’s mark, because the latter incorporates or subsumes North Face’s S device. However, the Court of Appeal rejected that argument. The correct enquiry is not whether Sanyang’s mark took, included, incorporated or absorbed North Face’s S device, but rather whether Sanyang possesses all the proprietary rights in its mark. The Court of Appeal concluded that Sanyang did because North Face could not establish prior use and nor had it maintained pleadings or led any evidence on deception or confusion in respect of an identical or similar mark.
IPONZ Hearings not 'an inferior Court to the High Court'
In Daimler AG v Sany Group Co Ltd Daimler applied for an extension of time in which to appeal, given that their notice of appeal was filed one day late. Daimler filed its notice of appeal under section 66 of the Judicature Act 1908, which does not require leave to appeal to be obtained from the Court. However, Sany contend that Daimler should have filed under section 67, which does require leave to appeal to be obtained.
The Court of Appeal determined that for section 67 to be the correct appeal ground it would require a decision of the Commissioner of Trade Marks to be regarded as a decision of an inferior Court to the High Court.
However, the Court of Appeal determined that a decision of the Commissioner of Trade Marks cannot be regarded as a decision of an inferior Court to the High Court for the following reasons:
• the Commissioner is not appointed by the Governor-General or a Minister;
• the Commissioner’s role is narrower than a court given that the Commissioner does not resolve disputes relating to trade mark infringement, domains or border control issues;
• costs orders of the Commissioner can only be enforced with the leave of the Court;
• in context the Act does not refer to proceedings before the Commissioner as judicial proceedings;
• the Commissioner does not have the power to summon witnesses.
Software Design Elements held to be Purely Functional and not Literary Works
In Karum Group LLC v Fisher & Paykel Financial Services Ltd the Court of Appeal upheld the High Court judgment that Fisher & Paykel had not infringed any copyright in Karum’s CMS software after modifying its own credit software.
In 2004 Fisher & Paykel made a business acquisition, where the business assets included the use of software licensed by Karum. Fisher & Paykel obtained a temporary license from Karum while it developed its own software. However, Karum alleged that Fisher & Paykel’s eventual software copied non-literal design elements and logic of Karum’s software. Karum did not claim its CMS source code had been copied.
As non-literal copyright infringement had not been considered by New Zealand courts the Court of Appeal drew on foreign precedent. The Court of Appeal approved of US precedent which held that copyright could extend beyond program code to cover software ‘structure’, provided that it did not extend to any ideas behind the structure. It also approved of English precedent which held that software functionality can be replicated in another program since functionality is not protected by copyright, as it lies on the ideas side of the line between idea and expression.
The Court of Appeal held that the alleged elements of copied software were purely functional or business rules as the codes were not distinctive and were not literary works whether taken apart or together. The Court of Appeal also held that even if it was wrong in that conclusion Fisher & Paykel would not be found to have copied a substantial part of the work as required by the Copyright Act 1994. Karum was also unsuccessful in arguing that Fisher & Paykel had incorporated Karum’s trade secrets into its own software.