Regrettably, we must warn clients of the increasing number of unsolicited communications sent by individuals and third parties selling the service of “publication” of clients’ trade mark or patent applications in “registers”, or renewal of existing trade mark registrations or granted patents for an inflated fee.

These communications often relate to European Community trade mark applications or registrations.

The communications are usually sent in the form of an invoice, examples of which may be found by following this link.

Clients should be aware that these communications are not linked to any Government or inter-Government institution, and there is no obligation to pay anything.

Because these companies are usually operated from outside of New Zealand it is difficult to police the practice.

All of our clients’ intellectual property communications will be sent from our firm, Ellis Terry, or its associated renewals company, Patent Renewal Services Limited.

If you are in doubt about any unsolicited communications you receive, please check with us.

ENDS

On 26 March 2013, the Trademark Clearing House for the new generic Top Level Domain (new gTLDs) names will open for recordals.

In June, 2011, ICANN (The Internet Corporation for Assigned Names) approved a program to expand the internet’s domain name system through the introduction of new generic domains. Instead of being restricted to 22 domains currently in use (eg .com, .net, .org) organisations and companies have been able to file to create new registries such as .pizza, .hotel and .google.

It is expected the first of the new gTLDs will be approved to be rolled out as early as May of this year.

Because of the large volume of registries (potentially over 1,300), concerns were raised by brand owners about the challenge of enforcing their intellectual property rights against third parties.

To protect against inappropriate use of trade marks ICANN has created the Trademark Clearinghouse.

Run by Deloitte and IBM, the Trademark Clearinghouse will allow trade mark owners to submit their registered trade marks to one centralised database, prior to and during the launch of the new gTLDs.

By submitting trade marks to the Trademark Clearinghouse trade mark owners can take advantage of:

1. the Sunrise Period which will provide trade mark holders with the first right to register the domain name within the first 30 days of operation of new registries;
2. a trade mark claims notification service whereby trade mark owners that have recorded their registrations with the clearinghouse are automatically notified if a third party applies to register that trade mark as a domain name.

It is important to note that it will only be possible to record word marks or text elements of marks with the Clearinghouse. This is because domain names can only record certain characters (ASCII).

The official fees for recording a registered trade mark with the Trademark Clearinghouse will be US$150 per year for a single mark, with discounted fees available for those who seek registration for either three or five years (US$435, US$725). The full fee structure is available at its website.

The annual recordal period will be determined from the date the first gTLD sunrise period opens. Therefore, there is no reason to delay.

Brand owners should consider the benefits of early registration with the Trademark Clearinghouse if they are concerned about other parties recording their marks on new generic domains (gTLDs), or if they wish to take advantage of the sunrise registration period.

The Clearinghouse will not be a complete solution to all concerns a brand owner may have. However, we can see some clear benefits in the system.

ENDS

Please visit 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 the benefits of recordal with the ICANN Trademarks Clearinghouse.

Introduction

In perhaps one of the most novel trade marks cases to find its way to an appeal in New Zealand this year, an application to register the trade mark MACGOWANS has been rejected by Justice Kós in the High Court.

Background

The Mill Liquor Save (The Mill), one of New Zealand’s largest retailers of alcohol, applied to register the trade mark MACGOWANS on 02 October 2009 for its general alcoholic whisky flavoured drink.

The product can be described as “a 13.9 per cent alcohol by volume concoction of water, distilled spirit, sugar, colour, flavour and preservative … quite what sort of beverage this is was never entirely clear.”

The application was accepted by IPONZ on 09 October 2009 and published for opposition purposes.

In March 2010, the Scotch Whisky Association (The Association), a representative body of producers of Scotch Whisky, filed a notice of opposition to the application to register the mark.

The basis for the opposition was:

The use of the name MACGOWANS on the goods of the application is likely to cause consumers to be confused or deceived into thinking the applicant’s goods are Scotch Whisky or to be otherwise confused as to the origin or nature of the applicant’s goods.[1]

In the opposition, Assistant Commissioner Walden determined the issues could be reduced to:

1. whether or not the use or registration of the mark MACGOWANS would be likely to cause public confusion or deception and the registration would be contrary to s 17(1)(a) of the Trade Marks Act 2002 (the Act), because, for example, consumers would be misled as to the nature or origin of the product; and
2. whether or not the applicant intended to use the trade mark MACGOWANS in respect of the particular goods applied for, considering that the goods produced by the applicant are not in fact “spirits” when that word is given its proper meaning (in breach of s 32(1) of the Act).

Walden found that the use of Mac or Mc could not be determinative of the origin of a product “because there are many New Zealanders with Scottish or Irish surnames”.[2]

Additionally, whilst there may be consumer or market knowledge of the words “Scotch Whisky”, the opposed mark contained no reference (express or implied) to “Scotch” and/or “Whisky”:

“Mc” and “Mac” brand names for Scotch Whisky are used with the trade description “Scotch Whisky”, which confirms that such brand names by themselves do not import the concept of Scotch Whisky.[2]

In considering the second issue, the Assistant Commissioner took a general approach to establish the of the word “spirit”.

Although she acknowledged the technical meaning of the word under the Australia New Zealand Food Standards Code required a standard of at least 37% alcohol, the New Zealand Oxford Dictionary defined spirits as “strong distilled liquor, e.g. brandy, whisky, gin, rum”.[3]

Consumers could understand the word as referring to the product in under its ordinary meaning.

Therefore, the mark was entitled to registration.

The appeal

On appeal, Justice Kós agreed the essential issues were the same as those considered by Assistant Commissioner Walden and there was no question that Scotch whisky as a product has a substantial reputation in New Zealand.

On the issue of a likelihood of deception or confusion, it was agreed the likely consumer would be a person over the age of 18.

Kós J noted he was entitled to consider the issue through a range of differing degrees of appreciation, including his own personal experience, and evidence from other members of the public.

However, the overriding qualification was that any impression must be “objectively reasonably held … upon differing degrees of inspection or acquaintance with the market generally and the product particularly.”[5]

For The Association, it was submitted that the consuming public know and associate whisky with Scotland.

Additionally, it was argued that “Mc” and “Mac” names are associated with Scotland and the likely consumer would know that there are numerous whisky products from Scotland that use these prefixes as an element an in brand names, and as an indicator of origin.

If consumers realised the product was not the real stuff, they would believe it to be a low strength variety.

Overall, it was submitted by the Association’s counsel Greg Arthur that consumers, particularly the less informed, would at least have cause to wonder whether the product was Scotch whisky.

In response, counsel for The Mill, Simon Elliot submitted that there was no “real and tangible danger” the mark MACGOWANS would deceive or confuse consumers into thinking the product was Scotch whisky.

His arguments were made primarily on the basis that “Mac” and “Mc” surnames are not unique to Scotland and MacGowan is also an Irish name. Additionally, a number of MacGowan’s were identified as living in Dunedin, so the name would be seen as a reference to a surname instead of a indication of geographic origin.

Kós J agreed with The Mill’s submissions on this point, but by a “relatively low margin”:

it is not likely that a substantial number of notional trade mark level purchasers would be confused that a tan-coloured alcohol bearing the name MACGOWANS, sold potentially in the vicinity of, but at a significant price remove from, Scotch whiskies would be either Scotch whisky, contain Scotch whisky or come from Scotland. A mere initial doubt on the point is not itself enough to constitute confusion under s 17(1)(a), even applying the “cause to wonder” test, if the whole of the surrounding circumstances would dispel that impression in all but an insignificant number of relevant potential purchasers.[6]

In conclusion, Kós J considered the extension of a constructive association of Gaelic name with a product or place into a legal monopoly in that association would be a “bridge too far”.[7]

In regards to whether or not the applicant had the sufficient intention to use the mark on “spirits”, the matter was less convoluted.

For Kós J, it was clear that the product intended to be marketed under the trade mark MACGOWANS could never be referred to as a “liquor”. Citing references from the New Zealand Oxford Dictionary and the Oxford English Dictionary his honour noted that “spirits” was gauged by the criterion of “strong”.[8]

The applicant’s product, with its alcoholic content below that of many wines in his honour’s view could never be said to be “strong”:

It is stronger perhaps than a tumbler of tonic water with a thimbleful of gin …[9]

It appears The Mill ‘s case also suffered as a result of the prosecution pf its initial application where an attempt was made to change the specification to “alcoholic beverages”.

An affidavit prepared by the respondents also suggested that the goods sold by the Mill were not actually spirits, Kós noting the incongruity of the submissions prepared by counsel with the evidence given by this deponent.

Incidentally, it was noted by Kos, that the question of whether or not a compilation or dilution of strong liquor could be referred to as “spirits” was left unaddressed and not argued by counsel for The Mill.[10]

Because the evidence submitted by The Mill showed that there was never any intention to market a product capable of being labelled “spirits” the appeal was granted and his honour concluded that the mark must not be registered.

Analysis

Whilst successful in its appeal, The Association did not receive the victory they were hoping for.

Its success was due to a technical flaw in The Mill Liquor Save’s specification, which listed “spirits” instead of “alcoholic beverages”.

Indeed, it appears there would be nothing to stop the respondents from filing a new application for MACGOWANS and specifying a more general “alcoholic beverages”.

Considering this case was decided in the context of registrability the Trade Marks Act 2002, the question remains whether or not the Association would have a better chance against The Mill’s general get-up as a whole.

This could be considered in the context of misleading or deceptive conduct as a breach of s 9 of the Fair Trading Act, or under the extension of passing off law under the Wineworths Case.[11]

It was noted by Kós J that a combination of the slogan “blended to evoke the flavour of the Highlands” with “Bottled in Australia” did not exclude a reasonable conclusion that the product contained some Scotch whisky.[12]

Although establishing a breach or unlawful conduct under these actions is much harder, it appears Kós J’s first impressions were a “far stronger case can be made” with reference to such get-up.[13]

ENDS

Notes:

[1] The Mill Liquor Save Limited v The Scotch Whisky Association [2012] NZIPOTM 18 (27 June 2012) at [22].
[2] Ibid at [54.6].
[3] Above, n 1 at [76].
[4] The Scotch Whisky Association v The Mill Liquor Save Limited [2012] NZHC 3205
[5] Ibid at [74].
[6] Above n 4 at [90].
[7] Above n 4 at [94]
[8] Above n 4 at [106]
[9] Above n 4 at [106]
[10] Above n 4 at [110]
[11] Wineworths Group Limited v Comite Interprofessional du Vin de Champagne [1992] 2 NZLR 327 (CA).
[11] Above n 4 at [77]
[12] Above n 4 at [77]

Introduction:

To coincide with the implementation of various international trade mark agreements, amendments are being made to the Trade Mark Regulations by an Order in Council.

The amendments will come into force from 10 December 2012.

Key changes:

Fees:

The most relevant changes to the official fees charged by IPONZ will be made in accordance with the following schedule:

Additional classes:

Additional classes may now be added prior to the acceptance of a trade mark application.

Electronic communications:

All communications in front of IPONZ must be electronic unless the Commissioner is satisfied that a person is unable to access the case management facility because of an exceptional circumstance.

Conversion of a specification:

The Commissioner may convert any specification in a registration in accordance with the Nice Classification.

Considerations:

Considerations for most clients will be regarding the fee increases, in particular the introduction of the fee for applying to revoke a registration, and the increase in the filing fee.
Clients may wish to take advantage of the lower fees prior to the changes being implemented on 10 December 2012, especially if they are considering a revocation or a multi-class application.

ENDS

Introduction:

From 10 December 2012 IPONZ will offer New Zealand brand owners the ability to file applications to register their trade marks internationally through the Madrid Protocol system.

This means applicants wishing to trade in foreign states party to the Madrid system may file a single trade mark application and designate those states rather than file individual national applications in each separate country. To date 85 countries have signed up to the Madrid system, including Australia, United States, United Kingdom, the European Union and Japan.

The Madrid application will then be sent to a central hub, the World Intellectual Property Organization (WIPO) in Switzerland, which in turn forwards the application to the national Trade Marks Offices of the designated countries for examination.

The examination of the Madrid application will be subject to local legislation in the designated countries and any objections or oppositions will need to be attended to by an agent in the relevant jurisdiction.

Advantages:

• There are significant reductions in costs associated with the filing of a Madrid application in comparison to the filing of separate national applications.
• Renewals, recording changes of name of owner, or assignments of the trade mark can be carried out centrally with a single request. Accordingly, administration of your Madrid application/registration is easier and cheaper.
• National registries are allowed up to 12-18 months to accept or reject a Madrid application and this should lead to quicker registration of a trade mark in some countries.

Disadvantages:

• A Madrid application is reliant upon the home or base application or registration in the country of origin of the applicant for the first five years. Accordingly if the home application is unsuccessful or the home registration is revoked for any reason during this period the Madrid application also falls over.
• National registries are allowed up to 12-18 months to accept or reject a Madrid application and this could lead to slower registration of a trade mark in some countries.

Considerations:

• The Madrid system is likely to be used by foreign companies, that can easily add New Zealand to their list of designated countries, where in the past a national application in New Zealand may not have made their priority list. Therefore, New Zealand brand owners should ensure their brands are well protected in New Zealand, ideally before the Madrid system becomes operational.
• Trade mark oppositions may increase with more foreign companies filing trade mark applications in New Zealand. Again, this means it is important for New Zealand brand owners to have their brands protected.

Conclusion:

A trade mark application filed through the Madrid system will make it easier and cheaper for New Zealand brand owners to gain access to trade mark protection in foreign markets.

Whilst there are nominal disadvantages, the advantages of filing a trade mark application via the Madrid system are overwhelming in most cases.

Please visit EllisTerry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you have any questions regarding the Madrid System.

ENDS

CNET is reporting that Amazon has asked a US District Court judge to dismiss Apple’s false-advertising claim. The dispute is the continuation of a lawsuit filed by Apple in April 2011 stemming from Amazon’s alleged misappropriation of the mark APP STORE (US TM Reg. no. 77525433). The lawsuit seeks an injunction against Amazon’s use of the trademark to describe its own digital download store.

Apple applied to the USPTO for registration of the trademark in March 2008, shortly after the launch of their App Store.

The mark was accepted and published for opposition in January 2010. Amazon’s arguments are based on the proposition the term has become generic and descriptive, and cannot serve the function of a trademark. Therefore, their use of the word “app store” conduct cannot be misleading.

Reuters reports an Amazon spokesperson as stating “Apple Chief Executive Tim Cook and his predecessor Steve Jobs have used the term to discuss rivals, with Cook having commented on the number of app stores out there and Jobs referring to the four app stores on Android.”

“Apple presumably does not contend that its past and current CEOs made false statements” he added.

From a trademarks perspective this is an example of why it is important to choose a mark that is distinctive in relation to the goods applied for.

If mark describes, or is generic in relation to the goods or services marketed it is not serving the function of a trade mark.

Apple may have coined the term “App Store” and even registered it as a trademark, but because it describes what it is, a store from which you can buy downloadable apps, the mark had an inherent capacity to be generic.

The case is scheduled to go to trial in August 2013.

ENDS

In the recent decision of the Federal Court of Australia, Marshall J held that the trade marks AUSTRALIA POST and DIGITAL POST AUSTRALIA were not confusingly or deceptively similar in relation to digital mail services (see Australia Postal Corporation v Digital Post Australia Pty Ltd (no 2) [2012] FCA 862).

Background

Digital Post Australia Pty Ltd (DPA), a joint venture between Computershare Limited, Salmat Limited and an American corporation called Zumbox Incorporated planned a venture to offer a digital mailbox service in Australia.

Digital post is the provision of what would otherwise be hard copy mail to a digital box so that the mail can be accessed by the addressee online.

The Australian Postal Corporation filed an action in the Federal Court against DPA alleging infringement, passing off and breach of Australian competition law.

Evidence showed that DPA was aware of the AUSTRALIA POST brand and trade marks during selection, but it was chosen on the basis it was a utilitarian name, and the use of ‘Australia’; may “play to the patriots out there”.

DPA also received legal advice stating that an infringement action would be unlikely to succeed.

Noting the applicable tests, Marshall J said deceptive similarity would be established if the marks so nearly resembled each other that they would be likely to deceive or cause confusion.

Findings

Marshall J citing Dodds-Streeton J in Shell Company of Australia v Esso Standard Oil (1963) 109 CLR 407, noted that deceptiveness must be contemplated in the context of all circumstances. On this point he concluded:

“…the essential element of DPA’s mark is the composite phrase “Digital Post” which conveys the idea of mail delivers in a digital form. The phrase “POST AUSTRALIA” which reverses “AUSTRALIA POST” in DPA’s mark would convey little meaning to the ordinary consumer in the absence of the preceding word.”

It found the extensive and prolonged use of the trade mark AUSTRALIA POST made it iconic, and as such, potential consumers would perceive and pay attention to the slightest changes in the mark.

The expert evidence and market surveys were not given any weight because the focus for them was on consumers generally, and not confined to the potential users of DPA’s proposed digital mail service.

Analysis

Use of words that are largely comprised of those in a registered trade mark will not necessarily constitute an actionable infringement even where the specified goods and services to which the infringement relates are identical to those specified in the registration.

In this case the addition of DIGITAL substantially changed the “surrounding circumstances” of how the trade mark would be viewed by a likely consumer of the services.

That the AUSTRALIA POST trade mark was so well known and established ultimately counted against the applicant because consumer knowledge of the mark was so strong that any alterations would be noticed.

The likely result of this approach is that saturated trade marks, like COCA COLA and APPLE may have a harder time proving infringement where it can be shown their mark is exceptionally well known.

Although the inherent distinctiveness of the mark AUSTRALIA POST was never a major issue, because the judge was substantially satisfied the mark had become distinctive and iconic through extensive and prolonged use, the case is a reminder of the care that should be taken in brand selection.

The more likely another trader is to want to use a mark, the more likely it is they will do just that. Therefore, the concept of what constitutes a valuable trade mark extends well beyond the question of inherent registrability.

You may view the case by following this link.

ENDS

Commerce Minister Craig Foss has announced an end to the stalemate with software patents in the new Patents Bill. The previous approach of a complete ban on software patents with “guidelines” to allow certain exceptions was finally acknowledged to be unworkable. The Bill has now been amended as follows:

10A Computer programs

1. A computer program is not an invention for the purposes of this Act.
2. Subsection (1) prevents anything from being an invention for the purposes of this Act only to the extent that a patent or an application relates to a computer program as such.

Whilst the effect of this will not be readily apparent to most, the result is that we will follow the European approach that there must be a “technical effect”. Broadly speaking this requires some improvement of a “technical” nature relating to how the machine works rather than just a method utilising the usual functionality of a computer. For example software that provides enhanced image resolution should be patentable whereas a method of performing a financial calculation probably wouldn’t.

This is a good development as the law will be much more certain and there will be a large body of case law that can be called upon.

ENDS

The Internet Corporation for Assigned Names (ICANN), the body that regulates the internet’s domain name system, revealed the names and designations of the applicants for the first round of the new generic Top Level Domain (ngTLDs) on June 13th. The full list is available here.

Background

In June, 2011, ICANN approved a program to expand the internet’s domain name system through the introduction of new generic domains. Instead of being restricted to 22 domains currently in use (eg .com, .net, .org) organisations and companies would be able to register new gTLDs like .pizza or .hotel or .cadbury.

Opposition period

The publication of the list initiates a 60 day period for the public to make submissions and then a 7 month formal objection period, which is scheduled to expire in January 2012. During the formal objection period trade mark owners can make submissions on or formally object to applications.

There are several types of objections applicants and non-applicants may raise during this period, including

legal rights objection (the application is the same as or similar to a pre-existing trade mark);

confusion (eg the applied for gTLD is confusingly similar to another existing or proposed gTLD);

public interest concerns; and

objections based on the interests of any community with a common interest.

Brand owners who wish to safeguard their trade mark rights will likely revert to the legal rights objection. We encourage brand owners to review the list to ensure their marks will not be misused.

In the event that a brand owner’s mark is on that list actions for trade mark infringement or passing off can be taken. However using the internal ICANN objection procedures may save time and expense.

The New Zealand Context

There were two applications made by New Zealand applicants. The first, .kiwi, an application filed by business leaders with ambitions to help those affected by the Canterbury Earthquakes.

The other is .RIP, filed by a New Zealand company Dotrip Limited based in Napier.

Three applications were made by overseas applicants for .RUGBY, one being by the IRB.

Contact Ellis Terry with any questions regarding the new gTLDs or any other intellectual property matters.
]]> http://www.ellisterry.com/the-icann-new-generic-top-level-domains-what-you-need-to-know/feed 0 http://www.ellisterry.com/press-release-official-fee-rises-in-australia http://www.ellisterry.com/press-release-official-fee-rises-in-australia#comments Wed, 06 Jun 2012 22:26:28 +0000 admin http://www.ellisterry.com/?p=565 07 June 2012

The Australian Patent and Trade Marks Office (IP Australia) has increased some of its fees relating to Trade Marks.

Filings

From 1 October 2012, the cost of filing an application per class will increase from $160 AU to $200 AU.

IP Australia is introducing a reduced filing fee of $120AU for applications filed using the goods and services classification “pick list”. This allows applicants to choose goods and services specifications from a list of pre-approved designations.

The objective of this reform is to reduce administration costs associated with the processing of applications with incorrect specifications. This is likely to result in an avoidance or at least a reduction of specification issues being raised in examination reports.

See here for the pick list.

We will endeavour to engage with clients and associates on this matter so that any savings can be passed on. However please note that the pick list will not always be appropriate where complex specifications are required.

Registrations

From 1 July 2012, the official registration fee will increase from $250 AU to $300 AU per class.

Our usual practice is to pay the registration fee after the three month opposition period has expired so as to avoid the potential necessity to refund the registration fee after the application has been successfully opposed.

Bearing this in mind, we invite clients and associates to contact us as soon as possible if they would like to bring forward payment of any registration fee to take advantage of the current lower rate.

Click here to see a full account of all official fee increases in Australia.

Please visit EllisTerry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you have any questions regarding the trade mark official fee increases in Australia.

ENDS