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.
firstname.lastname@example.org Marks & Clerk, Hong Kong (China)
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.
email@example.com Marks & Clerk, Melbourne (Australia)
US Public Organisations Leading Genomic Research, with Europe and Asia Catching Up
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
[Text Box: Patent filings] 100
[Text Box: Illumina] [Text Box: Life Technologies] [Text Box: Pacific Biosciences] [Text Box: National Institutes of Health] 80
[Text Box: Roche] 70
[Text Box: Harvard University] [Text Box: Intel] [Text Box: University of California] [Text Box: Columbia University] 20 20
[Text Box: BGI-Shenzhen] [Text Box: Abbott] 20 17
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
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.
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
[Text Box: University of California Johns Hopkins University] [Text Box: US Department of Health Oncotherapy Science University of Southern California] 304
[Text Box: National Institutes of Health] [Text Box: INSERM] 127
[Text Box: Patent filings] patents in personalised medicine and synthetic biology, with 75
the National Institutes of Health (NIH) the only organisation to
feature among the top 10 assignees for patent applications 50
in all three areas of technology.
Innovation in Europe is driven by relatively few organisations, 25
including Swiss-based Roche and French public research
[Text Box: Novartis] 72 68
[Text Box: Roche] [Text Box: Bayer] 46 45
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 UK- based 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
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
US Public Organisations Leading Genomic Research, with Europe and Asia Catching Up cont'd
Synthetic biology At first glance, the figures for patent applications in this area appear dramatically different from the other sub-sectors
[Text Box: Patent filings] 100
[Text Box: Russian Government] [Text Box: National Institutes of Health] [Text Box: Russian Department of Science] [Text Box: University of California] [Text Box: Bristol-Myers Squibb] 49
33 28 27
[Text Box: Russian Department of Higher Education and Research] [Text Box: Nanjing University] [Text Box: Zhejiang University] [Text Box: Riken] [Text Box: University of Jiangnan] 24 23 21 20 20
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
Top applicants for sequencing technology inventions since 2003
early stage, coming primarily from research institutes and universities.
Gareth Williams firstname.lastname@example.org Marks & Clerk, Cambridge (UK)
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.
email@example.com Marks & Clerk Solicitors, London (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.
firstname.lastname@example.org Marks & Clerk, Hong Kong (China)
Modernising UK IP Law – Intellectual Property Act 2014
Cancelled Redskins US Trade Marks Raises Questions in Europe
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 non- binding 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.
email@example.com Marks & Clerk, Manchester (UK)
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.
firstname.lastname@example.org Marks & Clerk, London (UK)
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 fast- track 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 email@example.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 anti- competitive 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.
firstname.lastname@example.org Marks & Clerk Solicitors, London (UK)
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 email@example.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 firstname.lastname@example.org Marks & Clerk, Ottawa (Canada)
China Setting up New IP Court
A Mouse that Can Roar – Using the 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.
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:
20 years, 25 for some pharmaceuticals
Human beings and processes for their generation
In addition to standard patent restrictions, plants, animals (excluding micro-organisms) and processes for their generation
Max no. of claims
No maximum (but fees apply at acceptance if more than 20)
18 months from the priority date
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
Deadline for examination:
5 years from filing
Max length of examination:
12 months (New Act) 21 months (Old Act)
Principal criteria for examination:
Manner of manufacture Novelty
Inventive step (ie obviousness test) Utility
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.
email@example.com Marks & Clerk, Melbourne (Australia)
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  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
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.