WIN In-House Counsel DaySydney
Tuesday 22 March 2016
TRENDS AND DEVELOPMENTS ININTELLECTUAL PROPERTY
MELINDA UPTON, PARTNER
Overview
IP is one of the fastest moving areas of law, striving to keeppace with technology and marketing.
It is also one of the most international areas of law, withtreaties, agreements and the judiciary harmonizingAustralian law with that of, particularly, Europe and the US.
It is critical to be aware of developments in key jurisdictions as alikely indication of future trends in Australia. Also critical forAustralian businesses active in China and ASEAN region to beclear about the regional IP strategy in light of some of the trapsincluding "bad faith" and "first to file" rule.
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Summary
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• Trade marks• Designs• Copyright• Patents• ACL
In this hour we will look at recent trends anddevelopments in:
• Australia, China and ASEAN• US• Europe
Across
Our clients today
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• Re-brand and transition from a sub-brand of an iconic brand to anew to market brand
• Regulatory environment• Third party infringement issues
Cindy Hansen, General Counsel & CompanySecretary of the soon to be launched QudosBank, formerly (currently) Qantas CreditUnion
• ACL – consumer guarantees• Misleading and unconscionable conduct• Education programs
Sarah Hosey – Deputy General Counsel,Communications, IP & Commercial, nbn
Trade marks
What is a trade mark?
a sign used, or intended to be used, to distinguish goods or services dealtwith or provided in the course of trade
sign includes the following or any combination of the following, namely,any letter, word, name, signature, numeral, device, brand, heading, label,ticket, aspect of packaging, shape, colour, sound or scent.
Protectable as both a registered ® or an unregistered ™ right
Term of protection can be indefinite
Registrations can be cancelled if not used
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Traditional trade marks
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• EXPERIENCE THE WESTIN DIFFERENCE;
• IT'S IN OUR NATURE;
• OH WHAT A FEELING!
Slogans
Logos
(graphic
devices)
• HILTON, SHANGRI-LA, NOVOTEL, INTERCONTINENTAL,PARKROYAL, NIKE, QANTAS, VEGEMITE
Words
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Choosing a trade mark
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Available?
Brandglobalisation
Considertype
Distinctive?
Why is distinctiveness
important?
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Distinctive marks are:
Easier and cost effective to register
Easier to protect
Better at helping consumers to distinguish your goods or
services from your competitors' goods or services
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Distinctiveness
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• Second tier brands and taglines• When use of a brand is use 'as a trade mark'• Use as a trade mark or as a descriptor?
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Is your trade mark
available?
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If someone else ownsa prior similar trademark for similar goodsor services, you wouldface the followingproblems:
Important to conduct searches to determine whether another party islikely to have registered or unregistered rights in the mark
Cannot be identical, substantially identical or deceptively similar toanother mark on the register
Should think about proposed and possible use
Refusal to register
Opposition
Infringement
Cultural considerations – branding –
China
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CompanyChinese trade
markPronunciation (pinyin) Meaning Verdict
American Express 美国运通 Mei Guo Yun Tong American transportationThe translation doesn't convey thefull meaning of "express"
BMW 宝马 Bao Ma Precious horseSome phonetic similarity and apositive meaning
Bon Aqua 飞雪 Fei Xue Flying snowA strong and imaginativetranslation, though the brand is notyet widely known
Citibank 花旗银行 Hua Qi Yin Hang American bank
The Chinese trade mark is an oldfashioned nickname in China forthe American flag so someChinese find it a strange choice
Coca-Cola 可口可乐 Ke Kou Ke Le Delicious and pleasant One of the best
DHL 中外运敦豪 Zhong Wai Yun Dun HaoInternational bulk delivery
with huge delivery volumeToo unwieldy. Chinese people justuse DHL
FedEx 联邦快递 Lian Bang Kuai Di Federal express delivery A translation that has caught on
China Trade Marks: Decisions
Shine New Light on Bad Faith
Filings
In 2014, the well-known US supermarket chain Whole Foods filedoppositions against two applications by a local serial pirate for the mark 365Everyday Value covering food and beverage items in classes 29 and 32.
December 28 2015, the CTMO ruled in favour of Whole Foods.
The existence of pirate's bad faith was confirmed by the CTMO based onevidence he had filed for over 150 other trade marks, many of which weredeemed "famous" in China and had been the subject of numerous prioroppositions and invalidations by the victim brand owners.
The CTMO's decisions did not address whether Whole Foods' mark was"famous" or whether it had previously been used in China. Nor did thedecisions assess whether the goods covered by the pirate marks were"similar" to the goods or services of Whole Foods.
Encouraging for legitimate brand owners!
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Trade Marks – European trade
mark directive
New Trade Mark Directive and EU Trade Mark regulations were published inDecember 2015. Member States have up to 3 years to implement. Changesinclude:
Over one third reduction in renewal fees
Seizing counterfeit goods in transit. A seizure will become possible evenin cases where the goods were not meant for the EU, unless they wouldnot be infringing in the country of their final destination. The respectiveburden of proof will be shifted towards the alleged infringer.
Office based opposition and cancellation actions
Harmonisation of practices of member states
For AU companies this will significantly reduce the cost and complexity ofEuropean trade marks
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ACL issues – what you need to know
There have been a number of recent developments regarding the ACLincluding:
Representations about warranties remain a real hotspot – Recent casesinvolving Good Guys and Harvey Norman franchisees as well as a newaction against LG highlight the importance of effective training forsalespeople who will be dealing with consumers whether at or after the timeof sale, in relation to warranties.
Nurofen products found to be false and misleading; penalties still tocome - The Federal Court has found that Reckitt Benckiser engaged inmisleading or deceptive conduct in connection with 4 products in its Nurofen"Specific Pain Relief" range.
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ACL issues – what you need to
know
National Consumer Congress focuses on ACL Review
Misleading and unconscionable conduct – a busy time for the Courts andACCC. There have been many recent developments in misleading andunconscionable conduct, including Federal Court judgements, ACCC
infringement notices and monetary penalties.
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IP ownership
IP creation
Employment agreements
Third party suppliers?
IP transactions
Identify IP
Ownership acknowledged
Project IP/Background IP?
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Allowing others to use your
trade marks
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If licensing, have control!
Always have a licensingarrangement in place
•Good practice if the business issold / transferred / assigned
•Protects againstvulnerability to cancellation –proprietor not true owner of mark
Terms should include:
•Rules on use (e.g. form of use,use of ®, etc.)
•Standards (quality control)
•Obligations on licensee to assist(e.g. giving evidence in enforcementproceedings)
•Termination obligations
Use by authorised users
=
use by you
Designs and innovation patents
There continue to be very few designs cases in Australia
Design filings are being foregone in favour of innovation patents
The latest IP review is again looking at discontinuing design protection
Innovation patents continue to come under criticism for being a litigation tool
ACIP recommendation (May 2015) for abolition of Innovation Patent system
Presently been referred to Productivity Commission as part of inquiry intoIntellectual Property – draft report due end April 2016
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Patents – Computer
Implemented Methods
Commissioner of Patents v RPL Central
Claims to a computer implemented method for assessing a userscompetency or qualifications with respect to recognised standards (i.e. forRPL)
Previously:
Patent Office – not valid
Federal Court (Middleton J) – valid
Full Federal Court unanimously found the invention not patentable
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Computerretrieves
assessmentcriteria from a
remote location
Computerprocesses criteria
and generatesrelevant questions
for user
Questions arepresented to user
User's responses(and supportingdocuments) are
received from user
Patent Litigation – Mechanical
Products
Continuing to be the growth area for patent litigation are mechanicalproducts:-
Mining and automotive products
Hardware
Heavy machinery
Manufacturing equipment and processes
Increased litigation between competitors, and also with governmentpurchasers and customers
Continuing issue that patents are not routinely considered in these areas solitigation a 'surprise'
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Copyright – Trends in Australia
There have been no significant legislative changes in this area
However, improvements in technology have spawned new cases
Audio/video file trawling software
Literary work trawling software
Copyright in 'less artistic' works
Plans, Manuals, Instructions
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Q&A
Cindy Hansen, General Counsel & Company Secretary of the soon to belaunched Qudos Bank, formerly (currently) Qantas Credit Union
Sarah Hosey, Deputy General Counsel, nbn
Thank you and global IP webinar series …
Melinda UptonPartner and Group Head – IPT Australia
T +61 2 9286 8209M +61 438 554 445E [email protected]
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