NZ UPDATE - 2013

Clive Elliott QCShortland Chambers

Auckland

TRADE MARKS

OPTIMUM

OPTIMUM OPTIMIZE PRO

RELEVANT COMPARISON?

• [49] “It is noteworthy that in all of its advertising and packaging Mars uses the complete OPTIMUM “Nutrition for Life” device mark, in which OPTIMUM serves as an adjective. We accept that it sometimes adds OPTIMUM as a device or word mark, but the important point is that it never uses the shorter marks in isolation on such material.”

• [50] “The proposed mark will be used primarily as a complete device mark on the packaging of dog roll displayed for sale in supermarket chillers. Accordingly, its visual impact is important. We also accept that the mark will likely be used in internet and other advertising as a complete device mark.”

• [53] “We accept that the Court should consider the impact of any essential feature of the proposed mark. It has been recognised that the first part of a mark is generally the most important for purposes of comparison. However, that is not always so. It must be borne in mind that there are other marks in the same class that begin with OPTI-. In such a case consumers may pay more attention to the other features of the respective marks. The proposed mark is also a device mark, and must be considered as a whole.”

• [63] “ Viewed as a whole the marks are distinctly different. …..We do accept that the idea of OPTIMUM and OPTIMIZE PRO is the same, but the latter is not the complete mark and it is not an inherently distinctive idea. We do not accept that the evidence establishes that the word “optimum”, as opposed to the existing device marks, has become so associated with Mars products as to lose its ordinary descriptive meaning in this setting.”

NZ TAX REFUNDS

• More New Zealanders have found their tax refund through NZ TAX REFUNDS than from any other service!

NZ TAX REFUNDS

• HC interim injunction – “NZ-Tax Refund” mark/domain name

• Not for “Tax Refund NZ” mark/domain name

• Domain www.nz-taxrefund.co.nz -combinations of “NZ”, “Tax” and “Refund”

• “Fair holding pattern” until trial

INTENTION TO DECEIVE

• [18] “Although the plaintiff need not show an intention to deceive, the Court will more readily find that a defendant who intended to deceive has succeeded in his objective”

• [29] “In addition to this ……. we consider that it is at least arguable that when Mr Brooks adopted the name Tax Refund NZ and its associated web address, he intended to free-ride on the appellant's goodwill and business reputation…..”

DESCRIPTIVE TERMS

• There is “no absolute embargo on descriptive words being afforded some measure of protection”.

• [22] “The essential point is that the difference between ‘Airport Rentals’ and ‘Airport Car Rentals’ is such that I am of the view that there is still a strong likelihood of confusion. Members of the public are likely, in my view, to mistake one business for the other or to take the view that they are essentially the same business.”

WHY INJUNCTION EXTENDED

• [30] “First, the name NZ-Tax Refund is effectively a direct copy of the appellant's name; the name Tax Refund NZ is a variation... Mr Brooks explained he wanted a name and web address with NZ in it to meet competition from overseas providers. ………..But this does not explain why Mr Brooks could not have used his existing trade name and web address and simply added NZ — My NZ Refund or My Refund NZ. …… some explanation was required as to why it was not adopted. “

• [32] “It may be that Mr Brooks will be able to justify his decisions at trial. For present purposes, however, it is sufficient to say that there is a gap in the evidence which requires explanation and, on the face of it, it is plausible that Mr Brooks intended to mislead or deceive consumers when he established both trade names and websites. “

COUNTERBALANCE TEST

• Common matter v other elements• Internal v external• Do remaining elements dispel any association?• “neutralise the connotation” Bavaria NV • Mirror Image marks?

GOOGLE ADWORDS

INTERCITY“NZ's Largest Transport Network”

“Cheap inter city bus fares from $1* nationwide”

USE AS TRADE MARK?

• [28] “Section 89(2) requires that the use of a sign for the purpose of subs (1) means use as a trademark. A third party’s use of the sign must adversely affect, or be liable to adversely affect the functioning of the trademark, in particular its essential function of guaranteeing to consumers the origin of the goods.”

• [33] “ On the information available to me, it is in this primary descriptive sense that members of the public are likely to read “inter city” in the context in which it appears in the Nakedbus advertisements. The introductory words state quite literally the service on offer. What follows – “We’ll beat any inter city fare” – seems to be deliberately ambiguous. It could be understood as referring to any rival service or specifically to InterCity.”

MARKS AND SPENCER

• CJEU mere use of AdWord not necessarily dilution

• Draw user's attention to existence of alternative product or service

• Can Internet user tell that service promoted by M&S is independent of Interflora?

• “Either way there seems little risk that a potential customer would read “inter city” in the advertisement as referring to InterCity rather than an inter city bus service. To adopt the test postulated in Interflora, the advertisement enables a reasonably well-informed and observant internet user to ascertain that the bus service referred to originates, not from InterCity, but from a third party.”

• [34] “The juxtaposition of the Nakedbus advertisement and the InterCity advertisement further lessens the risk of confusion. Both advertisements promote cheap fares. Each is an invitation to compare prices. A prospective traveller could reasonably be expected to respond to that invitation by going to the websites where the distinct identities of the rival service providers would be confirmed.”

COMMUNICATION, INVESTMENT OR ADVERTISING FUNCTION

• [37] “There is nothing in the New Zealand legislation about these functions. They have never been considered by a New Zealand court. They are not easy concepts to grasp. I do not exclude the possibility that InterCity may be able to make out a case on the basis of those further functions at trial.”

• “………..But for the purpose of this interlocutory hearing, I confine myself to a finding that any use by Nakedbus of InterCity’s trademark as a keyword and in internet advertisements, whether by an identical or similar sign, has not been shown to lead to a risk of confusing or deceiving consumers as to the origin of the services on offer.”

TRADE MARK REVOCATION OCEAN QUEEN

• Appeal AC • Non-use - s66 Trade Marks Act• “Special circumstances” outside its control for

not using TM • Any other reasons - exercise its discretion

SPECIAL CIRCUMSTANCES

• Policy underpinning ss65 and 66 - unused TM’s not clog up Register

• Circumstances special - must be “peculiar or abnormal”

• External forces v voluntary acts • Use impossible v impracticable• Causal link

FAILURE NOT ATTRIBUTABLE TO SPECIAL CIRCUMSTANCES

• Attempts to source fish – 4 months during 3 year period

• One small supplier in Peru• Other companies sourced from South America

- same period

DISCRETION REFUSED

• Clogging Register

• Absence of any evidence of use mark

• Registration blocking competitors

KA MATE HAKA

Prokiwi International Applied for Words

• KA MATE, UPANE KAUPANE, WHITI TE RA, and KA ORA

OPPOSITION DECISION

• Ka Mate haka part NZ culture / heritage• Traders and teams free to use • Tea towel not derogatory / offensive• Registration rights limited• Ka Mate haka should remain in public domain• Registration refused

NGATI TOA SETTLEMENT

• Crown legislation acknowledge haka Ka Mate is taonga (treasure)

• Integral part of history, culture and identity• Under guardianship of Ngati Toa• Right of attribution - Te Rauparaha

UNRESOLVED ISSUES

• Generic legislation - recommendations of Waitangi Tribunal in WAI 262 decision?

• Prevent culturally offensive or unauthorized commercial use of Ka Mate

WHISKY WANNABE

• MACGOWANS “Finest distilled spirit blended to evoke the flavour of the Highlands”

• Kos J - no evidential foundation for AC to conclude:

– purchasers of product would "generally and with immaterial exceptions read the label and point of sale material carefully”

– case law – market has differing degrees of attention and sophistication

– consumers of Scotch whisky would expect the words "Scotch whisky" to be on the label of a product that was, in fact, Scotch whisky

COMMISSIONER UPHELD

• Mere adoption Scots name for alcoholic beverage not enough

• Substantial number purchasers would not be confused

• Tan-coloured alcohol with MACGOWANS not Scotch whisky, contain Scotch whisky or comes from Scotland

• Retail price $9.99 - dispel any possible confusion

PRODUCT DESCRIPTION

• Australian "distilled spirit" - not a whisky - not even proper spirit

• 13.9% alcohol - definition of spirits under Food Act - contain at least 37%

• Goods: “whisky flavoured spirits; none of the foregoing being whisky”

• Lack of intention to use – misdescription goods in specification

INTERNET JURISDICTION

A v Google New Zealand Ltd

• Summary judgment • Google - aware information & hyperlinks

produced in search results

• Policy - not remove material upon request• Failed to prevent republishing

GOOGLE’S DEFENCES

• Wrong defendant - Google Inc owns/operates search engine

• Publication by search engine results generated automatically – from billions of websites - not publication

• Cannot block access to third party web pages generally

• Cannot guarantee info won’t re-appear

SUFFICIENT CONNECTION?

• Sufficiently connected - liable as publisher:– Knowledge of defamatory statement;–Ability to end publication of statement; and–Unwilling to end publication - allying itself

with defamatory statement? • Mere influence, without more, not

enough

GOOGLE’S ARGUMENT

• Common law approach - Google not publisher before or after notification of existence of offending words

• Passive internet intermediary - no mental element

• Not an ISP - does not store or host• Automatically generates search results

A’s ARGUMENT

• Not a neutral generator – controls formulation of search terms, snippet or words on web pages

• Not a pure conduit - cf ISPs, telephone carriers and mail companies

• Deliberately chose to return “snippets” • Makes product better - increase revenues

SUMMARY JUDGMENT REFUSED

• [68] Whether or not search engines are “publishers” is a novel issue in New Zealand. ……. its resolution requires determination of complex issues of law in a proper factual context. There may be need to consider whether there is “a stamp of human intervention” ……….. in the way that the search engine programme is written, ……….”

• [72] “Whilst the right to freedom of expression as protected by the NZBORA ought to be considered in the development of the law in this area, it may not be an unreasonable limit upon that right to hold that a search engine is a publisher of both specific URLs and words that appear in snippets (which search engine providers have chosen to include and which elevate hyperlinks beyond the status of mere footnotes).”

• [73] “This could mean that search engine providers would be responsible where an offending hyperlink is deactivated but its snippet continues to appear…... Such an approach is consistent with the broad common law definition of “publication” as being the communication of a statement to just one other person. To limit this definition to exclude the repetition of information where that repetition occurred without human input could unnecessarily confuse this area of the law. It may therefore be more appropriate to hold that a search engine is a publisher but with access to the defence of innocent dissemination.”

COPYRIGHT INFRINGEMENT

FISHER & PAYKEL

• Software trade secrets• 2004 - Source code licence • Continue to operate CMS • Integrate systems • Breach licence or just replicate functionality in

new program?

BREACH OF CONFIDENCE

• Code confidential • Codes, flags, indicators (part of processing

logic) not breached• NB - scale, duration and complexity• No deliberate attempt - appropriate protected

information• No detriment• OK - inspect code to ascertain business rules

COPYRIGHT

• Non-literal copying?

• Processing logic v program code

• Idea/expression dichotomy

• Lawful – inspect and decomplie source code

• Create independent program

• [267] “A fallacy that pervaded [Pl’s] case [was] that, to the extent that the business rules …. were reflected in or embedded in the logic of the CMS software, they could not be replicated….. That is not what the law of copyright or the obligation of confidence require. FPF could not copy the source code or the logic of the CMS programme. But it was fully entitled to develop a programme which emulated the CMS programme in order to give effect to RFS business rules.”

• Followed English approach

• No copyright in software functionality or general ideas underlying programs

• Business rules excluded from copyright

• Processing logic and data not copied

PRACTICAL TIPS

• Practical Limits to ©

• Development staff understand IP

• Clear guidelines re use third-party materials

• Regular audits / supervision

• Proper documentation

BREACH OF CONFIDENCE

EQC INJUNCTION

• Anonymous blogger - “What really happens at EQC..”

• Ex Parte – irreparable harm• Information commercially sensitive - skew

market for repair and rebuild work• Blogger stated intention to publish

COURT ORDERS

• Injunction – no further disclosure• Service on e-mail address• Against blogger, source/s and recipients• Affidavit - all sources and recipients–obtained directly or indirectly from EQC;

and – any info provided

DEFENCES

• Privilege against self-incrimination

• Public interest defence

• Freedom of expression – ‘clear and compelling case’

INFRINGING FILE SHARING

• January - Copyright Tribunal - upheld 1st complaint

• Account holder - admitted downloading 1 track (using uTorrent)

• Denied other 2 claims (downloaded by flatmates)

POINTS TO NOTE

• Account holder liable• Lack of knowledge no defence e.g. how

BitTorrent works• Presumption of infringement - deemed

infringement - unless refuted• But unclear how many downloads, if any, were

made??

DAMAGES

• Penalty - downloading 3 tracks : $6.57• Contribution to ISP fees : $50.00• Application fee : $200.00• Deterrent sum : $360.00

Total : $616.57

EVIDENCE AT IPONZ

• Regulation 85 TM Regulations 2003:

“An opponent to an application for registration may, if the applicant has filed evidence, file evidence strictly in reply within 1 month after the opponent has received a copy of the applicant's evidence.”

Merial v Virbac

• New market survey evidence• Including expert evidence• Holding back evidence improper• Creates "the opportunity for opponents …. to

'game' the system, by keeping their forensic powder dry until after an applicant has fired its best (and only) evidential shot".

DECISION UPHELD

• Survey evidence went to central issue (confusion) but did not respond to specific factual matter put in evidence

• Survey - level of recognition of Merial's mark – but not addressed earlier

• Position in overseas countries not raised by Virbac

SCOTCH WHISKY

• Burden of proof v order of evidence• Normal practice - opponent files detailed

evidence • Opponent in best position to lead evidence

– confusion • If not done - applicant in a vacuum • Applicant no right to file rejoinder evidence • Abuse distorts onus - gives opponent unfair

advantage

LESSONS

• Attention to evidence at outset

• Must respond to matters only in evidence

• Real risk of inadmissibility

• Applies to all IPONZ evidence

PATENTS BILL

• Further attempt - rewrite software exclusion

• Computer programs “per se” excluded• Better define exclusion• In/within 12 months?

NEW WORDING10A Computer programs“(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.(2) Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.”

(4) The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following:(a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:(b) what problem or other issue is to be solved or addressed:(c) how the relevant product or process solves or addresses the problem or other issue:(d) the advantages or benefits of solving or addressing the problem or other issue in that manner:(e) any other matters the Commissioner or the court thinks relevant.

• More consistent with English approach• Where actual contribution of invention lies • If solely because a computer program –

excluded• Computer program is sole inventive feature cf• Invention that uses/comprises a computer

program if actual contribution external or it affects the computer itself

TRADE MARK REGULATIONS

IPONZ HEARING PRACTICE

• TM Amendment Regulations 2013• Update and streamline Hearings procedures • Consolidation proceedings• R75 allowing extension of time after deadline

passed (request must still be filed prior to deadline)

CASE MANAGEMENT CONFERENCES

• Regulation 26

• “(1)At any stage in a proceeding, the Commissioner may, for the purpose of securing the just, speedy, and inexpensive determination of the proceeding,—– “(a)require the parties to attend a case management conference to

review the proceeding and the steps that have been or must still be taken; and

– “(b)give directions at the case management conference that are consistent with the Act and these regulations.

• “(1A)…………… the Commissioner may—– “(a)fix the time by which a step in the proceeding must be taken; and– “(b)specify the steps that must be taken to prepare the proceeding for a

hearing; and– “(c)direct how the hearing of the proceeding is to be conducted; and– “(d)in accordance with regulation 35C, require parties to use their best

endeavours to agree on how confidential information is to be treated.”

EXTENSIONS OF TIME• “32 Commissioner may extend time

• “(1)The Commissioner may, except where these regulations stipulate that time must not be extended, extend the time specified by these regulations for a step to be taken for a period not exceeding 3 months if the Commissioner is satisfied that the extension is reasonable in the circumstances.

• “(2)The Commissioner may, except where these regulations stipulate that time must not be extended, extend the time specified by these regulations for a step to be taken for any period (whether or not in addition to the period specified in subclause (1)) specified by the Commissioner if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension.