The IP year in review

Christmas is a big deal in New Zealand. For most of us the 25th of December marks the start of a two, three or even four week summer vacation. It is a chance to recharge our batteries, ready to return refreshed in the New Year.

I'll be taking a break for a few weeks and returning mid-January. I'll leave you all with a list of my ten most popular posts for the year.

The New Zealand Patents Bill has been a hot topic thanks to a campaign by the open source community to introduce a European-style exclusion for computer software. The patentability of software has also been the subject of a few decisions of the US Courts and the BPAI. Copyright enforcement news in both New Zealand and Australia has also been popular.

Alice and the Abstract Idea: When is a computer-implemented invention a mere "abstract idea”? Does the presence of a computer in a claim make an unpatentable "abstract idea" a patentable invention? Should it matter that a computer-implemented invention is claimed as a method, system, or storage medium? Is there any real difference between these types of claims? These are the questions that the United States Court of Appeals for the Federal Circuit is going to be considering over the next 12 months.

The show goes on: These are interesting times for copyright infringement actions. We have seen a conclusion to the long running dispute between Roadshow Films/AFACT and iiNet in Australia. We have also seen a couple of test cases emerge for New Zealand's three strikes law.

A forum on software patents: Fellow blogger Patentology comments on a recent IP Forum held by the IP Australia on the subject of 'software patents'.

KOHA - Better late than never: Another chapter closes on the KOHA trade mark saga. The New Zealand trade mark application is the subject of a kind of tug-of-war between two competing factions within the open source community that have fallen out with each other.

D. finds non-functional descriptive matter: The Board of Patent Appeals and Interferences considers a data structure for generating network data traffic utilizable in communication systems. The BPAI rejected the data structure claim as relating to non-functional descriptive material.

The embedded software conundrum: The New Zealand Patents Bill had a second reading in Parliament this year. On the table is a Supplementary Order Paper (SOP) setting out proposed amendments to the Bill. The SOP clarifies the extent to which computer programs will be patentable. It better reflects the intentions of the Parliamentary Commerce Select Committee who originally recommended changes to the Bill.

A public slap from Twitter: Laws can certainly be broken in 140 characters or less and Twitter is starting to take a more transparent approach to copyright infringement. It is a bad look for your company to be accused of copyright infringement. And even worse to be slapped so publicly.

Hu finds that storage is the key: The BPAI considered the patentability of a claim in the field of performing log-based recovery by allowing a plurality of worker processes to process in parallel a plurality of work items in a log. Each work item represented an ordered operation on a corresponding data object. The BPAI found that the term "computer-readable medium" is broad enough to cover intangible media. However, a computer-readable storage medium is confined to tangible media for storing data.

Edelson finds an abstract intangible asset: The BPAI looked at a claim for a way for creating financial instrument derivatives of rollups of recurrent yield monetary based assets. Whatever that means! The Board found that simply using some computer-implemented method in some undefined manner alone cannot confer patentability.

Patent party in the House: It's always good to try something new. I gathered some of my work colleagues together and we watched the Second Reading of the New Zealand Patents Bill on the tellie. I didn't quite know what to expect but I wasn't surprised at what I saw. It was certainly an interesting experience.

Photo courtesy of author Daniel Peckham under Creative Commons licence.

New Zealand set to join Madrid Protocol

New Zealand is about to align its trade mark system with that of our major trading partners Australia, United Kingdom, China, United States, Japan and the Republic of Korea.

How it works

The Madrid Protocol system will come into force in New Zealand on 10 December 2012. We expect it will benefit New Zealand businesses with a strong export focus.

At the moment Kiwi businesses wanting to protect a trade mark internationally have to file separate national trade mark applications for each country or territory of interest. They must also comply with each country's specific requirements, which include appointing agents in each country, filing in foreign languages and dealing with local trade mark offices.

Under the Madrid Protocol system, trade mark owners will be able to file a single international trade mark application in English, through the Intellectual Property Office of New Zealand (IPONZ), and select the countries they want trade mark protection in, as long as those countries are also members of the Madrid system.

If no objections are raised by the trade mark offices of the countries in which protection is sought, there will be no need to appoint local agents. After a specific period of time, the trade mark will simply be deemed registered in these countries.

At this stage 87 countries have signed up to the Madrid Protocol. Several new countries are expected to join over the next 12-18 months, opening up even further possibilities for New Zealand exporters.

Tidying up the register

The new system will establish a conversion process for old trade mark registrations not classified under the Nice Classification system. Under this process the Commissioner will be able to initiate conversion of these registrations to the current edition of the Nice Classification system.

The conversion process will commence with the Commissioner writing to the owners of the registrations informing them of an intention to convert and the proposed form of conversion. The Commissioner's letter will set a deadline for response of one month from the date of the letter.

The owner of the registration will then have the option of accepting the conversion or proposing an alternative form of conversion. If there is no response from the owner, the registration will be converted as proposed. If the owner proposes an alternative form, the commissioner will determine the form of conversion. If the owner disagrees with the form of conversion, they will have the option of requesting a hearing.

The online angle

In almost all circumstances communication with IPONZ is going to be made electronically through their online case management facility. However, the regulations also allow a mechanism for the Commissioner to approve alternative filing methods in certain exceptional situations. IPONZ has indicated they intend to publish a practice note which will give further guidance on the situations this might cover.

It's good to see that there will be exceptions in some circumstances. Stakeholders will not always be able to use the online case management facility. There will be times when the IPONZ system is not available and so it is important to have a manual process as a fallback position.

Photo courtesy of author ferlomu under Creative Commons licence.

The tobacco tango

Yesterday we saw the conclusion of one of the battles in the "tobacco wars". In an earlier post I covered litigation in the Australian High Court relating to a tobacco industry challenge to legislation requiring plain packaging of cigarettes.

The High Court has just found the proposed tobacco plain packaging laws to be both legal and constitutional. From December all tobacco products in Australia must be sold in a uniform olive box with black lettering. The full judgment will not be released until later this year, although it has already attracted comments from a wide audience.

Unintended consequences

A major change like this, even if well-intentioned, is bound to have unintended consequences. I guess it is a matter of opinion whether these consequences are really unintentional, or whether they are merely collateral damage.

British American Tobacco spokesman Nick Booth commented that if plain packaging is brought in, companies will use other devices to attract customers. "Ultimately, if we're not able to use our brands to compete, we'll be forced to compete on things like price, which could actually frustrate the intended goals of plain packaging".

Trust is important to brands, says Stephen Cheliotis of the Centre for Brand Analysis (TCBA). If consumers decide the source of a given product is no longer reliable or safe they will vote with their wallets. Known brands have to uphold certain standards to retain consumer trust. Making packaging easy to copy gives rise to counterfeit cigarettes. Some counterfeit cigarettes have reportedly been found to contain abnormally high levels of cancer-causing chemicals.

The nanny state

Booth also poses the question of where does it end? What about alcohol, fatty foods, sugary drinks and sweets? Should they all be sold in plain packaging or unbranded?

Herald-Sun journalist Patrick Carlyon asks why Australia is still awash in beer and spirits television advertisements. Alcohol is a contributing factor in about a quarter of road deaths in Victoria, Australia. Children are victims of alcohol-related harm in more than one-fifth of Australian homes. It is thought to be a risk factor in about 20,000 cases of child abuse. Yet no one is suggesting that alcohol be plainly packaged.

There are plenty of commercials depicting families gathered at the dinner table eating fast food. Yet Australian waistlines and rates of diabetes are increasing. Does this suggest the introduction of taxes on unhealthy foods, the limiting of advertising on those foods, banning advertising altogether, followed by the introduction of plain packaging?

A property right?

One of the most interesting questions for me remains unresolved. The Australian Government's view was that:

1. a trade mark itself is a privilege. It is not a property right. The Government can take it away.
2. trade mark owners acquire a registration on the proviso that it cannot be used in certain areas

We don't know which one of these arguments found more favour with the High Court. We won't know this until the decision is publicly available.

I can kind of understand the second argument. A patent right gives its owner the right to exclude others rather than the right for the owner to work an invention. Maybe argument 2 along these lines.

But argument 1 is a different matter altogether. This is a major change. I have always thought of trade marks as property rights. Something you own. Something you have the right to control. Something you have the right to use.

What now?

The Australian Government has won the battle but not the war. I understand complaints have been lodged with the World Trade Organisation (WTO) by some countries who claim the law breaches trade agreements. It is going to be an interesting issue to follow.

Photo courtesy of author trbpix under Creative Commons licence.

These colourful olympics

Thanks to Allan Main, Principal of MAINly Consulting Ltd for this guest post.

Like everyone else during the past two weeks, I spent an irrational amount of time in front of the television watching the pageant that was the Olympic Games. It has been an immensely colourful spectacle brilliantly aligned to the vibrancy of HDTV, as I am sure was the prime intention rather than to provide those in the arena with a theatrical experience.

Of course we're used to the Olympics parading the exuberance of national colours, but this time there was a flood of colour in the surroundings too. Throughout the venues there was a vibrant constancy in the livery, and one colour seemed dominant. It was present on the crowd barrier surrounding the track, the seats on which the field event athletes rested between turns, on-field drink trolleys, and most of the essential event paraphernalia were thus dressed. Competitor bibs were framed by it, even the sensor-strip on the jump line at the jumping pit was this colour. Come the medal ceremony, female medal escorts were dressed in it, the winners' dais was draped in it and the medals themselves were supported by a ribbon of it. What is “it”; why the colour purple of course.

Nothing extreme or unusual about this; consistent trade dress is a key element of sound branding, and “THE OLYMPICS” mark certainly warrants that dilligence given it is considered (by multinational intangibles valuation consultancy Brand Finance) to be this year's second-most valuable global brand (after APPLE®).

Regularly my television cut to a commercial break, and to a series of advertisements framed by those of premium Olympic sponsors, those who have invested millions – cumulatively US$957mil actually – to have their brands integrally associated with the greatest sporting spectacle in the world. One of these major sponsors was iconic British brand CADBURY®, whose sponsorship allowed them to promote their chocolate as the official confectionery of the 2012 Games. And what was usually first up on the ad break? Why, a smart new TV commercial - a "TVC" - for that very same Cadbury, apparently produced specifically for the games period. A clear intent of this ad is to flourish the fanfare "WE ARE CADBURY AND WE ARE PURPLE!" (well, a specific shade of purple anyway - Pantone 2685C purple).

(Virtual Side Bar: In many jurisdictions around the world, including the United Kingdom and the Australasian nations, Cadbury has been actively moving to register exclusive trademark rights for the specific shade of purple core to their trade dress in as broad an area of the confectionery sector as they can persuade local trademark offices to allow. In prosecuting these applications Cadbury argue with significant success that consumers identify that colour with Cadbury to such an extent that any confectionery wearing that colour is presumed by the consumer to originate from them. As such, they claim to deserve to have the right to exclude competitors from using "their" colour to the same extent that they can exclude others from using their trade name. As these claims become allowed Cadbury's promotions slant ever more to tie the colour purple to their brand.)

At this point the bronze penny dropped - this Cadbury TVC founds on the same colour we have been bombarded by every second of the Olympic broadcast. How “fortuitous” is that!?! (Do I sense a Tui-style “Yeah, Right” repost?)

All Olympic performance spaces are, by IOC edict, product-placement-free (ie "absent", not "at zero cost", of course) zones. Yet the London Organising Committee of the Olympic Games (LOCOG) have clearly skirted that edict in at least one other instance, with the radio-controlled model cars running around the athletics field retrieving and returning field event hardware (discuss, javelins etc) bearing an uncanny resemblance to the current Mini, also as British in its origins as Cadbury. Other than the distinctive shape, there is no branding that makes it clear that this is a Mini ... but we all know it is. BMW, the current owner of the Mini marque, and another official sponsor of the 2012 Games, reputedly paid £40mil as their sponsorship contribution. The “generic” model car discuss-toter’s indisputable resemblance to the Mini we can buy from the local BMW dealer might be construed as part of their reward package for that generous financial support.

So could it possibly be that Cadbury have accomplished a comparable coup (“achievement” not “a 2-door car”) with LOCOG rewarding Cadbury’s sponsorship by having their master colour so prominent in the Olympic livery? The official line is that purple was ACTUALLY chosen to honour Queen Elizabeth's jubilee year - "royal purple" so to speak. As entirely plausible as that is, an alternative construct is that the event sponsor that OWNS purple in confectionery was able to negotiate their rewards to reach into the London Olympics’ trade dress as part of their sponsorship package. You would no more expect that to be publicly announced than was the secret-squirrel BMW-Mini deal, and a pervasive colour is substantially more challenging to unmask, and more subliminal in its effect than is the physical shape of a model car.

On the other hand, perhaps it was just a happy (for Cadbury) coincidence turned by them into a masterful moment of reverse ambush marketing. But however it came about, Cadbury had a greater "virtual presence" at the 2012 Olympic Games than had any other commercial party. After all, where next can you go for greater Olympic brand association once you have connected your brand with the medals that hang around the winners' necks?

I remain in total awe!

All this, whether schemed or serendipity, was enabled by Cadbury's long-term intellectual property management nouse, first to build their colour strongly into their brand identity, then to protect that position by registering it and finally to create a clever association marketing campaign. The cleverest advertising is when you don't even know it is being done to you, except at a subliminal level.

Hats off to Cadbury for seizing the opportunity, however it came about.

Photo courtesy of author Duncan Rawlinson under Creative Commons licence.

Trade marks and traditional knowledge

A recent decision from the Intellectual Property Office of New Zealand (IPONZ) highlights yet again the fundamental disconnect between Western-style intellectual property rights and the protection of traditional knowledge.

Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14 (1 June 2012) examined the protection available (or lack thereof) for the lyrics in a haka, a traditional ceremonial dance or performance.

The Haka

According to evidence before Assistant Commissioner Walden the haka Ka Mate was originally composed by chief Te Rauparaha of Maori tribe Ngati Toa Rangatira in 1820. It is believed that the Chief composed the haka on encountering a hirsute but friendly face after a narrow escape from enemies.

The words of the haka are as follows:

Ka mate, ka mate! ka ora! ka ora!
’Tis death! ‘tis death! (or: I may die) ’Tis life! ‘tis life! (or: I may live)
Ka mate! ka mate! ka ora! ka ora!
’Tis death! ‘tis death! ’Tis life! ‘tis life!
Tēnei te tangata pūhuruhuru
This is the hairy man
Nāna nei i tiki mai whakawhiti te rā
Who brought the sun and caused it to shine
Ā, upane! kaupane!
A step upward, another step upward!
Ā, upane, kaupane, whiti te ra!
A step upward, another... the Sun shines!

The haka is incredibly well known throughout New Zealand. It is performed on sports fields, on streets, in schools and in bars.

The trade mark applications

There were four trade mark applications at issue in this case. All four were filed by Te Runanga O Toa Rangatira Incorporated (the Runanga) as the formal representative body of Ngati Toa Rangatira. The opposed marks were as follows:

814421 KA MATE
814531 UPANE KAUPANE
814532 WHITI TE RA
814533 KA ORA

Prokiwi successfully opposed each of the trade marks on the ground that none had distinctive character.

The Hearing Officer concluded that the haka Ka Mate is an important part of New Zealand's heritage. A New Zealand icon. A powerful reference to New Zealand. It was clear to the Hearing Officer that certain traders of New Zealand themed goods and services, would, in the ordinary course of their business, wish to legitimately use the entire wording of the haka.

If the opposed marks were registered, honest traders would effectively be hindered in using the haka Ka Mate in relation to New Zealand themed merchandise and commercial sporting events in New Zealand.

It is not clear whether the Assistant Commissioner considered the opponent Prokiwi to be an honest trader. She records evidence of the New Zealand Rugby Union's "contact with Prokiwi concerning alleged unauthorised use of All Black imagery by Prokiwi on its souvenir products on more than one occasion".

The fundamental disconnect

Evidence led by the Applicant reveals the fundamental disconnect between intellectual property rights and the protection of traditional knowledge. The haka, according to the Applicant, does not belong to the composer per se but instead is a taonga (treasure) of the iwi (tribe) to which the composer affiliates.

The deponent goes on to state:

The haka Ka Mate also has kaitiaki (guardians). [The tribe] Ngati Toa Rangatira are the kaitiaki of the haka Ka Mate and it is our lineage that creates this kaitiaki relationship. The primary obligation of kaitiaki is to protect and safeguard the mauri (life force) of the taonga as well as the matauranga (knowledge) that sits beneath it.

As kaitiaki, our relationship with this taonga will be perpetual. As long as it continues to exist, our obligation will continue. A large component of this will be protecting the mauri (life force) of the haka Ka Mate from mistreatment such as offensive and derogatory use.

A succinct statement of the problem in my view. Western style intellectual property rights typically require some sort of novelty, an identified creator, are owned by a legal 'person' and are of finite duration.

Patents and registered designs (design patents) have to be novel. Copyright works need to be original. Trade marks must have distinctive character.

In this case we have an identified creator. However, it is not always so easy to identify an inventor for a patent or the author for copyright or a registered design.

The incorporated society that is the applicant for these trade marks is a legal person that is able to own intellectual property rights such as copyright, trade marks, patents and registered designs. However, the stated expectation is that traditional knowledge is collectively 'owned' in the sense of guardianship by a group that is not a legal person.

Intellectual property rights are finite. In New Zealand registered designs last for 15 years, patents for 20 years, and copyright for 50 years from the date of the death of the author. Trade marks are only valid while they have a distinctive character and are used on the goods and services for which they are registered. These rights are certainly not perpetual.

This case serves as yet another reminder that intellectual property laws were not designed with traditional knowledge in mind. Intellectual property rights do protect some aspects of traditional knowledge, but not to the extent expected by their guardians.

Photo courtesy of author Jad_23 under Creative Commons licence. 

The tobacco wars

We have seen some recent litigation in the Australian High Court relating to a tobacco company challenge to legislation requiring plain packaging of cigarettes. The New Zealand government may be looking toward similar legislation if Australia is successful in removing all tobacco company logos from cigarette packs.

The issue in Australia is whether the Australian government, in banning use of logos and other insignia on packaging, has acquired property in the form of these marks. This argument is based on trade marks being a form of property. There is an argument that preventing their use amounts to effective seizure or acquisition of the trade marks.

In response, the Australian Government says that trade mark use by companies in Australia is a privilege. A privilege is not a property right and can be curtailed. Trade marks registrations provide only a liberty to act subject to regulation by law.

My view is that intellectual property rights (for example trade marks) have long been accepted as a form of property, rather than as a privilege. For example, the New Zealand government is permitted to use a patented invention in certain limited cases, but is required to pay reasonable compensation to the patentee, presumably as recognition of the restriction on their rights.

It will be interesting to see how the Australian High Court handles this one. There will be significant implications if the Court finds that trade marks are not actually a form of property. These implications will extend not only to tobacco, but to all goods and services. It could be that intellectual property rights are at risk in ways we have not previously considered.

Thanks to Jonathan Aumonier-Ward for this article.

A world first in Australia

The Australian law requires all cigarettes to be sold in plain olive packs, with 80 per cent covered in graphic health warnings, and labels printed in the same simple font. Australia is not the first country to draft legislation like this, but it is the first country to pass it into law. A similar bill in Canada failed in 1995 following a Supreme Court fight and pressure from affected companies.

The four largest tobacco companies selling in Australia are Philip Morris, British American Tobacco, Imperial Tobacco and Japan Tobacco. The four companies joined forces when the Australian legislation was proposed, forming the Alliance of Australian Retailers.

The companies argue that the Australian government is acting unconstitutionally and in violation of international agreements. They argue the government is trying to take ownership of the companies’ intellectual property by preventing them from using it in the country.

The Australian government has responded to tobacco companies, saying it does not intend to acquire or expropriate any of their property rights – merely curtail those rights.

Property or privilege?

The Australian case has significant implications for intellectual property in general, if the court finds that plain packaging is not an unreasonable limitation on intellectual property rights. These implications extend not only to tobacco, but to all goods and services.  Intellectual property rights are at risk in ways we have not previously considered.

Philip Morris Asia, in bringing the court case against the Australian government, has argued that the government seeks to deprive tobacco companies of its very lucrative investments in trade marks and other intellectual property.

The New Zealand aspect

New Zealand is a party to a number of international intellectual property treaties that restrict rights to unjustifiably deny the use of trade marks. These include the WIPO  Paris Convention for the Protection of Industrial Property and the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. Complaints have been made to the WTO in relation to the Australian legislation based on these treaties. The same complaints could be expected if New Zealand follows Australia’s lead.

The benefit or otherwise of any international agreement is a political and economic consideration, not a legal one. That will be a trade policy decision for the government of the day to make. It is not an intellectual property issue.

The real issue for New Zealand is the potentially fundamental shift signalled by the government. Intellectual property has long been a right not merely a privilege. Generally speaking people have been allowed and encouraged to acquire and exploit their intellectual property. The government seems to be signalling this may no longer always be the case. This could open the flood gates into other areas.

What now?

We have seen that the new laws in Australia have brought about a number of complaints. There has been action in the local Court. There has been complaint to the WTO. The core issue involves breaches of treaties and other agreements prohibiting the ‘unjustifiable denial’ of a person’s right to use their own trade marks. It seems inevitable that if you are taking away someone’s right to do something that you will face complaints.


Photo courtesy of author trbpix under Creative Commons licence.

New trade mark system for Vanuatu

The Republic of Vanuatu is an island nation nestled in the South Pacific. Vanuatu has put in place a new trade mark registration system. The old system allowed an owner of a trade mark registration within the European Union to re-register that trade mark in Vanuatu. There has now been a change to a local registration system. Thanks to Lynell Tuffery Huria and Damian Broadley for this article.

The Trademarks Act 2003 (Vanuatu) came into force in Vanuatu on 8 February 2011 after its publication in the Official Gazette in Vanuatu.  No supporting regulations were passed to support that legislation, and until December 2011, the trade marks law in Vanuatu was unclear.

On 1 December 2011, a new Registrar was appointed and the new law became effective.  Since then, the Vanuatu Intellectual Property Office has been established within the Ministry of Trade, Tourism, and Industry, and more supporting regulations have been passed.  New filings and recordals are now being accepted at the new Ministry.

The new legislation transforms the trade mark registration system from a re-registration system (based on registrations achieved in any member state of the European Union) to a local registration system.

Some highlights of the new registration system are:

• trade mark applications can also claim convention priority from convention countries declared by regulation.  A list of countries that fall within the definition of “convention country” is yet to be declared at this stage.
• trade mark applications can cover multiple classes
• applicants must have a local address for service
• the Act introduces examination (absolute and relative) provisions, acceptance, opposition, and registration provisions
• the grace period for renewals is three months.

The Act also confirms that all registrations achieved under the Registration of EU Trade Marks [Cap. 81] will still be considered valid registrations under the new Act.

Photo courtesy of author Arthur Chapman under Creative Commons licence.

KOHA - Better late than never

It seems that another chapter closes on the KOHA trade mark saga.

New Zealand trade mark application 819644 KOHA is the subject of a kind of tug-of-war between two  competing factions within the open source community that have fallen out with each other.

One of the parties is the Te Horowhenua Trust trading as the Horowhenua Library Trust. The Trust has a close relationship with the Horowhenua District Council. According to the Trust's frequently asked questions, the Council funds 85% of the Trust's operation and appoints Trustees.

Another of the parties is Progressive Technology Federal Systems, Inc. The company trades as LibLime. PTFS/LibLime is the applicant for the KOHA trade mark application.

There seemed to be something of a media storm over this issue back in November. At that stage the Intellectual Property Office of New Zealand (IPONZ) had allowed PTFS/LibLime's trade mark application. There was a three month period during which parties could challenge registration of the trade mark.

The Trust is now getting legal advice on this issue. It is presumably getting assistance with media statements as we no longer seem to be seeing the same level of hostility in press releases. The issue is perhaps settling down into a regular legal dispute over ownership of a brand. Which is what it always was.

The request

Joann Ransom of the Te Horowhenua Trust (trading as Horowhenua Library Trust) mentions in a 2 February 2012 blog post that a letter has been sent to the applicant for the New Zealand KOHA trade mark.

The letter requested assignment of the New Zealand trade mark application to the Trust. The letter threatened a formal opposition to the trade mark application unless the Trust received a reply by noon 1 February 2012.

This is not the only threat LibLime has received from the worldwide online KOHA user community of course. I covered a few of the more angry ones in an earlier blog post. There's Dave for example who tells LibLime they will "have all the Maori up in arms with the trademarking of a word that simply means in english 'free' or 'of no charge'".

First barrel

Sure enough, an opposition was filed on 2 February, but not by the Trust. Catalyst IT Limited lodged a formal application to oppose registration.

Catalyst claims the KOHA trade mark is owned by the Horowhenua Library Trust. KOHA, says Catalyst, was used by the Trust since 1999 with the first computer software release made in January 2000. It's not clear to me whether KOHA has been used as the name of product, the open source project itself, or both.

The listed grounds of opposition include:

• use of KOHA by LibLime is likely to deceive or cause confusion
• use of KOHA by by Liblime would be contrary to law and disentitled to protection in a court of justice
• LibLime is not the true owner of KOHA
• the KOHA trade mark application was made in bad faith
• LibLime's KOHA trade mark is identical to the Trust's well known mark

The response

JoAnn Ransom published a further blog post on 16 February 2012.

LibLime did in fact come back with a response. The response advised that LibLime is considering organisations as possible candidates to hold the New Zealand trade mark. The response invited the Trust to submit a proposal which would be required to address a number of criteria set by LibLime.

JoAnn's post also mentioned that the Trust has "spent a number of years negotiating with PTFS[/LibLime] and would prefer now to trust a transparent and defined process conducted through IPONZ as to the proper ownership of the mark in New Zealand."

Sounds like an opposition to me.

Second barrel

Sure enough, by the time JoAnn had published her latest blog post, the Trust had already filed its own opposition to the KOHA trade mark application on 13 February 2012.

The grounds are very similar to those listed in Catalyst's opposition.

An additional twist is that the Trust has filed its own trade mark application for KOHA, allocated number 953837. The application was filed on 13 February 2012, the same day as the Trust opposed LibLime's application.

We never saw Dave's prediction of having "have all the Maori up in arms" come to pass when LibLime filed the earlier KOHA trade mark application. I think we are unlikely to see a similar uprising following the Trust's application.

What now?

It is now up to LibLime to file a formal response to both oppositions. It's a case of wait and see.

There is general agreement among commentators that the Trust should have acted a lot sooner to secure intellectual property rights for its project. The position is best summed up in a post by Nathan Willis, who says that:

"... it seems that the project would have been better equipped to cope with LibLime’s withdrawal from the community had the domain name, trademarks, and perhaps even copyrights been held by a trusted entity such as HLT. Taking those legal steps is something few projects seem to consider when things are running smoothly. They are no doubt time-consuming and tedious, perhaps even expensive. But so is trying to do them in a hurry, ten years after the project launches, with hostile players going after your name."

It is good to see that the Trust is finally taking those steps. In my view it is a case of better late than never.

Photo courtesy of author TimmyGUNZ under Creative Commons licence.

KOHA: All's well that ends well

Last week we saw a breathless press release announcing that a "small New Zealand library is fighting to keep its trademark [sic] free software from the clutches of a United States corporation".  Joann Ransom of the Horowhenua Library Trust is "astounded an international company could trademark [sic] a Maori word".

Dannevirke librarian Michael Parry goes further, stating that the company "have also sort sought [sic] to claim ownership of the name Koha ... we have the ridiculous situation that they will deny the very people who originally developed Koha the right to use that name. What is even more stupid is that the Maori Advisory Board to the Trademarks [sic] people has approved this. Yep, they are happy to give a Te Reo term to a US company as a trademark [sic]".

The Horowhenua Library Trust

The Trust claims to be incorporated under the Charitable Trusts Act 1957, although there is no record of the Trust on the Charities Register maintained by the Charities Commission*.  It has a close relationship with the Horowhenua District Council.  According to the Trust's frequently asked questions, the Council funds 85% of the Trust's operation and appoints the Trustees.

On 17 April 2010 the Trust applied for New Zealand trade mark application 822685 KOHA for computer software.  Its attempt to secure trade mark protection was unsuccessful.  The application lapsed on 12 October 2011.

The Trust, and by extension the Council, is associated with a loosely defined group known as the "Koha community".  The Committee rules define Koha Community, Koha Software and Koha Project.  You can find out more on the site http://koha-community.org/.

LibLime

According to its company profile, LibLime was founded in 2005.  In 2007 it acquired the KOHA division of Katipo Communications Limited.  Katipo, according to LibLime, originally created Koha for the Horowhenua Library Trust in New Zealand.  In 2008 LibLime closed its New Zealand office, providing support for its customers in that region through its US operations.  In March 2010 it was acquired by Progressive Technology Federal Systems (PTFS).  Check out http://www.koha.org/ for more details of LibLime.
 
On 15 February 2010 PTFS/LibLime filed New Zealand trade mark application 819644 KOHA for computer software.  The Intellectual Property Office of New Zealand (IPONZ) approved the trade mark for registration on 8 November 2011.  There is now a three month opposition period that started on 25 November 2011 during which interested parties can challenge registration.
 
On 23 November 2011 PTFS/LibLime issued a press release stating that:

"Another one of the assets acquired in the purchase of LibLime was an application for the trademark of the term Koha as it applies to ILS software in New Zealand. That application has now been accepted. PTFS/LibLime will hold that trademark in trust as well, and will not enforce it in order to insure that no individual, organization, or company will be prohibited from promoting their services around Koha in New Zealand.
 
PTFS/LibLime is prepared to transfer the trademark to a non-profit Koha Foundation with the provision that the Foundation hold the trademark in trust and not enforce it against any individual, organization, or company who chooses to promote services around Koha in New Zealand. PTFS/LibLime encourages a direct dialog with Koha stakeholders to determine an equitable solution for the disposition of the trademark that serves the best interests of the libraries who use Koha."

The next day a staff member from PTFS/LibLime confirmed that the company will "hand the NZ trademark off to a non-profit (including HLT) who agrees to continue our practice of protecting non-exclusive use of the name".

The response from the Koha Community

A posted comment from a "Dave" proudly announces he has been in contact with PTFS/LibLime.  He didn't like the reply he received so he sent another.  He encourages other members of the Koha Community to do the same. His reply:

"Congrats,
On the News tonight in NZ.
You’re company really knows how to shaft the originator of the project.
You guys ever thought of becoming political lobbyist? from my knowledge of the American Lobbyiest community you’d fit in well, build a support base around an issue then claim it as you’re sole property.
great going.
Hope the NZ Govt gets hell over this (we’re leading up to an election in this coming Saturday Te he).
you’re application should never have been allowed. Do you even know what Koha means in Maori?
you’ll have all the Maori up in arms with the trademarking of a word that simply means in english “free” or “of no charge”.
No wonder America is so villified in parts of the world, you’re society has an arogance that defies belief and yet I aknowledge that as a society is very giving (YES I LIVE IN CHCH NZ) gone through all the earthquakes from Sept last year etc and appreciate the support of the Urban rescue group that came out here to help.
I hope that you’re company rethinks things and withdraws the trademarking of the word (unless you gift the trademarking in what ever markets you have obtained them to the originating Library which would give you kudos in the OSS arena and would avoid further bad press).
I can see this going on youtube and through the larger OSS community as well.
dave."

Another member of the Koha Community identies himself as "Rangi".  He says "what needs to be done is some research on Liblime’s client base, find out who the clients are and send them letters outlining what they have been up to. Target the big clients and work down. This would be cheaper than any legal action".

Are the responses from Dave and Rangi examples of behaviour we would expect to see endorsed by a "small New Zealand library" and its associated Howowhenua District Council?  Of course not.  It's not about them at all.  But it gives some good insights into the mentality of the Koha Community.

So what's all the fuss about?

As I mentioned above, Michael Parry claims that PTFS/LibLime "will deny the very people who originally developed Koha the right to use that name". This statement is hard to reconcile with PTFS/LibLime's pledge not to enforce the trade mark, and to transfer it to an appropriate entity.

The Horowhenua Library Trust is hardly in a position to object to commercial use of Maori words. It incorporates at least one such word in its name and branding. Furthermore, the Trust filed its own trade mark application for KOHA, so can't complain when others "trademark a Maori word".

The real dispute here is over who should own the KOHA trade mark in New Zealand. The participants are two competing factions within the open source community that have fallen out with each other.  So now it's simply a matter of sorting out who will own the mark and under what conditions.  All's well that ends well.

The image of the little Kiwi library fighting the big US corporate makes a better story but doesn't fit the facts.

* Update 29/11/11 - Thanks to Joann Ransom for pointing out that the Horowhenua Library Trust is the trading name of Te Horowhenua Trust.  The Charities Commission entry for Te Horowhenua Trust can be viewed here.  The Registration number is CC20328.

Photo courtesy of author Tom Beard under Creative Commons licence.

Guest post: How the KOHA trade mark dispute could've been avoided

Thanks to Lynell Tuffery Huria for this article.

Twelve years ago, a Horowhenua library developed its own cataloguing software, brand name KOHA, and released it as open source software, available for others to use and develop around the world.  The Horowhenua library did not protect the brand name KOHA as a trade mark.  A US company has now applied to register the word KOHA for computer software.  Now the library faces a battle to oppose this application.

Can the Horowhenua library stop the US company from registering the trade mark KOHA?  The short answer is yes.  The Horowhenua library has prior use of the trade mark KOHA in New Zealand, and there is a good chance the library could successfully oppose the application.  But this process is costly.  And now the library is raising funds to oppose the application.

How can a US company obtain a trade mark for a Māori word in New Zealand?  Our trade marks legislation does not have a blanket provision that prevents the registration of Māori words in New Zealand.  Instead, a trade mark that features Māori words can only be refused if the use of the trade mark is offensive.  The Māori trade marks advisory committee is responsible for deciding whether a trade mark is offensive or not.  In this case, the trade mark KOHA was obviously not considered offensive.

What could the library have done to avoid this situation?  The library could have registered its trade mark when the product was first released.  For a fee of $100 plus GST, this trade mark application would have stopped the US company’s application and avoided this situation altogether.

What can others learn from this issue?  Before you use a trade mark, make sure you can and do obtain registered trade mark protection.  This will place you in a strong position to stop others from adopting your trade mark.

Photo courtesy of author Tom Beard under Creative Commons licence.

Guest Post: Will the WAI 262 report stop misuse of Maori words and images?

Thanks to Lynell Tuffery Huria for this article.

The WAI 262 report, released on 2 July 2011, discusses the misuse and misappropriation of Maori words and images.  Despite this report, we continue to see Maori culture being used in commercial activities with little or no consultation with Maori.

Most recent examples include:

• use of tā moko designs on the faces of models posing for a French magazine
• use of TUATARA as the brand for a new sports car manufactured overseas
• sale of MAORI personalised plate on TradeMe
• mass overseas production of cheap Māori souvenirs for sale to tourists in New Zealand during the RUGBY WORLD CUP tournament.

These examples are nothing new.  Aspects of Māori culture have been exploited for commercial gain since colonisation.  Similar problems exist for most, if not all, indigenous cultures around the world.

Some say Māori culture should be available for all to use and benefit from.

Māori do not agree.  Māori have a unique relationship with their culture.  They see themselves as the kaitiaki (guardian) of that culture.  The kaitiaki role includes ensuring any use of their culture complies and acknowledges the value system that underpins that culture.

The ongoing misuse of Māori culture (amongst other things) led to the lodging of the WAI 262 claim.  This claim sought protection for Māori culture, but also sought recognition of the role of Māori, through iwi and hapū, as kaitiaki of that culture.


How does the WAI 262 report propose to deal with this problem?

The Waitangi Tribunal agreed with Māori.  The Tribunal saw an urgent need for the integrity of Māori culture to be maintained.  The Tribunal acknowledged that Māori were not involved in decisions on the use of their culture.  The report seeks to change this current position and involve Māori in all decisions relating to its culture in this future.  The Tribunal saw this as a real opportunity for New Zealand to move forward in partnership, as intended by the Treaty of Waitangi.

The Tribunal did not grant full authority or control over Māori culture to Māori.  Instead, the Tribunal recommended a regime that would replace the Trade Mark Advisory Committee (established under the Trade Marks Act 2002) with a new Commission.  This Commission would have the responsibility to:

• hear objections on whether use of a taonga work, taonga derived work, or mātauranga Māori is offensive or derogatory
• hear kaitiaki objections that a taonga work is being commercially used without consultation or consent
• make decisions on whether a work is a taonga work
• identify kaitiaki
• keep a register of taonga works and kaitiaki
• develop and produce guidelines and best practices for the use, care, protection, and custody of taonga works.

The new Commission’s decisions will be binding.  The Trade Mark Advisory Committee’s recommendations are currently not binding.

The exact shape and makeup of the Commission is not clear.  But involvement of Māori is considered imperative to achieve the partnership vision outlined in the report.


Could these recommendations stop the recent examples of use of Māori culture?

The Tribunal’s recommendations are restricted to use of Māori culture in New Zealand.  Therefore, the recommendations could impact on how and when Māori culture is used in New Zealand in the future.  For example, if the Commission found the sale of the MAORI personalised plate or the sale of cheap Māori souvenirs was offensive or derogatory, then the sale of those products could be stopped by the Commission.  This action is not currently possible.  This is a fundamental change.


Could the recommendations stop use of Māori culture overseas?

The Tribunal’s recommendations will not have any effect on the use of Māori culture overseas.  For example, the Commission could not stop the use of tā moko on models for a French magazine or the use of TUATARA as the name of a new sports car.

But the WAI 262 claim was considered revolutionary when it was filed.  This claim was considered synonymous with the plight of indigenous peoples around the world, and the report has been eagerly awaited by a wide international audience.

It is possible other indigenous peoples could rely on this report as a basis to achieve a similar level of recognition for their culture in their home countries.  And consequently result in reciprocal rights for Māori culture to be recognised around the world.

It is also quite possible this decision could influence the ongoing negotiations on this issue in WIPO through the Intergovernmental Committee on Genetic Resources, Traditional Knowledge, and Traditional Cultural Expressions.


Do the recommendations affect existing trade mark rights?

The Tribunal report states it will be difficult to retrospectively remove any existing trade mark rights.  In fact, the Tribunal only sees a need to remove these trade mark rights if they are considered derogatory or offensive.

For those that already use Māori culture as part of their commercial activities, you can breathe a sigh of relief.  But you should seek advice and make sure your use will not be considered derogatory or offensive.


Where to from here?

These recommendations are non-binding.  The government will consider which aspects of the report to adopt, and then we can expect further legislation to amend our trade mark legislation.

In the meantime, if you adopt a brand or trade mark that is derived from Māori culture, then you should consider obtaining some advice on whether this use should be considered derogatory or offensive, or is derived from a taonga work.  In either situation, consultation with Māori is the key.


Ko Aotearoa Tenei – “This is New Zealand”

Ko Aotearoa Tenei, “This is New Zealand” is the three volume report in response to the WAI 262 claim.  Twenty years in the making, the report is the Tribunal’s first whole of government report that addresses the work of more than 20 government departments and agencies in areas such as trade marks, copyrights, patents, plant variety rights, language, science and technology, conservation, laws, history, education, art, and international agreements.

For more background on the claim, see our earlier article.

Guest Post: the RADLER decision – no use crying in your beer!

Thanks to John Hackett for this article.

There has been a lot of discussion following the decision of the Assistant Commissioner of Trade marks at the Intellectual Property Office of New Zealand in the recent case where the Society Of Beer Advocates, Inc (SOBA) applied to revoke Dominion Breweries’ (DB) trademark registration for RADLER.

So why has this come about?

Back in September 2003, DB applied to register RADLER for beer. In June 2004, they were granted registration of the name as a trademark. The application to register the mark had gone through the examination and publication stages to registration without objection from any third party.

With all trademark applications, once they are accepted, there follows publication by way of advertisement in the Patent Office Journal, during which there is a three month opposition period. This enables any interested party to oppose the registration of the trademark in question.

The importance of objecting at the opposition phase of the process will become abundantly clear as we go on to discuss this situation.

SOBA was only incorporated in 2006, and was therefore never in a position to object to the RADLER trademark application when it was advertised for opposition purposes. It only came into the picture subsequently, when one of its members sought to market the European Radler-style beer. This was objected to by DB as being an infringement of their registered trademark for RADLER. SOBA then became involved and brought the revocation proceedings on behalf of its membership.

Following the expiry of the three month opposition period, and given there was no formal opposition lodged inside the deadline, the mark was registered.

A trademark registration confers on the owner the exclusive right to use that name, and to enforce the registration against any unauthorised third party from using the same or similar mark on the same or similar goods or services for which that mark is registered.

This statutory exclusivity can then only be attacked on specific grounds, and the onus is on the party applying to attack the registration to show it should not have been registered in the first place. So, SOBA had to show that the mark was descriptive or generic at the time of registration, and should not have been registered. They also had to show that the New Zealand public did not associate the term RADLER exclusively with DB.

Going back to my earlier point, had any interested party attacked the trademark application during the available opposition period, the onus would have been on DB to show that the mark was distinctive at the time of filing, and not descriptive of a lemonade shandy beverage commonly consumed in Europe. It’s a moot point as to whether they could have discharged this onus.

So SOBA had to make all the running in this case to show the trademark RADLER at the time it was filed back in 2003, was a generic term in New Zealand, and further that it had not acquired any distinctiveness through use by DB from 2003 to the time the action was brought to revoke the trademark registration.

This proved a bridge too far for SOBA who failed to show in evidence that RADLER was a generic term in New Zealand back in September 2003 when the application was filed, and that it had not acquired a distinctive character through use by DB in New Zealand since that date.

SOBA would have to have established that a significant percentage of the New Zealand public associated the name RADLER with the lemonade shandy beverage commonly consumed in Europe.

The implication is that SOBA was unable to satisfy the burden of proof on it to show that RADLER had a generic meaning to New Zealanders back in 2003, and since that date, most New Zealanders did not exclusively associate the name RADLER with the particular style of beer marketed under the Monteiths RADLER brand.

This is not the same scenario as stated by an obviously disappointed Greig McGill, secretary of SOBA, when he referred to this decision meaning that anybody could register “muesli” for cereal, or “jalapeno” for hot sauce.

These terms are well-known in New Zealand, whereas, back in 2003, RADLER was not a term widely known to describe a particular style of beer consumed in Europe, by a significant number of New Zealanders.

Of course, had SOBA been able to show conclusively that RADLER had the meaning attributed to it in Europe back in 2003 when DB applied to register the name as a trademark, then they would have prevailed, and the trademark registration would have been struck off.

So, it’s fine being disappointed and bitter about the decision, but this case could hardly have gone SOBA’s way where, by no fault of their own, the trademark application for RADLER was not objected to at the opposition stage of the process, and that they subsequently failed to discharge the onus to prove the mark was generic in New Zealand back in 2003, and that in the intervening period it had not become distinctive of DB’s product.

Conclusions

1. It is important for industry sectors, and individual companies, to carry out regular watching searches of the register of trademarks to ensure that certain trademarks which could give a competitor an unfair advantage in the marketplace are objected to at the opposition stage of the registration process. These types of searches are regularly tailored for interested parties by intellectual property specialists.
2. It is always best to object to a trademark during the opposition period, rather than have to make all the running later in attacking a registration on the basis it should never have been registered in the first place.
3. For all parties who wish to run with a name that could be descriptive or generic in another jurisdiction, it’s important to be aware that they could find themselves in the position where they need to defend opposition proceedings to achieve registration, and in the worst-case scenario, they could lose the exclusivity to use that name as a trademark.

Guest Post: Australia's Personal Property Securities Act -the impacts on IP

Thanks to Mark Hargreaves for this article.

Australia enacted the Personal Property Securities Act 2009 (PPSA) in December 2009.  The PPSA was due to come into force in May 2011, but has now been delayed until October 2011.  It puts in place a national Australian personal property securities register similar to New Zealand’s.

As in New Zealand, the PPSA impacts directly on transactions involving intellectual property (IP).  Anyone buying, selling or licensing IP assets in Australia or offering or taking them as security should review those arrangements in light of the new scheme.


How does the scheme work?

The PPSA provides for a national register of security interests over personal property (PPSR).  Holders of security interests “perfect” their security interest by registering a financing statement on the PPSR.  The PPSR is publicly searchable and contains basic details about the security interest, who it is held by, and who and what it is held over.

Security interests that are perfected take priority over other security interests subject to the specific priority rules in the PPSA.

There is a broad range of security interests that can be registered.  They are defined as "any interest or right in relation to personal property provided for by a transaction that in substance secures payment or performance of an obligation".  Security interests will be created under wide range of commercial arrangements.

Personal property is also defined broadly and includes most forms of intellectual property such as registered trade marks, patents, copyright and registered designs, but does not include know-how or trade secrets or unregistered trade mark rights.  IP licences are also included in the definition of property over which a security interest could be registered.


How does the PPSA affect IP?

In the past, security interests relating to IP were often recorded on the various IP registers (for example, patents, trade marks and designs).  However, recording an interest on these registers did not necessarily have the effect of defeating competing interests such as a subsequent bona fide purchaser of the IP without notice of the interest.

Now there will be a single national register and a means for perfecting the security interest over IP and defeating other third party claims.  Some commentators suggest this will make it easier to raise money using Australian IP assets as security although it’s not clear that this has been the effect in New Zealand since the introduction of the scheme here in 2002.  IP assets were already often included as assets secured by general security arrangements prior to the PPSA and there still remains the very real issue of valuing the IP for the purpose of raising capital against it.

Nonetheless, if you are buying IP assets or using IP to secure payments or other obligations, you will need to check the PPSR during due diligence and, in the latter case, register your interest.


Examples of relevant transactions involving IP

Apart from the obvious purchase, sale and loan transactions, a wide variety of other transactions will be relevant.

For example, a partial assignment of copyright that involves an assignment back as a means of securing payment or performance of other obligations should be registered under the PPSA.  Failure to do so may mean the IP could be validly on sold to a third party purchaser for value.

Transactions involving physical assets that are closely related to IP rights in those assets will also need attention under the Australian PPSA.  These assets might include equipment that contains embedded software or that is covered by patents.  They might also include patented pharmaceuticals.  The PPSA provides that security interests over these types of goods may also apply to the IP rights underlying them unless a contrary intention is expressed in the security agreement.  Where these physical assets are being used as security, it will be important to confirm specifically whether or not the underlying IP rights are also being secured to avoid them being included as security unintentionally.

The transfer of IP licences will also be relevant.  The PPSA provides that, where a security interest is granted over an IP licence and the IP is sold to another person with the licence still in place, then the security interest will continue to bind the new owner.  Licensors should prohibit their licensees from using the IP licence as security in any way.


Summary

The introduction of the PPSA in the Australia will be a major change for business in this part of the world.  It is also a timely reminder for New Zealand businesses to make sure their house is in order under New Zealand’s own PPSA scheme.

Guest Post: Raising the Bar in Australia

Thanks to Alana Long for this article.

The Australian Government has recently released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Bill).  The Bill is designed to strengthen and improve Australia’s IP system.

Major changes surround oppositions, customs, relief, the expanded jurisdiction of the Federal Magistrates Court and client privilege. The amendments are discussed below.


Oppositions

A number of amendments are proposed to streamline the trade mark opposition process. Individuals and small businesses with limited opposition experience are the motivation for these proposed changes.

First, the Trade Marks Office (not the Opponent) is to serve a copy of the Notice of Opposition on the Applicant. This will give the Office greater control over ensuring that the Notice of Opposition is provided to the Applicant in a timely manner.

A requirement is introduced to file a Statement of Particulars of the grounds of opposition on which the Opponent intends to rely. The purpose of this amendment is to help focus oppositions earlier, reduce costs and any unnecessary effort on the part of the applicant in responding to grounds no longer relied on. The particulars will be required to be filed within one month of filing the Notice of Opposition. The Statement of Grounds and Particulars will only be able to be amended in limited circumstances.

A further amendment requires the Applicant to file a Notice of its intention to Defend the opposed application. There will be no fee associated with filing the notice and an extension of time to file the notice will be available.  The penalty for not filing a notice will be the application lapsing. This amendment anticipates the resolution of uncontested oppositions much sooner and with significantly less effort on the part of the opponent. Currently the second step in the opposition process is for the opponent to file their evidence.

A power is provided to the Registrar to dismiss a trade mark opposition in prescribed circumstances. Among other things, this will provide a mechanism to dismiss an opposition where the opponent does not comply with their obligation to file a statement of grounds and particulars. The exact circumstances in which the power is available will be prescribed in the regulations.


Customs

The memorandum accompanying the Bill explains that loopholes in the current border protection scheme enable importers of counterfeit or pirated goods to avoid prosecution and still retain the goods. Amendments are made to address this and other related problems.

The Customs CEO will be able to provide the objector (the trade mark owner lodging the notice of objection) information about the exporter as well as the importer. Extending the information provided to include the exporter or consignor will assist trade mark owners in identifying the source of infringement and repeat offenders. A power is also provided for the Customs CEO to grant inspection or release of sample goods. This amendment is intended to align with the Copyright Act 1968 (the Copyright Act) which currently includes an inspection provision.

A new “claim for return” scheme is introduced to ensure designated owners cannot reclaim seized goods if they make themselves uncontactable to avoid infringement proceedings. Firstly, the objector will receive information to identify and contact the importer. The Customs CEO will notify the objector of a claim for release of seized goods, if one is made. if no claim for release is made within the claim period, the seized goods are forfeited to the Commonwealth.  The Customs CEO also has discretion to accept a late claim for release of seized goods.

Reference is made in the memorandum to the noticeably lower maximum penalties for trade mark offences than the penalties for similar offences in the Copyright Act. An amendment is proposed to raise the maximum penalties for indictable offences to align with similar offences in the Copyright Act.

A number of additional amendments are also proposed to align with similar amendments to the Copyright Act.


Relief

The Court is to be given discretion to award additional damages for flagrant trade mark infringement.  Additional damages are already available for flagrant infringement of patents, registered designs and copyright.


Federal Magistrates Court (FMC)

The jurisdiction of the FMC is to be expanded to hear trade mark matters. The FMC will have the same jurisdiction to hear appeals against decisions, directions and orders of the Registrar like the Federal Court of Australia.


Privilege

Communications with foreign trade mark attorneys are to receive the same privilege as those of Australian attorneys.

Submission on the Bill closed on 4 April 2011.

Guest Post: DIY trade marks

Thanks to Corinne Blumsky for this article.

Doing it yourself is part of the kiwi psyche. Did you know you can protect your brand by filing a trade mark application yourself?  Sounds easy!  But there are some issues you need to be aware of before you go down that path.

 

Make sure your brand is available for you to use and register. Before you invest in developing a new brand, do a thorough search of what currently exists – the risk of not doing so can be very expensive.
 
Do a search of all the trade mark records and of the marketplace.  The aim is to determine what brands are already in use, applied for or registered.  You can then decide whether your new brand is too close to what is already.  Clearing a brand can be complex.  It requires time and lateral thinking.  It is also helpful to have a level of familiarity with the databases you are searching.

To do a search, you need to be clear about what your brand is (ie. all its various elements so you can search all of those) AND understand what your business does (ie. what products or services you provide).

Critical issue

When a new brand is created the most critical issue is ensuring that it is available for use and in particular will not contravene any existing third party rights in the same or a similar trade mark.

However, this is often where problems occur.  For example, one business had searched for the prefix of the brand they were interested in.  They found numerous trade marks beginning with the same prefix but somehow missed the exact trade mark!  That business went on to produce catalogues and labels based on their understanding that the trade mark had been cleared for their use. They only relaised they had a problem when they received a letter from a firm of solicitors pointing out that their use infringed another’s trade mark.  Not only did they have to re-label their goods, they also had to select a new (properly cleared) trade mark.

Another business searched the exact trade mark they were interested in.  They found the exact trade mark but in a different class to the class they knew their goods were classified in. Trade marks can be classified in 45 classes.  Classes 1 to 34 cover products; classes 35 to 45 cover services.  Again, they proceeded to use the trade mark until they also received a solicitors’ letter asking them to stop.  They were infringing the rights granted under the trade mark they had, in fact, found. What they had not considered was the similarity of the goods. You can infringe another’s trade mark even if you provide different goods or services that are in a different class – similarity can be enough.

So how do you try to avoid this happening? The criteria you select for each brand you search for will depend on a number of factors.   These include the nature of the trade mark, the presentation of the trade mark, the goods or services or both on which it will be used, as well as the country and database being searched.

A number of countries offer online trade mark databases.  The methodology for entering trade marks onto a database differs from database to database. You need to be familiar with this to have any chance of finding potentially relevant trade marks.

It is also important to note that trade mark rights are territorial in nature. If you intend to export goods from New Zealand, then you should also clear your trade mark for use in each of the countries where you will use your trade mark.

Too often a business that chooses to undertake their own trade mark clearance search often goes no further than entering the exact trade mark as the search criteria.  While on occasion you may locate an exact trade mark, it gives no clue as to whether there is a similar trade mark lurking on the database or is in use.   This is important to bear in mind as New Zealand, like a number of other countries, has infringement laws that extend to cover ‘similar’ trade marks.

Right approach

Take the right approach when filing your own trade mark applications.  Internet technology has made it possible for many trade marks offices around the world to provide filing facilities online.

With the introduction of online filing, there has been a worldwide trend of businesses filing their own trade mark applications. Objections are often raised by examiners during the examination process against a significant proportion of trade mark applications filed. These objections need to be responded to if the application is to progress.  The nature of objections raised range from typographical errors, to incorrect classifications of goods and services, the raising of similar trade marks already on the register, and registrability issues.  Often the business is not familiar with trade mark regulations, case law and the various practices of each country to be able to respond adequately.  Seeking specialist help at this stage can often be expensive and could quite likely have been avoided if engaged at the outset.

If you do need help, it is best to approach a qualified attorney.  While trade mark examiners can seem helpful, they are not qualified to give advice and in many cases are not authorised to do so. Unlike specialist attorneys, examiners are not familiar with the range of factors which need to be considered when registering a trade mark. By accepting suggestions offered by examiners, you may be unnecessarily limiting your rights.
  
Too often, applications are filed with some or all of the following issues.

• The goods or services are too narrowly defined
• The goods or services are wrongly classified
• The trade mark to be registered includes non-essential features
• The owner is not correctly identified.

Unfortunately, the limitations of a trade mark registration might not be exposed until the business wishes to rely on the registration to prevent a third party from using either the same or a similar trade mark. It is too late at this stage to learn that a registration does not cover the goods or services intended.  Also, the limitation of a trade mark is unlikely to come to light until international registrations are sought relying on the first filed application.  Again, it can be too late to take remedial action at this stage.

While it may appear straightforward to file an application online, you must know what you are doing in order to achieve the best possible trade mark protection available. You may be tempted to give it go, but you need to be aware that there could be risks with doing so.

Trade mark renewal

Once a trade mark is registered, you need to renew it every 10 years to keep it current.  You can do this online in New Zealand and in a number of other countries.  Some countries also require you to file evidence that you are using your trade mark in order to keep it.

Meeting renewal dates and managing evidence requirements needs processes and systems—especially if you have more than one brand in your portfolio.  A lot can happen in 10 years, such as a move of location, which could mean that you miss the renewal reminders.

In summary, DIY trade mark registration and renewal is available to all businesses. However, if you are not familiar with the process, law and practices it may be safer to seek specialist advice at the outset.

Guest Post: Blocking brands as adult-only domain names tipped for September

Thanks to Emma McBride for this article.

ICM, the registry responsible for the adult-only ".xxx" top level domain name, has just announced that trade mark owners will have a small window of opportunity to proactively block their trade marks from becoming .xxx domain names.

While there is no formal system in place yet, ICM has indicated that it will set up a 30 day 'sunrise' period in September 2011 for brand owners to block their trade marks.

In order to block your trade mark from the space, you will need to own a trade mark registration for the exact trade mark you want to block.  The registration will need to be in force at the time of application, in a national jurisdiction where you carry on business in connection with the trade mark.

Because you will need a trade mark registration, owners of unregistered trade marks will not be able to block their trade marks from being registered in the adult space.

Many companies and organisations, especially those that don’t want to be associated with this internet space, such as children’s entertainment companies, are expected to take advantage of this opportunity.

A fee will apply - which will comprise a baseline fee charged by the responsible registry, ICM - plus a service fee charged by frontline domain name registries that will handle the individual brand owner’s request.  While nobody has set any prices yet, fees are likely to be at least US$300-600 for each trade mark you want to block.  However, given the premium nature of this internet space, fees could be more than this.

For those that miss out on the sunrise period, there will still be post-enforcement options available, for example, the UDRP procedure.

There are some uncertainties around the registration procedure as this space is still new and the rules around it are still being finalised.  Indeed, it appears that the block may only last as long as ICM remains responsible for the .xxx domain name space, which at this stage is only 10 years.  After that, it is not known what will happen with any blocks that may be in place.