Australia and New Zealand: working together to protect IP rights

Examination timeframes in Australia are longer than those in New Zealand. About one-third of Australian patent applications have a corresponding application in New Zealand.

In August 2009 the prime ministers of New Zealand and Australia issued a joint statement of intent, which agreed on outcomes for a trans-Tasman single economic market between New Zealand and Australia.

One of the desired outcomes of the single economic market is to implement a single application process (SAP) and a single examination process (SEP) for New Zealand and Australian patent applications.

The SAP is likely to be rolled out in early 2015. An SEP pilot programme will run for 18 to 24 months once the SAP has been implemented. The SEP pilot programme will then be subject to a review to determine whether it is worthwhile implementing it fully.

If the SAP goes ahead, patent applicants wanting to cover both countries will have the option to use a single SAP portal in New Zealand or Australia to file a pair of applications. The New Zealand application will be referred to the Intellectual Property Office of New Zealand (IPONZ) for examination. The Australian application will be referred to IP Australia for examination.

The SEP will see a pair of applications referred to a single patent examiner, who will examine both applications simultaneously. The examiner could be based in either New Zealand or Australia; the applicant does not choose. Following examination, each application will be handed back to its own patent office for opposition and grant. Two separate New Zealand and Australian patents will still be granted.

New Zealand’s new Patents Act regulations

New regulations will affect all New Zealand applications filed after the September 13 2014 date of commencement of the New Zealand Patents Act 2013 and all granted patents. Applications filed before this date will continue to be examined under the Patents Act 1953.

The new act aims to align corresponding regulations in New Zealand and Australia, which are likely to take on greater significance with the implementation of the proposed single economic market. Of particular interest are proposed new fees and reduced prosecution times. Several new fees – including fees for examination, re-examination and requesting restoration or revocation – are proposed. Proposed fee increases apply for filing provisional patent applications and for making voluntary amendments. The proposed SAP will provide no reduction in official fees, but reduced administrative costs should lower patent attorney fees for filing in both countries simultaneously.

New timeframes for requesting and responding to examination are also proposed. These timeframes match those provided in Australia for the same actions. New Zealand applicants will need to get used to a new system that requires a more rapid response to IPONZ than has been needed in the past.

Methods of medical treatment confirmed patentable in Australia

The High Court of Australia released its decision in Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd on whether methods of medical treatment constitute patentable subject matter. Surprisingly, this is the first time that Australia’s highest court has considered the patentability of such methods.

The High Court split four to one over the issue, but the majority confirmed that methods of medical treatment of humans can be patentable inventions. Assuming that all other requirements for patentability are met, a method (or process) for medical treatment of the human body which is capable of satisfying the test established in National Research Development Corporation v Commissioner of Patents (1959) – namely, that it is a contribution to a useful art with economic utility – can be a manner of manufacture. Such treatments can therefore be patentable inventions within the meaning of Section 18(1)(a) of the Patents Act 1990. This decision is consistent with IP Australia’s longstanding practice of allowing method of treatment claims.

The court also held that Apotex had not infringed Sanofi-Aventis’s patent by supplying a generic product that could be used in the patented method when Apotex’s product information expressly excluded using the generic product for the patented purpose. Accordingly, even if it is almost inevitable that a medicine will be used to treat a claimed indication, if the alleged infringer positively directs against that use, it will be difficult to prove inducement or other indirect infringement.

Ka Mate haka obtains special protection in New Zealand

The New Zealand government has accorded special protection to the Ka Mate haka in a new piece of legislation. The haka is a traditional war dance and is well known worldwide due to its performance by New Zealand’s national rugby team, the All Blacks.

The government’s willingness to provide recognition and protection for Ka Mate provides hope that the government is prepared to provide IP protection for traditional knowledge in special cases. However, it also highlights the lack of any cohesive approach to recognise and protect indigenous intellectual property.

Given the delays and difficulties faced by the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore within the World Intellectual Property Office, it is time for New Zealand to follow in the footsteps of other countries such as Brazil and South Africa and develop its own legislation recognising indigenous IP rights.

Cases

New Zealand’s High Court rules on ‘invisible’ AdWords

In the first case of its kind in New Zealand, the High Court has found that using a competitor’s trademark as a Google AdWord is not trademark infringement.

InterCity Group (NZ) Limited v Nakedbus NZ Limited is the culmination of years of fierce competition between the parties. Both InterCity Group (ICG) and Nakedbus operate long-haul passenger coach services throughout New Zealand. Since entering the market in 2006, Nakedbus had targeted competitors’ brands, including ICG’s INTERCITY trademark. Matters came to a head in 2012 when ICG discovered that searches for the term ‘inter city’ on Google were generating Nakedbus sponsored advertisements. These advertisements contained the words ‘inter city’ and linked through to the Nakedbus website.

Under New Zealand law, for there to be trademark infringement the allegedly infringing mark must be used in a manner that is likely to be taken as being use as a trademark. This is assessed from the perspective of relevant consumers – in this case, “a significant number of normally informed and reasonably attentive internet users”. While Google AdWords are invisible to everyone except Google and the advertiser, the judge held that if the use could not be seen by the consumer, it could not be “taken as” anything, let alone “taken as being used as a trade mark”.

While there was no trademark infringement, Nakedbus did not escape liability. It had used ‘inter city’ in the text of its Google advertisements triggered by the keywords and on its website. The judge held that this use of ‘inter city’ was trademark infringement, and constituted passing off and breach of the Fair Trading Act. Nakedbus has appealed this finding.

Using a competitor’s trademark as a keyword for Google AdWords is not trademark infringement in New Zealand. However, a competitor’s trademark used as part of a Google AdWords campaign (or indeed in any advertising campaign) should be done only with great caution.

Launching a new product in New Zealand

JH Whittaker & Sons Limited won in New Zealand’s High Court against Cadbury UK Limited for the right to call one of its chocolate products BERRY FOREST. This is the second time that Cadbury has lost its fight to stop Whittaker’s from using or registering the BERRY FOREST trademark.

Cadbury’s argument was that the trademark BERRY FOREST was too close to its BLACK FOREST trademark, and that consumers would likely be confused or deceived as to the source of the goods bearing the BERRY FOREST trademark.

Neither the assistant commissioner of trademarks nor Justice Denningham accepted Cadbury’s concern. Cadbury has been using BLACK FOREST as a trademark in New Zealand since 1992. When it launched its product, steps were also taken to register BLACK FOREST as a trademark. It is one of Cadbury’s core products and has been in the top 10 bestsellers of all branded chocolate products since 2006.

In December 2010 Whittaker’s decided to launch a new chocolate product and applied to register the trademark BERRY FOREST. Cadbury opposed the registration, but did not succeed on any grounds of opposition, so it appealed. In the recent appeal the judge took four grounds into consideration in regard to Whittaker’s filing an application for the trademark BERRY FOREST. A trademark must not be registered if:

• its use would be likely to deceive or cause confusion;
• its use would be contrary to New Zealand law or the mark would otherwise be disentitled to protection in any court;
• it is similar to a trademark that belongs to a different owner and that is registered; or
• it, or an essential element of it, is identical or similar to or a translation of a trademark that is well known in New Zealand.

The judge found for Whittaker’s on each of the four grounds and dismissed the appeal.

AJ Park

Level 14, 135 King Street

Sydney NSW 2000

Australia

Tel +61 2 9235 7600

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Level 22, State Insurance Tower

1 Willis Street

Wellington 6011

New Zealand

Tel +64 4 473 8278

Fax +64 4 472 3358

Web www.ajpark.com

Corinne Cole

Partner

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Corinne Cole is a trademark partner at AJ Park’s Wellington, New Zealand office. She is a branding and trademark strategist and works closely with start-up ventures, individuals and small to medium-sized enterprises in a range of industries, including telecommunications, information technology, cosmetics, fashion, food and beverage and clean technology. Her areas of speciality are trademarks, domain names, advertising and regulatory advice, franchising, clean technology and IP strategy and searches. She writes regularly for various publications on IP-related topics.

Kim McLeod

Partner

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Kim McLeod is a litigation partner at AJ Park’s Auckland, New Zealand office. He acts for many local and multinational companies to enforce their IP rights in New Zealand and overseas. He helps clients to protect their brands and innovations, and his areas of speciality include patent litigation, copyright law, trademark infringement, trade secrets and licensing. He has received numerous accolades for his work on contested matters.

Matt Adams

Partner

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Matt Adams is a patent partner at AJ Park’s Wellington, New Zealand office. He advises clients in the electrical, electronic and ICT fields, with particular expertise in cyber-physical systems, big data, unified communication, cloud computing, networking technology and business methods. His practice involves patent specification drafting, technology transfer and strategic procurement. He writes regularly on legislative updates and trends in patents and technology. He also participates as a council member with the New Zealand Institute of Patent Attorneys and as a co-chair of the International and Foreign Law Committee with the American Intellectual Property Law Association.