18 February 2010

To Headstart or Not

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I have developed the habit of offering the Headstart option to my new trade mark clients. This is an effort to smooth the way with IP Australia. To date, I've only experienced courteousy and efficiency from the staff at IP Australia.

There are detractors. Some say that the inability to prepare tailored class descriptions is restrictive. It would be, were it not for the accommodating staff. If I need to tailor the description, I simply email the new description to the relevant examiner with a request that he or she amend the description accordingly. Provided you're not trying to add unrelated goods or services, chances are that you can get a decent description on file. My cynical side might think that many practitioners' avoidance of Headstart is simply a way of generating fees through searches and responding to adverse examination reports. I trust that's not the case.

One of the reasons I offer the Headstart option is that examination is carried out by a person who examines trade mark applications for a living. As a sole practitioner, I have to deal with a wide variety of tasks and could never develop that level of expertise. Not only that, but the official fee is only $90 per class. That's a lot cheaper than contracting the search out.

So for now I will continue to offer Headstart in spite of the naysayers. I'll let you know (discreetly of course) if I have a bad experience.

16 February 2010

International Applications Dip in 2009

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As I mentioned earlier, overall international applications were down 4.5% in 2009. This brings the level back to just under 2007 figures. A full report can be found here.

I was concerned to see that Australia dropped by 7.5%, particularly since we escaped the worst of the recession. The US, which was one of the hardest hit, dropped by 11.4%. Interestingly, Japan, also one of the hardest hit, actually grew by 3.6%. This is an indication of how IP ownership is shifting East, particularly when one considers the growth in a number of other East Asian countries. As usual, those countries suffer less from the West's short-term knee-jerk syndrome when it comes to investing in the future. We should take heed.

The greatest declines related to computer technology -10.6%, pharmaceuticals -8.0% and medical technology -5.9%.

Hopefully 2010 will be better.

13 February 2010

Public Recognition Evidence for Lack of Distinctiveness

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It may be possible to defend an infringement action if you can show that a mark has lost the capacity to distinguish goods or services in respect of which it has been registered. In Mantra Group Pty Ltd v Tailly Pty Ltd [2010] FCA 66, an affidavit of a witness, Dennis Porter included the following paragraph: "In my opinion, the name, Circle On Cavill has since become common knowledge recognised as a location. As a central location within Surfers Paradise the area is regarded as a meeting place, a destination, to go to, or to go from. And therefore “Circle On Cavill” provides a pinpoint descriptor location address".


Mantra objected to the admission into evidence of that paragraph. It held that Porter was not qualified to make that statement and was trying to give factual evidence in breach of our evidence legislation. Tailly responded by saying that Porter was a long time resident and had much experience as a marketing and advertising consultant on the Gold Coast (the municipality of the location in question).

Reeves J. explained that before a person’s opinion can be admitted as evidence, it must meet a number of criteria. Those were expressed by Lindgren J in Harrington-Smith and Others on behalf of the Wongatha People v State of Western Australia and Others (No 2)[2003] FCA 893(2003) 130 FCR 424 at [20], as follows:

  • The opinion must be relevant (including that the field of knowledge is one in which expert opinion can properly be called).
  • The person put forward as an expert must possess specialised knowledge in that field.
  • The specialised knowledge must be based on the person’s training, study or experience.
  • The particular opinion tendered must be based on the specialised knowledge.
  • The expert’s evidence must clearly expose the reasoning leading to the opinion arrived at and distinguish between the assumed facts on which an opinion is based and the opinion itself.

Porter failed to explain his reasoning. It could not be said whether his opinion was based on his specialised reasoning. Porter also failed to define "common general knowledge". Furthermore, Reeves stated that: "I do not consider long-term residency of an area the size of the Gold Coast or South East Queensland equips a person to express an opinion about the common knowledge of the population of that area. Even if Mr Porter was only purporting to express an opinion about the common knowledge of persons involved in the advertising and marketing industries on the Gold Coast, I do not consider his experience, extensive as it may be, equips him to express such an opinion."

So it would appear that some form of survey evidence would have been necessary to satisfy the court. Or perhaps the evidence of a number of witnesses would have sufficed. But this case does emphasise the need to be careful when preparing affidavits and particularly to keep an eye on probative requirements.

It will be interesting to see how this ends, especially since I like to visit "Circle on Cavill" from time to time.

12 February 2010

University Hits a Dead End

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IP Now reports that the High Court has refused the application by the University of Western Australia for special leave to appeal the decision of the Full Federal Court in University of Western Australia v Gray [2009] FCAFC 116. In short, a failure by the University to ensure that one Dr. Bruce Gray executed a proper assignment documents resulted in the University being unable to claim any proprietorship over Dr Gray's invention. A hard lesson learnt.

09 February 2010

Which countries have been filing the most International Applications?

The Economist reports that overall the number of international applications fell by 4.5% in 2009 compared with the year before. However, applications from east Asian economies increased slightly and those from China grew by 30%.

Before we get too excited, we should bear in mind that the vast majority still emanate from the United States, making up about 45 000 of the 159 000 filed worldwide.

Peer-to-Patent trial enters second phase

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IP Autralia has reported that the peer-to-patent trial has entered its second phase. Read more...

08 February 2010

Commercialisation Australia to Cover IP Costs

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Commercialisation Australia is offering up to $50 000 to cover specialist business advice, including IP management. Eligible expenditure includes fees for the cost of filing a patent application, patent search, examination and maintenance fees. Have a look at the website for more information.

If you would like me to recommend a consultant, please email me.

06 February 2010

Patents in China

The Wall Street Journal reports that China issued a record number of patents in 2009. But regulations could dampen growth. Read more.

05 February 2010

A Branding Tip

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One of my clients has positioned itself very successfully in a particular market. This success is reflected in the popularity of its website. It ranks consistently high in Google searches. However, more recently, its ranking is coming under attack from competitors, both numerous and aggressive.

The problem is that its brand is weak. Weak in the sense that it is descriptive of the service offered. As a result, the chances of obtaining trade mark registration are not good, in spite of the extent of use it has had of the brand. Competitors are using the words of the brand as keywords in their online marketing campaigns with impunity. As I explained to client, those words describe the service offered and so competitors should be able to use them to describe their own services. If client had originally chosen words that were distinctive and thus registrable, its competitors would not be in a position to leverage themselves into a position in which they could constitute a serious threat to its business.

My advice is that the traffic to the website should be used to expose a carefully selected, distinctive brand to site visitors. In time, this will shift reputation from a weak brand to a much stronger brand. For more information on brand selection see my article on brand name selection.  The stronger brand will allow it to stand out from its competitors in an increasingly busy field, ensuring longevity and increasing its value significantly.

03 February 2010

Delegate rules on the filing of further evidence in oppositions

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Commonwealth Scientific and Industrial Research Organisation and Novartis AG v Vistakon [2009] APO 24

This matter had to do with the serving of further evidence during opposition proceedings. 

The patent application relates to contact lenses and materials suitable for contact lenses. Vistakon opposed the grant of a patent on grounds that are not relevant for this discussion. When an application is opposed, the opponent must lodge evidence-in-support of the opposition. The applicant for the patent then has an opportunity to lodge evidence-in-answer to the evidence-in-support. The opponent can then lodge evidence-in-reply. The evidence lodged by the parties is considered during a hearing before a delegate of the Commissioner if the matter gets that far.

In this case, the applicants (CSIRO and Novartis) wanted to file further evidence based on their assertion that parts of Vistakon’s evidence-in-reply was not properly in reply. The applicants wanted to address Vistakon’s evidence-in-reply that the applicants’ declarants had insufficient experience and qualifications with respect to various technical aspects of the invention. Also, the applicants' declarants proposed to address new evidence or issues raised for the first time in Vistakon's evidence-in-reply. The applicants also wanted to file further evidence relating to what was known in Australia at the priority date of the application.

According to the regulations, the Commissioner may permit the serving of further evidence. The regulations provide a broad discretion that cannot be reduced to compliance with particular requirements.

The Delegate pointed out that public interest calls for a balance between the requirements that oppositions be dealt with expeditiously and economically, and that a serious opposition be dealt with on its merits. In this case the evidence-in-reply appeared to add a degree of discussion and analysis of measurement techniques that went beyond the applicants' evidence-in-answer and appeared to have significance in its own right. Consequently, the Delegate held that it would be in the public interest to allow the applicants the opportunity to serve the further evidence.

As far as the interests of the parties was concerned, the Delegate held that the evidence-in-reply appeared to be substantial in the degree of evidence covering material additional to the evidence-in-support. He accepted that the evidence-in-reply required a response by the applicants.