WIN In-House Counsel DaySydney

Tuesday 22 March 2016

TRENDS AND DEVELOPMENTS ININTELLECTUAL PROPERTY

MELINDA UPTON, PARTNER

Overview

IP is one of the fastest moving areas of law, striving to keeppace with technology and marketing.

It is also one of the most international areas of law, withtreaties, agreements and the judiciary harmonizingAustralian law with that of, particularly, Europe and the US.

It is critical to be aware of developments in key jurisdictions as alikely indication of future trends in Australia. Also critical forAustralian businesses active in China and ASEAN region to beclear about the regional IP strategy in light of some of the trapsincluding "bad faith" and "first to file" rule.

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Summary

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• Trade marks• Designs• Copyright• Patents• ACL

In this hour we will look at recent trends anddevelopments in:

• Australia, China and ASEAN• US• Europe

Across

Our clients today

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• Re-brand and transition from a sub-brand of an iconic brand to anew to market brand

• Regulatory environment• Third party infringement issues

Cindy Hansen, General Counsel & CompanySecretary of the soon to be launched QudosBank, formerly (currently) Qantas CreditUnion

• ACL – consumer guarantees• Misleading and unconscionable conduct• Education programs

Sarah Hosey – Deputy General Counsel,Communications, IP & Commercial, nbn

Trade marks

What is a trade mark?

a sign used, or intended to be used, to distinguish goods or services dealtwith or provided in the course of trade

sign includes the following or any combination of the following, namely,any letter, word, name, signature, numeral, device, brand, heading, label,ticket, aspect of packaging, shape, colour, sound or scent.

Protectable as both a registered ® or an unregistered ™ right

Term of protection can be indefinite

Registrations can be cancelled if not used

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Traditional trade marks

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• EXPERIENCE THE WESTIN DIFFERENCE;

• IT'S IN OUR NATURE;

• OH WHAT A FEELING!

Slogans

Logos

(graphic

devices)

• HILTON, SHANGRI-LA, NOVOTEL, INTERCONTINENTAL,PARKROYAL, NIKE, QANTAS, VEGEMITE

Words

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Choosing a trade mark

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Available?

Brandglobalisation

Considertype

Distinctive?

Why is distinctiveness

important?

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Distinctive marks are:

Easier and cost effective to register

Easier to protect

Better at helping consumers to distinguish your goods or

services from your competitors' goods or services

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Distinctiveness

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• Second tier brands and taglines• When use of a brand is use 'as a trade mark'• Use as a trade mark or as a descriptor?

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Is your trade mark

available?

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If someone else ownsa prior similar trademark for similar goodsor services, you wouldface the followingproblems:

Important to conduct searches to determine whether another party islikely to have registered or unregistered rights in the mark

Cannot be identical, substantially identical or deceptively similar toanother mark on the register

Should think about proposed and possible use

Refusal to register

Opposition

Infringement

Cultural considerations – branding –

China

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CompanyChinese trade

markPronunciation (pinyin) Meaning Verdict

American Express 美国运通 Mei Guo Yun Tong American transportationThe translation doesn't convey thefull meaning of "express"

BMW 宝马 Bao Ma Precious horseSome phonetic similarity and apositive meaning

Bon Aqua 飞雪 Fei Xue Flying snowA strong and imaginativetranslation, though the brand is notyet widely known

Citibank 花旗银行 Hua Qi Yin Hang American bank

The Chinese trade mark is an oldfashioned nickname in China forthe American flag so someChinese find it a strange choice

Coca-Cola 可口可乐 Ke Kou Ke Le Delicious and pleasant One of the best

DHL 中外运敦豪 Zhong Wai Yun Dun HaoInternational bulk delivery

with huge delivery volumeToo unwieldy. Chinese people justuse DHL

FedEx 联邦快递 Lian Bang Kuai Di Federal express delivery A translation that has caught on

China Trade Marks: Decisions

Shine New Light on Bad Faith

Filings

In 2014, the well-known US supermarket chain Whole Foods filedoppositions against two applications by a local serial pirate for the mark 365Everyday Value covering food and beverage items in classes 29 and 32.

December 28 2015, the CTMO ruled in favour of Whole Foods.

The existence of pirate's bad faith was confirmed by the CTMO based onevidence he had filed for over 150 other trade marks, many of which weredeemed "famous" in China and had been the subject of numerous prioroppositions and invalidations by the victim brand owners.

The CTMO's decisions did not address whether Whole Foods' mark was"famous" or whether it had previously been used in China. Nor did thedecisions assess whether the goods covered by the pirate marks were"similar" to the goods or services of Whole Foods.

Encouraging for legitimate brand owners!

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Trade Marks – European trade

mark directive

New Trade Mark Directive and EU Trade Mark regulations were published inDecember 2015. Member States have up to 3 years to implement. Changesinclude:

Over one third reduction in renewal fees

Seizing counterfeit goods in transit. A seizure will become possible evenin cases where the goods were not meant for the EU, unless they wouldnot be infringing in the country of their final destination. The respectiveburden of proof will be shifted towards the alleged infringer.

Office based opposition and cancellation actions

Harmonisation of practices of member states

For AU companies this will significantly reduce the cost and complexity ofEuropean trade marks

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ACL issues – what you need to know

There have been a number of recent developments regarding the ACLincluding:

Representations about warranties remain a real hotspot – Recent casesinvolving Good Guys and Harvey Norman franchisees as well as a newaction against LG highlight the importance of effective training forsalespeople who will be dealing with consumers whether at or after the timeof sale, in relation to warranties.

Nurofen products found to be false and misleading; penalties still tocome - The Federal Court has found that Reckitt Benckiser engaged inmisleading or deceptive conduct in connection with 4 products in its Nurofen"Specific Pain Relief" range.

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ACL issues – what you need to

know

National Consumer Congress focuses on ACL Review

Misleading and unconscionable conduct – a busy time for the Courts andACCC. There have been many recent developments in misleading andunconscionable conduct, including Federal Court judgements, ACCC

infringement notices and monetary penalties.

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IP ownership

IP creation

Employment agreements

Third party suppliers?

IP transactions

Identify IP

Ownership acknowledged

Project IP/Background IP?

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Allowing others to use your

trade marks

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If licensing, have control!

Always have a licensingarrangement in place

•Good practice if the business issold / transferred / assigned

•Protects againstvulnerability to cancellation –proprietor not true owner of mark

Terms should include:

•Rules on use (e.g. form of use,use of ®, etc.)

•Standards (quality control)

•Obligations on licensee to assist(e.g. giving evidence in enforcementproceedings)

•Termination obligations

Use by authorised users

=

use by you

Designs and innovation patents

There continue to be very few designs cases in Australia

Design filings are being foregone in favour of innovation patents

The latest IP review is again looking at discontinuing design protection

Innovation patents continue to come under criticism for being a litigation tool

ACIP recommendation (May 2015) for abolition of Innovation Patent system

Presently been referred to Productivity Commission as part of inquiry intoIntellectual Property – draft report due end April 2016

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Patents – Computer

Implemented Methods

Commissioner of Patents v RPL Central

Claims to a computer implemented method for assessing a userscompetency or qualifications with respect to recognised standards (i.e. forRPL)

Previously:

Patent Office – not valid

Federal Court (Middleton J) – valid

Full Federal Court unanimously found the invention not patentable

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Computerretrieves

assessmentcriteria from a

remote location

Computerprocesses criteria

and generatesrelevant questions

for user

Questions arepresented to user

User's responses(and supportingdocuments) are

received from user

Patent Litigation – Mechanical

Products

Continuing to be the growth area for patent litigation are mechanicalproducts:-

Mining and automotive products

Hardware

Heavy machinery

Manufacturing equipment and processes

Increased litigation between competitors, and also with governmentpurchasers and customers

Continuing issue that patents are not routinely considered in these areas solitigation a 'surprise'

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Copyright – Trends in Australia

There have been no significant legislative changes in this area

However, improvements in technology have spawned new cases

Audio/video file trawling software

Literary work trawling software

Copyright in 'less artistic' works

Plans, Manuals, Instructions

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Q&A

Cindy Hansen, General Counsel & Company Secretary of the soon to belaunched Qudos Bank, formerly (currently) Qantas Credit Union

Sarah Hosey, Deputy General Counsel, nbn

Thank you and global IP webinar series …

Melinda UptonPartner and Group Head – IPT Australia

T +61 2 9286 8209M +61 438 554 445E melinda.upton@dlapiper.com

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