It is our intention that this e-newsletter will provide useful news and information for our clients and associates. Please feel free to send us your feedback, particularly suggestions for topics you would like to see addressed in future issues to trademarksenews@sprusons.com.au

Sincerely yours,


Spruson&Ferguson Trade Marks Team

Trade Marks Overseas:
South Pacific

Getting to know: Dawn Logan

IP Australia recently clarified practice in relation to the retailing and/or wholesaling of utilities including the retailing and/or wholesaling of electricity, energy, gas supply, water supply and telecommunications network access. Traditionally the aforementioned services were claimed in Class 35 with general retailing and wholesaling services. However recently the World Intellectual Property Organisation (WIPO) advised that these types of claims do not fall under the definition of retailing and wholesaling services in class 35, namely, “the bringing together of a variety of goods enabling customers to conveniently view and purchase those goods, excluding the transport thereof”. In light of this advice, the provision of electricity, energy, gas supply and water supply will be classified in Class 39 and the provision of telecommunications network access in Class 38. Retrospective changes will not be made to existing trade mark registrations in class 35, although pending applications will be required to transfer the services claimed to the relevant class.

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As at 1 January 2007 the European Union has been enlarged to 27 member states to include Bulgaria and Romania. This means that new Community Trade Mark (CTM) applications filed on or after 1 January 2007 will cover all 27 member states and all existing applications and registrations filed before 1 January 2007 will automatically cover the new member states with an effective date of protection of 1 January 2007. In addition, CTM applications filed between 1 July 2006 and 31 December 2006 may be subject to opposition proceedings based on earlier rights in Bulgaria and Romania. CTMs in existence at the time of enlargement may not be declared invalid on distinctiveness grounds or on the basis of prior rights acquired in a new member state merely because of the accession of the new member state. However, use of a CTM can be prevented if an earlier right was applied for, or acquired in good faith in the new member state before the 1 January 2007 even if the date of acquisition of the right is after the date of the CTM. This is important insofar as a bona fide CTM owner may find that use of their mark is curtailed in the new member states.

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In Attorney General (Quebec) v. St-Germain Transport (1994) Inc., the Provincial Court of Quebec reviewed the impact of the ‘Charter of the French Language’ on an unregistered trademark. St-Germain Transport was charged with contravening the Charter, since its trucks were lettered with the expression ‘COAST TO COAST SERVICES’ in English only. The Charter requires that every inscription on a product, on its container or packaging or on a document or object supplied with the product be in French. An exception to the mandatory use of French exists where the inscription is a recognised trade mark within the meaning of the Canadian Trade Marks Act, unless the French version has been registered. St-Germain was held to be exempt from using a French version of ‘COAST TO COAST SERVICES’ after it was able to demonstrate that despite its unregistered status, ‘COAST TO COAST SERVICES’ had been used as a recognised trade mark in advertising its services, namely, “intra provincial and international transportation of goods” since the 1970's.

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In order to bring its national practice in line with that of the Office of Harmonization for the Internal Market (OHIM) (the body responsible for the registration of the Community Trade Mark in the European Union), from October 2007, the United Kingdom’s Trade Mark registry will no longer raise earlier registered or pending marks as objections to new applications. Although the UK Examiner will continue to conduct searches of the UK Trade Mark Register and an applicant will be advised of relevant marks revealed by the search, the UK Registry will no longer make a formal objection to the application on the basis of the existence of the earlier marks. Instead, the proprietors of marks revealed by a particular search will be advised of the application in order to afford them an opportunity to file an opposition to registration of the application.

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The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office recently upheld the examining attorney’s refusal to register the trademark 3-O’S on the basis that it was merely descriptive of “automobile parts, namely, car wheel rims.” The Examiner argued that the mark 3-O’S immediately conveyed a specific characteristic of car wheel rims, namely, their diameter measured in inches. The applicant disagreed and asserted that the expression 3-O’S could connote three circles or three “ohs,” which could refer to dragsters or cars with three wheels. In addition, the applicant contended that the addition of the hyphen converted the term “30’s” into a non-descriptive term. However the TTAB found that neither the slight variation in spelling nor the addition of the hyphen was sufficient to change the term’s descriptive nature. The TTAB concluded that the mark, when used on car wheel rims, would likely be pronounced as “three ohs” and immediately signify to a prospective purchaser that the rims were 30 inches in diameter. Accordingly, the refusal to register on the basis of mere descriptiveness was affirmed.

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The Swiss Federal Board of Appeal of the Department of Economy recently refused to register ‘Raclette’ as a protected geographical indication of origin (GI) for a type of cheese produced in the Swiss Canton of Valais. Although Raclette is not a geographical name (it is derived from the French verb racler, or ‘scrape’), the evidence before the Board of Appeal could not prove that Raclette was commonly known and used as the name for the Raclette cheese from Valais. Accordingly, the Board of Appeal concluded that Raclette was a generic term and could not be registered as a protected GI.

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The Intellectual Property Office of New Zealand (IPONZ) has reviewed its practice guidelines in relation to the translation of foreign words following the European Court of Justice’s (ECJ) judgment in Matratzen Concord AG v Hukla Germany SA. In Matratzen, the ECJ held that there are no longer grounds for refusing registration of trade marks on the basis that they are descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade or by the relevant average consumer of the goods/services in question. IPONZ requires that Applicants advise the Office of the translation of any foreign words in a mark before it can be accepted. If no translation is provided and research during the examination process indicates that a word in a mark has a pertinent meaning in a foreign language, the Examiner will raise a concern on absolute and/or relative grounds advising the applicant of the translation and requesting confirmation of same. We continue to monitor changes to IPONZ’s Practice Guidelines.

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The owner of US trade mark registration 3155702, American Wholesale Wine & Spirits, Inc. of Illinois has succeeded in registering a ‘sensory touch’ or ‘tactile’ trade mark for wines and use on bottles, jars and flasks. The mark is described on the United States Patent and Trademark Office register as consisting of “a velvet textured covering on the surface of a bottle of wine’. Tactile trade marks are part of a new breed of non-traditional trade marks which also include smell, sound and hologram trade marks.

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Spruson&Ferguson recently participated in the Trading Ideas Symposium, an initiative of the Australian government and Asia-Pacific Economic Cooperation (APEC), which was held in Sydney from 28-30 January 2007.

The Symposium attracted IP heavyweights including keynote speakers Alison Brimelow, President-Elect, European Patent Office (EPO), Jack Chang, Senior Intellectual Property Counsel – Asia, General Electric (China) Co Ltd, Jon W. Dudas, Undersecretary of Commerce for Intellectual Property and Director of the USPTO and Francis Gurry, Deputy Director General, WIPO.

One of the major issues addressed was the challenge to meet the increasing demand for IP services and how this could be managed in the Asia Pacific region and at a global level.

Rob McInnes, Principal of Spruson&Ferguson Lawyers Commercialisation team, spoke at the conference. Annette Freeman, Spruson & Ferguson Trade Mark Principal, attended as a representative of International Trademark Association (INTA), an associate sponsor of the conference. Other Spruson&Ferguson Principals who attended the Symposium included Tracey Berger, Philip Heuzenroeder, Lee Pippard and Ryan Curnick.

The Symposium covered areas relevant to the health of the global economy, such as the harmonisation of IP laws and processes across borders to reduce red tape, piracy and counterfeiting in the Asia-Pacific region and the enforcement of IP rights.

The growing volume of IP applications, resultant backlogs and the need for greater harmonization were universal themes in the discussions.

President elect of the EPO Alison Brimelow likened the rise of patent pendency to global warming and melting of the ice-caps. USPTO Director Jon Dudas also referred to the system overheating: “Right now we have an 18 million patent backlog throughout the world. One of the things we want to make certain of is that different nations and different offices are able to share their work together.”

Presentations from the Symposium can be accessed and downloaded from the Symposium website www.tradingideas.org

For more information please contact Lance Scott, Senior Associate, Spruson&Ferguson Trade Marks Team: lance.scott@sprusons.com.au

• Simplify existing provisions to make it clear that a divisional application may only be filed for the same trade mark in respect of some of the goods and/or services in the pending parent application.
• The parent application may itself be a divisional of an earlier trade mark application.
• Where there is a chain of divisional applications, the filing date of any divisional will be the filing date of the earliest application in the chain.
  

• Applications for registration of a series of trade marks (ie two or more trade marks with only minor and obvious variations) may be filed as a multi-class application.
• Permit linking of pending series applications for the same trade marks filed on the same day in different classes so that they may be dealt with as one application.
• Provision to enable trade mark owners who own series trade marks registered prior to commencement to link their trade marks in certain circumstances so that they may be dealt with as if they were one registration for a series.

• Requests for minor amendments, such as corrections of typographical errors or minor changes to personal details, need not be in writing.
• Allow amendments to correct a clerical error or obvious mistake if the Registrar believes that it is fair and reasonable to do so, but the amendment will need to be advertised and another party may oppose the granting of the request.

• The fee for filing a trade mark application electronically will increase from AU$120 to AU$160 per class if the relevant goods and/or services are not selected from an official pick list. For all paper based applications, the filing fee will increase from AU$150 to AU$180 per class.
• The fee for filing a series of trade marks will increase from AU$200 to AU$270 per class (if filed electronically using a pick list), to AU$310 per class (if filed electronically but without using a pick list) and to AU$330 per class (for all paper based applications).
• The fee for filing a non-use removal application will increase from AU$150 to AU$250.
• The fee for filing an opposition to a non-use removal application will decrease from AU$250 to AU$150.
• The registration fee for a trade mark will decrease from AU$300 to AU$250 per class.
• There are also increases in the official scale of costs awarded to a successful party in an opposition.

We are aware that the companies sending such notices include Shanghai Huibai Internet Service Co Ltd, Shanghai Squil Network Information & Technology Company Ltd, Hangzhou Chinasource Internet Service Co Ltd and Huyi Global.

China is unique in that it has an Internet keyword and wireless keyword registration system. An Internet Keyword allows third parties to conduct a search of a browser by establishing a corresponding relationship between the Internet Keyword and a world wide web address. The third party must register a domain name (eg. <abc.cn>) and a keyword, then direct the registered keyword “abc” to the domain name <abc.cn>. The keyword and the domain name must directly correspond. The value of the keyword system seems doubtful and such a registration system has not been adopted in other countries.

If you have any concerns relating to the above mentioned notices or have any question relating to IP rights in China, please do not hesitate to contact Tracey Berger, Principal, Spruson&Ferguson Trade Marks Team: tracey.berger@sprusons.com.au

Occasionally in trade mark matters confidential information has to be submitted. It can take the form of commercially sensitive sales figures or confidential contractual terms. But what happens to that information once it has been submitted to the Trade Marks Office? The difficult problem of how to treat and preserve evidence that is confidential was considered in a recent decision of the Trade Marks Office in Levi Strauss & Co v Levi Menaker & Era Menaker.

Levi and Era Menaker had filed a trade mark application for LEVI in relation to alcoholic beverages, including wine. One of the issues was whether a settlement agreement concluded in respect of the trade mark LEVI WINE applied in the case of the LEVI trade mark. The Hearings Officer conceded that it was not clear whether the parties had waived the confidentiality of the settlement agreement for the purposes of the hearing at the Trade Marks Office. He noted that a hearing at the Trade Marks Office is by its nature a public forum. Since both parties had argued the matter in a public forum they could be taken to have waived confidentiality in the agreement. Nevertheless, the Hearings Officer attempted to limit his discussion of the agreement to matters which an uninformed bystander could gather from the public record.

In the end the Hearings Officer decided in favour of Levi Strauss on another ground, namely that Levi and Era Menaker had no intention to use the LEVI trade mark for wine and other alcoholic beverages. Accordingly, Levi and Era Menaker's trade mark application for LEVI was refused.

The decision suggests that care should be taken not only in submitting commercially sensitive information but also in how it is referred to at any hearing. The Trade Marks Office is aware of the importance of this issue: a recent amendment to the Trade Marks Act 1995 provides for information to be held at the Trade Marks Office confidentially. The Trade Marks Office is currently preparing regulations governing the procedures to be put in place for confidential information.

For more information please contact Deborah Jackson, Associate, Spruson&Ferguson Trade Marks Team: deborah.jackson@sprusons.com.au

Trade Mark Principal Annette Freeman recently visited the Singapore office of our associated Asian firm, Ella Cheong Spruson & Ferguson (ECSF), and spent some interesting and valuable time meeting with the Trade Marks Team. The firm is based in the Gateway Building at 52 Beach Road (a few blocks from the famous colonial Raffles Hotel) and enjoys a commanding view over the city state. The office presently has around 100 professional and support staff, plus about 10 people in their associated law firm, Gateway Law Corporation, headed by Max Ng. Annette was given a warm welcome by Kevin Wong, Kiran Dharsan, Angeline Raj and Mary Thomas, as well as the extensive Trade Marks Support team, including lunch at the Singapore version of “the local pub”.

For more information about ECSF visit www.ecsf-asia.com

The Intellectual Property Office of Singapore (IPOS) granted its first sound mark registration to the mobile phone giant Nokia, for its distinctive "Nokia Tune" ring tone. Singapore’s first sound mark is the result of amendments to the Trade Marks Act which came into force on 1 July 2004. The Trade Marks (Amendment) Act 2004 removed the requirement that a trade mark must be visually perceptible in order to be registrable, thus allowing IP owners to register non-conventional marks that are capable of being represented graphically.

To graphically represent a sound mark, the sound must be depicted by way of musical notation. If required, the Examiner may request a recording of the sound during the course of examination.

This registration reflects Singapore's proactive approach towards recognition and protection of the non-conventional trade marks of IP owners.

For more information please contact Kevin Wong, Trade Marks Team, Ella Cheong Spruson & Ferguson: kjwong@ecsf-asia.com

This was an opposition brought by Mark Richard Jeffery and Guy Anthony (the Opponents), owners of the registered mark "JEFFERY-WEST" in Class 25, against Nautical Concept Pte Ltd (the Applicant) who applied to register "jWEST" as a trade mark in Class 25 for similar goods, i.e. shoes/footwear.

Bad faith

One of the main grounds for opposing the mark "jWEST" was bad faith. This stemmed from the fact that the Applicant had past dealings with the Opponents by virtue of having sold and distributed the Opponents’ shoes in Singapore. The Opponents felt that the Applicant had “copied the essential or prominent features of their mark”.

In deciding whether bad faith arose, the Registrar applied the test of “the honest reasonable man”. She felt that an honest reasonable man would have asked the Opponents’ consent to use the mark "jWEST", which would have showed that the Applicant acted in good faith.

Confusing similarity of the marks

The Opponents argued that the respective marks "JEFFERY-WEST" and "jWEST" (which appears to be an abbreviation of the former) were confusingly similar. Further, the goods claimed in both applications were very similar, namely, shoes/footwear. In its defence, the Applicant claimed that as it was selling only women's shoes, unlike the Opponents who were only selling men’s shoes (a claim which was denied by the Opponents), there was unlikely to be confusion in the marketplace.

Nonetheless, the Registrar’s overall assessment was that the marks were visually, phonetically and conceptually more similar than dissimilar and it did not matter that the parties were selling shoes to different markets as both of their applications covered men’s and women’s footwear. Taking into account the Singaporean customer and the fact that the marks and goods were similar, the Registrar concluded that, if the opposed mark did proceeded to registration, it was likely that the relevant shoe consumers would be confused.

Conclusion

Consequently, the Opponents' opposition succeeded. Subsequent to these proceedings, the Applicant appealed to the High Court against the Registrar's decision. At the time of writing of this article, the appeal hearing had completed and the issuance of the High Court's decision is now much awaited.

For more information please contact Kevin Wong, Trade Marks Team, Ella Cheong Spruson & Ferguson: kjwong@ecsf-asia.com