It appears Ms Jolie used the genetic test patented by Myriad Genetics before opting for surgery.  For some, the financial cost of having the patented test performed is out of reach, so it is understandable why the public see ‘gene patents’ as an obstacle to providing cheap and accessible healthcare.  But are ‘gene patents’ really an obstacle?  Lost in the discussions (and court cases) is the importance of patents in the process of bringing life-saving technologies from the lab bench to the market.

Would there be test for breast and ovarian cancers without gene patents?

The driver for writing this article actually began late one evening when I was driving and listening to late night talkback on the radio.  The topic of discussion was ‘gene patenting’.  A panel was discussing the recent decision of the Federal Court in Cancer Voices Australia v Myriad Genetics Inc confirming the patentability of gene sequences in Australia.  The discussion then turned to the merits of having ‘gene patents’.  At some point, Rebecca Gilsenan, a panellist and principal lawyer representing Cancer Voices Australia stated that, in her opinion, biological matter should not be patentable.  Ms Gilsenan also stated that public funding should not be used to support privatisation of healthcare.  The remaining panellists seemed agreeable to these points.

To me, Ms Gilsenan’s comments were alarming and unrealistic.  Having been an academic researcher with a background in molecular biology and vaccine development, but now being a patent attorney, I am one of few who have a unique perspective on the issue.  During my time as post doctoral researcher in the US working at the University of Maryland, I helped develop vaccines (comprising gene sequences) targeting diseases prominent in underdeveloped countries, particularly in children.  Patenting was given equal if not greater importance to publishing in scientific journals at the University.  Quite simply, it was understood that there was a risk that the vaccines would not be manufactured, let alone reach the intended patients, if not protected by patents.

The pool of public funding for Australian universities and institutes is constantly decreasing.  Combined with a growing emphasis on producing commercially relevant research outcomes, Australian universities and institutes are increasingly relying on the patent system to provide alternate revenue streams.  However, most Australian universities and institutes are not geared to undertake the entire commercialisation process in bringing new life-saving technologies to market.  The only ‘way out’ is then to seek partnerships with industry, or to license or sell intellectual property.  One could therefore argue that the ‘privatisation’ of research outcomes from publicly funded healthcare is inevitable.  In any case, public healthcare costs and accessibility are secondary and subsequent issues to the commercialisation process which, in the health and life sciences sectors, is highly reliant on patents.

In the Myriad case, it is sometimes forgotten that Myriad’s patented test is a result of years of research and expenditure of more than US $500 million (see here and here).  It is doubtful that the test would exist had the company not made these investments.  Patenting the test provided Myriad with some guarantee that there would be a return on its investments.  Surely, for Australian businesses or Universities investing into research on life saving medicines and therapies, guaranteeing a return on investment is a good thing.

Ms Jolie’s op-ed article in the New York Times has garnered much attention, and has emphasised the significant cost (~US$ 3,000) to US citizens for having Myriad’s patented test performed.  In the US, under a privatised healthcare system, the cost is largely covered insurance provided that you can afford the insurance premiums.  In Australia, under a government subsidised healthcare system, the test costs taxpayers up to about A$1,800 for those in families with a history of breast cancer.  Patients not having this history can pay for their own testing at a cost of approximately A$2,200, a portion of which may be recoverable with private health insurance.

A recent report by the Grattan Institute highlights the point that drug pricing remains a contentious issue in Australia, and that Australians are currently paying too much for prescription drugs.  However, the cost of drugs and, for that matter, the cost of Myriad’s test for breast and ovarian cancers, are completely separate issues to whether drugs, diagnostic tests and gene sequences are eligible for patent protection.

Why is gene patenting in the headlines?

While the eligibility of gene sequences as patentable subject matter will shortly be addressed by the US Supreme Court, the Australian Federal Court has determined isolated gene sequences to be patentable.  Interestingly, claims of the patent directed to the method of screening for breast and ovarian cancers were not challenged in Australia.  So, even if the genes responsible for breast and ovarian cancers where not patent eligible, Myriad could still enforce its rights to the patented screening test in Australia.

The reality is that, as eloquently expressed by my colleague, Dr Mark Summerfield, it is the moral, ethical and social concerns about gene patenting which are the drivers for litigation.  The courts have avoided dealing with these issues and have focussed on the technical aspects of the law surrounding the validity of Myriad’s patent.

Patents for Genes per se Are Getting Harder To Obtain

Recent amendments to Australia’s patent laws will increase the hurdle for obtaining patents for isolated gene sequences.  Amongst other things, the amendments increase:

• the threshold test for inventive step, and
• the level of disclosure required in a patent specification to support the full scope of a claim.

In reality, the question of whether isolated genes per se are patentable under these new laws will be addressed on a case by case basis, as it was before.  For an unmodified, isolated human gene for which its sequence has been previously published, the ‘invention’ will reside in the use of the gene in a method or process rather than the actual sequence itself.  For novel, synthetic genes having a sequence not normally found in nature, one would expect the sequence itself to be considered inventive and therefore patentable.

Clearly, further amending the laws to exclude genes per se from patentability will have a significant impact on the patentability of ‘man-made’ genes.

What will happen if isolated genes are excluded from patent protection?

Given the complexities of patents and the intense emotions behind the gene patenting debate, it is unlikely that amending Australia’s patent laws to exclude genes per se from being patent eligible will address moral, ethical and social concerns without detriment to academia and industry and, consequently, the public.

I am probably not alone in thinking that the current gene patenting debate should be taken out of the courts.  If anything, the Myriad court cases perhaps reflect the failure of Government authorities and the global patent profession in effectively communicating to the public the benefits of protecting and leveraging intellectual property to bring life-saving technologies to market.

Given that the gene patenting debate really centres on the exploitation of monopoly rights to genes, rather than the eligibility of genes per se as patentable subject matter, there needs to be a seismic shift in discussions.  In my personal view, greater emphasis needs to be placed on alternative mechanisms for providing accessible healthcare which don’t involve ‘fixing’ an allegedly ‘broken’ patent system. In my experience, the ‘fixes’ proposed for the patent system by those opposed to the patenting of genes will only result in more misery, less accessibility to drugs and fewer healthcare solutions for those who really need them.

by Chris Vindurampulle

As a consequence, many companies look to pursue patent protection in China to safeguard their position, and provide greater enforcement options against third parties.

While there is often considerable interest in obtaining Chinese patent rights, few are aware of the intricacies of enforcement of those rights.  Chinese patent litigation has many differences compared to similar actions in Australia and elsewhere.

There are important implications not readily apparent to those better acquainted with the principles and features of patent litigation in Australia, and more broadly civil litigation in Australia and in other common law countries.

Administrative enforcement problematic for patent owners

Administrative enforcement of rights is a notable feature of the intellectual property landscape in China.  Pragmatically, it is difficult to succeed with administrative enforcement of patent rights, at least in isolation of a related civil procedure.  The relevant administrative authorities are simply not well suited to considering issues that invariably arise in patent infringement cases.  Accordingly, the only realistic option for patent enforcement involves use of civil litigation in the People’s Courts.

Patent litigation in the Chinese court system

Patent litigation necessarily originates in one of the Intermediate People’s Courts.  Not all Intermediate People’s Courts are qualified to hear patent matters; however, those in larger cities usually are qualified.  Matters are typically heard by a panel of three judges, consisting of a senior chief judge and two junior associate judges.  They may be assisted by a technical advisor fluent in the relevant technical issues (akin to the court Appointed Expert in some other jurisdictions).  Foreign patent litigants will typically select Intermediate People’s Courts in Beijing or Shanghai, but can face lengthy delays before their case is scheduled.  Other Intermediate People’s Courts may be selected to avoid delay, though should be researched to ensure that they have a favourable reputation in competently dealing with patent cases.

Evidentiary challenges in Chinese patent litigation

Unlike Australia, there is no process of ‘discovery’ in China. This has a range of important implications for litigation strategy, which are discussed below in further detail.  While the lack of discovery does serve to bypass this expensive and time-consuming exercise, and it can also significantly frustrate the objectives of a litigant in a number of circumstances.  As a simple example, a litigant must provide evidence that shows sales volume by the infringer.  Unless an infringer publishes earnings reports as a publicly traded company, the plaintiff may have considerable difficulties in proving reliable sales volumes.  The courts may in certain circumstances be willing to order evidence production by the infringer, but this is far from assured.  As can be imagined, proving infringement of process claims can face significant challenges.

Primacy of documentary evidence in Chinese patent litigation

While a range of evidence may be presented in China, when compared to Australian courts, documentary and physical evidence tends to be given considerably more weight than witness testimony.  Furthermore, Chinese courts have particularly stringent requirements for authenticating documentary and physical evidence.  Pains must be taken to ensure that any document or physical evidence presented to the court is duly notarized to demonstrate authenticity.  This applies to items as self-evident as purchase receipts for an infringing product. Documents originating outside of China are subject to yet further requirements, and must be translated into Chinese, notarized, and also legalized before being presented to the court.

Expert evidence often accorded little probative value

Expert evidence, which often assumes prime importance in patent litigation in Australia, is often considered to be of little probative value in China, and evidence which may be compelling in other jurisdictions may prove to be of little help to a litigant in China.  Expert evidence may be accorded greater weight if originating from a government agency, or an expert agreed upon by both parties and approved by the court beforehand.

Pre-trial preparation of case when discovery is not available

As there is no discovery in China, prospective patent litigants are advised to collect as much evidence as possible before seeking enforcement.  For every piece of evidence collected, one is advised to strictly observe the locally applicable evidentiary rules, referred to above, including any necessary notarization, legalization, and translation requirements.  Experienced private investigation agencies can be invaluable to collect relevant evidence, depending on circumstances.

Exchange of evidence is conducted rather than discovery

Before pre-trial hearings take place, an evidence exchange hearing is scheduled, at which time the parties present evidence intended to be used at trial.  The evidence exchange is also an opportunity for parties to challenge each other’s evidence.  In the absence of discovery, the People’s Courts are empowered to order production of evidence as required, which marks a significant procedural milestone.

Private ex-parte communication with the Court

A striking difference with judicial process in Australia is the freedom to conduct ex parte communications with the People’s Court.  Chinese courts will often in fact initiate ex parte communications in a bid to resolve a case through mediation or settlement between the parties. While it may be an advantage to have a direct line of communications with the court, the ultimate implications of such communications (and those of the other party’s communications) can be difficult to assess due to lack of transparency, when compared with a common law jurisdiction.

Available defences to patent infringement

The primary defence to patent infringement in China is non-infringement, or practice of prior art.  Unlike Australia, patent invalidity per se is strictly speaking not a defence.  Notably, invalidity issues are not concurrently explored in a parallel cross-claim before the court.  Instead, in China, validity of patents must be separately challenged through re-examination before the Chinese Patent Office.

Although the People’s Courts will hear appeals of any adverse decisions by the Chinese Patent Office, the People’s Courts will not adjudicate issues of validity in the first instance.  Moreover, People’s Courts are unlikely to stay litigation proceedings until the asserted patent is declared invalid by the Chinese Patent Office.  On a related point, part of the pre-trial investigation should also include an assessment of the strength of the alleged party’s patent portfolio in China, as retaliatory counteroffensive patent litigation is a possibility.

Remedies to infringement

A finding of patent infringement will generally entitle a patentee to injunctive relief and perhaps monetary damages.  Although preliminary injunctive relief is available upon a showing of irreparable harm, such relief is normally not granted absent a showing of clear acts of infringement.  Also, it can be difficult to hold an infringer to an order of injunction, as there is no contempt of court proceedings to hold parties to account.

Although a patentee may be entitled to monetary relief, the lack of discovery can make it difficult for a patentee to collect the evidence necessary to suggest a suitable figure.  A patentee may ask the court to award statutory damages, but the maximum amount available may fall considerably short of that which might be awarded in other jurisdictions.

Conclusions

Civil litigation in China will be unfamiliar territory for those more familiar with the operation of Australian courts and other common law jurisdictions.  Accordingly, Australian owners of Chinese patent rights are advised to carefully weigh the risks and benefits of proceeding with Chinese patent litigation, and seek professional advice on IP enforcement strategies and commercial options.

By David Perkins

Some large companies and patent trolls are expected to benefit from the new system, but SMEs may be better off obtaining national patents in a few European countries of particular interest.

What is a European Unitary Patent?

• A European Patent with Unitary Effect is a single European patent granted by the European Patent Office that will cover nearly all countries of the European Union.
• Spain and Italy have opted out of the system. A constitutional challenge to the Unitary Patent Regulation and the Unified Patent Court Agreement by those countries has now been dismissed by the Court of Justice for the EU.
• Many of the other 25 member states of the European Union are expected to ratify the Agreement before the end of 2013 to enable the system to take effect sometime in 2014.

How do I obtain a European Unitary Patent?

Within a month from grant of a European patent you must request that the European patent is granted with unitary effect, and file a full translation of the patent into another language of an EU state.

Does the European Unitary Patent replace the current European patent  system?

• The European Unitary Patent system will operate alongside the current system. If you do not want your European patent to have unitary effect, you must validate the patent in required countries within three months from grant by current validation procedures.
• Validation of a European patent will still be required in non-EU countries, eg Switzerland, and in Italy and Spain.
• Dual protection will not be possible via a European Unitary Patent and a national patent in a country that is part of the Unitary Patent system.
• National patents in the EU states will still be available as an alternative.

How will European Unitary Patents be enforced?

• Both European Unitary Patents and European Patents will be litigated exclusively in the new Unified Patents Court.
• The central division of the court will be located in Paris, with sections in London (for Phamaceutical and Biotech cases) and in Munich (for mechanical and electrical cases).
• There will also be local and regional divisions in some countries.
• Owners of national patents obtained by validation of a European patent can opt out of the Unified Patents Court for up to 7 years.

Will I save costs by obtaining a European Unitary Patent?

• Some cost savings may be achieved by reduction in validation fees after grant, and in renewal fees.
• If you have previously validated your European patents in 5 or more countries, there should be a cost saving, because the renewal fees are expected to be based on the equivalent of renewal fees in 5 European countries.
• Many applicants for European patents currently validate in 3-5 countries, and in such cases there will be little or no cost saving.

Are there any other disadvantages in the new system?

• A European Unitary Patent can be revoked for all countries by either post-grant opposition at the European Patent Office, or by revocation at the Unified Patents Court.
• Litigation of European Unitary Patents will be very uncertain until the Unified Patents Court has tried several cases and established its own case law.

Who will benefit most from the new system?

• Large companies that currently obtain patents in a large number of European countries should achieve cost savings of up to 80%
• Non-practising entities (NPEs) and patent assertion companies, otherwise known as patent trolls, should benefit by having a bigger stick to wield over possible infringers
• SMEs are unlikely to benefit because of the uncertainty and expected high cost of patent litigation at the Unified Patents Court
• SMEs should probably still consider obtaining national patents in selected European countries where they have a particular interest.

By Roger Green

As at 23 April 2013, Google will no longer restrict an advertiser’s use of a competitor’s trade mark(s) as keywords in Australia.  The updated policy is neatly summarised here.

(2) Can I use my competitor’s trade mark as a keyword?

Google and other search engine providers’ policies currently permit using a competitor’s trade mark as a keyword (and likewise, allows the trade mark within the ad text) if the seller/distributor offers legitimately-marked goods, even if no association exists between the retailer and the trade mark owner.

In the context of trade mark infringement, passing off and misleading or deceptive conduct, one must consider the operation of Google and others’ search engines, as well as users’ knowledge and expectations of how they work.

The High Court has already decided that Google itself will not be liable for misleading or deceptive conduct when its search engine displays in its sponsored links the misleading representations of advertisers (see case summary here).  However, that is not to say that an advertiser may freely use a competitor’s trade mark as a keyword.

No two situations are the same.  Appropriate use of a competitor’s trade mark as a keyword can only be determined by examining a number of factors, including a particular search engine’s adopted search criteria, whether the displayed results are organic or sponsored, the text of generated advertisements and the ordinary and reasonable user’s understanding of the resulting outcomes.

Liability hinges upon whether use of a competitor’s trade mark as a keyword constitutes ‘use as a trade mark’.  Google’s revised AdWords policy states that one goal is to ‘provide…users with the most relevant information, whether from search results or advertisements’, thus providing ‘more choice’.  Along those lines, one argument is that trade mark keywords identify users with an interest in particular types of products and the search engine merely discloses possibilities.  The keywords are not serving as a badge of origin and they are in that manner not used as a trade mark.

On the other hand, if in other circumstances the resulting advertisement text incorporated the trade mark, for example, it is arguable whether the keyword differentiated one trader from another.  As it stands, the issue in the context of trade mark infringement has not yet been fully tested in the courts and it would be advisable to seek legal advice prior to purchasing a competitor’s trade mark as a keyword.

(3) What are my options if a competitor is using my trade mark as a keyword?

Under the revised policy, Google will still investigate and may restrict the use of a trade mark within ad text.  Google is likely to allow the trade mark use if it is acceptable use as described below.

Should a competitor use your trade mark as a keyword, it would depend on the particular circumstances (examples outlined above) whether a trade mark owner had a strong case for trade mark infringement.

Regarding misleading or deceptive conduct, liability will attach if resulting banners, advertisements or sponsored links are not sufficiently distinguishable from organic results.  This will be increasingly difficult to prove as users become more sophisticated and as a result now expect that the various types of search results will appear on the screen.  If the owner’s trade marks do appear within the advertisements, it then becomes a question of whether they suggest any association with the competitor, or if there is a likelihood of confusion.  Acceptable use of a competitor’s trade mark includes nominative use (using the mark to refer to the owner or its goods/services), using the mark in a descriptive sense and comparative advertising.

Watermark is happy to help you navigate these uncertain issues.  Please feel free to drop us a line.

By Ward Olivete

IP Australia signed a Memorandum of Understanding for continuing cooperation with the State Intellectual Property Office of China on 25 February 2013 potentially make it more straight forward for Australian innovators to obtain Chinese patent protection for their inventions.  The continuing cooperation should provide more consistent patent examination standards between each country.  This will hopefully result in the patent grant process being facilitated in one country as a result of the grant of a patent in the other country reducing overall costs.

Increased cooperation between IP Australia and SIPO underlines the importance of the major reforms of Australian IP law coming into force under the Intellectual Property Laws Amendment (Raising the Bar) Act on 15 April 2013.  One of the key objectives of these reforms is to raise the quality of patents granted in Australia such that the inventive step standard required for patents granted in this country will be more closely aligned with international standards.  This will provide innovators with more certainty when applying for patent protection, both here in Australia and in other jurisdictions.  Philip Noonan, the Director General of IP Australia has stated:  “Australia’s patentability tests will be similar to large IP offices, including China …..This should make it more straightforward for Australian technology exporters to secure a patent in China”..  Furthermore, Mr Noonan has stated that “Australia cooperates with intellectual property offices around the world.  We strive to not only foster innovation but also to streamline work practices between countries, so as to reduce costs for innovators”.

In the discussions with Mr Tian Lipu, the Commissioner of SIPO, a range of issues important to both countries were raised, including patent quality management and work sharing.  There included  discussions in relation to WIPO-CASE, an online patent work sharing program created by the World Intellectual Property Organisation (WIPO) and the Vancouver Group comprising the IP offices of Australia, Canada and the United Kingdom.  The IP offices of these countries are of similar size and development and have a similar legal heritage.  Patent examiners from each Vancouver Group therefore routinely consider search and examination reports issued by other Group members.  An aim of this Group is to investigate ways to reduce unnecessary duplication of work, and to contribute to a more effective approach to work sharing.  This Group together with WIPO have therefore come up with the WIPO-CASE pilot system to make it easier to access results of search and examination from other offices.  The Centralized Access to Search and Examination system (CASE) provides a digital library of search and examination reports that can be shared by participating IP Offices.

Also discussed was SIPO’s proposed cloud patent examination solution (CPES) which similarly aims to simplifying procedures for patent applicants and improving the efficiency of the offices when dealing with the same patent application.  This was considered to also provide a very useful basis for cooperation between different IP Offices.

By Michael Chin Quan

Less time to prepare evidence

In an effort to reduce the overall length of the patent opposition process, the Patent Office is taking steps to make it more difficult to obtain extensions of time to file evidence.

As of 15 April a more rigorous test for the grant of an extension of time will be introduced. Under the new regulations, the party requesting an extension of time will have to show that ‘it has made all reasonable efforts to comply with all the relevant filing requirements’ and ‘despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so’. Alternatively, an ‘exceptional circumstance’ must exist to justify the extension of time.

In contrast to the European patent opposition process, evidence in Australian patent oppositions usually takes the form of declarations from technical experts. The purpose of expert evidence is to attest to the state of the art, the ‘common general knowledge’ and the teaching of prior art references. Under current practice the Patent Office will rarely consider any information that does not form part of expert evidence. Extension of time requests during opposition are, for the most part, a necessity associated with the difficulty in identifying a suitable expert and subsequently procuring the expert’s opinion. The time required to complete these steps is often outside the control of an applicant, an opponent or their respective legal representatives.

Presently, it is not known how the tightening of extension of time requests will operate in practice. However, given the reliance on expert evidence, it is likely that both applicant and opponent will need to move far more quickly in order to formulate their respective cases. There may well be situations where a party is unable to adequately assemble evidence due to a lack of time.

Opposition timelines

An opposition notice may be filed at any time up to three months after the acceptance of a patent is advertised. Subsequent to filing the notice, the opponent has three months to file its statement of grounds. Then, within a further three months expert evidence in support must be filed.

Once the complete evidence in support has been filed, the applicant then has three months to file its evidence in answer. Subsequently the opponent may file evidence in reply. The period for this is currently three months, but will be reduced to two months after 15 April. These evidence portions of the opposition process have routinely been the subject of numerous extension of time requests and can often result in the overall opposition process taking several years.

For oppositions already underway or where an opposition notice is filed before 15 April 2013 the current law in respect of extension of time requests will apply, but only to the evidentiary round currently in play or initiated before 15 April. For evidentiary rounds initiated after 15 April the new more rigorous test will apply.

Reasons for delay

Delays during opposition are most commonly related to the identification of an expert in terms of relevant expertise, freedom from conflicts and availability in respect of other commitments, particularly work commitments.

However, in a positive development, as of April 15 Australian inventive step provisions are also changing. Under the current law the ‘common general knowledge’ is restricted to that in Australia at the priority date of the application. Under the new provisions ‘common general knowledge’ will be global. As such, there will be no apparent disadvantage in utilising an overseas expert, with the result that overseas entities with patent interests in Australia will be able to call upon a larger pool of potential experts. It is recommended that overseas IP managers responsible for Australian patent rights keep this in mind and perhaps engage in early identification of experts, should they consider opposing the grant of a patent or be the owner of a patent that may itself be opposed.

Recommendations

For Opponents

Prospective opponents are advised to take steps well before a patent application is accepted so as to ascertain the likelihood of the patent being granted with potentially troublesome claims. In the case of an Australian national phase application, savvy operators might already be aware of the application from the international application publication, and may be watching the Australian prosecution. If it appears that troublesome claims will be allowed, and opposition is being considered, immediate steps should be taken to identify an expert.

For Applicants

While it is of course impractical for every applicant to have an expert waiting in the wings on the off chance that the grant of their patent may be opposed, it is often the case that no action is taken in respect of expert selection until after the opponent’s statement of grounds is filed. This may be based on the notion that the details of the opponent’s case might influence expert selection. However, in most cases, taking steps to identify and engage an expert immediately after an opposition notice is received will likely be advantageous in terms of potential time saved.

Further, good intellectual asset practice should alert an entity to those patents in its portfolio that might be subject to opposition, whether that is based on opposition of a corresponding application in another jurisdiction, or on competitive analysis and/or commercial knowledge. Such proactive practice can be advantageous in buying additional time to engage an expert, should an opposition actually occur.

By Dr Grant Jacobsen

In the ever expanding globalisation of trade, commerce, information/knowledge transfer and freer movement of people, it is no longer enough to simply make or sell a product cheaper than rival products.  Competing on the lowest price is a race to the bottom for most businesses, and anyone can do that.

What is it about your business, product or service offering that would make customers want it over your competition’s equivalent?  Nowadays, innovation is recognised as being the big differentiator.   A business that is not innovative will not thrive in today’s climate of freer trade, commoditisation and globalisation.

The same philosophy is true of national economies.  Innovation transcends cultural differences, politics and religion.  It is a playing field upon which every nation can play and win. We tend to focus on innovation at a product or company level, and sometimes we even step back and view the beneficial effects of innovation on an industry sector – increased efficiency or competitiveness.  Take a step further back and we see the game changing effect innovation has  on a nation.  Now, innovation is the driver of social and national prosperity.  It is the differentiator between nations.  If a nation is not developing its technology and business offerings, it is going backwards.  For example, countries that do not have vast reserves of natural resources or a significant manufacturing base have to rely on technological innovation and services.  Countries with reserves of coal, oil, gas and minerals have to innovate, or adopt innovation to reach deeper or offshore reserves, or to make lower value reserves economic to recover.  Manufacturing bases have to be more efficient and cost effective against countries with a lower employment cost base.

Most governments have typically been slow to respond fully to the challenge that supporting innovation presents.  It’s not something governments traditionally understand well or are comfortable with.  After all, supporting innovation on a national scale generally involves financially supporting the business community rather than receiving tax revenue.   That reticence is perhaps understandable when the short term concern of winning office again can often overshadow a long term national strategy.  Even governments need to innovate to overcome entrenched thinking.

There are many, many examples of technological innovation being a game changer for nations:

• the rapid transition in Great Britain from hand manufacturing to machines during the industrial revolution that followed improvements in water power and harnessing steam power,
• the rise of steam railways in the early 1800s allowed mass imports and perishable goods to travel inland within a few hours,
• the mobility of people to travel (Thomas Cook started his travel empire by organising a ladies’ temperance outing to the coast by steam train),
• in the mid twentieth century, innovation in jet engines, rocket engines and flight control technology obtained from Germany by the USA at the end of WWII enabled US aircraft and space industries, strongly supported by US government, to become dominant in the world,
• ore recently, we have seen nations in Asia come to the fore in high tech innovation, particularly in mobile communications and computing.

Wise governments nurture innovation by providing tangible incentives to business and industry.  Grant and tax incentive programs provide financial encouragement.  For example, the Australian federal government has a tax incentive program to help offset some of the costs of doing R&D. It is a broad-based entitlement program open to all sizes of firms in all sectors.  Focused grant programs are also available in Australia at federal and at state level.

R&D and innovation go hand in hand, and intellectual assets are created at the same time, either as registrable intellectual property rights or as un-registrable rights, such as know-how, trade secrets, confidential information or copyright.  To have sustainable game changing innovation, those rights should be harnessed.   In aiming to ensure ‘bang for their buck’ and create long term economic benefit to their national economy, governments are often wise enough to require or encourage formal intellectual property (IP) protection for local and overseas markets.   Authorised use overseas of IP rights, such as through licensing, or an overseas market protected by a patent, trade mark or design right, can generate valuable and significant revenue return.  Exporting (protected) knowledge as well as, or instead of tangible products generates major returns and benefits to a national economy.

Do not forget that trading overseas often requires ‘freedom to operate’ checks to be carried out.  A new market may not simply be open to a new product or service offering without risking infringing the rights of others.  Part of the innovation process involves checking whether that freedom to operate exists.

Innovation is the driver of benefit to society.  Innovation can deliver new products and services, provide smarter ways of doing business, help create employment and new businesses (even new industries), and importantly, generate a net financial return to an economy for a sustainable future for all.  Innovation is the great enabler for social and economic benefit.

By Mark Pullen

The Opponent owned the trade mark TASTY TREATS BIG FOOT (logo) below in respect of lollipops and confectionery. The Hearing Officer stated that the words ‘tasty treats’ are relatively small in comparison to the dominant element ‘big foot’. The Applicant sought registration for the word mark BIG HAND in respect of lollipops and confectionery.

Material on the public record demonstrated that the goods on which the trade marks are used were more-or-less the same – that is, lollipops with soda powder/sherbet for dipping.  Each package contained six (6) lollipops (and dipping packets) either in the shape of feet or hands.

In assessing whether concurrent use of the trade marks would likely deceive or cause confusion for consumers, the Hearing Officer considered the ‘fair and normal’ or notional use of the plain, unadorned BIG HAND trade mark.  The Hearing Officer acknowledged that what might be considered ‘fair and normal’ use may change considerably when evidence is adduced of the actual or intended use of the trade mark.  The Delegate then concluded that notional use of BIG HAND extended to include the representation of the hand device as shown on the packaging since the device did not substantially affect the identity of the mark.

The Applicant argued that the Opponent’s registered mark had a secondary meaning, namely the ape-like Bigfoot (or Sasquatch) of North American lore.  However, the Hearing Officer reasoned that with ‘big foot’ being descriptive of the goods, as well as the juxtaposition of the word ‘foot’ underneath ‘big’, it was unlikely for consumers to only think of Sasquatch when remembering the Opponent’s trade mark.

On the other hand (pun intended), ‘big hand’ is similarly descriptive of the goods and on the packaging the term has a juxtaposition comparable to the ‘big foot’ get-up.  In the circumstances, the Hearing Officer concluded that the Applicant coined the trade mark with the Opponent’s trade mark in mind and that actual use of the mark is imitative.  Therefore, the mark is likely to deceive or confuse and the registration should be refused.

Lessons learned

On first impression, it seems here that the Hearing Officer may have granted the Opponent a lollipop monopoly (a lolliopoly?) in BIG [insert body part here].  Could this registration now successfully prevent registration for BIG NOSE, BIG EAR, BIG EYE and BIG BUM confectioneries?  Such may be the case if the Opponent gains a substantial reputation in ‘big foot’ lollipops and future oppositions were decided based on section 60 (reputation) grounds.

The decision demonstrates the importance of packaging design and use of a house trade mark when an earlier-priority owner has obtained a registration in respect of a somewhat descriptive mark.

By Ward Olivete

The Opponent submitted that TOSSERS EXTRA DRY was deceptively similar to its prior TOOHEYS EXTRA DRY registered mark,  as they shared  the letters: TO–E-S, plus the phrase ‘EXTRA DRY’.

The case highlights some interesting arguments, such as the Opponent’s counsel submitting that the marks are similar given the shared letters. The Opponent’s counsel submitted the following text to show that first and last letters of each word play an important part in the visual cognitive process, and asserting that TOSSERS and TOOHEYS may be visually confused on this basis, particularly as they shared the phrase ‘extra dry’:

“The rset can be a toatl mses and you can sitll raed it wouthit porbelm. This is bcuseae we do not raed ervey lteter by itslef but the wrod as a wlohe.”

Despite these arguments, the Opponent failed in this case.

The Opponent’s case for similarity based on the letters TO-E- S  was (as eloquently put by the Hearings Officer) ‘unremarkable’, and the Hearings Officer commented that anyone who had “played Scrabble or hangman will know that T, O, S, E and R are among the most commonly used letters in the English language”.

Vital to the Hearing Officer’s decision was the meaning of the words TOSSERS and TOOHEYS. The former was a colloquial term with a very strong meaning, and the latter had no such connotation.

The arguments were also dismissed on the basis of phonetics, as the double O in Tooheys was deemed to create a totally different sound that then ‘o’ in Tossers. Similarly, the word suffixes were distinguishable, given that the TOSSERS suffix adopted an “ur” sound, in contrast with the TOOHEYS suffix which adopted an “ee” sound.

The reputation and contrary to law opposition grounds also failed, on the basis that the dissimilarity between the marks made it unlikely that deception or confusion would occur.

While not a ground-breaking decision, this case certainly highlights that common prefix and suffixes are not, in themselves, sufficient to render two marks deceptively similar.  The case is also very amusing in numerous parts.

In the meantime, it appears that TOOHEYS EXTRA DRY and TOSSERS EXTRA DRY will coexist in the marketplace.

From the images I could find, the TOSSERS branding looks quite different from the TOOHEYS branding:

vs

However, even with my ‘plain word’ goggles on, the word ‘TOSSERS’ stands out and really punches you in the face (at least compared to the more mundane ‘TOOHEYS’).  In other words, I agree with the Hearings Officer.  TOSSERS and TOOHEYS are unlikely to be confused, from the mere meaning of the former.

Apparently, the word TOSSERS was selected to appeal to a more youthful market.  (One can only imagine the advertisements that might follow.)

Given the media attention this ‘brand war’ has received, I myself am keen to see this rather risque (and humorous) brand, and the marketing campaigns for it, in the marketplace – so will be looking out for the TOSSERS beer in the local bottle-o.

By Roanne De Menezes

Well, a lot, if you are referring to the name of a person behind a brand or organisation.

A strong personality can certainly influence, whether that be a leader within an organisation, or a celebrity behind a brand.

I recently pondered this question while flicking through the March 2013 issue of Harpers Bazaar. I’ve often thought of the editors and key staff of these high-end magazines as part of the magazine’s brand, at least holistically speaking.

However, Harpers Bazaar has had a sort of ‘makeover’ – at least of staff. The Harpers Bazaar March 2013 issue was overseen by relatively recently appointed editor, Kellie Hush. Hush is known for her strong editorial skills and fashion sense. The March 2013 issue was also influenced by global fashion director, Carine Roitfeld (formerly of rival magazine Vogue), whose fans admire her for her strong personality, edgy fashion style and creative flair. The combination of Hush and Roitfeld was obvious – particularly in the substantial creativity poured into this month’s Harpers Bazaar. The edition was released in 15 different covers designed by fashion icons. Contributors included uber-famous fashion figures such as Christian Louboutin and Giorgio Armani. Certainly, some of the Roitfeld je ne sais quoi was channelled into the Harpers Bazaar March 2013 edition, which included Roitfeld’s fashion feature debut.

So there you have it – the combination of a strong local editor, renowned global fashion director, and the creative input of iconic fashion figures made for a strong issue for this ‘fashion bible’, which enhanced the Harpers Bazaar brand (at least for me).

Cate Blanchett’s role as co-artistic director and CEO of Sydney Theatre Company is a solid example of celebrity and leadership mingling to influence a local organisation. Blanchett, whose excellent performance skills have won her global accolades, has certainly contributed to STC as artistic co-director with her husband, Andrew Upton. Blanchett and Upton apparently had very strong business skills, and were involved in STC’s projects such as the ‘Greening of the Wharf’.  Further, Blanchett’s passion for the arts and theatre, and her ‘Hollywood magic’, has also thrust STC in the limelight during her tenure. Apparently, the Blanchett-Upton era has resulted in larger audiences and prominent sponsors for STC, positively affecting the organisation’s bottom line.

Similarly, strong key people within an organisation will affect that company, from its policies, to its products, to its PR. Key personnel are therefore integral to a company’s direction, and even to external perceptions of that organisation.

Take for instance former CEO of Apple, Steve Jobs, who was synonymous with Apple. Described as a ‘visionary’ and ‘dreamer’ by some, his extraordinary input as CEO resulted in the unprecedented innovation that Apple and its products are renowned for. Apple’s lofty aspirations were also, to a large part, attributed to Jobs’ personal aspirations for the company.

Big personalities can help or hinder.  There is often a strong interaction between a ‘brand’ or a ‘company’, and the people attached to it. People with strong personalities will very tangibly shape an organisation, by transferring their persona and ideas into it. Their influence will be real. Companies and brand managers should therefore think carefully before appointing their leaders and sponsors, with a view to selecting people whose personalities are consistent with their organisations’ vision and values.

All I’m saying is that there’s a lot in a name – and key personnel and celebrities can certainly play a vital part in the holistic value of a brand.

by Roanne De Menezes