Trade Mark ExaminationSimon Pope- Principal Trade Mark Examiner

Overview

1. Examination: - Subsumed marks

- Slogans- Series mark

2. Division

3. Addition

4. Evidence of use

5. Hearings

6. Trade Mark Bill

7. Comparative examination project

ManagerSimon Gallagher

PrincipalIngrid Bayliss

PrincipalJeanette Palliser

PrincipalSimon Pope

Senior ExaminerSteffen Gazley

Senior ExaminerClaire France

Senior ExaminerAmelia Stewart

Senior ExaminerDave Da Vanzo

ExaminerTonja Flath

ExaminerFrances Yamada

ExaminerWilliam Rodrigues

ExaminerPenny Zohrab

ExaminerPeter Bartlett

ExaminerKalone

ExaminerKath Jones

ExaminerPaul Temple

ExaminerTanya Carter

ExaminerJoanna Lee

ExaminerLou Parker

ExaminerEleanor Harkness

ExaminerRebecca James

ExaminerShannon Brown

ExaminerJo Roberts

1. Incoming correspondence (levels 1- 4)2. Abeyance3. Add class4. Amendment5. Certification marks6. Amendments7. Divisionals8. Evidence of use9. Extensions of time10. Formal objections11. Principals Queue12. Reinstatements13. Acceptance Queue14. Projects

Correspondence Queues

Quality Control

Examiner

Senior Examiner

Principal Examiners

Notice of Acceptance

Newly Independent Examiner

Compliance report

Decision Acceptance checking

Turnaround times

First Compliance report 5 days

Subsequent reports:

- Easy 25 days(Sections 5, 21-24, 31, 32)

- Hard 2 months (Sections 17, 18 and 25)

- Evidence of use 12 months

Subsumed marks

Case Law

Reemark Gmbh v OHIM – Bluenet Ltd T-22/04

Medion AG v Thompson Multimedia Sales Austria & Germany Gmbh Case C-120/04

• PUREBABY v BABY T19/2008

• ULTRA v ULTRA LAMP T10/2007

• ARCHTREO v TREO T26/2007

• BALANCE v BODY BALANCE 28/2007

Decisions before the Commissioner

The Test

Re Pianotist Co’s Application (1906) 23 RPC 774 at 777:

“You must take the two words. You must judge of them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”

Marks must be compared as a whole

Clarke v Sharp (1898)15 RPC 141 at 146

“One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.”

Idea of the mark

CPC (UK) Ltd v Keenan (1986) FSR 527

“It is relevant to have regard to what is known as the idea of the mark, that is to say the idea which is given by the mark to a person who sees it, and if the mark gives rise to a particular association, that association may be important in relation to the question of deception or confusion.”

General Principles

1. Marks are compared as a whole (Clarke v Sharp)

2. Imperfect recollection (De Cordova v Vick Chemical Co)

3. The idea of the mark (CPC (UK) Ltd v Keenan)

4. The look and sound of the mark (Pianotist)

5. Trade channels

Stichting Lodestar v Austin, Nichols & Co Inc [2008] 2 NZLR 141 (SCNZ). (WILD GEESE and WILD TURKEY)

“It is not so much the differences that matter, although of course they are relevant, but rather the similarities, whatever their form may be, that might lead to deception or confusion. Deception or confusion may arise in marks that appear to be related so that it could be thought that they denoted related products from the same source.”

Section 25 – deception/confusion

Does it ‘hang together’?

BULOVA ACCUTRON [1969] RPC 102.

Illustrative examples:

NEXT GENERATION RANGEFINDER v NEXT (electric goods)

PIRATES OF THE CARABEAN v PIRATES (clothing)

DAZZLE PLUS v DAZZLE (cleaners)

FRUIT EXPLOSION v EXPLOSION (food products)

EASY BUST v BUST (insect sprays)

SPEEDOX SUPERNOVA v SUPERNOVA (shoes)

Evidence of use

Section 18 Non-distinctive trade mark not registrable(2) The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.

Section 26 ExceptionsThe Commissioner must register trade mark A if—(b) the Commissioner or the Court, as the case may be, considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the Court or the Commissioner, makes it proper for the trade mark to be registered subject to any conditions that the Court or the Commissioner may impose.

Evidence content

Must be a Statutory Declaration or Affidavit

Exhibits

Annexure list in accordance with the practice guidelines

Do not put the evidence as part of your submissions

Section 18

Fredco (Affirmed Windsurfing Chiemsee in NZ).

The market share held by the mark; How intensive, geographically widespread and long-standing the

use of the mark has been; The amount invested by the applicant in promoting the mark; The proportion of the relevant class of persons who, because of

the mark, identify goods or services as originating from a particular undertaking;

Statements from chambers of commerce and industry or other trade and professional associations.

Key evidence

1. Date of first use in New Zealand

2. Geographical extent

3. Sales/turnover figures

4. Advertising or promotional expenditure

5. Support for goods/services

Underpinning considerations

Does evidence show use of the mark as filed?

Is the mark viewed as a trade mark?

Exhibits supporting use as filed (dilution).

Sales and advertising figures for mark as filed.

Please indicate usage in exhibits.

Tips

Spill over reputation is rarely sufficient

Do not simply file your corresponding AU evidence

Make sure evidence is in the appropriate form

Only provide evidence prior to the filing date

Keep the evidence specific

Section 18 - ‘Other Circumstances’

The following may be considered:

• use of the mark as a company name • use of the mark in a composite mark • use of the mark in respect of other goods and

services

These points above will be given due weight. They are not conclusive grounds for registration.

Section 26 – Honest Concurrent Use & Special Circumstances

Alex Pirie and Son’s Application

• The extent of use in duration, area and volume; • The degree of confusion likely between the trade marks in

question; • Whether any instances of confusion have in fact occurred; • The honesty or otherwise of the concurrent use; • The relative inconvenience that would be caused to the

respective parties if the applicant’s trade mark were registered.

These factors are used to measure the public inconvenience.

Honest Concurrent Use

1. Statement of non-confusion

2. Statement that the applicant adopted its mark honestly

3. Reasons why confusion is unlikely

4. Reasons going to relative inconvenience to the parties

5. Normal section 18 evidence

Evidence should include:

Evidence must be prior to the filing date

VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 9 TCLR 349 (HC) - (PALSONIC v PANASONIC)

“Mr Upton said that, whilst it is undoubtedly correct that the rights of the competing parties are generally determined as at the date of the application… that does not prevent the Court from looking at conduct and events after that date in dealing with the issues before it”.

New Zealand cases:

• Telecom IP Ltd v Beta Telecom Ltd 27/9/06 CIV-2004-485-2789 • Goodyear Tire and Rubber Company (T20/2002)

Section 26 - Other Special Circumstances

Covers circumstances prior to the filing date such as:

mark used and/or registered by the applicant in other markets

use of the same mark for different goods and/or services other relevant circumstances peculiar to the applicant prior use by the applicant the “sandwich mark” scenario.

“Things that minimise the risk of confusion or show hardship to the applicant”- Shanahan’s law of trade marks

Slogans

Criteria is no stricter than for standard marks

The NZ/AU comparative examination project revealed that IPONZ takes a more restrictive approach. However, the two practices are coming closer.

DISCOVER A NEW DRIVING EXPERIENCE T10/2004 Registered in AU for tyres but refused in NZ.

Examples:

ADVANCING VACCINE RESEARCH (class 5- refused)

LEADING NEW ZEALAND ONLINE (classes 9 and 38- refused)

FROM THOUGHT TO FINISH

(classes 9, 16, 35, 36, 41 and 42 accepted)

Extensions

Section 32  - Commissioner may extend time

(1) The Commissioner may, if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time, extend the time specified by these regulations for a step to be taken, except where these regulations stipulate that time must not be extended.

Extensions of time

Requests must be received before the examination deadline

Detail the genuine and exceptional reasons

X No fee

X Submissions within the deadline - no need for an extension

Cited expired but restorable marks - request an extensionX not abeyance (subject to proceedings sec 44)

X Chaser letters could delay action

Dividing an application

We divide out the compliant aspect of the application - “problem stays with the parent”.

Deadline for the child application is the same as the parent.

You cannot divide a mark out from an unacceptable series application.

Adding a class

Regulation 43 - Additional classes may be added after filing

(2) The Commissioner may allow the addition of a class if—

(a) the application for addition is made within 1 month after the application for registration is filed; and

(b) the application is accompanied by the fee prescribed for an application to register in 1 class; and

(c) the goods or services to which the additional class or classes relate are within the original specification.

Concerns will be considered when Regulations are revised.

Series Marks

Section 5:

(a) resemble each other in their material particulars; and(b) differ only in respect of—(i) statements of the goods or services for which they are, or are proposed to be, used; or(ii) statements of number, price, quality, or names of places; or(iii) other matters of a non-distinctive character that do not substantially affect the identity of the trade mark; or(iv) colour.

Leading case law

Lynson Australia Pty Ltd’s Application [1987] 9 IPR 350

“Briefly, and only in general terms, the variation between members of a series must be such that no additional element or dimension is contributed thereby to the overall identity of the marks; the “idea” of the mark must remain the same”.

Johnson and Johnson [1993] 28 IPR 167 at 169

“not all trade marks which might be deceptively similar … will constitute a series”.

Different typescript

KABOOZLE KABOOZLE KABOOZLE

BLOKART

DELPHADELPHA

Different spelling or conjoining

CENTRE-FUGUE CENTER-FUGUE

MIXCHANGER MYXCHANGER

ONELEMENT ONELAMENT

PAPERCHECK PAPERCHEQUE

CATSCAN CAT SCAN

GRAZE GRAZES

YANKEE DOODLE CANDY YANKEE DOODLE CANDIES

SONIK SONIX

PASSA PAZZA

Different punctuation / letter case

MNOP M.N.O.P M N O P

MICE M.I.C.E

HEARTACHE HeartACHE

BROZILIAN BRO-ZILIAN BRO'ZILAN

Different linking elements

on

HEART BEAT

FAX AND RELAX FAX & RELAX

SAVE FOR COUPONS SAVE 4 COUPONS

Different or additional device material

NUMBER / PRICE

FLORINA 50 Facial Tissues

FLORINA 100 Facial Tissues

FLORINA 200 Facial Tissues

FLORINA 6 FLORINA FLORINA 6 Pack

FLORINAAU $4.95

FLORINAAU $3.95

FLORINAAU $2.95

PLATFORM 4 PLATFORM 8

PLACE / QUALITY

HARDROCK CAFEMELBOURNE

HARDROCK CAFESYDNEY

HARDROCK CAFEBRISBANE

FLORINA High grade flour

FLORINA Standard flour

FLORINA Self raising flour

NON-DISTINCTIVE MATTER

FLORINA AB FLORINA XMU

FLORINA A FLORINA B

FLORINA FLORINA.COM.AU

FLORINA.COM.AU FLORINA.COM

FLORINA FLORINA

Cartoon marksApplication by Johnson and Johnson [1993] 28 IPR 167 at 169

Maori trade marks

Section 17 - Absolute grounds for not registering trade mark:

(1) The Commissioner must not register as a trade mark or part of a trade mark any matter— (c) the use or registration of which would, in the opinion of the

Commissioner, be likely to offend a significant section of the community, including Maori.

Section 177 - Advisory committee

(1) The Commissioner must appoint an advisory committee.

Maori Advisory Committee

Ms Karen Te O Kahurangi Waaka (Chair)

Mr Mauriora Kingi

Ms Tui Te Hau

Associate Professor Pare Keiha

Dr Deidre Brown

Maori Trade Marks

Quarterly meetings

Maori marks are sent to the committee unless they are covered by existing policy – e.g. KIWI marks

“Offence not mild distaste”

Meaning of word in another language does not avoid offence

Principles of “Tapu”, “Mana” and “Noa”.

Examples

KOHA (for wine)

HAKA (for wine)AORAKI (Cigarettes)KAIMATE (fertilisers)

The Hearings Office

3 staff + 4 Hearings Officers

Jenny Walden and Brian Jones

Turnaround times:

• Notices of Opposition, Revocation, Invalidity – 5 days• Correspondence -15 days• Decisions – 6 weeks

Oppositions

Regulation 75 - Time for filing notice of opposition

(1) A party who opposes an application for registration of a trade mark must file a notice of opposition with the Commissioner within 3 months after the date when acceptance of registration was first advertised.(2) The Commissioner may, if requested, extend the deadline for filing a notice of opposition—

(a) by up to 1 month, without the applicant's consent; and

(b) by up to 2 months, with the applicant's consent.(3) The Commissioner must not extend the deadline after the deadline has expired.

Oppositions

Section 48 - Applicant's counter-statement

(1) An applicant to whom a notice of opposition has been sent must, within the prescribed time, send to the Commissioner a counter-statement of the grounds on which the applicant relies for his or her application.(2) If an applicant does not send a counter-statement to the Commissioner within the prescribed time (Regulation 79- 2 months), the applicant is deemed to have abandoned the application.

BENEFIVE T08/2008 - refused extension request after deadline to file counterstatement.

Oppositions

Regulation 32 Commissioner may extend time

(1) The Commissioner may, if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time, extend the time specified by these regulations for a step to be taken, except where these regulations stipulate that time must not be extended.

TipRegulation 28 - the Hearings Office will halt proceedings if there is consent from both sides (up to 6 months).

Revocation for non-use

96 Owner or licensee may oppose revocation by filing counter-statement and evidence of use

(1) The owner or licensee of a trade mark that is the subject of an application for revocation for non-use may oppose the application by filing the following documents within 2 months after the owner or licensee received the application:(a) a counter-statement that complies with regulation ; and(b) evidence of— (i) the use of the mark; or (ii) special circumstances of the kind referred to in section of the Act.

BENEFIX T14/2008 - allowed extension request under Reg. 32 after deadline to file counterstatement and evidence of use.

Invalidity

X-1R (stylised and device)T32/2007

The applicant’s evidence must establish a prima facie case to overcome the ‘presumption of registrability’ of the subject mark even if the invalidity action is undefended.

Tips

Critical deadlines - Notice of Opposition, CounterstatementMake sure you file extension request before deadline.

We track all correspondence by the IP numberMake sure you use IP number in all subject lines and letter headings.

Use the Hearings Office email: hearings@iponz.govt.nzDo not use the normal IPONZ email address for proceedings

Online correspondenceAttach all correspondence as ‘Hearings Office Correspondence’.

Hearing Statistics

January 2009 February 2009

Oppositions 13 14

Revocations 11 15

Invalidity 1 0

Decisions Issued

3 2

Hearings Office- General matters

Decisions of the Commissioner - new search engine

Opposition list on the website

Revocation guidelines are being prepared

Formal rejection

Trade Marks (International Treaties and Enforcement) Amendment Bill 2008

Accession to:

The Madrid Protocol - similar provisions to AU and SG Nice Agreement - 3rd schedule marks compulsory

reclassification Singapore Treaty.

Main Changes

Improved border protection measures – Customs NZ

The National Enforcement Unit (NEU) will have investigative and enforcement powers

Removes provisions for recording licences

Authorised user may bring infringement proceedings (determined by license agreement)

Parallel import provision strengthened.

Comparative examination project

Stage one A comparison of 200 trade mark applications which were examined in 2005 by both offices to determine similarities and differences in outcomes, and a review of each offices procedural manuals.

Stage two Investigated the potential for harmonisation of trade mark examination outcomes through the concurrent examination of about 300 trade mark applications.

Next StageBoth offices are considering future directions for the project including, the possibility of each office recognising prior decisions previously made in the other office (where practical).

IPONZ – Future direction

Paperless office – evidence online AU / NZ comparative examination project IPONZ Practice Guidelines review Courts are now referring to the Practice Guidelines -

Purple decision Animation marks Proposed practice guidelines Quality control.

TM OFFICE CONTACTS

Ingrid Bayliss: Ingrid.Bayliss@iponz.govt.nz DDI: +64 4 978 7596

Jeanette Palliser: Jeanette.Palliser@iponz.govt.nz DDI: +64 4 978 3649

Simon Pope: Simon.Pope@iponz.govt.nz DDI: +64 4 978 3639