Trade Marks
Collective Trade Marks
A new bill has been introduced to Parliament to allow collective trade mark registrations. This will bring NZ into line with a number of jurisdictions, including Australia.
Duplicate Registrations and Removal Actions for Non-Use
The allowability of duplicate registrations and the removal for non-use provisions were judicially considered by the Privy Council in Cussons (NZ) Pty Limited v. Unilever Plc & Unilever (NZ) Limited. The Privy Council held that nothing in the Trade Marks Act 1953 ("the Act") prevented the duplicate registration of a trade mark by the same proprietor. They noted that duplicate registrations are normal in the case where a proprietor has a mark registered in Part B of the Register and subsequently wishes to register the mark in Part A or where a broadening of the specification of goods for which the mark is previously registered is required.
With regard to removal of a registration for non-use, the Privy Council held that in order to remove a trade mark from the Register under s.35(1) of the Act there must have been a period of five years during the currency of the registration under attack in which there was no bona fide use of the mark. Periods of non-use under a different but identical registration cannot count.
Comparative Advertising
Comparative advertising under the Act as amended in 1994, was judicially considered in an interlocutory case, PC Direct Ltd v. Best Buy Ltd. The High Court held that the protection in s.9(2) was not available when a competitor used a mark in relation to the goods for which it is registered. However, the judge was not prepared to grant an interlocutory injunction, saying that there was no risk of confusion and stating that the public interest in effective competition and freedom of speech could be affected.
Patents
Swiss-style Claims for Second Medical Indications
A recent theme in NZ patent practice, following a world-wide trend, has been the liberalisation of the prohibition on patenting methods of medical treatment for humans. In March 1996 the Commissioner of Patents published a practice note stating that claims for methods of medical treatment would be allowed except where the treatment relates to surgery or the prevention or treatment of disease. This was a significant broadening of the previous practice.
This was followed in January 1997 by a further practice note which stated that Swiss style claims would now be permitted to claim a second or subsequent medical use of a pharmaceutical, but claims to the treatment of humans would continue to be disallowed. Patent applications containing Swiss style claims pending at the time of the practice note would be reviewed and where appropriate, accepted. Applications filed subsequently would no longer be rejected during examination solely for the reason of containing claims in Swiss form.
In June 1997, the Pharmaceutical Management Agency Limited ("Pharmac"), the government body that administers the subsidisation of pharmaceuticals, sought judicial review of the Commissioner's decision to allow Swiss style claims, saying that the decision was illegal. Pharmac seeks orders to rescind the practice note and revoke any patents granted as a result in the change of practice.
Currently all patent applications filed containing Swiss style claims are being stayed pending the outcome of the Judicial Review proceedings. The Commissioner of Patents and Patent Office are not defending the proceedings and accept that the High Court is an appropriate forum in which to establish the validity or otherwise of such claims. If Pharmac's action is upheld, legislative change will be necessary if the Government considers Swiss style claims for second medical indications to be appropriate for the NZ environment.
Accrual of Cause of Action in Patent Infringement Actions
In Pacific Coilcoaters Limited & Ors v. Interpress Associates Limited & Ors and Baseline Industries Limited & Anor v. Interpress Associates Limited, the Court of Appeal considered the effect of the Statute of Limitations on infringements occurring between acceptance of the application and grant of the patent.
The majority held that a cause of action can arise between acceptance and grant of the patent despite s.20(4) of the Patents Act which provides that after acceptance of a patent application the applicant shall have rights as if they were the patentee except the right to sue for infringement until the patent is actually granted. The majority believed that s.20(4) merely provides a procedural bar. The Court recognised that this may lead to an injustice under the Statute of Limitations if the patent is not granted within 6 years of the infringements occurring, but Henry J and Richardson P noted biter that an applicant could file proceedings pre-grant and the court could use its discretion and stay proceedings until the patent was sealed.
Sara Holder is a barrister and solicitor admitted in New Zealand, now working at Rouse & Co International's office in Jakarta.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
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