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Trade Mark Examination

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1 Trade Mark Examination
Simon Pope- Principal Trade Mark Examiner

2 Overview Examination: - Subsumed marks - Slogans - Series mark
Division Addition Evidence of use Hearings Trade Mark Bill Comparative examination project


4 Correspondence Queues
Incoming correspondence (levels 1- 4) Abeyance Add class Amendment Certification marks Amendments Divisionals Evidence of use Extensions of time Formal objections Principals Queue Reinstatements Acceptance Queue Projects

5 Quality Control Examiner Compliance report Notice of Acceptance
Acceptance checking Decision Senior Examiner Principal Examiners Newly Independent Examiner IPONZ is working towards becoming a paperless office. Non-independent examiners work is checked by their Senior If Seniors are not sure they consult with their fellow Seniors Failing that, Seniors get a Principal’s recommendation Acceptance checking meetings Newly independent examiners’ work, and preliminary search and advice mail, gets checked by Principals Weekly team meetings- where updates and issues discussed, along with recent hearings office and case law decisions Client feedback (callbase system) Manager oversees operation and any contentious matters Business unit performance measures (hearings decisions overturning an examination decision)

6 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 months

7 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 Reemark Gesellschaft fur Markenkooperation mbH v OHIM – Bluenet Ltd T-22/04 where it was held that the mark WESTLIFE was confusingly similar to the mark WEST covering the same or similar goods. Medion AG v Thompson Multimedia Sales Austria & Germany GMbH Case C-120/04, where it was held that the mark THOMPSON LIFE was confusingly similar to the mark LIFE (electronic leisure devices).

8 Decisions before the Commissioner

9 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.”

10 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.”

11 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.”

12 General Principles Marks are compared as a whole (Clarke v Sharp)
Imperfect recollection (De Cordova v Vick Chemical Co) The idea of the mark (CPC (UK) Ltd v Keenan) The look and sound of the mark (Pianotist) Trade channels 1. Imperfect recollection - De Cordova v Vick Chemical Co “In most persons, the eye is not an accurate recorder of visual details and marks are remembered rather by general impression or by some significant detail than by photographic recollection of the whole.” 2. Not a side by side comparison - Sandow Ltd’s Application “The question is not whether if a person is looking at two trade marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed trade mark in the absence of the other trade mark, and in view of his general recollection on what the nature of the other trade mark, would be liable to be deceived and think that the trade mark before him is the same as the other, of which he has a general recollection.”

13 Section 25 – deception/confusion
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.” Unsuccessful appeal by ANCI against Court of Appeal (‘CA’) decision concerning scope of appeal under s 27(6) Trade Marks Act 1953 (TMA); SL sought to register trade mark ‘Wild Geese’ and intended to market Irish whiskey under that mark in New Zealand; Assistant Commissioner of Trade Marks held that SL could register its ‘Wild Geese’ trade mark despite objection of ANCI that mark was deceptive or too similar to its own ‘Wild Turkey’ trade mark; High Court (‘HC’) allowed appeal by ANCI and refused registration; CA allowed SL's further appeal and granted application for registration; issue whether HC on appeal under s 27(6) TMA must defer to Commissioner's assessment if conclusion he or she reached was one on which reasonable minds may differ Held: general appeal under s 27(6) TMA requires HC to come to its own view on the merits; weight to be given to Commissioner's decision is a matter of judgment

14 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) Can the additional elements of the composite mark be seen as conditioning the subsumed mark such that the marks would appear related, or does the composite mark ‘hang together’ in its own right and create a different impression (BULOVA ACCUTRON trade mark case [1969] RPC 102).

15 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 Exceptions The 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.

16 Evidence content Exhibits
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

17 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.

18 Key evidence Date of first use in New Zealand Geographical extent
Sales/turnover figures Advertising or promotional expenditure 5. Support for goods/services

19 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. Question: Can an Applicant’s evidence of use be used to support registration of more than one mark in a series application? Answer: This will depend on the nature of the marks in the series application and the evidence showing how the mark is actually used in trade. For example, if the application is for a series of marks consisting of a plain word mark and for a stylised version of that mark, and the evidence only shows use of the stylised version of the mark, the Office will probably only grant registration for the stylised form of the mark. The notion being that the Applicant cannot have acquired distinctiveness for versions of the mark it has not used, and that would be covered by the scope of the plain word mark. By contrast, if the evidence shows use of the plain word mark then this would generally support registration of other stylised versions of the mark in the series application which are not deemed to differ in their material particulars. The reason being that the plain word mark provides protection for all forms of the word/s regardless of how they are presented. The registration of the stylised versions of the mark would therefore be justified in view of the evidence provided.

20 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

21 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.

22 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.

23 Honest Concurrent Use Evidence should include:
Statement of non-confusion Statement that the applicant adopted its mark honestly Reasons why confusion is unlikely Reasons going to relative inconvenience to the parties Normal section 18 evidence

24 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 Goodyear Tire and Rubber Company (T20/2002)

25 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

26 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. DISCOVER A NEW DRIVING EXPERIENCE: Deemed descriptive and non-distinctive. Other traders may wish to use similar phrase in relation to their own similar goods.

27 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)

28 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.

29 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 extension X not abeyance (subject to proceedings sec 44) X Chaser letters could delay action

30 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.

31 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.

32 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.

33 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”.


35 Different spelling or conjoining

36 Different punctuation / letter case

37 Different linking elements
FAX AND RELAX FAX & RELAX SAVE FOR COUPONS SAVE 4 COUPONS Different or additional device material on HEART BEAT

50 Facial Tissues 100 Facial Tissues 200 Facial Tissues 6 FLORINA 6 Pack AU $4.95 AU $3.95 AU $2.95 PLATFORM 4 PLATFORM 8

High grade flour Standard flour Self raising flour


41 Cartoon marks Application by Johnson and Johnson [1993] 28 IPR 167 at 169

42 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.

43 Maori Advisory Committee
Ms Karen Te O Kahurangi Waaka (Chair) Mr Mauriora Kingi Ms Tui Te Hau Associate Professor Pare Keiha Dr Deidre Brown Ms Karen Te O Kahurangi Waaka (Chair of the Committee) Member of the Māori Trade Marks Focus Group established by the Ministry of Commerce in 1995 Mr Mauriora Kingi Director of Kaupapa Māori at the Rotorua District Council 10 years experience in local government Ms Tui Te Hau Incubator Manager for Creative HQ (previously the New Zealand Trade Commissioner to Melbourne) Associate Professor Pare Keiha Dean of the Faculty of Māori Development AUT Board member: Foundation for Research Science and Technology (FRST), Energy Efficiency and Conservation Authority (EECA), and the Waerenga-a-Hika Trust Board Director: Port of Gisborne Ltd and Gisborne City Holdings Ltd Dr Deidre Brown Senior Lecturer in Architecture at the University of Auckland

44 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”.

45 Examples KOHA (for wine) HAKA (for wine) AORAKI (Cigarettes)
KAIMATE (fertilisers) AORAKI = Mount Cook KAI MATE = Dead Food

46 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

47 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. Caution. Be careful when requesting a 2 month extension with the owner’s consent. If you do not get consent from the owner, and you are outside the 1 month window for an extension without consent, you will not get an extension. Request a halt of proceedings if you are concerned (Regulation 28- up to 6 months)

48 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 months), the applicant is deemed to have abandoned the application. BENEFIVE T08/ refused extension request after deadline to file counterstatement.

49 Oppositions Regulation 32 Commissioner may extend time Tip
(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. Tip Regulation 28 - the Hearings Office will halt proceedings if there is consent from both sides (up to 6 months).

50 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/ allowed extension request under Reg. 32 after deadline to file counterstatement and evidence of use.

51 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. Background: HK distributor had registered mark in NZ. Applicant had exclusive Asia/Pacific distributorship agreement (covering NZ). Applicant argued its AU registration, and that its mark was well known in NZ, such that confusion or deception was likely. Held: The evidence filed by the applicant did not establish a prima facie case on the balance of probabilities. It was dated after the filing date of the invalidity action and did not clearly show who was promoting the mark. This was important as both parties were selling the product in NZ.

52 Tips Critical deadlines - Notice of Opposition, Counterstatement
Make sure you file extension request before deadline. We track all correspondence by the IP number Make sure you use IP number in all subject lines and letter headings. Use the Hearings Office Do not use the normal IPONZ address for proceedings Online correspondence Attach all correspondence as ‘Hearings Office Correspondence’.


54 Hearing Statistics January 2009 February 2009 Oppositions 13 14
Revocations 11 15 Invalidity 1 Decisions Issued 3 2

55 Hearings Office- General matters
Decisions of the Commissioner - new search engine Opposition list on the website Revocation guidelines are being prepared Formal rejection

56 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. The intention behind the Singapore Treaty is to simplify and harmonise international trade mark registration procedures. Only minimal changes to New Zealand law are required in order to bring New Zealand into line with this Treaty.

57 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.

58 Comparative examination project
Stage one A comparison of 200 trade mark applications which were examined in 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 Stage Both 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).

59 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.

60 TM OFFICE CONTACTS Ingrid Bayliss: Jeanette Palliser: Simon Pope:
DDI: Jeanette Palliser: DDI: Simon Pope: DDI: Call centre – IPONZ frontline customer service staff. They can help you navigate our website, update your user accounts and let you know who at IPONZ is responsible for your case file. s – subject line information should include the IP number.

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