Archive for January, 2013

Trade mark oppositions (Australia)

Thursday, January 31st, 2013

Andrew Sykes, a barrister and trade marks attorney, has started a new trade mark resource: Australian Trade Mark Opposition Law.

According to the website:

The purpose of this site is to provide quick, reliable answers to practitioners working with trade mark oppositions and appeals. Therefore the aim is to keep excessive academic discussion to a minimum and make good use of relevant and helpful citation to authorities. ….

The website is a work in progress with additional details and material dealing with further grounds and links to be added. Based on what is up already, however, Andrew has some interesting ideas.

Check it out!

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auDRP review

Tuesday, January 29th, 2013

auda is conducting a review of the auDRP – the dispute resolution policy covering domain names registered in the .au domain name space.

The auDRP was derived from the UDRP, so many of the principles worked out under the latter are equally applicable under the auDRP. Two of the main differences, however, are that under the auDRP:

  • a complainant may have rights sufficient to found a complaint “in a name”, not just a trade mark; and
  • the auDRP requires a complaint to show only registration in bad faith or use in bad faith, it is not necessary to show both bad faith requirements have been satisfied.

auda published an issues paper (pdf).

There is some interesting information about how many disputes there have been and which service providers have been providing the dispute resolution services – in recent years it has been WIPO and LEADR. There is also a breakdown of fees charged by various bodies for dispute resolution under the UDRP.

One question posed is whether auda should put the fees charged for dispute resolution up. Other issues on which submissions are invited were identified by ICANN in Annex 2 to its Final Issues Report (pdf) in 2011 on the UDRP. They include:

Policy/Process Issue

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Description

Safe Harbors

Policy should include clear safe harbors, such as to protect free speech and fair use or other non-commercial rights of registrants

Appeals

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No appeals of process in policy itself– two options appeal of decision or trial de novo

Establish an internal appeals process to ensure implementation of fair trial requirements

Statute of Limitations

There should be an express time limitation for claims brought under the policy

Reverse Domain Name Hijacking/
Uniform Procedures for Transfers

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A finding of reverse domain name hijacking is rarely found, and panelists should be encouraged to make this finding when appropriate

No specified timeframe for implementing transfers

Business Constituency

Delays often experienced in implementation of decisions by Registrars

Loser Pays Nothing

Losing Respondent should pay filing fees and attorney’s fees

However, I am coming to this late: submissions, if any, are supposed to be in by 31 January 2013.

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Kim Dotcom

Tuesday, January 22nd, 2013

TVNZ has a video report on the launch of Kim Dotcom’s Mega 2.0 on the anniversary of that raid.

The report includes Clive Elliott‘s view on the copyright significance of the encryption arrangements. Unlike Dropbox et al., only the user/uploader has the encryption keys for the files they upload.

As Clive pointed out, there are already players in the user-encrypted field: e.g. SpiderOak, Wuala (which don’t come with quite the same notoriety, but do have their own challenges from a user’s point of view).

The new user encryption arrangements, however, may well not save Mega 2.0 if there is other evidence of Mega 2.0 employees inciting or being involved in infringing activity: cf. e.g. Roadshow at [101] or Kazaa.

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Raising the Bar update

Monday, January 21st, 2013

Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.

The document outlines what IP Australia is proposing to do/implement in relation to:

 

Schedule 1

 

  • preliminary search and opinion
  • search fee
  • priority date
  • other things

 

Schedule 3

 

  • filing of evidence in oppositions
  • extensions of time to file evidence
  • confidentiality
  • fees for notice of intention to defenddefence (TM oppositions) (lid dip: Andrew Sykes)
  • cooling off period for patent oppositions (not in the public interest)
  • dismissing trade mark oppositions for inadequately particularised grounds
  • document service
  • no changes to basis for adding grounds / particulars to a notice of opposition
  • no change to costs provisions

 

Schedule 4

 

  • suspension regime for patent / trade mark attorneys will be retained

 

Schedule 5

 

  • customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
  • email address will not be made mandatory

 

Schedule 6

 

  • applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
  • acceptance period after 1st report on patent application has been issued will be reduced to 12 months
  • “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
  • The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
  • Apparently, there are technical corrections that will be implemented to

Links to:

 

Public Consultation Update papers

IP Australia’s Press Release

 

 

IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyrighttrade marks and designs.

Patentology looks at the good news for SMEs and some of the things rejected, here.

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