ipwars.com

Lea Lewin looks at why Virgin lost its opposition (in the Office) to Qantas‘ attempt to register

ALL DAY, EVERY DAY, LOW FARES

in the face of Virgin’s ‘trade mark’ for:

EVERY DAY LOW FARES

Unfortunately, Virgin’s ‘trade mark’ doesn’t exactly leap off its website (or the evidence it filed).

Given Qantas is on the verge of registration (and apparently using its ‘mark’ through Jetstar), I can see why Virgin would want one too. Duets looks at some reasons from a US perspective and some other things to think about.

But, surely the real question here, is how can any trade mark system allow anyone to register either (purely descriptive) ‘mark’?

Bennett J has dismissed the Bavarian Beer (trade) association’s opposition to the Dutch company, Bavaria NV’s application to register the Bavarian Beer trade mark.

Her Honour found:

182 In summary:

•  
  • The trade mark is inherently adapted to distinguish Bavaria NV’s goods from those of other traders and does so distinguish.
  • If the trade mark were only inherently adapted to distinguish Bavaria NV’s goods to some extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(5) of the Act.
  • If the trade mark were not inherently adapted to distinguish Bavaria NV’s goods to any extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(6) of the Act.
  • I am not satisfied that the trade mark connotes that Bavaria NV’s product comes from Bavaria or that it has certain characteristics attributable to a Bavarian origin. I am not satisfied that the use of the trade mark would be likely to deceive or cause confusion or that it would be contrary to law.
  • GENUINE BAVARIAN BEER and BAYERISCHES BEER are geographical indications for the purposes of ss 6 and 61 of the Act. Neither of these geographical indications equate with “Bavaria”. Section 61 does not refer to a sign that is substantially the same as or deceptively similar to a geographical indication. The trade mark does not contain a sign that is a geographical indication for the purposes of the Act.
  • Even if the trade mark did contain a sign that is a geographical indication for the purposes of the Act, Bavaria NV would succeed in raising the defence under s 61(2)(c) of the Act.
  • There is no discretion under s 55 of the Act to refuse to register a trade mark if none of the grounds of opposition are made out.

Professor Davison looks at the implications for (non-wine) GIs here.

I’ll just add that the Bavarians had argued s 55 of the Trade Marks Act conferred a discretion to block an application independently of the grounds of opposition. Hence the last bullet point above.

Of course, the last time I went to Europe, the Netherlands did seem to be quite some distance from Bavaria. I’m not sure what the status of the war (between the 2 sides) in Germany is.

Bennett J’s decision in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428

Tech IP is hosting 2 seminars in both Melbourne and Sydney: one on each of the above topics.

Speakers include:

Dr Stephen Barker (from IP Australia) and Ben Fitzpatrick on patents

Michael Arblaster and Siobhan Ryan on trade marks.

Dates: 10/12 March for patents and 17/19 March for trade marks.

Fee = $528 (although I’m not sure if that is per seminar).

Details here.

Lilly has a patent in Australia for ”difluro nucleoside antivirals”.  In January 2000, it was granted an extension of term for the patent until March 2009.  In March 2008, Interpharma brought proceedings to have the extension of term revoked.

One of the grounds for Interpharma’s action was that Lilly had engaged in misleading or deceptive conduct contrary to the Trade Practices Act 1974 to secure the extension of term.  (For those interested in the technicalities, the application for an extension was said to claim that the substance claimed in claims 1 to 4 of the patent was a substance listed on the Australian Register of Therapeutic Goods – see Patents Act s 70.)

Sundberg J granted summary judge against this claim on the grounds that, even if it were misleading or deceptive, Lilly’s application to and communications with the Commissioner were not conduct in “trade or commerce”.  Lilly was of course engaging in trade and commerce, but what needed to be shown was that the representations were made in the course of a trading or commercial relationship between Lilly and the Commissioner.

Lilly also obtained summary judgment against Interpharma’s remaining claims on the basis of Interpharma’s delay.

The extension was granted in 2000 and by s 75 (and the regulations) anyone wishing to challenge must file an opposition within 3 months.

Interpharma did not come into existence until 2 years after the extension of term was granted. Sundberg J was particularly critical of Interpharma’s delay after it became aware of the extension of term – a period of 7 months including 5 months after obtaining the complete file from the Commissioner and the institution of proceedings.  However, his Honour’s reasoning would appear to be much broader:

40 I agree with Lilly that once the opposition period has expired and an extension is granted, the patentee and third parties are prima facie entitled to proceed on the basis of the extension. Admittedly, one must take into account that the applicant was not incorporated until nearly two years after the extension. Nevertheless, the public interest to which I have referred is relevant notwithstanding that. As a matter of fairness in the administration of the patent system, it would be extraordinary if extensions could be challenged some eight years after grant. Even taking into account the applicant’s date of incorporation, it would still be extraordinary that a challenge could be made six years after that.

The case is Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1283.

On application by Darrell Lea, the Registrar suspended Darrell Lea’s oppositions to the registration of some purple trade mark applications by Cadbury purportedly pursuant to reg. 5.16.

Finkelstein J has now found that the Registrar does not have power to suspend oppositions indefinitely.

Given my involvement in matters purple, let me just refer you to Nicholas Weston’s consideration.

Darrell Lea Chocolate Shops Pty Ltd v Cadbury Limited [2008] ATMO 6 (15 January 2008)

Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126 (1 August 2008)