October 2010

Coke, Pepsi and the shape of the bottle

Newspaper reports that Coca Cola has sued Pepsico and its Australian licensee, Schweppes, over the shape of the new Pepsi bottle.

The print edition had a photo, but not online. You can go down to your local 7 Eleven or compare for yourself:

Coke 'contour' and Pepsi's new bottle

The press report doesn’t say whether the action is over a registered “shape” trade mark, passing off/TPA or both. But, we know Coke has them:

TM 877676

So, if it goes to trial we may well find out what you can do with a shape trade mark.

The newspaper report quotes Matthew Hall asking who is going to buy a bottle of Pepsi in mistake for a Coke.

Fair question but, if there is a registered trade mark for the shape (without Coke plastered all over it, unlike e.g. TM 1057210) and the bottle itself is used as a trade mark, the presence of the Pepsi logo should be irrelevant.

Further, what role will “intention” play here? In particular, why did Pepsi change the shape of their bottle?

Pepsi apparently introduced the new bottle shape in May this year. Here’s an interesting mash-up which shows you the “old” bottle’s silhouette compared to the Coke bottle.

Here’s what the Full Court had to say in the All-fect case:

25 The confectionary has three features that are not descriptive of the goods. They are the silhouette, the fluting at the top and bottom, and the label band. It is not necessary for the respondent to adopt any of those features in order to inform consumers that its product is a cola flavoured sweet. It could do so by using the cola colour, the word COLA and the shape of an ordinary straight-walled bottle. The silhouette, fluting and band are striking features of the confectionary, and are apt to distinguish it from the goods of other traders. The primary function performed by these features is to distinguish the goods from others. That is to use those features as a mark. It is true, as the respondent said, that the fact that a feature is not descriptive of goods does not necessarily establish that it is used to distinguish or differentiate them. But in the present case we are compelled to the conclusion that the non-descriptive features have been put there to make the goods more arresting of appearance and more attractive, and thus to distinguish them from the goods of other traders.

While that was observed in the context of “contour” bottle shaped confectionery, things could get a bit sticky for Pepsi here.

As a side note: an interesting timeline comparing the Pepsi word and logo marks against the Coke history.

Coke, Pepsi and the shape of the bottle Read More »

Victoria Police use Facebook to serve intervention order

The Police’s own press release.

All papers, including the interim intervention order, the extract, explanation and contacts were transcribed was typed out into private messages and sent to the respondents account.   A video was recorded of Leading Senior Constable Walton reading the Interim order to the accused, as if the Respondent was being directly spoken to – and served.

It sounds like the order was for substituted service, after all other attempts to serve proved fruitless.

Watch the video (and be served) (after the ad).

Is an accepted practice developing? In an IP practice, why not ex parte orders, interlocutory injunctions …?

Lid dip @lods1211 and @idealaw

Victoria Police use Facebook to serve intervention order Read More »

Upholding a patent opposition on appeal

Upholding a patent opposition on appeal Read More »

Patents and ‘abusive’ divisionals

Patents and ‘abusive’ divisionals Read More »

Obvious to try (typos corrected)

IP Australia (for present purposes, the Commissioner of Patents) has been exploring ways to improve the quality of patents by, amongst other things, raising the threshold of inventiveness. (Consultation Paper, November 2009 (pdf) see section 1.2ff).

One might have thought that this would require legislative reform given the extremely strict approach to common general knowledge and, for that matter, s 7(3) taken in Australia.

Perhaps because the election so indecisively intervened, however, and professedly because the submissions agreed, IP Australia now appears to believe it can resolve our problems by simply adopting a new approach at the examination stage, so that legislation is no longer required. As from 1 August 2010, therefore, IP Australia has amended its approach to examining applications:

The Patent Manual of Practice and Procedure was amended on 1 August to indicate that where the application relates to the solving of a problem, being either a problem that is recognised in the art or a problem that is reasonably inferred from the specification, it is appropriate for examiners to consider the question:
Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?

Patentology points out the way the Courts have been approaching this may not sit too well with the Commissioner’s idea.

Now, it is true that the majority in Alphapharm did say:

[52]  …. Thirdly, in a case such as the present, the relevant question was that posed in the first part of the passage. Were the experiments “part of” that inventive step claimed in the Patent or were they “of a routine character” to be tried “as a matter of course”? If the latter be attributable to the hypothetical addressee of the Patent, such a finding would support a holding of obviousness.

[53]  That way of approaching the matter has an affinity with the reformulation of the “Cripps question” by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd[57]. This Court had been referred to Olin in the argument in Wellcome Foundation[58]. Graham J had posed the question[59]:

“Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the ‘2’ position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?” (emphasis added)

That approach should be accepted.

The first thing to note about this proposition is that it is introduced by “thirdly”. There are a few hurdles to get over before one gets to the reformulated Cripps question.

One of the hurdles, recognised in the Commissioner’s Official Notice, is that one first has to be able to posit that the patent is attempting to propose a solution to some identified or identifiable problem. In the Lockwood (No. 2), however, the High Court made it very plain at [63] – [65] that may not always be appropriate.

Another hurdle expressed by the majority in Alphapharm were repeated doubts that “obvious to try” could be applied, if at all, to anything other than a simple step from the prior art to the claimed invention rather than, as in that case, a combination patent. In such cases, the majority rejected the approach of more recent English cases in favour of US cases such as In re O’Farrell

The admonition that ‘obvious to try’ is not the standard under §103 has been directed mainly at two kinds of error. In some cases, what would have been ‘obvious to try’ would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. … In others, what was ‘obvious to try’ was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.

More generally, one may wonder how well the Commissioner’s attempt to use administrative procedural reform to obviate perceived deficiencies in the High Court’s interpretation of the legal meaning of the terms used in the Act will work. Given what the High Court has repeatedly said “common general knowledge” means and the limitations written into s 7(3), how would a Court on appeal deal with the Commissioner’s rejection of a patent application on the Commissioner’s new approach?

As the High Court itself made plain in Alphapharm, the divergence between Australian law and UK and for that matter US law lies in the prior art that may be used to found an attack on obvousiousness. Thus

in [43]:

…. The holding for which Minnesota Mining is celebrated is the rejection, as inapplicable to the terms of the 1952 Act, of the reasoning in certain English decisions. This might have permitted the basing of an argument of obviousness upon prior publicly available publications, without evidence that they had become part of the common general knowledge at the priority date. ….

and in [44]:

…. obviousness was not determined by asking whether a diligent searcher might have selected the elements of the claimed invention by taking pieces from those prior publications and putting them together…

and in [49]:

The result in Britain of the shift in grundnorm is exemplified in the observation by Laddie J[53] that the skilled worker (identified in s 3 of the 1977 UK Act):

“is assumed to have read and understood all the available prior art”. (High Court’s emphasis)

The treatment of the point by Aickin J in Minnesota Mining, as indicated above, expressly rejected any assumption as to what in such a way may be expected of and attributed to the hypothetical addressee. ….

If that is the foundation of the problem, it seems very hard to see how anything but a legislative solution will suffice for, as the High Court also made very plain, it is the function of the legislature to set (and if thought appropriate) change the parameters.

Official Notice (with link to Manual)

Obvious to try (typos corrected) Read More »

Happy birthday to me

well, IPwars really.

Yes, six years ago today IPwars started rearranging electrons in the interstices of the interwebs (as some of our American cousins call them).

It’s rather hard to work out vital statistics since then as, for 4 years, IPwars was generated by the (now defunct) iBlog software before moving to WordPress.

It does seem that ‘Sounds Different’ was the burning issue that attracted the very first report. Understanding about that elusive concept, trade mark usage, has become sufficiently well understood in the intervening years that it was the subject of the ‘trade marks session’ at this year’s IPSANZ Annual Conference.

I (or perhaps that should be you) blame Marty Schwimmer, at the Trademark blog, Denise Howell and the others at (then) Between Lawyers, for inspiring me to venture into cyberspace.

Then, to those of you out there who read the posts, sometimes send my your own comments even occasionally become so outrageous as to post them publicly, thank you.

Happy birthday to me Read More »

Restored patents and licences to exploit

Mr Law has a patent, Australian Patent No. 784051 titled “Conveyor Belt Cleaner”. For some reason, the renewal fees were not paid and the patent became a “ceased patent” (presumably). Almost 2 years later, he applied for an extension of time (I’m guessing here and here) and paid the renewal fees and his patent became a “restored patent“. So, Mr Law’s patent wasn’t on the register between 27 September 2007 and 26 October 2009.

From 1 September 2008, Razer started selling products which it appears fell within the claims of Mr Law’s (at that time ceased) patent. It would appear it did so at the behest and encouragement of someone glorying in the name of TuffStuff. After Mr Law’s patent was restored, Razer kept on selling.

Mr Law sues for infringement. (Mr Law doesn’t sue for infringements committed during the period while his patent was a ceased patent – see s 223(10).) Razer then applied to the Commissioner for a licence to exploit the patent (and an extension of time to make the application).

Mr Law applied for an interlocutory injunction to stop Razer continuing to sell. Razer applied for a stay of the proceeding pending the outcome of its application for a licence. Bennett J refused the stay and granted the injunctions –

[31] Mr Law has a presently enforceable right by reason of the valid and existing Patent to exploit the invention and to prevent others from doing so without a licence. A stay until the licence application is determined necessarily interferes with Mr Law’s rights under the Patent. On the facts as agreed between the parties and as led in respect of the two notices of motion, Razer is not a person to whom s 223(9) of the Act and reg 22.21 of the Regulations applies. That being the case, Razer’s likelihood of success in obtaining a licence from the Commissioner is such that it is not appropriate, in my view, to stay the proceedings, let alone for the substantial length of time that would be necessary for the Commissioner to determine the licence application under the Act.

The interesting thing is why Razer was not likely to get a licence: Razer did not satisfy the jurisdictional requirement under s 223(9).

Under s 223(9) the licence is (potentially) available to someone who exploits the patent (or took definite steps … to exploit the patent) as a result of the patentee’s failure to pay the renewal fees (do a relevant act) or the ceasing of the patent.

The problem for Razer was that it had a patent search conducted before it embarked on its enterprise. Unfortunately, the search criteria did not reveal the patent (even in its “ceased” state). This seems to have been largely because the search criteria included searching for patents owned (or in respect of which an interest was registered0 by Mr Law’s company, ESS. ESS, however, was only a licensee and the interest as a licensee had not been registered. (Little digression for the technically minded amongst us down this garden path).

Her Honour noted:

[21] A search using the appropriate parameters would have revealed both active and ceased patents. It is apparent that, because the search terms did not include “Law” or the title of the Patent and ESS was not a registered licensee, the search failed to reveal the Patent.

[22] It is not in dispute that Razer was unaware of the existence of the Patent or its ceased status when it entered into the agreement and subsequently took the steps to manufacture and sell the infringing products. Razer relied on the result of the searches of the Register, the statements made by officers of TuffStuff to the effect that ‘there are no patent issues associated with the product’ and warranties in the agreement. It is also not in dispute that TuffStuff was not aware of the existence of the Patent at the time of entering into the agreement. (her Honour’s emphasis)

In other words, with TuffStuff’s assurances and the results of the patent search Razer thought there were no patents because there had never been (at least Mr Law’s) patent. It didn’t embark on this enterprise because it thought Mr Law had abandoned (let lapse) his patent.

Also, Razer did not monitor the Official Journal, so it did not discover the advertising of Mr Law’s application for an extension of time to restore his patent and (consequently) it did not oppose his application for an extension.

Then, the hammer was dropped: Razer was not protected from infringement by being unaware that the Patent had ceased.

[27] Section 223(9) of the Act is not designed to protect a person who by happenstance takes steps to exploit a patent during a period in which it is ceased. It cannot be that a person who manufactures and sells products within the scope of the claims of a patent can be protected simply because that person is lucky enough to have commenced those steps while that patent was not in force through an error or omission of the patentee. There must be a link between the fact that the particular patent has ceased and reliance upon that fact by the person seeking to obtain the protection. Regulation 22.21 of the Regulations does not specifically refer to that necessary link but the regulation can rise no higher than the subsection to which it refers and for which it is prescribed.

At this point, I am rather glad I am not a patent searcher.

Law v Razer Industries Pty Limited [2010] FCA 1058

Restored patents and licences to exploit Read More »