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Archive for February, 2010|Monthly archive page

Don’t miss out on your chance to oppose a trade mark application in New Zealand – New IPONZ practice regarding extensions of time to file a Notice of Opposition

In Uncategorized on February 26, 2010 at 1:24 pm

Following the advertisement of an application for registration of a trade mark in the Patent Office Journal, third parties have an initial period of three (3) months to file a Notice of Opposition or to seek an extension of time to file the Notice of Opposition – see Regulation 75 of the Trade Mark Regulations 2003.

Regulation 75(2) provides that

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

Thus, an extension of one month is allowed as a matter of course and it is not necessary to seek the Applicant’s consent to such an extension.

Regulation 75(3) then provides that “The Commissioner must not extend the deadline after the deadline has expired”.

I think that it would be fair to say that there has been an assumption that this means that the extension must be requested before the deadline has passed and that the Commissioner could not grant an extension of time if it had been filed after that deadline. However, following a recent High Court decision, this assumption has been turned on its head. In that decision the Court noted

Importantly, however, Regulation 75(3) prohibits the Commissioner from extending the deadline after the deadline has expired. I take the effect of this to be that the Commissioner has no power to extend the date for filing a notice of opposition unless the extension is both requested and granted before the expiry of the three month deadline contained within Regulation 75(1)” (see paragraph 31 of the decision).

Now that the appeal deadline has passed, the Intellectual Property Office has issued a practice guideline regarding the seeking and granting of extensions of time for filing a Notice of Opposition under Regulation 75.

In particular, the guideline states that “The Hearings Office will endeavour to consider and process an extension of time for filing a notice of opposition within 5 working days”. Further, “The Hearings Office will take all reasonable steps to ensure that extension of time applications that are received less than 5 working days prior to the deadline are considered and determined prior to the expiry of the deadline. However, no guarantee can be provided that such applications will be able to be processed in time – especially in cases where applications are received on the final day before expiry of the deadline”.

The full practice guideline can be viewed here.

The Court’s finding is strictly obiter as the case did not deal with the issue of an extension of time to lodge a Notice of Opposition, but rather an extension to file evidence in revocation proceedings. With new Trade Mark Regulations being drafted to deal with New Zealand’s accession to the Madrid Protocol, it is highly likely that Regulation 75 will be amended to overcome the chance in practice bought about as a result of the High Court’s decision.

However, in the interim, the IPONZ practice guideline make it clear that extensions of time to file a Notice of Opposition must be filed in a timely manner to ensure that the Hearings Office of IPONZ has sufficient time to consider and grant the extension.

Enforcement of copyright in the digital space

In Uncategorized on February 19, 2010 at 2:12 pm

Like a number of other countries, New Zealand is looking at bringing in new provisions to deal with infringement of copyright in the digital environment.

The driving force behind this appears to be ACTA which includes a provision on Intellectual Property Rights Enforcement in the Digital Environment, and the proposed law has been very controversial in NZ with the implementation of the law being delayed on more than one occasion. A quick summary of the proposals to amend the Copyright Act can be seen here.

A recent appointment to the Copyright Tribunal appears to be related to the impending change of the law. It has recently been announced that Peter Dengate-Thrush has been appointed as the third member of the Copyright Tribunal. Peter is a barrister and patent attorney specialising in internet, intellectual property and technology cases. He is chairperson of the board of Internet Corporation for Assigned Names and Numbers (ICANN), President of AIPPI-NZ Inc and is immediate past chairman of the Asia Pacific Top Level Domain Association, and of Internet NZ. Therefore, Peter is well experienced in matters dealing not only with copyright but also the Internet.

The Copyright Tribunal is a statutory body constituted under the Copyright Act 1994. The tribunal hears disputes between licensing bodies, or proposed licensing bodies, and those who hold or seek licences in respect of works of copyright. However, the Tribunal has been very quiet since its incorporation as the case load has been fairly light.

The proposed amendments to the Copyright Act to deal with infringement by downloading from the Internet will require a specialist body and the Copyright Tribunal could be morphed into the appropriate vehicle for this.

Congratulations to Peter on his appointment! I look forward to seeing the Copyright Tribunal the opportunity to consider some juicy on-line copyright infringement issues.

IPONZ database search engine enhancement

In Uncategorized on February 9, 2010 at 9:34 am

Whilst the IPONZ database dates back to the 1990s and will be replaced in the hopefully not too distant future, IPONZ is adding enhancements in the interim.

Once such welcome enhancement is that now for trade mark and design searches a thumbnail of the trade mark and design representations will be included in the search results. This will result in more efficient searching and also bring the functionality of the IPONZ database in line with IP Australia and UK IPO searching databases.

See here for more information and examples.

Inventor recognised as New Zealander of the Year!

In Uncategorized on February 4, 2010 at 1:57 pm


My wish has come true – an inventor has been named the New Zealander of the Year over a sportsperson and businessman! Congratulations to Ray Avery!

I see that Ray’s life path from an early age is one of inspiration for others. His early years have been reported thus:
He was abandoned as a baby: “I got put into the orphanage for the first 14 years, moved around southern England in a kind of Dickensian labyrinth of bad stuff. “And then I decided to take my life in my own hands and ran away and lived on the streets of London for about a year before I was picked up in a police raid and invited to go back into the education system.” That “invitation” was the making of him. He was taken under the wing of a group of Oxbridge professors who taught him science and how to dress, eat, speak, play bridge and tennis and dance. “They gave this kind of hobo kid off the streets a social education and how to communicate.” By the age of 26 he owned a string of laboratories drove a vintage MGA car – and loathed himself. “I hated myself, I thought I was a real prick. I thought if I had money and I had a position that all of the orphanage debris would wash away and I would be accepted and … that would make me happy.” So he left England and in 1972 ended up in New Zealand, which seemed like “instant home”.
The scientist and inventor now dedicates himself to fighting poverty and ill health in the Third World. The intraocular eye lenses he developed will result in 30 million people will regain their sight by 2020. He had teamed up with ophthalmologist Fred Hollows, who became known for his work in restoring eyesight for thousands of people.

Avery’s first intraocular eye lens sold for $5, compared with $360 charged elsewhere. He collapsed the price globally, revolutionising Third World eye care. There are now 16 million people using his lens implants.

From such humble beginnings to New Zealander of the Year!

New Zealand inventor in list of finalists for “New Zealander of the Year”

In Uncategorized on February 2, 2010 at 1:52 pm

It is pleasing to see that innovation is viewed as an important characteristic of New Zealanders and our society with an inventor making it to the list of the final three in the running to become the New Zealander of the Year. The other two finalists are a successful and popular sportsperson and well known philanthropist/businessman.

The purpose of the awards is stated to be to recognise, encourage and reward New Zealand’s most vital resource – its people.

The New Zealander of the Year Awards “will honour the achievements and contributions of an inspirational Kiwi. The winner will be New Zealand who has made a significant contribution to the well-being of our nation. This award provides an opportunity to be proud of our country and what can be achieved”.

The inventor in question is Mr. Ray Avery whose inventions include an intravenous flow controller to prevent fatal drug administration errors, a high tech incubator, and a nutritional powder using waste products from the kiwi fruit and meat industries, to hydrate and nourish children suffering from severe diarrhoeal disease.

Ray Avery’s low cost, sustainable inventions are reported as making a difference to billions of the world’s poorest, most vulnerable and most neglected citizens across the developing world.

Because of Ray Avery, 30 million cataract blind people in the developing world will have regained the gift of sight by 2020 using quality intraocular lenses, produced at an affordable price in factories designed by Ray in Eritrea and Nepal.

Ray is a director of the company Medicine Mondiale, which describes itself in the following terms:

Medicine Mondiale (MM) is an independent development agency focused on improving the lot of the world’s poor.

MM’s goal is to develop sustainable solutions to global poverty the development of products and technologies which have applications in both the developing and developed world markets. By way of example, a low cost protein formula which can save lives of children suffering from cholera and malnutrition which can also be used to improve athletic endurance in multi-day sports events.

I wish Ray and the other finalists good luck in the awards – I would like to think that New Zealand’s innovative sense will be recognised with Ray’s endeavours, perseverance and achievements being recognised.

Ispy Levis’ twitter campaign

In Uncategorized on February 1, 2010 at 10:50 am

A creative and fun way to revitalize a long standing, but apparently out of favour, fashion brand.

If only I’d know about this at this time – it looks like it was a fun treasure hunt. (Thanks to digitalbuzz blog for content).