Archive for the ‘Uncategorized’ Category

Happy New Year for 2012

In Uncategorized on January 11, 2012 at 12:37 pm

I must admit I have let this blog slip and I have not posted for quite some time.  However, it is interesting to note that people are still visiting this site notwithstanding my silence.

With a new year and a new resolve, I have started a new blog here.

I look forward to seeing and hearing from you 🙂


Unicorn meat anyone?

In Uncategorized on July 2, 2010 at 11:43 am

Surely even lawyers like a good joke now and then – it is pleasing to see that some “brands” can have a bit of fun…

The story goes that ThinkGeek launched a canned unicorn meat product (think about it) under the slogan “Pâté is passé. Unicorn – the new white meat.” Apparently the National Pork Board did not see the joke and sent a 12 page cease and desist letter claiming that ThinkGeek had infringed their slogan “The Other White Meat”.

For the full story see here . You’ll see that ThinkGeek name this the “officially our best-ever cease and desist“! Try to buy and see what happens….

Auckland Super City logo unveiled

In Uncategorized on April 23, 2010 at 5:19 pm

I have just read in The Herald on-line (Auckland’s newspaper) that the new logo for the soon to be new Auckland “super city” was announced earlier today – the logo comprises a red Pohutakawa encircled by a green koru circle.

For those of you not from my part of the world, the Pohutakawa is a flowering tree of the gensus “Metrosideros excelsa”, a member of the myrtle family, and is known as New Zealand’s native Christmas tree as it flowers at Christmas time. The koru often used in Maori art as a symbol of creation. It is based on the shape of an unfurling fern frond.

I would have to agree with the judges that the design leaps of the page however I have to wonder how this logo represents Auckland or its council? The Pohutakawa is found throughout New Zealand and there is some still in flower in Wellington as I type even though Christmas has long since passed!

However, I congratulate Jim Dean on having his design (which includes three variations on the Phoutakawa theme) selected from the reported over a thousand entries.

Spongebob v the Santa parade?

In Uncategorized on March 30, 2010 at 10:27 am

As an IP practitioner I am always saddened when it comes to this – picture the headline: “Santa Parade organisers told ‘no go’ with Spongebob” ….

In New Zealand the public are always going to take the side of the little guy in any perceived David v Goliath situation. This clip shows that trying to assert and protect one’s IP rights in NZ can lead to negative PR.

Hopefully the parties can come to a workable solution before this year’s Santa parade!

Tips to minimise the infringement of your trade mark by the importation of fake products

In Uncategorized on March 22, 2010 at 10:28 am

The importation of fake consumer goods is rife the world over. The importation and sale of counterfeit goods is a growing problem in New Zealand, with the majority of counterfeit goods being sourced from overseas. Since July 2000, the number of counterfeit goods that have been detained by the New Zealand Customs Service (“Customs”) has increased by over 400%. While some may consider trade in fake products to be harmless, when the fake product is a pharmaceutical there is a serious risk of harm to consumers and the importation of other counterfeit products can damage an otherwise well respected brand.

In an interesting piece of journalistic investigation, the blatant sale of fake CHANEL handbags has been uncovered in an Auckland gift shop. Amazingly the apparently poorly made fakes sell for around NZ$ 200 and the shop owner is happy to import to order! The shop owner and person working in the shop were very free and frank with the information they provided about their activities (see the associated video).
Given the resources it has, the Customs does a sterling job in detecting and detaining counterfeit products at the border. As Customs operates on an “alert based system” it is imperative that trade mark and copyright owners lodge the request notices with Customs to enable them to detain counterfeit goods. In my experience, a high number of importers forfeit their goods to Customs thereby preventing the counterfeit goods from entering the marketplace and diluting or otherwise damaging the valuable brand.

When a trade mark or copyright border protection notice is lodged, the existence of that notice is published on Customs’ website. This acts as a notice to would-be infringers that Customs is empowered to detain any goods that they intercept and consider to be in breach of a lodged notice. Anecdotally, the mere existence of such notices, in a searchable database, deters would-be infringers.

To combat the growing rate of counterfeit products entering New Zealand, the Trade Marks (International Treaties and Enforcement) Amendment Bill (“the Bill”) proposes to include new sections in the Trade Marks Act (“the Act”) which provide Customs and the National Enforcement Unit (“NEU”) of the Ministry of Economic Development with extra resources and investigative and prosecution powers.

It is a criminal offence under the Act to import and/or sell counterfeit goods. The additional resources and powers that have been suggested under the Bill would enhance the ability of Customs and the NEU to enforce the criminal offence provisions in the Act.
I suggest that trade mark owners review their trade mark portfolio and lodge border protection notices with Customs to restrict and hopefully prevent trade in counterfeit products.

Copyright (Infringing File Sharing) Amendment Bill introduced to Parliament

In Uncategorized on March 11, 2010 at 3:52 pm

The Government has been attempting to put into place an effective and credible regime for enforcement of copyright in the digital environment i.e. to prevent illegal file sharing.
In New Zealand, and elsewhere, such laws have been found to be controversial and in New Zealand’s case the proposed law has been delayed twice and has been the subject of a review by a team of experts to set out the process for the Internet Service Providers (“ISPs”).

The process for dealing with repeat infringers has now been specified in the Copyright (Infringing File Sharing) Amendment Bill and will be enacted as section 92A of the Copyright Act 1994.

Under the re-written section 92A, an internet account holder who is allegedly infringing copyright via file sharing will receive up to three notices from their ISP before a copyright owner may seek a compensation award at the Copyright Tribunal, or suspension of an internet account for up to six months in the District Court. The amount of an award may be up to $15,000.

The Bill will proceed to the Select Committee in the coming months and it is expected that it could be law by October 2010.

Specifically, the Bill repeals Section 92A of the Copyright Act, re-defines “ISP” to exclude universities, libraries, and businesses that provide Internet access to their members or employees but are not in the nature of a traditional ISP, and sets up a three-notice system to deter illegal file sharing:

Under the proposed regime, the following process is suggested to deal with illegal file sharing.
 Copyright owners will contact the allegedly infringing account holder through the ISP to report misuse of their copyright works.
 Internet users caught illegally downloading copyright material will be given up to three infringement notices – a detection, a warning and an enforcement notice:
o A detection notice will inform the user that they have downloaded copyright material and that their actions are illegal.
o A warning notice will be sent to a user if they infringe copyright again (and they have already received a detection notice).
o An enforcement notice will be sent to a user if they infringe copyright again (and they have already received a warning notice).
 After issuing an enforcement notice, the copyright owner can seek reparation costs of up to $15,000 through the Copyright Tribunal.
 Internet users who continue to download copyright material may have their internet account suspended by order of the District Court for up to six months.
 Account holders will have the right to challenge any notice, make submissions to the Copyright Tribunal refuting the claims, and request a hearing if they disagree with the claim that they have infringed copyright.

The Bill prescribes timeframes to give account holders an opportunity to address illegal file sharing activity occurring on their internet connection before enforcement action is taken.

ACTA update:

In other digital environment issues, the Minister of Commerce, Hon Simon Power, has announced a further round of public consultations on the content of the proposed Anti-Counterfeiting Trade Agreement (ACTA). The press release advises that the focus of this round of public consultations is the inclusion in ACTA of possible measures to enforce intellectual property rights in the digital environment (“digital enforcement”).

In the question and answer part of the press release relating to the new section 92A the Ministry of Commerce makes the following comment regarding the interplay between section 92A and ACTA: “How does ACTA relate to the review of section 92A? It doesn’t. The review of section 92A is on a separate track from the ACTA discussions”.

The ACTA digital enforcement provisions appear to cover the matters already covered by the proposed section 92A in terms of providing safe harbours for ISPs and co-operation between copyright owners and ISPs, However, it does go further and covers technological protection measures (TPMs) and Copyright management information (or rights management information).

To facilitate the preparation of submissions on the ACTA digital enforcement provisions the Ministry has published a discussion paper.

Submissions should be sent to trademarks@med.govt.nz by Wednesday, 31 March 2010.

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.