Baldwins news articles

Baldwins clients among fastest growing Kiwi companies

Fri, 07 Nov 2008 00:00:00 +1300

The 2008 Deloitte / Unlimited Fast 50 Index has been revealed, ranking New Zealand's 50 fastest growing companies according to percentage of revenue growth.

The 2008 Deloitte/Unlimited Fast 50 growth trends survey noted "..the importance of intellectual property in allowing many of this year's Fast 50 to secure new channels, capture new markets and charge a premium along the way."

Baldwins is proud to see clients Merino Kids, Winslow Ltd, Trilogy, Kiwibank, Torpedo 7 and NextWindow in this listing of promising Kiwi companies, and for having worked with them on a range of intellectual property issues ranging from obtaining rights to dispute resolution.

For more information about the rankings and the survey please see here.

Do we have the technology to succeed?

Wed, 05 Nov 2008 00:00:00 +1300

Baldwins Intellectual Property was delighted to once again be a principal sponsor of the recent AmCham-UPS Success and Innovation Awards. The United States is New Zealand’s second largest trading partner and it was great to applaud and celebrate New Zealand firms achieving exceptional success with such an influential economy.

With that in mind it is no wonder so many firms want to export their innovations to that market, particularly within the technology sector. One of United States’ most well known brands is Google Inc. Google Inc., had revenues of around USD3.5 billion in 2007. Would you like to compete for a slice of that market? Maybe you can! Google’s core patents are under threat from new US Patent Office policies on what is patentable.

The issue raised by the US Patent Office is whether software is patentable. Software is usually protected by patent as a process for performing a task. The policy presently being followed by the US Patent Office is to regard processes as not being patentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.”

The problem is that, in software, processing is performed on information rather than articles. Also, the US Patent Office has signalled that it does not regard a general purpose computer to be a particular machine. The Patent Office policy is presently being tested before the Courts. If it is held to be correct then it may have dire consequences for the validity of software patents.

Google Inc. has a patent portfolio that has grown exponentially in recent years. It now numbers over 1000 patents and patent applications. The company clearly sees the patent system as a way to maintain a competitive advantage, and appears to file patent applications early, on technologies that it sees as the company’s future, to ensure that its future technology position is secure. One example is the patent applications for the “gPhone”.

Others also clearly perceive Google’s patents to be highly valuable. The best known, and possibly most valuable, patent in the Google portfolio is the original patent for the Google PageRank™ technology. PageRank™ uses the link structure of the web as an indicator of an individual page's value. In essence, a link from page A to page B is interpreted as a vote, by page A, for page B. These “votes” allow a numerical value or weighting to be placed on each page.

The original PageRank™ patent is US6285999 (typing that text into the Google search engine will allow the patent to be viewed in seconds, for those of you who are curious to view the original document). It is owned by Stanford University rather than Google, since the inventors (and founders of Google) were attending Stanford at the time they devised the process. Google has exclusive license rights on the patent from Stanford University. The university received 1.8M shares in exchange for the patent. The shares were sold in 2005 for $336M.

The PageRank patent hasn’t been filed outside the US which says something about the importance of the US market in the global ICT environment.

What can we take from all this in New Zealand? Firstly, the patent system provides a vehicle for proprietorship of visionary new developments. Small companies can benefit from the patent system and use it to grow. Research institutions such as our Universities can also benefit, particularly if they implement policies such as those adopted by Stanford which was clearly prepared to license the rights.

Google’s success has essentially been built on its intellectual property. It does not have factories producing consumer products, and the location of Google is not critical from a logistical perspective – only information is delivered. The US is a huge and valuable market in which Intellectual property rights are respected. Why can’t New Zealand companies pursue that market and replicate Google’s success?

If the Courts do undermine US software patent rights, we can always use the software ideas developed by others to compete, but it would be far better for New Zealand’s future if we were to become a leader through developing our own new technologies.

AmCham – UPS Success and Innovation Awards were held at the Hyatt Regency Auckland on Wednesday 24 September

Tim Jackson, Partner, Baldwins Intellectual property was on the judging panel.

Winners:

Importer of the Year from USA – Tidd Ross Todd Ltd
Investor of the Year either to or from the USA – Fonterra Co-operative Group
Exporter of the Year under $500.000 – Thureon Ltd
Exporter of the Year $500,001-$5Million – Wellington Drive Technologies Ltd
Exporter of the Year Over $5Million – Endace Ltd
Supreme Winner - Fonterra Co-operative Group

Congratulations to all the winners and finalists!

The Montana World of WearableArt™ Awards: Delivering Value

Fri, 17 Oct 2008 00:00:00 +1300

We all have ideas, that brain burst of inspiration that allows us to dream of what could be, but translating ideas into successful commercial ventures requires just a little more than a dream bubble. WOW began from humble beginnings but has since grown into a substantial brand and successful company though vision, belief and commitment.

The Montana World of WearableArt™ Awards show began its life as a promotion for a rural art gallery in Nelson in 1987. Since these small beginnings, the awards have become an iconic event in the New Zealand arts calendar, the show’s fame has spread and entrants now come from all over the world to showcase their creations. Audience numbers have also grown from the hundreds to tens of thousands.

Baldwins Intellectual Property has proudly supported the Awards each year, as well as assisting WOW in protecting its intellectual property assets. When an initial idea grows into an original work such as the Montana World of WearableArt™ Awards, it is essential to put in place the right forms of intellectual property protection and then enforce these rights in order to maintain the originality of your product.

Gabrielle Hervey, CEO of WOW says “As The Montana World of WearableArt Awards Show is a truly unique event, we have gone to some lengths to ensure it has been protected by registering our trademarks in a number of different countries. Baldwins have worked along side WOW and we’ve appreciated, and respected their advice over a great many years.”

Sue Ironside, Partner and Chair person of Baldwins comments "Right from the very early and humble beginnings of WOW there was an understanding of how important it was to identify what intellectual property rights they had in such an amazing and truly unique event. Working with the WOW team on strategies around how to protect and enforce these rights is an invigorating, creative and intellectual challenge which we love. "

Congratulations this year goes to Ornitho Maia, Nadine Jaggi, Wellington for being awarded the 2008 Winner Montana Supreme WOW Award & Winner Air NZ Sth Pacific Section as well as the entire WOW team, designers and all those involved in delivering such a high value event. "A truly unique and wonderful experience" said Sue Ironside.

PUREBABY decision: the end of the essential feature test

Fri, 10 Oct 2008 00:00:00 +1300

The decision of the hearings officer in the matter of Trademark Application 738606 in the name of Purebaby Pty Ltd (Case T19/2008, August 4 2008) has indicated that the essential feature test, as set out in De Cordova v Vick ((1951) 68 RPC 103), may no longer be of much relevance when considering similarity of marks.

In an earlier case, In the matter of Trademark Application 710425 in the name of Marexim Export-Import Ltd (Case T10/2007, March 17 2007), the Intellectual Property Office of New Zealand (IPONZ) had objected to the registration of the trademark ULTRA for goods in Class 11 of the Nice Classification on the grounds that the mark:

was confusingly similar to the earlier registered trademark ULTRALAMP for goods in Class 11; and
lacked distinctive character

However, the hearings officer found that ULTRA was not similar to ULTRALAMP on the grounds that the marks looked and sounded different. She went on to say that the word 'ultralamp' would impart the idea of an extreme or excessive lamp, although adding that she was unsure what an extreme or excessive lamp might be. Despite the fact that the goods covered by both marks overlapped, the hearings officer concluded there was no likelihood of confusion or deception.

In relation to the distinctiveness objection, the hearings officer agreed with the dictionary definition of 'ultra' as going beyond what is usual or ordinary, excessive or extreme. She noted that generally speaking, the word 'ultra' was rarely used on its own but instead used as a prefix. She agreed with the applicant’s submission that the mark ULTRA conveyed a vague notion of excessiveness or extremeness, but did not make any meaningful comments about the goods. There was no disucssion as to whether other traders might want to use 'ultra' as a prefix.

In the present case, the hearings officer reached a similar conclusion about the trademark PUREBABY / PURE BABY. On November 17 2005 Purebaby Pty Ltd filed an application for the registration of the series mark PUREBABY / PURE BABY for goods in Class 25 ("knitted and woven clothing, headgear"). IPONZ objected to the registration on the grounds that the mark was confusingly similar to the earlier registered trademark PURE for goods in Class 25.

Following the same reasoning as in ULTRA, the hearings officer concluded that the marks looked and sounded different. Moreover, she held that the marks were dissimilar from a conceptual point of view. According to the hearings officer, the word 'purebaby' gave the idea of "a baby which is pure", whereas the word 'pure' itself gave the idea of something that is “unmixed, or unadulterated with any other substance or material”.

The decisions in ULTRA and PUREBABY indicate that even if a mark is wholly contained within another mark, it may still be possible to argue that the marks are not confusingly similar - at least in cases before the IPONZ.

This article was published in World Trademark Report, October 2008.

New patents bill introduced

Fri, 03 Oct 2008 00:00:00 +1300

The Patents Bill 2008 was introduced into Parliament on 9 July 2008. With an Election imminent in November this year, there is some doubt as to the timeframe for enacting the legislation. However, in view of the significant differences that the bill introduces, it is worthwhile briefly summarising the main aspects of the proposed legislation.

Important changes include:

The introduction of “absolute novelty”. At the present time, New Zealand still has only a local novelty requirement.
Examination for inventive step. This will be a significant change in Intellectual Property Office practise. At the present time, there is no examination for inventive step (although obviousness is a ground of Opposition and Revocation). Some intensive training of examiner’s is likely to be required, and practitioners will be interested to see how the Intellectual Property Office deals with this, particularly in view of the changes to the standard of proof (which is identified immediately below).
Rather than the current situation where the applicant is provided with the benefit of the doubt in issues of patentability, the Bill introduces the more common principle of these issues being decided on the “balance probabilities”.
The Bill includes a requirement to disclose the results of any official searches conducted in the course of examination of corresponding foreign applications.
The Opposition procedure as it presently exists will be removed. Instead, a re-examination procedure will be introduced. Under this, any person may request re-examination by the Patent Office of a patent up to or after grant. A revocation request can be made before the Courts.
Publication will occur at eighteen months after the priority date, rather immediately after acceptance.
A Maori Advisory Committee will advise the Intellectual Property Office on whether commercial exploitation of an invention may be contrary to Maori values, amongst other matters.
Methods for Medical Treatment of Humans by surgery or therapy, and methods of diagnosis practised on human beings are specifically excluded from patentability.

This article was published in Managing Intellectual Property - October 2008.

Restoration of lapsed design registrations

Wed, 01 Oct 2008 00:00:00 +1300

The government has recently introduced the Regulatory Improvement Bill into Parliament. This Bill contains a number of miscellaneous provisions. Part 3 of the Bill will amend section 12 of the Designs Act 1953 to provide for the restoration of design registrations that lapse through non-payment of a renewal fee. Consequential amendment is made to the Copyright Act 1994. The full test of Part 3 of the Bill is available online.

The Bill will not be passed prior to the General Election, which will be held on 8 November 2008. This means the new provision is unlikely to come into force until some time in 2009, at the earliest.

For some years now, Baldwins has been pressing for a full review of the Designs Act, which is now very out of date. While this is still not on the government's plan of work, we welcome this correction of a serious deficiency in the current legislation.

For further information please contact Mike Hawkins.

Clients winners and finalists of Champion Canterbury Awards 2008

Thu, 25 Sep 2008 00:00:00 +1200

Our sincere congratulations to all nominees of Champion Canterbury Awards 2008.

The Champion Canterbury Awards recognise business excellence, passion and success and hold the largest business Awards Ceremony in New Zealand. It is an honour for Baldwins to work with clients nominated for these awards and we take much pride in seeing so many of them make it to the finals.

Our firm has advised the following businesses to acquire, protect and develop their intellectual property portfolios in New Zealand and overseas markets. They operate in a diverse range of sectors including agri-business, engineering / manufacturing, entertainment and environmental research.

Winners:

Westland Milk Products for The Press Champion Canterbury Supreme Award and Champion Canterbury Global Operator (Medium/Large Enterprise category)

Patience & Nicholson for Champion Producer/Manufacturer (Medium/Large Enterprise category)

Landcare Research for Champion Service (Medium/Large Enterprise category)

Meadow Mushrooms for ACC Workplace Safety (image of Award Badge - below)

Finalists:

Woodford Glen Speedway for Champion Host (Small Enterprise category)

Lincoln University for ACC Workplace Safety

The 2008 Awards Ceremony took place on 11th September 2008 in Christchurch with more than a thousand guests in attendance. For more information on the awards please see.

Managing your IP in a digital world

Tue, 02 Sep 2008 00:00:00 +1200

AMCHAM's Digital Future Now forum was an opportunity for nearly 100 senior executives from businesses operating in the online environment to discuss the many challenges and issues impacting the industry. Baldwins' presentation addressed the key topic of how intellectual property law relates to those challenges and issues (summary below). If you would like to know more please contact Rosemary Wallis or Gus Hazel.

Patents

software patents are generally allowed in most countries in the world, though the eligibility requirements and test applied vary;
a new Patents Act has been proposed in New Zealand. What is patentable is unchanged. However, the documents that can be taken into account when considering whether a claimed invention is new will be based on documents and other material available anywhere in the world, not just in New Zealand. This is a significant change that aligns New Zealand with most other countries.

Trade marks

a very topical issue is whether the inclusion of trade marks in metatags and sponsored links is "use" and therefore infringement;
different jurisdictions have drawn different conclusions on these topics;
Google's policy, following decisions in various jurisdictions, is to allow trade marks to be used in sponsored links for customers in the US, Canada, the UK and Ireland, but not elsewhere.

Copyright

digital content is easily and accurately copied;
New Zealand's copyright legislation was recently amended to take digital issues into account. The changes include:
- allowing format shifting of music (subject to conditions);
- allowing time shifting of television broadcasts (again subject to some conditions);
- enhancing rights in relation to technological protection measures;
- allowing reverse engineering of software for certain purposes;
- permitting limited transient copying and caching;
- absolving ISP's from liability for infringing material they host (again provided certain conditions are met).

Domain names

the number of available extensions keeps expanding, making protection increasingly difficult;
an effectively unlimited range of "vanity URLs" announced earlier this year will increase the problem;
the relevance of domain names is arguably decreasing given the widespread use of Google and other search engines to locate websites.

In relation to the internet:

a constant stream of lawsuits is targetting search engines and auction sites for infringing content, eg Google and eBay;
there are different results in different countries;
people need to be wary of reproducing material from elsewhere, even if the format is changed.

For further details contact us.

Clarity on methods of diagnosis

Mon, 01 Sep 2008 00:00:00 +1200

As discussed in Managing IP’s March edition, it was becoming increasingly unclear whether method of diagnosis claims were allowable in New Zealand. However, Biosite Incorporated, a recently released decision of the Commissioner of Patents [P31/2007], may assist in clarifyingpractice in New Zealand.

The Biosite application was rejected under section 2 of the New Zealand Patents Act 1953 on the basis that the claims did not provide patentable subject matter. The claims are directed to a method for determining a patient’s prognosis using antibodies against a sample from the patient. The claimed method can be used to select between alternative therapeutic regimens.

Several areas of the law regarding method of prognosis claims were considered in the Commissioner’s decision. Firstly, the Assistant Commissioner stated that “on the basis of the Bio-Digital Sciences decision alone, I believe the present claims are allowable”. The Bio- Digital Sciences [Bio-Digital Sciences Inc’s Application [1973] RPC 668] decision specifically supports the allowability of method of diagnosis claims that produce information.

The application of the Commissioner’s decisions in George N Haddad [P8/2000] and Hughes Aircraft Company [P3/1995] to method of prognosis claims was also considered. These decisions held that method claims that provide a tangible result (Haddad) or commercially useful effect (Hughes) are allowable. The applicant’s argument in Biosite that the claimed method provided both a tangible result and a commercially useful effect was accepted.

The Assistant Commissioner noted that the benefit of the doubt should go to the applicant and that clear doubt exists about whether method of prognosis claims should be allowed. In addition, the Assistant Commissioner made a strong statement that:
Claims should only be rejected under section 2 at the examination stage where it is manifestly clear that a New Zealand Court would refuse the claims as not falling within the definition of ‘invention’ of section 2. Given the decisions of the Courts in New Zealand and in overseas jurisdictions with similar definitions of invention, and the liberal approach taken over many decades by the Courts as to what is to be regarded as properly falling within the definition of invention in section 2, it cannot be said that the present claims would clearly be refused by such a Court.

The claims were held to be acceptable.

This article was published in Managing Intellectual Property, September 2008.

New Patents Bill introduced

Mon, 14 Jul 2008 00:00:00 +1200

The Patents Bill was introduced to the House of Representatives for its first reading on 9 July 2008. The full text of the Patents Bill is available online.

The Bill will introduce a number of important changes to the New Zealand patents regime. For example, the local novelty standard will be replaced with an absolute novelty standard, which means that if an invention has been disclosed anywhere in the world prior to filing, patent protection will not be available. The grounds of inventiveness and utility will be added to the existing novelty examination ground. This brings New Zealand into line with most other jurisdictions. In addition, the Patents Bill specifically excludes diagnostic, therapeutic and surgical methods from patentability. Plant varieties will also be excluded.

Another significant change will be the introduction of a Maori Advisory Committee. The Advisory Committee will advise the Commissioner if an invention is derived from Maori traditional knowledge or from indigenous plants and animals and if so whether the commercial exploitation of the invention is likely to be contrary to Maori values.

The Patents Bill will now proceed through the legislative process and is expected to be sent to Select Committee for review. In view of the general election which will be held late in 2008, there will be no significant progress with the Bill until 2009.

For further information please contact Julie Ballance.

Copyright (New Technologies) Amendment Act

Tue, 01 Jul 2008 00:00:00 +1200

The New Zealand government recently passed an Amendment Act to the Copyright Act 1994 which is said to update New Zealand’s copyright law to ensure that New Zealand “keeps up to speed with recent advances in digital technology”.

Significant changes include:

- The introduction of technology neutral terms by making specific reference to digital formats.

- Allowing transient reproduction of copyright works provided the copying is also incidental and is an integral and essential part of a technological process for making or receiving a communication that does not infringe copyright or fair dealing and “has no independent economic significance”.

- The introduction of a notice and take down regime for ISPs. There is no liability for an ISP when storing and caching information provided the ISP takes down infringing material as soon as possible after it is made aware of it. This requires ISPs to make an assessment of the claim in the notice and make a decision whether it considers the material is likely to infringe copyright.

- Allowing format shifting for sound recordings. Purchasers of sound recordings may make one copy of a sound recording for each device owned by the purchaser (iPod or PC for example) for their own personal use and they must retain the original sound recording. The format shifting provision only applies to sound recordings. It does not apply to visual works such as videos or DVDs or music videos to be played on iPods.

- Significant changes to the provisions for educational establishments, libraries, educational resource providers and archives.

- Allowing reverse engineering of computer programmes by means of observing, studying or testing the functions of the programme in order to determine the ideas and principles that underlie the programme.

Some of the Amendment Act came in to force in April 2008 and the remainder is likely to come in to force later in 2008.

This article was published in Managing Intellectual Property in July 2008.

New "Contrary to Morality" Practice in New Zealand - Importance for Biotech Patents

Sun, 01 Jun 2008 00:00:00 +1200

The Intellectual Property Office of New Zealand (IPONZ) recently completed a review of its practice of raising objections based on morality considerations, and has just released new guidelines that may cause difficulties for some biotechnology patent applications.

Section 17(1) of New Zealand Patents Act 1953 empowers the Commissioner to refuse a patent application for an invention that is deemed to be contrary to morality. Traditionally, IPONZ would not allow patents for inventions that would be considered “contrary to morality” by New Zealand society as a whole. Objections were largely restricted to claims covering humans, parts of humans, or processes for the production of a human.

The recently published IPONZ practice provides, as a general guide, that an objection under section 17(1) is likely to arise for any claim directed to human beings, processes which give rise to human beings and biological processes for their production, methods of cloning human beings, totipotent human stem cells, human embryos and processes requiring their use, placental and umbilical cord tissues and processes requiring the use of placental and umbilical cord tissues, transformed host cells within a human, and other cells and tissues within a human.

IPONZ has broadened the ambit of what is “contrary to morality” by stating that it will raise an objection under section 17(1) where the use of an invention would be contrary to not only New Zealand society as a whole, but to what is termed a “significant section of the community”, including Maori (the indigenous population of New Zealand).

Most commentators agree that decisions based on morality should not be based solely on what some members of public may find objectionable, but rather should involve a detailed analysis of any effect on human health, any economic impact, any environmental issues, and prevailing opinions of the population as a whole. It appears that the new IPONZ practice, which considers what may be viewed as offensive to a subset of the population, lowers the threshold of what is considered “contrary to morality”.

IPONZ has also stated that consideration of the content of a draft Patents Bill, which is waiting to be introduced into the New Zealand Parliament, is appropriate in setting its new practice. This statement may cause some controversy as many will view IPONZ as pre-empting legislation not yet passed by Parliament.

The new IPONZ practice may concern those in the biotech industry. Further ambiguity in respect of morality objections has been created, rather than legal certainty.

Controversy over new guidelines on the morality of biotech patents

Mon, 26 May 2008 00:00:00 +1200

Section 17(1) of New Zealand Patents Act 1953 empowers the Commissioner to refuse a patent application for an invention that is deemed to be contrary to morality. Traditionally, IPONZ would not allow patents for inventions that would be considered contrary to morality by New Zealand society as a whole. Objections were largely restricted to claims covering humans, parts of humans, or processes for the production of a human.

The recently published IPONZ practice provides, as a general guide, that an objection under section 17(1) is likely to arise for any claim directed to human beings, processes which give rise to human beings and biological processes for their production, methods of cloning human beings, totipotent human stem cells, human embryos and processes requiring their use, placental and umbilical cord tissues and processes requiring the use of placental and umbilical cord tissues, transformed host cells within a human, and other cells and tissues within a human.

IPONZ has broadened the ambit of what is contrary to morality by stating that it will raise an objection under section 17(1) where the use of an invention would be contrary to not only New Zealand society as a whole, but to what is termed a “significant section of the community”, including Maori (the indigenous population of New Zealand).

Most commentators agree that decisions based on morality should not be based solely on what some members of public may find objectionable, but rather should involve a detailed analysis of any effect on human health, any economic impact, any environmental issues and prevailing opinions of the population as a whole. It appears that the new IPONZ practice, which considers what may be viewed as offensive to a subset of the population, lowers the threshold of what is considered contrary to morality.

IPONZ has also stated that consideration of the content of a draft Patents Bill, which is waiting to be introduced into the New Zealand Parliament, is appropriate in setting its new practice. This statement may cause some controversy
as many will view IPONZ as preempting legislation not yet passed by Parliament.

The new IPONZ practice may concern those in the biotech industry. Further ambiguity in respect of morality objections has been created, rather than legal certainty.

This article was published in Managing Intellectual Property, June 2008.

New Zealand and China Free Trade Agreement

Mon, 21 Apr 2008 00:00:00 +1200

On 7 April 2008 New Zealand and China signed a free trade agreement (“the agreement”). The agreement is said to provide mutually beneficial concessions in the areas of trade of goods, services and investment and New Zealand is the first country to enter in to any sort of free trade agreement with China.

The agreement refers specifically to the importance of intellectual property rights in “promoting economic and social development, particularly in the new digital economy, technological innovation and trade”.

Under the agreement each party must establish and maintain transparent intellectual property rights regimes as well as reaffirming its commitment to an international intellectual property rights agreement, Trade Related Aspects of Intellectual Property (TRIPS), which provides that members of the World Trade Organisation must maintain basic minimum intellectual property rights regimes. The TRIPS Agreement is specifically incorporated into and made part of the agreement.

The parties agree to co-operate in eliminating trade in counterfeit goods. This may be viewed as a hollow promise on China’s part given the scale of China’s counterfeiting trade. Anecdotal evidence is that China is the world’s single largest manufacturer of counterfeit goods, with the vast majority of counterfeit goods coming out of China.

The Agreement also comes at a time when China is under the spotlight for both human rights and environmental abuses particularly as the Beijing Olympics draws closer.

In real terms however it promises to remove tariffs on 96% of New Zealand exports to China and to save NZ$115.5 million on duty based on current trade. This is significant given that China is currently New Zealand’s fourth largest export market behind Australia, the United States and Japan.

The agreement has highlighted the need, more than ever, for New Zealand businesses who intend to trade in China to protect their intellectual property rights in China.

Australian trade marks

Thu, 27 Mar 2008 00:00:00 +1300

Warning - Overdue Australian trade mark renewals grace period reduced, effective 28 March

While it is advisable to renew trade mark registrations on time, it has been possible to renew Australian trade mark registrations up to twelve months after the due date for renewal.

IP Australia has now cut this to six months effective from 28 March 2008, upon which the trade mark will be deemed to have expired.

If you are concerned about your Australian trade mark renewals please contact your Baldwins IP advisor.

Baldwins ranked top tier NZ patent firm

Fri, 22 Feb 2008 00:00:00 +1300

Managing Intellectual Property "World IP Survey 2008" results have been released.

Baldwins has again participated in Managing IP's survey of leading firms in 65 jurisdictions.

The results rank firms by country indicating their capabilities in prosecution and contentious work for both patents and trade marks.

Baldwins maintains its position from last year, ranked at the top - Tier 1 for New Zealand in both patent prosecution and contentious work.

"The World IP survey is not simply a list of the biggest firms, or a list of those that have the biggest caseload or are the oldest. Instead, it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service cilents." MIP, February 2008

The results of the whole survey are being released progressively, starting with patents this month, trade marks in March, and this year for the first time copyright in April.

More detail on the survey and methodology can be found on MIP's web site.

To access the results please see links at the bottom of the page.

Genealogy services not similar to services to trace living relatives

Thu, 14 Feb 2008 00:00:00 +1300

In Intellectual Reserve Inc v Sintes (CIV 2007-404-2610, December 13 2007), the High Court has dismissed an appeal from the decision of the assistant commissioner of trademarks in relation to a stylised version of the words 'family search'.

Intellectual Reserve Inc is a not-for-profit corporation based in the United States which licenses the right to use the trademark FAMILYSEARCH in New Zealand and elsewhere to the Church of Jesus Christ Latter-Day Saints. Intellectual Reserve owns:

registrations in New Zealand for stylised and word versions of FAMILYSEARCH for genealogical services, among other things;
word mark registrations for FAMILYSEARCH for training, educational and cultural activities relating to genealogical research; and
stylised representations for wholesale and distribution of various media containing information and advice on ancestry, family history and genealogy, among other things.

Intellectual Reserve opposed an application by an individual, Robert Sintes, for the registration of a stylised version of the words 'family search' in Class 45 of the Nice Classification for services for locating birth parents and adopted children.

The assistant commissioner compared only the stylised versions of each party's marks and found that the marks were not similar.

In comparing the services, the assistant commissioner held that Sintes's services help to find living family members, birth parents or adopted children, whereas Intellectual Reserve's services concerned genealogy. The assistant commissioner also found that the markets overlapped because a person might be looking for both dead and living family members. However, she did not make a separate ruling on whether Sintes's mark covered the same or similar services, perhaps because having ruled that the marks were not similar, there was no need to make any finding as to the similarity of the services. The assistant commissioner thus dismissed the opposition. Intellectual Reserve appealed.

The High Court considered that the marks were similar. Turning to the services, the court found that there was only a superficial similarity between the services offered in that they relate to genealogy. Intellectual Reserve's services offer the tools for a person to research his or her own family genealogy, while Sintes's services help to research and trace lost family members. The judge concluded that the services were not similar and, as such, confusion or deception between the marks was unlikely.

Therefore, the court dismissed the appeal and ordered the registration of Sintes's mark.

This article was published in World Trademark Report February 14, 2008

Great Barrier Air banned from using its name

Thu, 07 Feb 2008 00:00:00 +1300

In Great Barrier Airlines Flight Operations Limited v Great Barrier Air Limited (CIV 2007-404-5710, December 13 2007), the High Court has issued an interim injunction preventing the use of the name Great Barrier Air in relation to an airline service offering flights to and from Great Barrier Island.

Both parties operate airlines to Great Barrier Island, a small island off the coast of New Zealand. Great Barrier Airlines Flight Operations Limited, which sought the injunction, had been trading since 1995 under the name Great Barrier Airlines. Great Barrier Air Limited had been offering flights to and from Great Barrier Island for some time, but had previously traded under the names Great Barrier Xpress and Mountain Air.

Great Barrier Airlines claimed that Great Barrier Air was engaging in passing off and breaching the Fair Trading Act, which prohibits misleading and deceptive conduct in the course of trade. It sought an interim injunction in the district court. The district court refused to grant the injunction and Great Barrier Airlines appealed to the High Court.

Despite the fact that both parties' names were descriptive, the court ruled that Great Barrier Airlines had a strong case. The court did not consider whether Great Barrier Airlines had the requisite reputation, a necessary ingredient for a passing off or Fair Trading Act claim.

The court found no difficulty in awarding an interim injunction against Great Barrier Air. The problem was that Great Barrier Air had acquired a telephone directory listing for Great Barrier Air; it admitted that this move was designed to ensure that its listing appeared before the listing for Great Barrier Airlines. The telephone directory was reprinted only yearly and it was impossible to remove Great Barrier Air's listing from the thousands of hard copies which had been distributed.

Great Barrier Airlines suggested an independent telephone monitoring service whereby the caller would be interrogated as to which airline he or she had intended to call. Great Barrier Air objected to the imposition of a monitoring service, citing cost and annoyance to customers. The court had little sympathy for Great Barrier Air, stating that it had placed itself in a difficult position by choosing a name so close to its principal competitor. The judge ruled that the monitoring service was the best available means of minimizing any confusion between the parties, while still allowing the respondent to trade. The judge ordered the costs of the monitoring service to be shared equally between the parties on an interim basis, leaving the question of which party should ultimately pay for the service until trial.

This article was published in World Trademark Report - February 7, 2008

Application to register mark by co-owner deemed to be in bad faith

Mon, 04 Feb 2008 00:00:00 +1300

In Neumann v Sons of the Desert SL (CIV 2007-485-212, November 5 2007), the High Court has confirmed that where there are co-owners of a trademark, an application to register the mark by only one of the owners without the co-owner's knowledge is deemed to have been made in bad faith.

In 1998 Herbert Neumann and two others incorporated a company in Spain with the purpose of marketing clothing using the mark EL NINO TARIFA and a logo of a seated boy.:

There was allegedly an oral agreement that the mark and logo would be jointly owned by all three parties worldwide.

Neumann's submitted evidence was that, over time, he and a certain Mr Galdeano became worldwide co-owners of the mark, two of the original three owners having withdrawn from the business. Galdeano's company, Sons of the Desert, subsequently sought to register the mark in New Zealand without Neumann.

Neumann argued that:

Sons of the Desert's attempt to register the mark in New Zealand was contrary to the agreement made in Spain in 1998; and

the application had been made in bad faith.

At opposition level, the assistant commissioner found that bad faith had not been established and allowed the application. Neumann appealed to the High Court and brought new evidence of the relationship between the parties.

On appeal, the High Court applied Justice Aldous's test for bad faith as set out in Harrison's Trademark Application ([2005] FSR 177) - that is, the court must decide whether the knowledge of the applicant was such that its decision to apply for registration would be regarded as bad faith by persons adopting proper standards.

The court found that Galdeano and Neumann were co-owners of the mark. Galdeano controls Sons of the Desert, the applicant for the trademark, and thus Sons of the Desert had knowledge of the co-ownership agreement. The attempt to register the mark without Neumann's knowledge would deprive Neumann of the benefit of registration, and ultimately use, of the mark in New Zealand.

Therefore, the appeal was allowed and the trademark application filed by Sons of the Desert was cancelled.

This article was published in World Trademark Report - February 4, 2008

Supreme Court hears first trade mark case

Fri, 01 Feb 2008 00:00:00 +1300

The recently established Supreme Court, which replaced the Privy Council as the final court of appeal, has determined its first trademark case in Austin Nichols & Co Inc v Stichting Lodestar ([2007] NZSC 103, December 11 2007). The main question for determination was the weight to be placed on the decision of the commissioner of trademarks in an opposition.
In June 2000 Stichting Lodestar applied to register the trademark WILD GEESE in respect of beers and other alcoholic beverages. Austin Nichols & Co Inc, the owner of the registered trademark WILD TURKEY in respect of the same types of goods, opposed registration. The assistant commissioner held that there was no reasonable likelihood of deception or confusion between the two marks.
Austin Nichols appealed to the High Court. The court accepted that the commissioner's decision had to be accorded weight, but that as an appeal court, it had to determine for itself whether there was a reasonable probability of confusion. The court found that there was a reasonable probability of confusion and allowed the appeal.
The Court of Appeal took the view that the High Court had not given weight to the commissioner's opinion; although the High Court was entitled to reach its own view, it should have given some deference to the decision of the commissioner. The Court of Appeal placed weight on the commissioner's decision and came to its own conclusion that there was no reasonable probability of confusion, thereby allowing Stichting Lodestar's appeal.
On appeal by Austin Nichols to the Supreme Court, the issue was whether the appellate court should give deference to the decision maker below - that is, whether the High Court should defer to the assessment of the commissioner. The Supreme Court held that while the extent of the consideration given to the decision appealed from is a matter of judgment, the appellate court must form its own view.
Although the Court of Appeal criticized the approach of the High Court, it went on to form its own view of the similarity of the marks. As the Supreme Court could find no error in the approach of the Court of Appeal, it dismissed the appeal. Although Austin Nichols was successful to the extent that the Supreme Court agreed with it about the weight to be placed on the decision of the commissioner, it was ultimately unsuccessful, as WILD GEESE is now eligible for registration despite the existence of the WILD TURKEY mark.

This article was published in Managing Intellectual Property - February 2008

Tax Incentives for Innovation in New Zealand

Tue, 15 Jan 2008 00:00:00 +1300

The New Zealand government has enacted legislation bringing in a new tax credit regime as a means of spurring private sector investment in research and development in New Zealand. The Act is due to come into force for the 2008-2009 financial year. The new scheme, which is regarded as being one of the most generous schemes in the world, is expected to encourage innovation and investment in intellectual property.

The scheme provides for a 15 percent tax credit on research and development. Two categories of research activities are covered: core activities and supporting activities. Core activities are systematic, investigative or experimental activities designed to acquire new knowledge or create new or improved products, processes or services. They must also either seek to resolve scientific or technological uncertainty, or involve an appreciable element of novelty. Supporting activities are other activities that are commensurate with, required for and integral to, the carrying out of core activities.

While activities such as commercial or legal aspects of patenting are excluded from core activities, they may be claimed as supporting activities. To qualify, the entity claiming the credit must be New Zealand based and must own the results of the research, while the research must be carried out predominantly in New Zealand and must relate to the entity’s business. Universities and government research organisations are excluded, as is the acquisition of core technology.

The research and development regime will be administered by Inland Revenue. All claims must be filed electronically, on the same day as the business files its tax return. As self assessment of research and development activities underpins the regime, it will be important to thoroughly document the research and development process in order to confirm eligibility for the tax credit. Necessary documents to support a claim will most likely include project plans, test reports and technical data. If an entity does not assess the activities correctly, it will not receive the credit, however the research need not be successful to qualify. The regime is likely to act as an incentive for international companies to conduct research and trial
work in New Zealand through locally based companies.

There are no restrictions on the type of entity that can claim the credit, which will extend to individuals, partnerships, companies and trusts. However the entity must have a minimum expenditure of $20,000 per annum on research and development, and must bear the associated financial and technical risks.

Not so Happy Valley

Mon, 24 Dec 2007 00:00:00 +1300

Solid Energy operates coal mines in New Zealand. Save Happy Valley Coalition is an environmental group. The parties have been involved in litigation in relation to Solid Energy’s proposed mine at Happy Valley in New Zealand for some time.

Solid Energy became aware of a mock report about its mining activities produced by Save Happy Valley and/or some of its members. The mock report featured Solid Energy’s logo and name. The mock report also copied parts of earlier Solid Energy reports. The mock report was highly critical of Solid Energy. Solid Energy filed proceedings for an interim injunction claiming infringement of its registered trade marks, infringement of its copyright and breach of the Fair Trading Act which prohibits misleading and deceptive conduct in the course of trade.

Solid Energy was careful to categorise this as a property rights case and not to be seen to be interfering with Save Happy Valley’s freedom of expression. Solid Energy had earlier pleaded injurious falsehood and defamation but restricted the interim injunction application to intellectual property rights causes of action.

It was argued that Save Happy Valley’s mock report was a parody and the use of Solid Energy’s name and logo was designed to add an element of surprise to the parody. Under the Fair Trading Act the judge found no arguable case because Save Happy Valley was not doing anything in trade. He did not, however apply the same reasoning to the Trade Marks Act.

The judge referred to section 10 of the Trade Marks Act which provides that the owner of the trade mark has the exclusive right to use the trade mark. He deliberately chose not to consider the infringement provision, section 89. activities were in the course of trade or were for the same or similar goods or services, or whether there was likely to be confusion or deception. There was no consideration paid in the judgment to the dilution provision in the Trade Marks Act which provides relief for the owner of a well known mark in relation to dissimilar goods or services where such use is likely to damage the character or repute of the mark.

In the circumstances, dilution would seem to have been the plaintiff’s strongest ground for getting home under the Trade Marks Act. Although it was an interim injunction application and the plaintiff only had to show an arguable case, the judge ignored the normal trade mark infringement requirements of use in the course of trade, similarity of goods or services, and likelihood of confusion or deception. The judge referred only briefly to copyright simply saying there was an arguable case that use of Solid Energy’s name and logo infringed its copyright without any discussion of whether the name or logo were original copyright works.

While the logo may well have been an original copyright work it is very doubtful the words “Solid Energy” would qualify as a copyright work. The judge dismissed Save Happy Valley’s arguments that its copying was fair dealing simply saying that that was a matter for the trial. The judge also appeared to ignore the large time delay between the publication of the mock report and the hearing (five months) a factor which is often fatal to a plaintiff under the balance of convenience head in an interim injunction application. The matter will now proceed to trial unless it is settled before then.

Convention Priority or Registrability First?

Fri, 21 Dec 2007 00:00:00 +1300

On 27 October 2005 Unilever applied for DOVE SUMMER GLOW in class 3.

On 6 December 2005 Neutrogena applied for SUMMER GLOW and claimed convention priority from a United States application dated 21 August 2005.

The Unilever application was accepted by the Intellectual Property Office of New Zealand but acceptance was subsequently revoked when the Neutrogena mark was filed, as provided for under section 42 of the Trade Marks Act 2002 which provides that the Commissioner may revoke acceptance if another application has priority. Unilever requested a hearing.

At the hearing Unilever argued that Neutrogena’s application was not distinctive and would never reach acceptance or registration and for that reason Unilever’s acceptance should not have been revoked. The Hearings Officer ruled that the scheme of the legislation required the priority of trade marks to be dealt with before registrability. Unilever appealed to the High Court claiming that the Hearings Officer should have considered the registrability of Neutrogena’s mark and had not done so. Neutrogena acted as an intervener to the appeal.

Unilever presented two arguments to the High Court.

The first argument was that considering priority before registrability will result in unnecessary expense because Neutrogena’s mark is not registrable and would not survive initial consideration by the Intellectual Property Office. The High Court dismissed this argument stating that it failed to see any significant difference. In one scenario Unilever’s mark could be accepted first and then opposed and in the other Neutrogena’s mark could be accepted and then opposed.

The second argument relied on Re Carter Medicine Cos Trade Marks (1892) 3 Ch. D. 472 as authority for the point that the discretion to revoke acceptance should only be exercised if the earlier mark is registrable.

In Carter Medicine counsel for Carter Medicine argued that the British legislation was to be interpreted as meaning that its application in the United States to register the word “PILLS” meant that it was entitled to have the word registered in Britain. In Carter Medicine North J rejected the argument that the fact of an application in the United States automatically meant that the application was entitled to registration in Britain. The High Court ruled Carter Medicine not to be authority for the point that registrability must be considered before priority.

The High Court agreed with the Assistant Commissioner that the scheme of the legislation dictates that priority must be dealt with before registrability. We now wait to see how the Intellectual Property Office deals with the Neutrogena application and subsequently with the Unilever application.

Yellow Pages, Books and Ducks.

Mon, 17 Dec 2007 00:00:00 +1300

The owners of the Yellow Pages hard copy and online directory of that name were disturbed to find what appeared to be copies of their directories on the websites www.yellowbook.co.nz and yellowduck.co.nz.

They sued for infringement of copyright, and breach of the Fair Trading Act, which prohibits misleading and deceptive conduct in the course of trade.

The first defendant is a company incorporated in Australia and sought leave to allow a director to represent the company in court. The High Court rejected the application on the basis that the rules are clear that while individuals may represent themselves, companies must be represented by counsel. The second and third defendants were individuals and could therefore represent themselves.

The defendants also sought to argue that the New Zealand courts had no jurisdiction or alternatively were forum non conveniens and the dispute should be heard in Australia. The court rejected both of these arguments. The judge found that because the defendants’ websites were available in New Zealand they had chosen to act in such a way as to bring themselves within New Zealand law. Further, Australian courts have no jurisdiction to hear a dispute about infringement of rights held in New Zealand.

The Yello Pages companies (the plaintiffs) successfully showed an arguable case of copyright infringement despite the defendants’ claims that they had compiled their own directory.

The judge then turned to consider trade mark infringement. The judge agreed with the plaintiffs’ submission that YELLOW PAGES and YELLOW BOOK are confusingly similar. Relevant factors included:

BOOKS and PAGES have a similar idea or meaning
Consumers are likely to recall the marks by the word YELLOW
YELLOW is an essential feature of both marks
The first plaintiff has an extremely strong reputation in the name YELLOW PAGES

The judge had no difficulty in finding an arguable case of trade mark infringement. The same was true of the claim under the Fair Trading Act for misleading and deceptive conduct in the course of trade.

The balance of convenience also favoured the plaintiffs. There was no evidence the defendants could pay damages. Given that they submitted they could not afford legal representation, and the second defendant was bankrupt, this is no surprise. The plaintiffs on the other hand, have significant businesses in New Zealand.

The judge issued orders restraining the defendants’ from hosting business directories at www.yellowbook. co.nz and www.yellowduck.co.nz. The plaintiffs also attempted to restrain the defendants’ use of the colour yellow and any use of the word “Yellow”. The judge refused stating that the plaintiffs’ case was not run on any basis which would justify such restraints.

The judge directed the matter be set down for trial without delay.

Australian Patent Act 1990 - Amendment

Fri, 14 Dec 2007 00:00:00 +1300

Good news for innovators - amendment due on experimental use exception

The Australian government has responded to the recommendations of the Advisory Council on Intellectual Property (ACIP) report, Patents and Experimental Use, and agreed to amend the Patents Act 1990 to clarify the experimental use exception to patent infringement.

The changes will provide researchers and innovators with a clearer picture on where they can tread without infringing a patentee's rights.

The proposed amendment means that there will no infringement of a patent if the actions performed in respect of a patented invention:

are done for experimental purposes;

relate to the subject matter of the invention; and

do not unreasonably conflict with the normal exploitation of the patent

It is also expected that the changes will include examples of what such experimental use could comprise, such as determining both how an invention works and the scope of the invention, determining the validity of patent claims and attempting to improve the invention.

The changes are in line with Australian government policy of supporting economic growth by encouraging innovation.

For further information please either contact Theresa McSherry or visit IP Australia.

Guide to Intellectual Property for Maori Organisations and Communities

Mon, 03 Dec 2007 00:00:00 +1300

The New Zealand government has released a free Guide to Intellectual Property for Maori Organisations and Communities.

The guide is part of the first phase of a three-step work programme to examine more closely the relationship between IP rights and systems and traditional knowledge.

One of the aims of the first stage is to "build the capacity of the Maori so they understand the opportunities and risks that the IP system provides to traditional Maori knowledge and its holders". The second stage is designed to identify any problems associated with the relationship between intellectual property and traditional knowledge in New Zealand. The third stage involves the development of possible solutions to address some of the issues that will have become apparent during the first and second stages.

The guide is separate from what is colloquially referred to as 'WAI 262'. WAI 262 refers to a claim brought against the New Zealand Crown in 1991 by the members of six tribes under the Treaty of Waitangi. The treaty was signed in 1840 by the Maori and the Crown; the Maori gave the Crown rights to govern and develop British settlements, while the Crown guaranteed the Maori full protection of their interests and status, as well as full citizenship rights. Generally speaking, the claims assert exclusive rights to flora and fauna, cultural knowledge and property. The issues raised in WAI 262 are similar to those raised in other jurisdictions by indigenous groups.

Some 16 years after the claim was first filed, the WAI 262 hearings have been concluded and the Waitangi Tribunal is working on its recommendations to the government.

The guide does not deal specifically with any of the issues raised in WAI 262, but, according to the government, is "mindful of the relationship between [WAI 262] and IP policy and legislation".

Build-a-Bear Workshop – Premature Rejection

Fri, 30 Nov 2007 00:00:00 +1300

Build-A-Bear Workshop, Inc. applied for a trade mark for the three dimensional shape of a heart in classes 28 and 35 in relation to, inter alia, toys and dolls and retail of such items.

The Intellectual Property Office of New Zealand rejected the application on the basis that it has no distinctive character. Build-A-Bear Workshop, Inc. did not submit any evidence of use and relied on the inherent distinctive of the shape.

The application then went before a Hearing Officer who reached the same conclusion as the Intellectual Property Office of New Zealand.

Build-A-Bear Workshop, Inc. appealed to the High Court claiming that the Intellectual Property Office of New Zealand had rejected the application prematurely. The applicant claimed that if there was any risk of legitimate use by other traders such traders could have opposed the application.

Before the High Court Build-A-Bear Workshop, Inc. accepted that there was nothing in its shape or description to limit its size, colour, material or use.

The High Court looked at the scheme of the Trade Marks Act 2002 and noted:

The Commissioner of Trade Marks must examine trade mark applications
If the Commissioner thinks an application does not comply he or she must give the applicant an opportunity to respond or amend the application
If the Commissioner remains of the same view he or she must tell the applicant
The applicant must be given the opportunity of a hearing and can submit evidence
If the Commissioner is still not satisfied then he or she must reject the application

Taking into account the statutory scheme the High Court said that the Commissioner has a duty to consider an application, whether or not anyone opposes an application. The grant of a trade mark registration is the grant of a statutory monopoly and there is a public interest factor. The Commissioner has to satisfy him or herself that the application meets the criteria of the Act or is bound to reject an application. The High Court made it clear that the onus is on the applicant to satisfy the Commissioner.

The High Court found that the Hearings Officer’s view that the shape is capable of being used as a toy or part of a toy “seems unassailable”. The evidence was that other traders were using heart shapes in relation to toys. The High Court found the Hearings Officer’s conclusion that other traders are likely to want to use the mark “almost inevitable”.

This decision indicates the importance that the legislation places on the examination process by the Intellectual Property Office.

Doha Declaration on TRIPS and Public Health

Fri, 16 Nov 2007 00:00:00 +1300

Possible acceptance of TRIPS Amendment by New Zealand

The purpose of this consultation document is to obtain the views of the public on whether New Zealand should accept a Protocol amending the World Trade Organisation (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights ("the TRIPS Agreement").

The Doha Declaration deals with the granting of compulsory licenses for the production of patented pharmaceuticals for export to countries which require such pharmaceuticals to deal with public health problems, but have insufficient or no capacity to produce them themselves.

This discussion document sets out the issues and considers legislative amendments necessary to give effect to the Protocol if New Zealand accepts it, and seeks public input on these issues.

Click here for the full discussion document.

Extending the scope of privilege with the New Zealand Evidence Act 2007

Mon, 12 Nov 2007 00:00:00 +1300

Recent reforms on the law of evidence to increase protecting communications between patent attorneys and their clients.

To read in full please click here.

This article was published in Patent World, November 2007.

You will require Adobe Acrobat Reader to view this file.

The Sun Rises on .asia

Sat, 29 Sep 2007 00:00:00 +1200

A new Top Level Domain (TLD) for the Asia-Pacific region is set to launch on 9 October 2007.

.asia will provide a region specific domain registry for the Asia-Pacific community. It is likely to be the biggest domain name launch since the 2005 release of the European .eu registry.

Aimed at what is claimed to be the world’s largest and fastest growing combined online and offline market, the release of .asia will be a major event in domain name and e-commerce circles. It will be important for businesses in the Asia Pacific region, including New Zealand and Australia, to act quickly if they want to secure .asia domain names for their business and trade marks.

To be eligible, an applicant must be a legal entity within the Asia-Pacific geographic region. This is defined broadly, and includes both New Zealand and Australia.

Eligible entities are:

corporations and companies
cooperatives, partnerships and collectives
government bodies, states, sovereigns and municipalities
political parties and trade unions • trusts, estates, associations and societies
institutions
natural persons

Sunrise Period

The sponsor organisation responsible for .asia, the DotAsia Organisation, plans a three-stage sunrise period, running from 9 October 2007 to 15 January 2008, before the .asia TLD is opened to the general public.

During Sunrise Stage 1, which starts on 9 October 2007, national government bodies can register domain names relevant to their local community, such as country, state, province or city names.

During Sunrise Stage 2(a), which runs from 9 October 2007 to 30 October 2007, owners of trade marks registered within the Asia-Pacific region before 16 March 2004 and currently in use can register domain names identical to those marks.

During Sunrise Stages 2(b), 2(c) and 3, which run from 13 November 2007 to 15 January 2008, the owners of trade marks registered within the Asia-Pacific region before 6 December 2006, and currently in use, can register domain names identical to their trade marks, or extended domain names incorporating the trade mark itself and words from the relevant description in the Nice classification system. For example, the owner of the trade mark ‘ABC’ in class 25 (clothing) could register the domain name “ABCClothing.asia”.

Registered entity names, such as company names, can also be registered during this period. The relevant name must have been registered in a country within the region before 6 December 2006 and documentary evidence of registration, such as a certificate of incorporation, must be submitted with the application.

Land Rush

A Land Rush period will follow the sunrise period. During this period, applications for domain names by the general public will be taken, providing these meet the necessary eligibility requirements. This is planned for February 2008, though exact dates are yet to be confirmed.

If multiple applications for the same domain name are received during the Land Rush period, all the applicants will be invited to take part in an auction for the domain name at the Land Rush’s conclusion, with no account taken of the order in which the applications were received.

Go-Live At the conclusion of the Land Rush period the ‘Go- Live’ phase will begin. Registrations will then be open to anyone meeting the eligibility criteria on a first-in, September 2007 Issue 033 email@baldwins.com www.baldwins.com In legal matters, no publication can take the place of professional advice. Although every effort has been made to ensure the accuracy of the information in this publication, it should not be treated as a basis for formulating business decisions without further advice. ©2007 Baldwins. first-served basis. This is planned to start some time in March 2008, although again, an exact date is yet to be confirmed.

Conclusion

Registration costs for .asia domain names are yet to be published, but we will keep you advised as soon as any relevant information comes to hand.

Businesses operating in the Asia-Pacific marketplace should be prepared for the upcoming release of .asia. If you have not done so already, you should seriously consider the opportunities a .asia domain name offers for your business. In general, we advise seeking to register domain names in all relevant markets for your business names and most important trade marks.

The DotAsia Organisation has stated that the UDRP domain name dispute mechanism will apply to .asia domain names. However, it is also exploring the possibility of having local dispute resolution mechanisms apply when both parties to a dispute are in the same territory. We strongly recommend that you take proactive steps to protect your business name and trade marks, to avoid becoming embroiled in dispute resolution procedures if someone else registers them as domain names.

If you would like any assistance in relation to the launch of .asia, or otherwise in relation to your domain name portfolio, please do not hesitate to contact your usual advisor at Baldwins.

TICK TOCK for Tea Too Similar to TIC TAC for Confectionery

Thu, 30 Aug 2007 00:00:00 +1200

A Hearings Officer recently upheld the opposition by Ferrero to registration of TICK TOCK in class 30 for tea.

Wistbray Limited, a United Kingdom company, applied for the trade mark TICK TOCK in class 30 for tea. Ferrero opposed claiming that it was too similar to its own mark TIC TAC, which it had used extensively for confectionery in New Zealand for some years. Ferrero, relying on its reputation in the mark TIC TAC for confectionery, produced a survey demonstrating that over 95% of consumers were aware of the TIC TAC brand. It also relied on several registered trade marks covering confectionery. Wistbray did not file any evidence.

In the Hearings Officer’s view TICK and TIC are pronounced the same. The hearings officer went on to say that not only were TAC and TOCK similar but “may even be identical” and further that to all intents and purposes, the marks “became the same”.

In relation to the goods the Hearings Officer conceded that the goods (tea and confectionery) were quite different and were unlikely to be positioned together in supermarkets and convenience stores. However, the strong reputation in the TIC TAC mark and the strong similarity between the marks was said to be likely to lead to confusion and deception despite the difference in the goods.

Although Ferrero had several trade mark registrations for TIC TAC for non-medicated confectionery in class 30, Ferrero failed on this ground. The Hearings Officer dismissed the opposition on the basis of the earlier registrations simply stating that use of TICK TOCK in relation to goods covered by the application is not likely to deceive or cause confusion. It is difficult to understand how an opposition can succeed on the basis of reputation but fail on the basis of trade mark registrations for the same mark for the same goods as the reputation is claimed for.

Ferrero also claimed that the mark TICK TOCK lacked distinctive character. Presumably this was on the basis that it would always be confusingly associated with TIC TAC and was not capable of distinguishing Wistbray’s goods from those of Ferrero sold under TIC TAC. The Hearings Officer dismissed the opposition on this ground on the basis that there was no evidence before him to address the objection that the mark TICK TOCK lacked distinctive character.

Neither party requested to be heard at a hearing or filed submissions. Rather, both parties asked that the matter be decided on the papers filed. In the absence of submissions from the parties the Hearings Officer appeared to lack understanding on how the evidence related to the grounds of opposition as pleaded.

Wistbray is not known to have lodged an appeal to the High Court and for the time being the Hearings Officer’s ruling stands.

Is it “Use” of a Trade Mark if it is Not Used on the Goods?

Thu, 30 Aug 2007 00:00:00 +1200

In Aqua Technics Pool and Spa Centre New Zealand Limited v Aqua-Tech Limited (unreported, CA257/05, 22 March 2007, Court of Appeal) the Court of Appeal was asked to consider whether the respondent, Aqua-Tech Limited (Aqua-Tech), had established use of the trade mark “Aqua-Tech” in relation to spa and swimming pools.

Aqua-Tech was the manufacturer of spa and swimming pools and sold mostly to trade. In particular it sold to an associated company, Cascade Industries Limited, who acted as a retailer. Aqua-Tech’s materials referred to these pools as “Cascade pools”, however, all products were advertised under the heading of “Aqua-Tech” and “Aqua-Tech” featured on catalogues as well as each pool having a notice attached referring to “Aqua-Tech”.

The appellant, Aqua Technics Pool and Spa Centre New Zealand Limited (Aqua Technics), argued that the use was part of a company or trading name, as in “Aqua- Tech Industries Limited” or Aqua-Tech Industries”, which featured on some materials. It also argued that it was not use on or in relation to goods, not use as a trade mark and it was use for services not for goods. The Court of Appeal rejected all of Aqua Technic’s arguments.

The Court of Appeal had no difficulty in accepting that a trade mark could be used as part of a company or trading name and still constitute use as a trade mark. It also had no difficulty in accepting that use could be on promotional materials and not on the goods themselves.

The use was said to be sufficient to qualify as use of a trade mark because it was designed to establish a connection between the goods and the manufacturer. This was considered to be a link between Aqua-Tech and the origin of the goods and was therefore use as a trade mark.

Because Aqua-Tech was the manufacturer the Court of Appeal accepted that that was use in relation to goods, as opposed to services. The Court of Appeal linked this back to the connection between the goods and the manufacturer and a manufacturer being responsible for the quality of goods.

An interesting aspect to this case was Aqua Technics criticisms of Aqua Tech’s evidence for being unreliable. The case began as a trade mark opposition where evidence is given by statutory declaration or affidavit. There is a right to cross-examine witnesses but this is rarely done. The Court of Appeal said that if Aqua Technics had wanted to challenge Aqua-Tech’s evidence it should have asked for the right to cross-examine. It went on to say that it is unfair to challenge the veracity of a witness on appeal when the challenge had not been put earlier.

Aqua Technic’s application for leave to appeal has been declined by the Supreme Court. There are no further rights of appeal and the Court of Appeal’s ruling stands.

Hearings Officer’s Views to be Given Weight by Appellate Courts

Thu, 30 Aug 2007 00:00:00 +1200

The Court of Appeal has overturned the High Court’s ruling that WILD GEESE is confusingly similar to WILD TURKEY in respect of class 33 goods.

In 2004 a Hearings Officer ruled that although there were conceptual similarities between WILD GEESE and WILD TURKEY, the marks did not look or sound the same and were not confusingly similar.

Austin Nichols, the owner of Wild Turkey, appealed the Hearings Officer’s ruling to the High Court. In the High Court Gendall J accepted that GEESE and TURKEY did not look or sound similar but considering the marks as a whole, the idea of both marks was a large wild bird that is the subject of a hunt. Gendall J placed considerable emphasis on the idea of the marks.

In the High Court, the owner of Wild Geese, Stichting Lodestar, argued that substantial weight should be given to the Hearings Officer’s view. Referring to VB Distributors Limited v Matsushita Electrical Industrial Co Limited (1999) TCLR 349 (HC) Gendall J concluded that he did not have to give any weight to the views of the Hearings Officer.

The Court of Appeal disagreed stating that the High Court on appeal from the Hearings Officer is required to give some weight to the decision of the Hearings Officer in an area within the Hearings Officer’s expertise. The Court of Appeal called for deference by the High Court to the expertise of the Hearings Officer. The Court of Appeal placed weight on the “stark differences” between GEESE and TURKEY. The Court of Appeal ruled that the concept of the marks was not strong and the class of “hunted birds” is broad and ill-defined.

The Court of Appeal allowed the appeal, awarded costs to Stitching Lodestar and reversed the costs award in the High Court. Stitching Lodestar is entitled to costs in the Court of Appeal, High Court and for the opposition before the Hearings Officer.

The Court of Appeal’s decision is useful for parties who were successful before a Hearings Officer but find themselves as respondents to an appeal at the High Court. The Court of Appeal’s decision may also have an effect on examination practices by the Intellectual Property Office of New Zealand. As a result of the High Court decision the Intellectual Property Office has been maintaining citations of confusingly similar marks on the basis that the idea of the marks is similar. It is likely that the idea of the mark will be given less prominence at the examination stage.

The owner of Wild Turkey, Austin Nichols, has appealed to the Supreme Court. The Supreme Court is likely to hear the case before the end of 2007.

Chinese domain names and internet keywords

Thu, 23 Aug 2007 00:00:00 +1200

Have you recently received an email from a Chinese internet company, saying that someone else has tried to register your name as a domain name or internet keyword in China? If so, you are not alone.

At Baldwins we are receiving an increasing number of enquiries from clients about these emails, which typically state that:

the sender is an authorised domain name registrar in China;
a third party has attempted to register a name as a domain name or as an internet keyword;
an internet check showed the name may be connected to you;
the registration has been delayed while the registrar contacts you;
the registrar can register the domain name or keyword on your behalf to block the third party from doing so.

These emails are misleading, if not fraudulent.

Chinese domain names

The most common domain names referred to are:

.cn, which is the general designation for China; and
.com.cn, which signifies a business or company in China, similar to .co.nz in New Zealand and .com.au in Australia.

Like .com and .co.nz domain names, .cn and .com.cn domain names are registered on a first come, first served basis. We are not aware of any requirement on registrars to investigate whether domain name applications raise any trade mark issues, or to impose a stand down period while such issues are explored.

We have registered a number of Chinese domain names for clients without experiencing any such process or delay, and the body responsible for Chinese domain names states that registrations are entered into the registration database immediately.

If a third party was interested in your name, it would have simply registered it and an email such as this would not arise.

Chinese internet keywords

These are short form words that can be used as searching tools. Each keyword is linked to a particular domain name or website. For example, we could register BALDWINS as an internet keyword and link it to our website at www.baldwins.com. When someone typed BALDWINS into the address bar of their internet browser they would be directed to our website.

The intention of these keywords is that it will be easy for people to find you by typing in a keyword rather than having to guess what your whole domain name is.

However, these keywords:

only operate in China; and
only operate on certain supported internet browsers.

Accordingly, registering a keyword is of limited value, as only internet users in China, who are on a site that supports keywords, can use them.

Also, internet users in China are more likely to enter Chinese characters than English words when looking for your company. This further reduces the value of an English keyword.

Like Chinese domain names, we are not aware of any requirement on registrars to investigate whether internet keywords raise any trade mark issues, or to impose a stand down period while such issues are explored. The body responsible for internet keywords states that internet keywords will be operational within 24 hours of registration.

Scare Tactics

The companies that send these emails appear to base them on existing domain names. They are simply trying to scare you into registering domain names and internet keywords, as a means of creating business for themselves.

We advise against dealing with them.

If you wish to register Chinese domain names or internet keywords, either because they are relevant to your business or to protect yourself from others, we can easily and immediately register them through a reputable registrar. One we use charges US$23.50 per year for a domain name registration, which can then be redirected to your existing website.

We would only recommend registering Chinese internet keywords if you would be particularly perturbed if Chinese websurfers, who use an internet keyword, on a site that supports them, and enter queries in English rather than Chinese, were directed to someone else’s website.

If you would like more information, have received an email you are concerned about, or would like any Chinese domain names or internet keywords registered on your behalf, please contact your usual advisor at Baldwins.

Businesses need to get ready for the Anti-Spam Act

Fri, 22 Jun 2007 00:00:00 +1200

Daniel Gilchrist

The Unsolicited Electronic Messages Act, which comes into force on 6 September 2007, brings with it a number of compliance issues for New Zealand businesses.

The Act, passed in March this year, aims to crack down on unsolicited emails and other electronic messages (spam) in New Zealand. There are estimates that spam makes up to 80 percent of worldwide email traffic. According to Communications Minister David Cunliffe, the Act will stop New Zealand from becoming a ‘safe haven’ for spammers.

The Act applies to all messages originating in, sent to or accessed from New Zealand, including messages sent to any email address ending in .nz or a telephone number beginning with the ‘64’ international access code.

The Act raises compliance issues for businesses that rely on commercial emails or other types of electronic message to advertise. It bans all unsolicited commercial electronic messages and will require businesses to seek consent from recipients before sending any unsolicited electronic messages. One way of achieving this, for example, would be to require visitors to your website to tick a box confirming their consent to receiving commercial electronic messages.

All subsequent electronic messages will need to include accurate identification and contact information for the sender and a functional and clear unsubscribe facility that allows recipients to opt out of receiving further messages. Businesses breaching these provisions could be liable for fines of up to $500,000.

The Act has been criticised for these additional compliance burdens, which may particularly impact on small businesses who market electronically. Critics also claim that the Act will have little actual impact on the volume of spam received by New Zealanders, as most spam is sent from overseas, making the Act difficult to enforce against foreign spammers.

The Act is a well-meaning attempt to establish a legislative framework upon which to address the problems spam poses for business and individuals. The reality, however, is that the Act will likely do little to reduce the amount of spam received by New Zealanders and will to some extent increase compliance costs for New Zealand businesses. The Act is not a replacement for spam filters or other technological protection measures, which remain a more effective means of stopping spam from reaching your inbox. Businesses will need to be careful to ensure compliance with the new provisions by 6 September 2007 if they do not wish to expose themselves to the risk of significant fines for breaching the Act.

If you would like further information or assistance in preparing your business for compliance with the Act, please contact a professional advisor at Baldwins.

InternetNZ releases draft anti-SPAM code of practice for ISPs

Fri, 08 Jun 2007 00:00:00 +1200

Public comments on a draft code of practice for ISPs in relation to New Zealand’s anti-spam legislation are invited by 18 June 2007.

The Unsolicited Electronic Messages Act is due to come into force on 6 September 2007. The Act is intended to reduce the amount of unsolicited emails and other electronic messages (spam) sent and received in New Zealand.

Everybody sending or receiving e-mails within New Zealand does so through an Internet Service Provider (ISP). InternetNZ, in collaboration with the NZ Marketing Association and the Telecommunications Carriers’ Form, has prepared a draft code of practice for ISPs in relation to spam and the Unsolicited Electronic Messages Act.

The code will establish minimum acceptable practices for parties that provide any goods, services, equipment or facilities that enable or facilitate telecommunications. This includes ISPs.

The obligations imposed on ISPs by the draft code are to:

provide customers with information about their obligation not to send spam, methods of minimising the amount of spam received, complaint procedures for reporting spam, and whether or not the ISP filters email messages for spam;
co-operate with law enforcement agencies that are investigating spam;
make spam filters available to customers;
not allow unauthorised persons to send email messages via their systems;
retain information about IP addresses assigned to customers;
consider and implement best-practice actions that may reduce spam.

Surprisingly, a failure to meet the standards specified in the draft code is not actionable under the Unsolicited Electronic Messages Act. Instead, action must be taken under other legislation, such as the Telecommunications Act, the Fair Trading Act or the Consumer Guarantees Act. In such proceedings the draft code can provide evidence of what might be considered best practice for ISPs in relation to spam.

The draft code is available on InternetNZ's website (http://www.internetnz.net.nz/issues/current-issues/anti-spam) and public comments on it are invited by 18 June 2007.

If you would like more information, or would like assistance in preparing submissions on the draft code, please contact your usual advisor at Baldwins.

The New Zealand Major Events Management Bill

Fri, 01 Jun 2007 00:00:00 +1200

Sport is a billion dollar business these days and leading brand owners are turning to major events such as the Olympics and World Cups as part of their marketing strategies. Income for major events is primarily generated from corporate sponsorship, sale of television rights and tickets.

One of the largest global sporting events is the FIFA World Cup. The 2006 FIFA World Cup is reported to have brought in €5 million in sponsorship spending, with the event reportedly boosting Germany’s annual GDP by 0.01%.

Sportbusiness International recently reported that the ICC Chiefs expected profit of US $239m from the Cricket World Cup. In return for such high levels of investment, major sponsors expect strong protection for their brands. Other countries have enacted legislation for each event, such as that for the 2000 Sydney Olympic Games, the 2006 Melbourne Commonwealth Games and the 2012 London Olympics.

New Zealand is adopting an innovative approach and instead is enacting umbrella legislation to cover any number of events which arise in the future.

With New Zealand hosting the Netball World Cup in November 2007, Under-17 Women’s Football World Cup in 2008, the Rowing World Championships in 2010, Rugby World Cup 2011 and co-hosting the Cricket World Cup in 2015, it was not surprising to see the introduction of the Major Events Management Bill on 12 December 2006. The Bill is currently with the Commerce Select Committee, submissions were due on 5 April 2007.

With the Netball World Cup in November 2007, I am sure the Government will want this legislation in place by then.

The Major Events Management Bill is divided into 5 parts. The important provisions are found in Part II Auckland Level 16, HSBC House 1 Queen Street Auckland, New Zealand PO Box 5999, Wellesley Street Auckland Telephone +64 9 373 3137 Facsimile +64 9 373 2123 Wellington Level 14, Baldwins Centre 342 Lambton Quay Wellington, New Zealand PO Box 852 Wellington Telephone +64 4 472 1094 Facsimile +64 4 473 6712 Christchurch Level 12, Forsyth Barr House 764 Colombo Street Christchurch, New Zealand PO Box 1617 Christchurch Telephone +64 3 366 3929 Facsimile +64 3 366 4743 email@baldwins.com www.baldwins.com In legal matters, no publication can take the place of professional advice. Although every effort has been made to ensure the accuracy of the information in this publication, it should not be treated as a basis for formulating business decisions without further advice. ©2006 Baldwins. June 2007 Issue 027 The New Zealand Major Events Management Bill by Sue Ironside (protection for major events), Part III (permanently protected emblems and words) and Part IV (enforcement).

Part II is divided into 4 sub-parts covering declaration of a major event, ambush marketing by association protections, ambush marketing by intrusion protections and prevention of ticket scalping.

Declaration of a Major Event

The Bill proposes that the declaration of a major event will be made by the Governor General by Order in Council made on the recommendation of the Economic Development Minister after consultations with the Commerce Minister and the Sports Minister. This section provides great flexibility around what could constitute a major event. This could cover a wide range of events, such as sporting, concerts, and cultural events.

The ability to identify individual events as a major event on a case by case basis under a single piece of legislation seems to be unique to New Zealand. Overseas, such events have usually been the subject of separate legislation on each occasion. Another interesting feature is that the major event does not need to be held solely in New Zealand.

Ambush Marketing

One of the most creative methods used to associate a brand with an event, team or individual is ambush marketing.

Ambush marketing is where one brand pays to become an official sponsor and a third party, normally a competing brand, attempts to associate itself with the event even though it is not an official sponsor.

This occurred in New Zealand in 1996. It was the first case of ambush marketing in New Zealand and came before the High Court. The New Zealand Olympic and Commonwealth Games Association took action against Telecom for its advertisement relating to coverage around the time of the Atlanta Olympic Games.

The feature of the advertisement was the use in the same colours and special arrangement as the Olympic ring symbol of the word “ring”. The colours of the individual words were top line left to right: blue, black, red; and lower line: yellow and green (the Olympic colours). Telecom was not an authorised sponsor, Bell South was.

While finding Telecom unwise and the case finely balanced, the Court held that Telecom had not crossed the line into unlawful activity. The Court required that there be precision and representations that actually misled or deceived.

With such high sums at stake, ambush marketing is growing in popularity as brand owners try to gain promotional opportunity for their brands without incurring the cost connected with being an official sponsor.

The ambush marketer is not bound by any contractual constraints and by being cunning can get greater leverage and return on a much smaller investment.

There have been many examples of ambush marketing, despite legislative attempts to prevent it.

At the Sydney Olympics 2000 – use of Kathy Freeman’s image in this advertisement by Qantas. Qantas was a sponsor of Kathy’s but not an official Olympic 2000 sponsor. Qantas embarked on advertisements featuring prominent athletes. Australians thought Qantas was an official sponsor – it was not, Ansett was.

FIFA World Cup 2006 – Lufthansa planes with soccer balls painted on their noses (Emirates was the official sponsor).

In general, ambush marketing by association protection has been provided by existing intellectual property laws such as the Trade Marks Act 2002, passing off, the Fair Trading Act 1986 and the Copyright Act 1984.

However, there is generally no protection in existing laws against activities which amount to ambush marketing by intrusion.

Clean Zones

The Bill attempts to control the intrusive form of ambush marketing by declaring “clean zones” around the event venues and stadia. All unauthorised advertising and street trading is prohibited in the clean zone during a specified clean period around the time of the major event. This clean zone includes the venue and areas close to the venue and extends to clean transport and routes which extend up to 5kms from the boundary of the clean zone. No unauthorised advertising can be undertaken that is clearly visible from the clean zone.

It is interesting to note that at the end of 2006 Queensland Parliament introduced the Major Sports Amendment Act ( No.2) 2006. This Act amended the Major Sports Facilities Act 2001. The aim of the Act is to restrict ambush marketing at major sporting events. The Act bans advertising within sight of Queensland’s major sports facilities. This includes sign-writing, aerial displays by aircraft and billboards on buildings ,banners or signs attached to aircraft, hang gliders, parachute, para-glider or similar device or a person suspended from any of these devices ; matter on a flag (other than a State or National flag) that has an area more than 5m2, unless written application is approved allowing the display. A maximum penalty of $52,500 is imposed. Advertisements that are of a more permanent nature displayed on a building or other structure are not banned.

In February 2007 the Victorian Minister for Sport announced the introduction of Victorian legislation outlawing the practice of aerial ambushing. This is likely as a result of the aerial blimp employed by Holden at the AFL Grand final. Holden were not a sponsor of this event. Events such as the AFL Grant Final, Formula One Grand Prix and the Australian Tennis Open will be protected events.

Representations

The greatest challenge in enforcement will be around the Bill’s attempts to curb representations made in a way likely to suggest to a reasonable person that there is an association between the major event and the goods or services or a brand or a person who provides goods and services at the major event. The court will be entitled to presume that a representation is in breach if it includes a major event emblem, major event word, or a representation which closely resembles a major event emblem or major event word, as to be likely to deceive or confuse a reasonable person.

There are exceptions created where written authorisation is gained and where the association is made in accordance with honest practices.

Ticket controls

One of the key areas of revenue gathering for a major event is from tickets. The bill prevents selling or trading of a ticket to a major event activity for a value greater than the original sale price of the ticket.

Tickets also provide an opportunity for the event organiser to place terms and conditions for entry to the event.

At the 2006 FIFA World Cup fans were asked to remove orange lederhosen with the name of a Bavarian beer on them as Anheuser Busch was the official sponsor.

Fans removed the lederhosen and watched the game in their underwear. The following day fans were provided with orange boxer shorts to wear bearing the Bavarian beer brand. Ambush marketers often move quickly to maximise an opportunity at short notice. By the time action has been taken the ambush marketer has undertaken a successful ambush.

Seeking removal of the lederhosen created worldwide publicity and thereby greater exposure in this instance of Ambush marketing.

This must be welcomed by the organisers of major events where tickets to major events are in demand and start appearing for sale on internet auction sites. Event organisers can place terms and conditions for entry as a condition of the purchase of a ticket stipulating that the purchaser cannot resell the ticket at a premium. Resale would constitute a breach of contract and the ticket holder will be denied entry to the venue.

Pressure can be placed on internet auction sites to stop resale, while TradeMe in New Zealand is receptive to this, eBay takes a different position on the basis it is not selling the tickets.

Emblems

Part 3 of the bill provides for permanently protected emblems and words relating to the Olympic Games & Commonwealth Games. There are shown in schedules to the Act. These emblems and words are currently protected in the Flags, Emblems and Names Protection Act 1981, but it is intended that they be protected instead in the Major Events Management Bill.

It will be crucial to check the words and emblems protected by the Act to ensure any use is authorised.

Enforcement

Breaching provisions of the Bill are likely to result in fines not exceeding $150,000.

Part 4 of the Act relates to border protection measures.

Event organisers know only too well the importance of protecting trade marks for specific events, logos and names. Once registered trade marks are obtained these trade marks can be licensed and a control maintained over their use.

Rights are then granted for action to be taken against those that use the trade marks in an unauthorised manner and where counterfeit product appears on the market.

At the time of the Lions Tour to New Zealand several high profile clothing manufacturers policed the market for counterfeit ALL BLACK and LIONS jerseys and merchandise. This proved to be successful as after the first game, very few counterfeit products were found on the market.

The Bill is also taking a harder line on unauthorised traders, including street traders.

Enforcement officers will be appointed to identify breaches, to issue formal warnings, to inspect and monitor clean zones, to obtain search warrants. Enforcement officers are to be given the power to seize or cover anything the officer believes is a breach.

On 4 April of a supplementary order paper inserted a new subpart 5 into part 2. The subpart makes it an offence for a person to go onto a playing surface or to propel an object onto the playing surface at a major sporting event.

Breaching these provisions are likely to result in a term of imprisonment not exceeding 3 months or to a fine not exceeding $5000.

This addition has been made to ensure the smooth running of major events so streakers beware!

Summary

It will be interesting to see the final version of the Major Events Management Bill in New Zealand and how successfully it can combat ambush marketing.

We will all be watching with interest the continued development and refinement in Australia and around the world, of other legislation attempting to combat ambush marketing.

Ambush marketers are adept at taking advantage of any opportunity at short notice.

Australian domain name policy under review

Wed, 23 May 2007 00:00:00 +1200

The auDA is calling for submissions on the policy framework for .au domain names by Friday 15 June 2007.

The auDA is reviewing the framework governing the allocation and use of Australian (.au) domain names. It released an Issues Paper in May 2007. Public submissions on that paper are due by Friday 15 June 2007.

Three issues are under discussion:

Whether domain names of the format www.yourname.au should become registrable (eg www.baldwins.au). At present Australian domain names, like New Zealand domain names, must be registered within a particular Second Level, such as .com.au or .net.au.
Whether the policy rules for the main Second Level domains (eg .com.au) are appropriate or whether they should be changed. These domain names are currently subject to registration criteria and rules. auDA is particularly interested in hearing about situations where the rules have prevented a party registering a domain name that they should reasonably have been able to register, and situations where, despite the rules, a party has been able to register a domain name for an improper or unfair purpose.
Whether registrants should be allowed to sell their Australian domain names. In an attempt to minimise cybersquatting, transfers of domain names are currently only permitted in certain, narrow, situations, such as where a business has been sold, or intellectual property rights transferred from one party to another. auDA invites comments on whether this position should be relaxed. The Issues Paper provides further details of the current position on each of these three issues and arguments for and against changing those positions. It can be accessed on the auDA's website (http://www.auda.org.au/2007npp/2007npp-index/).

If you would like a copy of the Issues Paper, would like Baldwins to prepare submissions on your behalf, or have any other questions about this review, please do not hesitate to contact your usual advisor at Baldwins.