Intellectual property: Trade, Designs, and Patents Act - Essay Example

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But in saying that, in case I ever do need help, I would like to keep in touch. Not sure how long you plan to stay with samedayessay.com, and I am not sure if you are allowed to pass on your details to clients, but I will give you my details: (face book – katerina cvetkovski katerinacvet@hotmail.com) other email kcvetkovski@optusnet.com.au. The paper sounds very good. Thank you so much. Please read my comments/ questions Question 1 Issue The main point of contention is whether Fred's registration of the trademark GOOD FRIENDS FENCE is potentially an infringement of the Trade Marks Act 1995 with regards to the claims being made by GOOD NEIGHBOURS FENCE which is asserting that they have the rights to the trade mark. In other words, is it likely that Fred has committed a breach under the Trade Mark's Act (1995) or not. Rules The Trade Marks Act 1995 states that a trade mark needs to be distinctive and reflect the trade commercial or trade origins of a person (EJ Gallo V Lion Nathan, 2010). In Section 20, it is noted that the owner of a trademark has the right to use the trademark, authorise the use of the trademark and obtain relief when the trademark is infringed. A trademark is infringed if a person uses a sign that is identical with or is deceptively similar with the the trademark (Section 120 (1)). However, for action on trademark infringement to be taken, the trademark must be used as a trademark [Konininkliike Philips V Remington (2000)]. Section 120(2) of the Act states that a trademark is infringed if the goods or service for which the trademark is used are similar or closely related. An action on infringement can also be taken if the trademark is known is Australia and unregistered (Van Caenegem 2010 p139: Davison et al, 2008 p133). Also infringement occurs when the trademark is substantially identical or deceptively similar to goods or services that are unidentical. Section 120 also states that action can be taken on infringement when there is a realization that the owner's interest could be adversely affected. In the case of Belei Hestia V Bali Inc (1973), it was established that infringement can be established if there is the likelihood of confusion amongst users who know only one trade mark. Application In the case at hand, it can be seen that GOOD NEIGHBOURS FENCE and GOOD FRIENDS FENCE are quite close. The only thing that makes the two distinct are the words 'NEIGHBOURS' and 'FRIENDS'. These two words are not very distinct in terms of the message it seeks to present to the public. In Imperial Group v. Philip Morris & Co (1980), a company sought to use the word 'Merit' to describe its trademark. However, they were barred from using it by law. They ended up choosing the world 'Nerit'. The court held that they cannot use 'Nerit' because it conveyed the concept of 'Merit'. This therefore means that using the world NEIGHBOURS and FRIENDS is deceptively similar. And the word, coming between two same words gives room for action to be taken under the Trade Marks Act. Also, the use of similar trade marks gives rise to infringement because Fred pointed out that the action is being taken by a competitor. This suggests that they are both in the same industry and the walls they both produce are similar. This gives room for action to be taken on infringement of trademark. Conclusion The fact that the names GOOD NEIGHBOURS FENCE and GOOD FRIENDS FENCE are similar and convey almost the same meaning for an almost similar brand of walls implies that Fred's competitors can take action against him for the infringement on their trademark. Question 2 Issue The issue is whether Fred can register the unique features of his wall under the Design Act of 2003 or not. The wall has the following features: 1. In-built ultraviolet protection creating the most durable and resistant wall on the market 2. Has triangular posts and attractive designs at the top of each sheet. 3. Base is designed like the top to enable it to be wedged into the ground And he has already displayed it and advertised it in the way it appears when fixed. Rules for Registration of Designs under the 2003 Act Basically, the Designs Act protects the visual look of products offered for sale. Design is defined by the act as “the overall appearance resulting from one or more visual features of the product”. Registration gives the owner of the design 10 years of exclusive rights (5 years from initial registration and 5 years of renewal). Section 5 states that the registration protects the overall appearance of the product resulting from one or more visual features of the product. A product is anything that is manufactured or has been made or the component of a complex product made separately or assembled or components of a larger products or if there is an variation of an indefinite component, it should be a variation in relation to regular patterns of the product which renders it distinct (Section 6). Visual features include shape, configuration, patterns or some defined functional purpose (Section 7). Section 15 also states that the design must be unique and not similar to any other base and distinct from everything. Section 15 states that the design must be 'new'. If there is substantial similarity, the application may be rejected (Section 19). However, it does not apply to 2-dimension designs only three dimension designs in cases of corresponding designs (Section 74). An applicant cannot re-register a substantially identical design (Section 71). Application Fred's new fence can be considered as a 'design' because it comes with distinctive features that gives it a visual appearance that is distinct and unique. From LED Technologies V Elecpees Ltd (2008), it was established that in defining a design as new and distinctive, it will be compared to the prior art base for additions. The three additions that are made to the fence alters the overall appearance of his fence and it can be credited to him since he assembled the new fenceindependently. So Fred can register the wall for a number of years. Fred needs to prove on a case-by-case situation that the new visual additions, namely the ultraviolet protection, triangular post and base are unique and there are no similar products offered on the markets. The distinctiveness of each component is important since Section 19 gives room for rejection if it is otherwise. However, if the trademark is already registered by another person, as in the claims being made by GOOD NEIGHBOURS FENCE's owners, then the Design Act cannot be used as defence for ownership of trademark. This act only protects the visual appearance of the fence and how it is displayed for commercial purposes. Another limitation, from invoking the rules of registration under the designs act is that the triangular posts at the top of the fence may be rejected for registration purposes on the grounds that it is a two dimension design and not a three dimension design under Section 74 of the Act. Question: In our answer we state “if the trademark is already registered by another person, as in the claims being made by GOOD NEIGHBOURS FENCE's owners, then this act cannot be used as defence for ownership. This act only protects the visual appearance of the wall and how it is displayed for commercial purposes” So does this mean that Fred can still register his wall/fence under the designs Act even if the trademark is registered to another person? Yes, the designs act is very limited in scope. It has very little to do with trademark. It exists basically to protect the way you display or lay out your product either for advertisement or how it appears whilst in use. So for example, a car which has doors that open vertically instead of horizontally can be registered under the Design Act. Thus anyone who wants to manufacture cars that have doors that open vertically cannot do so without obtaining permission from the one who registered the car under the Design Act. That is the purpose of the Design Act. On the other hand, what the owner calls such a car is protected under the Trade Marks Act. Let us assume the owner decides to call the car VertCar. The name VertCar will be protected by the Trade Mark's Act. So if another person calls any other car or item VertCar or VertKar, the owner can take action and claim that the name is already registered. And the claims will be based on the Trade Marks Act. On the other hand, if another person designs a car that opens vertically (like the car designed) and names it ImiCar, clearly, the original owner cannot take this new guy on for breaching Trade Mark. Rather, the fact that he pioneered the concept of cars with vertical doors and own the rights under the Design Act, he can take action against the manufacturers of ImiCar. So the two laws exist for different purposes. What they share in common though, is the fact that both laws are meant to prevent illegal use of other people's ideas or concepts. But then Fred will only be protecting the look of his wall/fence and not his brand/company. Now i am getting confused with ‘trade mark’ and ‘registering a business name’. For example, my husband opened up his own lawn mowing business, he called it ‘clean cut mowing and garden care’. He registered the business name and got an Australian Business number (ABN) and has his own clients and business cards, pamphlets etc. His business name is very similar to other lawn mowing business, so why isn’t he in trouble? What I can say is that the law is meant to protect substantial differences. In some industries, it is inevitable for similar names to be used for registration. So I think the registration authorities will always turn a blind eye to some similar names in such an industry because I must admit Clean Cut Mowing & Garden Care is quite popular and I might know similar names. On the other hand though, the breach of trademark is mainly civil in nature. The government has no immediate responsibility to bring up such cases when it is registered. It is the aggrieved party who has that responsibility. So if the people who claim to have had their trademarks infringed do not come forward to make claims, no one will do it for them. So the onus is on them to initiate action. Or a we talking about for example coca cola, someone opened up a new brand called cola, made the can look red and now people are getting confused between coca cola and cola. So then coca cola can take cola to court for stealing their trademark and design (if the drink has the same ingredients). So how do we know that the designs Act cannot be used as defence for ownership? Which section of the act says this? This is more inferential and I personally thought it would be better to create a distinction between the two Acts. I could not expressly state the explanation above in the essay. So if Fred does register his fence as a design, and then he notices someone has stolen his design/idea can he argue that it was his design and breach them? Yes. Even if GOOD NEIGHBOURS FENCE is able to charge Fred with infringement of their trademark. He can still sue anyone who uses his design wrongly under the Designs Act. Interesting, isn't it? Also the other writer prior to you wrote all this other stuff, you probably already saw it, he is also saying the same thing as you the “Fred Jones is entitled to register the design of his product as its creator” However, he is saying all this other stuff too. Is any of the other stuff relevant at all? Not sure if it is write or wrong, but want to understand where he is coming from? And if he is wrong, learn from his mistakes. With regard to registering the design of the fencing and posts, there are several elements to consider. Fred Jones created the design and related components of his new fencing with sufficient differentiation to those already under patent, in accordance to the Designs Act 2003. As evidenced in the case of Pty Ltd v Byrne & Davidson Doors, where the functionality of the object is not in question, the new design may be registered even if it performs the same function. Section 8 of the Designs Act specifies that the overall appearance of a new product must be unique. Thence if the design of the fencing, posts, and fixtures were substantially similar to that of a competitor or of an existing design, infringement would occur. The design employed by Fred Jones, however, is of a unique and original design, as evidenced by the description of triangularly shaped posts, a feature that is highly uncommon in traditional fencing design. In addition, the description of the staking mechanism also demonstrates originality in design and application. A grey area arises as regards the question of the “art” leading to the corresponding design. Section 15 of the Designs Act specifies that Art, whose corresponding design is used to create a product, is considered new and distinct (i.e. eligible for copyright), unless the design has been applied industrially, or the production of 50 or more articles. As Fred Jones has stated that he has used the design to promote his product, resulting in obtaining building contracts. The question of whether or not the art would be eligible for copyright would be contingent upon the actual number of the product currently in use. Fencing is, inherently, of indefinite dimensions exclusive to the individual order, so the question of how to enumuerate the number of the product in use would seem to raise problems. Another exception would arise if Fred Jones were employed to create the design as specified in Section 13 of the Designs Act, but he is, however, an independent contractor, and, as such, entitled to register the product. Per the Designs Act, Fred Jones is entitled to register the design of his product as its creator, although he may encounter difficulties I think he is making very intelligent and good points. However, with a word limit of 500, it will not be a very good idea to put in all these details. Question 3 Issue The issue is whether Fred can obtain local and international patent for the manufacturing process of his new wall under Australian Law. Rules There are two types of patents available under the Patents Act of 1990, the standard patent and the innovative formerly known as the petty patent (Grimes, 2010: 362: Fleming, 2004: 193). Standard patent provides protection for 20 years” of “any manner of new manufacture granting its owner the exclusive rights to manufacture, license or use the product or process” (Grimes, 2010 p362). Innovative patent on the other hand covers “incremental invention that many not be sufficiently inventive to qualify for standard protection” (Grimes, 2010 p362). It usually grants exclusive rights for 1 to 6 years. Australia is a signatory to international conventions and the grant of an Australian patent gives international protection in many countries and vice versa (Fleming, 2004 p193). For a patent to be registered, the manner in which it is manufactured must be relate to something tangible commercially (National Research Development Corp V Commissioner of Patents (1959). Secondly, a new product needs to be novel. To qualify for patenting, it should be compared with 'prior art base' to establish that it is new and has not been used covertly or overtly in the past. Thirdly, Section 7 states that there should be an 'inventive step' meaning the one claiming to have invented the item should have made an effort to separately or collectively assembled a useful and distinct product. If an innovation is seen to pass these three tests, the owner can apply for a patent. One claiming an inventive patent will have the patent undergo detailed examination and re-examination. Innovative patents are often exempt from such examinations. Afterwards, Section 59 allows the patent application to be disclosed to the general public for a period of three months. Under the act, people who oppose the patent can give notice within the period. Registration of a patent in Australia grants protection in Australia. A registrant needs to extend registration to other countries. However, Australia is a signatory to the International Convention for the Protection of Industrial Property or the Paris Convention which enables a registrant in Australia to obtain priority in other countries. The Patent Co-operation Treaty of 1970 which Australia is a signatory to makes international registration simple. To be accepted as a patent, the item being registered must not be patented outside Australia, it should be consistent with Australian policies and there should be no legal basis for refusal of the patent. Internationally, the rights of enforcement of a patent might be revoked if the government in question considers that public interest justifies it (Section 133). Application Fred can register his fence if it passes the three tests. First of all, he should identify that this product can be manufactured in a way that commercial benefits can be obtained. Clearly, this can be attained with Fred's product because the wall can be created for a money by other builders. Secondly, he needs to prove that the fence is different from all other fences that have been created and does not build on other systems or structures. Thirdly, he needs to show that something distinct and unique was added to the wall either separately or collectively to make it what it is. This distinct addition, although intangible is the value that Fred will seek to register. Fred should can apply for the patent. The first phase of the application will involve assessing whether the fence qualifies as an inventive patent or innovative patent. This will determine the level of examination that will be conducted. Afterwards, it will be gazetted and people who oppose it can come forward. After three months, it may be re-examined and if no one opposes him, he can go ahead and register either as an inventive patent or an innovative patent. When the patent is registered in Australia, it will get priority in overseas. However, Fred will still have to register in other countries to ensure that the rights are established fully in these countries. This is by virtue of the fact that Australia is a signatory to international treaties. So Fred cannot apply for the standard 20 year patent because he didn’t invent walls, but he can apply for the innovative patent which grants 1 to 6 years of exclusive rights to him. Totally get it. See below, the other writer (in his attempt to answer the question) argue the opposite - that Fred can apply for the standard 20 year patent? Just trying to understand how he could make such a huge mistake. Maybe he didn’t know there was two types of patents? If Fred Jones wishes to patent his newly manufactured fence, he will likely encounter problems if he wishes to do so internationally. The Tastee Freze case demonstrates that an item copyrighted by a foreign country coming into Australia is open for use under new ownership. Under the Patents Act section 18, Fred Jones may pattent his product in Australia as it is “novel,” involves an “inventive step,” and is “useful.” The grant of a patent allows a temporary monoploy (20 years) of exlusive use to the owner in exchange for disclosing the specifications of the invention and putting it to public application. As Fred Jones plans on using his product in a public application and is the inventor, he has the right under the Patents Act to patent it in Australia, the neighboring continental shelf, the Commonwealth and the designated above air-space. The World International Patent organization has very ridgid guidelines with regard to international patents. Generally, I think I was too generic in this question. After reading through the paper again, I think I was too 'universal'. I guess that was how I managed to survive throughout my education because you always capture more when you are general. I have however come to notice that your lecturers want you to be as specific as possible so it pays to zoom in to identify what the main components are and confront them directly. I guess that is something I really need to work on. Specifically, I think my approach to this third question was too judgemental. I should have rather subjected the wall through the various tests and not concluded that it is an innovation and not an invention. I had to adjust to show more objectivity. I think that is what the lecturer wants. References Davison, Mark. J, Monoti Ann Louise & Wiseman Leanne (2008) Australian Intellectual Property Law Cambridge University Press. Designs Act (2003) Commonwealth Consolidated Acts Available online at: http://www.austlii.edu.au/au/legis/cth/consol_act/da200391/ Accessed: 27th October, 2011 Fleming, Louise (2004) Excel HSBC Business Studies Pascal Press. Grimes, Charles (2010) Licensing Update 2010 Aspen Publishers Halford's Australian Designs Act (2009) Available online at: http://www.halfords.com.au/designs_act_summary.shtml Accessed 27th October, 2011. Trade Marks Act (1995) Commonwealth Consolidated Acts Available online at: http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/ Accessed: 27th October, 2011 Van Caenegem, William (2010) Intellectual Property Law in Australia Kluwer Law International. Cases Berlei Hestia Industries Ltd v. The Bali Co Inc (1973) 129 CLR 353 (HC) Available at the Australian National University Faculty of Law Webpage: http://law.anu.edu.au/Itlaw/11_Trademarks/CaseSummaries11.htm Accessed October 27, 2011 EJ Gallo Winery V Lion Nathan Australia Property Limited [2010] 265 ALR 645 Imperial Group Ltd v. Philip Morris & Co Ltd [1980] FSR 146 (UK ChD) RR 857 Available at the Australian National University Faculty of Law Webpage: http://law.anu.edu.au/Itlaw/11_Trademarks/CaseSummaries11.htm Accessed October 27, 2011 Konininkliike Philips Electronics NV V Remington Products Australia Pty Ltd (200) FCR 90 National Research Development Corp V Commissioner of Patents [1959] 102 CLR 252 Shell Company of Australia Ltd v. Esso Standard Oil Ltd (1963) 109 CLR 407 (HC) RR 921 Available at the Australian National University Faculty of Law Webpage: http://law.anu.edu.au/Itlaw/11_Trademarks/CaseSummaries11.htm Accessed October 27, 2011 Read More