Category: IP Management

Careless Behaviours Can Destroy Trade Secrets

Trade secrets can provide an organisation with a strong competitive advantage, provided they are reasonably protected.  A recent case highlights how the careless use of remote working software can undermine that protection, resulting in the information losing its trade secret status and the owner losing control over it.

 

Trade Secrets – An Important Intellectual Asset

Trade secrets are an important form of intellectual property that protect information that has value to a business and its commercial activities, but is generally not known outside of the organisation.

Typically, trade secrets are characterised as:

  • Not in the public domain
  • Contributing significant value to a business
  • Subject to reasonable steps to keep the information secret

Examples of the types of confidential information that may qualify as trade secrets include: business processes, practices and methods; business strategies; customer information; ideas for commercial opportunities; formulae; recipes.

Trade secrets define a business’s competitive advantage, and if leaked, they have the potential to damage the organisation’s market position.  The law provides protection to prevent third parties using this information, without authorisation, to gain an unfair competitive advantage.  However, steps must have been taken to protect the information, such as contracts, non-disclosure agreements, restraints of trade, access control, and staff education.

 

Poor Use of Video Conferencing Software Can Compromise Trade Secrets

The Covid-19 pandemic has resulted in many companies and their employees working away from the office.  This often involves the use of a variety of remote working and video conferencing software tools.

A recent ruling from the USA (Smash Franchise Partners, LLC v. Kanda Holdings, Inc) highlights the importance of good business practices when adopting and using new technologies.

The defendant in the case (Todd Perri) was interested in obtaining franchise rights from Smash Franchise Partners (“Smash”) and had participated in a number of meetings with Smash and some of its franchisees to learn more about the business.  The videoconferencing technology from Zoom was used in preference to in-person meetings because of the current pandemic.

Perri subsequently decided to launch his own business without working with Smash.  Smash accused him of misappropriating its trade secrets, and sought an injunction to stop the use and disclosure of this information.

The court noted that, assuming the information concerned did qualify as trade secrets, Smash had not taken reasonable steps to protect the information when using the videoconferencing software.  In particular, they had not utilised the various security features that the Zoom software provides:

  • Meeting passwords were not used
  • The waiting room feature was not used to screen participants, in order to verify their identity and control access to the meetings
  • The same meeting code had been used for all meetings
  • Meeting details were made freely available to anyone who expressed an interest in the franchise and had completed an introductory call
  • There was no obligation on invitees to keep the meeting details secret and participants could readily share the meeting link with others

The court also noted that, although Smash had some procedures in place, these were not followed either:

  • A roll call should have been taken at the beginning of a meeting, and anyone who should not have been on the call should have been removed – this was not done
  • Twenty meeting participants could not be identified, and thus it could not be determined whether these people had signed NDAs.

Since the information concerned had not been managed in a way that would be expected for a trade secret, the injunction to stop the use and disclosure of the information was denied.

 

Ensure Your Business Understands and Protects Its Intellectual Assets

If managed appropriately, trade secrets can last forever and provide immense value to a business.  The recipe for Coca-Cola, and the search algorithm behind Google, are prime examples.

However, trade secrets as an intangible asset are often be overlooked by employers and employees alike.  If not managed and protected accordingly, they can be instantly lost with potentially severe consequences for a business.

The way we work is constantly changing, whether through ongoing technological innovation, or because of the impact of major events such as Covid-19.  Anyone engaged by an organisation (e.g. directors, employees or contractors) needs to ensure their business responsibilities, including those to intellectual property, are not forgotten or left behind.

Adhering to relevant business processes, as well as understanding and making appropriate use of the security features of the technologies being used, is extremely important.  Seemingly innocuous acts or oversights can easily and inadvertently undermine or destroy a company’s competitive position.

Alistair Curson

 

References

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Baldocchi J, Stover E. (2020, September 08). “No Trade Secret Protections for Information Discussed Via Open Zoom Call”. Retrieved October 20, 2020, from: https://www.paulhastings.com/publications-items/details/?id=f470fe6f-2334-6428-811c-ff00004cbded

Batty R. (2016). “’Trade Secrets’ Under New Zealand Law”. Canterbury Law Review 22, 235-268. Retrieved October 19, 2020 from: http://www.nzlii.org/nz/journals/CanterLawRw/2016/12.pdf

Chintalapoodi P, (2020, October 06). “Court Finds That Trade ‘Secrets’ Aren’t Secret on Zoom Call”. Retrieved October 19, 2020, from: https://www.chiplawgroup.com/court-finds-that-trade-secrets-arent-secret-on-zoom-call/

Curson AD. (2019, August 20). “Trade Secrets – Overlooked and Undervalued”. Retrieved October 19, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=235

EverEdge Global. (2019, July 30). “Preventing the Leakage of Confidential Information”. Retrieved August 14, 2019, from: https://www.everedgeglobal.com/blog/confidentialinformationleak

EverEdge Global. (2019, July 30). “Understanding Trade Secrets and Confidential Information”. Retrieved August 14, 2019, from: https://www.everedgeglobal.com/blog/tradesecrets

EverEdge Global. (2019, July 30). “US$600 Billion and Rising: Confidential Information and Trade Secret Theft”. Retrieved August 14, 2019, from: https://www.everedgeglobal.com/blog/tradesecrettheft

McDonald A. (2019). “Trade Secrets and Confidential Information”. Retrieved October 19, 2020, from: https://www.amcdonald.co.nz/information/intellectual-property-law-barrister/trade-secrets-confidential-information/

Ministry of Business, Innovation and Employment Hikina Whakatutuki. (2019). “Types of intellectual property”. Retrieved October 19, 2020, from: https://www.business.govt.nz/risks-and-operations/intellectual-property-protection/types-of-intellectual-property/

New Zealand Crimes Act 1961, s230. Retrieved October 19, 2020, from: http://www.legislation.govt.nz/act/public/1961/0043/latest/DLM330238.html

New Zealand Intellectual Property Office. “Trade Secret”. Retrieved October 19, 2020, from: https://www.iponz.govt.nz/assets/pdf/IP-cards/ip-card-trade-secret.pdf

Nirwan P. (2017, December). “Trade secrets: the hidden IP right”. Retrieved October 20, 2020, from: https://www.wipo.int/wipo_magazine/en/2017/06/article_0006.html

Peart S. (2018, May 30). “Protection of Trade Secrets”. Retrieved October 19, 2020, from: http://www.marksandworth.nz/news/articles/protection-of-trade-secrets

Smash Franchise Partners, LLC v. Kanda Holdings, Inc [2020] Court of Chancery of the State of Delaware, C.A. No. 2020-0302-JTL.  Retrieved 20, October 2020, from: https://law.justia.com/cases/delaware/court-of-chancery/2020/c-a-no-2020-0302-jtl.html

Suleymanova R. (2020, October 18). “As new wave of COVID-19 cases hits, remote work becomes the norm”. Retrieved October 20, 2020, from: https://www.aljazeera.com/economy/2020/10/18/with-new-lockdowns-looming-remote-work-feels-like-forever

Tillery MK, Cline JJ, Wheatley EL. (2020, August 28). “Delaware Court of Chancery: Companies Must Maintain Trade Secret Confidentiality in a Remote World”. Retrieved October 20, 2020, from: https://www.troutman.com/insights/delaware-court-of-chancery-companies-must-maintain-trade-secret-confidentiality-in-a-remote-world.html

Which Law is Relevant? – Lessons from Led Zeppelin’s “Stairway to Heaven” Copyright Case

Ex post facto law, the retrospective application of legislation, is not applied in a number of jurisdictions, including New Zealand.  Because laws do change however, it is important to understand which laws were in force and are relevant to the question you are asking.  The recent outcome of the long running copyright dispute over Led Zeppelin’s “Stairway to Heaven” highlights this.

 

“Stairway to Heaven” Case

The rock band Led Zeppelin has been in a long running copyright dispute over the acoustic guitar intro to their song “Stairway to Heaven”.

The case, originally brought in 2014 by the estate of the band Spirit, asserted that the “Stairway to Heaven” intro had been copied from Spirit’s earlier instrumental work “Taurus”.  In 2016, a jury found in favour of Led Zeppelin, stating that they did not steal the intro, and that their work was original.

However, in 2018, a panel of judges ordered a new trial on the basis that the judge in the 2016 trial had given the jury incorrect instructions, in particular by not allowing them to hear sound recordings of the “Stairway to Heaven” and “Taurus” works for comparison.

The reasoning behind not allowing the sound recordings was that, at the time that the respective works were created (1971 for “Stairway to Heaven”, 1968 for “Taurus”), the US Copyright Act 1909 was in force and the case should be heard according to that law.  Under the requirements of the 1909 Act, copyright only covered sheet music, not sound recordings.  In was not until later in the 1970s that copyright law in the US was extended to include sound recordings.

The 2018 decision to order a retrial was subsequently appealed with a request for a larger panel of judges to rehear the case.  This was heard by a panel of 11 judges earlier this year (March 2020).  They overturned the 2018 ruling, reaffirming that the jury had been instructed appropriately in the 2016 case & that the jury’s decision (in favour of Led Zeppelin) stood.

The case was then taken to the Supreme Court (the highest court in the United States), but a few days ago, the Supreme Court declined to take it up, effectively handing final victory to Led Zeppelin.

 

Applying this Lesson to Effective IP Management in New Zealand

The “Stairway to Heaven” case highlights the importance for businesses to understand which laws were in force at the time of any relevant activities relating to their business strategy, including IP management.

For example, up until a few years ago, patents in New Zealand were prosecuted under the Patents Act 1953.  The New Zealand Patents Act 2013 (which came into force in September 2014), however, introduced many reforms to New Zealand IP legislation.  Amongst other changes, the criteria for patent examination was extended from local novelty only, to absolute novelty, inventive step and utility.

Many patents prosecuted under the old 1953 Act will still be in force and may be relevant for businesses.  For example, if you are pursuing validity analyses of patents of interest, whether for due diligence on the value of patents you wish to license or acquire, or attempting to invalidate a competitor’s patent, it is vital to understand which Act would be applied to test the strength of a patent of interest.  The introduction of the new Patents Act 2013 changed the criteria for patentability significantly.

It is important in business management generally to appreciate the dynamic nature of the legal landscape.

Alistair Curson

 

References

AJ Park. (2014, September). “New Zealand’s new Patents Act 2013: The key differences between the Patents Act 1953 and the new Act”. Retrieved October 09, 2020, from: https://www.ajpark.com/assets/Uploads/New-Zealands-new-Patents-Act-2013-The-key-differences-between-the-Patents-Act-1953-and-the-new-Act.pdf

Bienstock R. (2020, October). “Led Zeppelin emerge victorious in long-running Stairway to Heaven copyright battle”. Retrieved October 08, 2020, from: https://www.guitarworld.com/news/led-zeppelin-emerge-victorious-in-long-running-stairway-to-heaven-copyright-battle

Curson AD. (2018, November 20). “Tech Software and Intellectual Property Protection”. Retrieved October 09, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=79

Dixon G. (2014, August 12). “Patent law change in New Zealand – Five reasons to act now!”. Retrieved October 09, 2020, from: http://www.shelstonip.com/news/patent-law-change-in-nz-five-reasons-why-now-is-the-time-to-act/

Kim A. (2020, March 11). “Led Zeppelin wins major copyright battle for ‘Stairway to Heaven'”. Retrieved October 08, 2020, from: https://edition.cnn.com/2020/03/10/entertainment/led-zeppellin-stairway-heaven-lawsuit-trnd/index.html

New Zealand Bill of Rights Act 1990, s26. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/1990/0109/latest/DLM225528.html

New Zealand Interpretation Act 1999, s7. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/1999/0085/latest/DLM31471.html

New Zealand Sentencing Act 2002, s6. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/2002/0009/latest/DLM135540.html

Reed R. (2019, June 11). “Led Zeppelin’s ‘Stairway to Heaven’: Appeals Court to Review Lawsuit Decision”. Retrieved October 08, 2020, from: https://www.rollingstone.com/music/music-news/led-zeppelin-stairway-to-heaven-lawsuit-review-846617/

Ryu J. (2020, October 05). ” Led Zeppelin wins copyright battle after U.S. Supreme Court declines to hear case”. Retrieved October 08, 2020, from: https://www.usatoday.com/story/entertainment/music/2020/10/05/led-zeppelin-stairway-heaven-copyright-lawsuit-supreme-court-ruling/3624384001/

Sisario B. (2020, March 09). “Led Zeppelin Prevails in ‘Stairway to Heaven’ Appeal”. Retrieved October 08, 2020, from: https://www.nytimes.com/2020/03/09/arts/music/led-zeppelin-lawsuit-stairway-to-heaven.html

United Nations. “Universal Declaration of Human Rights”. Retrieved October 08, 2020, from: https://www.un.org/en/universal-declaration-human-rights/

Wikipedia. (2020, September 28). “Ex post facto law”. Retrieved October 08, 2020, from: https://en.wikipedia.org/wiki/Ex_post_facto_law

Wikipedia. (2020, October 07). “Supreme Court of the United States”. Retrieved October 09, 2020, from: https://en.wikipedia.org/wiki/Supreme_Court_of_the_United_States

Banksy Decision Highlights the Importance of Trade Mark Usage and Filing in Good Faith

A recent decision around a trade mark application from the street-artist Banksy highlights the importance of usage and filing in good faith for trade mark applications.

 

What is a Trade Mark?

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

Usage Requirement

It is a basic principle of trade marks that a connection exists between a trader and the goods and services they provide, and that there is no such connection if the mark is not used.  To remain valid, trade marks must therefore be used in the course of trade in relation to the goods and services specified in the scope of the right.

In New Zealand, a continuous period of non-use of three years or more may be accepted as grounds for revocation of a registered trade mark.

 

Good Faith Requirement

Trade mark registration can also be refused or invalidated if the application was made in bad faith.  In this context, bad faith relates to having unfair intentions when filing the application, and may include:

  • Using the trade mark for purposes other than the intended function of a trade mark to act as an indicator as to the origin of goods or services
  • The scope of protection having the effect of introducing unfair competition in the market
  • Prior knowledge of an identical or similar third-party mark, that your mark may be confused with

There has to be a genuine intention to use the trade mark appropriately at the time of making of the application.

 

Banksy Case and EUIPO Decision

“Flower Thrower” is one of Banksy’s most recognisable works.  Depicting a masked man in the act of throwing a bunch of flowers, it first appeared in 2003, and has been used and reproduced, as has much of his art, in a variety of settings.  In 2014, Banksy’s representatives made a successful application to trade mark the Flower Thrower in the European Union.

In 2019, a greeting’s card company, Full Colour Black, which often uses Banksy’s artworks on their products, started an invalidity action against the mark, on the grounds that the registered image had never been intended to be used as a trade mark in the first place.  Later that year, Banksy created an online gift shop and shop front, Gross Domestic Product, in an attempt to comply with EU trade mark law by showing use of the contested mark.

Earlier this month (September 2020), the European Union Intellectual Property Office (EUIPO) Cancellation Division ruled against Banksy and that the trade mark should be declared invalid.  They found that, at the time of filing his application, he had no intention to use the mark as a trade mark for the commercialisation of goods or services, and that his shop had only been set up in response to the invalidity action.

They also found that the trade mark application had been made to avoid using copyright laws to protect his works.  Enforcing a breach of copyright would require Banksy to reveal his true identity, whereas trade marks can be owned and enforced through a third-party representative.

Trade marks are an important, well defined, and valuable form of intellectual property, with clear differences from other types of IP right such as copyright, patents, designs, geographical indications etc.  A registered brand is a valuable business asset that indicates the origin and quality of the goods and services a business provides.

This decision highlights the importance for any business, big or small, to protect, manage and enforce their intellectual property appropriately.

Alistair Curson

 

References

Angelopoulou SL. (2020, September 18). “Banksy loses trademark legal battle with greeting-card company while his identity remains a mystery”. Retrieved September 22, 2020, from: https://www.designboom.com/art/banksy-loses-trademark-legal-battle-graffiti-greeting-cards-company-09-18-2020/

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Bakare L. (2020, September 17). “Banksy trademark ‘at risk’ after street artist loses legal battle”. Retrieved September 22, 2020, from: https://www.theguardian.com/artanddesign/2020/sep/17/banksy-trademark-risk-street-artist-loses-legal-battle-flower-thrower-graffiti

BBC. (2020, September 17). “Banksy loses battle with greetings card firm over ‘flower bomber’ trademark”. Retrieved September 22, 2020, from: https://www.bbc.com/news/entertainment-arts-54189113

Bonadio E. (2019, October 12). “Banksy’s trademark battle exposes a huge hypocrisy in his anti-copyright views”. Retrieved September 22, 2020, from: https://qz.com/quartzy/1726408/banksys-trademark-dispute-with-full-colour-black-could-backfire/

Curson AD. (2020, January 14). “Changes to the New Zealand Trade Marks Act”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=266

Curson AD. (2020, June 30). “Fluid Trademarks”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=317

European Union Intellectual Property Office. EUTM File Information 012575155. Retrieved September 23, 2020, from: https://euipo.europa.eu/eSearch/#details/trademarks/012575155

Lince T. (2020, September 14). “Gross Domestic Failure – Banksy trademark portfolio “at risk” after registration ruled invalid”. Retrieved September 21, 2020, from: https://www.worldtrademarkreview.com/brand-management/gross-domestic-failure-banksy-trademark-portfolio-risk-after-eu-registration-declared-invalid

MyArtBroker. “Banksy Portfolio: Love Is In The Air (Flower Thrower)”. Retrieved September 23, 2020, from: https://www.myartbroker.com/artist/banksy/love-is-in-the-air-flower-thrower/

New Zealand Copyright Act 1994, s22. Retrieved September 23, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345932.html

New Zealand Trade Marks Act 2002, s17. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164459.html

New Zealand Trade Marks Act 2002, s66. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164640.html

Official Journal of the European Union. (2006, December 27). “Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights”. Retrieved September 23, 2020, from: https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:32006L0116

Sullivan B, Butler D. (2019, October 14). ” ‘Trade mark dispute’ 2019 Banksy”. Retrieved September 22, 2020, from: https://www.ajpark.com/insights/ip-updates/trade-mark-dispute-2019-banksy/

van de Mortel L. (2020, January 13). “Need to know: ‘Bad faith’ in trademark law”. Retrieved September 21, 2020, from: https://www.novagraaf.com/en/insights/need-know-bad-faith-trademark-law

Wikipedia. (2020, September 18). “Banksy”. Retrieved September 21, 2020, from: https://en.wikipedia.org/wiki/Banksy

Geographical Indications in Australia – Public Consultation on the Creation of a New IP Right

On 4th September 2020, the Australian Government opened public consultations on the creation of a new geographical indications right.  This relates to the ongoing negotiations between Australia and the European Union (EU) for a Free Trade Agreement, where the protection of geographical indications is one of the key objectives of the EU’s negotiating position.

 

What is a Geographical Indication?

A geographical indication is a sign that informs the consumer that a product with specific characteristics comes from a particular geographical location.  For example, sparkling wine can only be called Champagne if it comes from the Champagne region in France.

It also assures that the product has been made in accordance with the specific recipes and processes necessary to give it the expected attributes.

Where the consumer attributes certain characteristics, including quality and reputation, to be associated with products originating from a specific place, this form of IP right provides assurance that the product does indeed originate from there.

 

Difference Between a Trade Mark and a Geographical Indication

There is some overlap between trade marks and geographical indications as both provide an assurance to the consumer as to the origin of a product.  However, the two are subtly different.

A trade mark provides a “badge-of-origin” as to the commercial source of a product or service, i.e. the company or other entity that is providing it.

A geographical indication, on the other hand, distinguishes the product itself and its actual global location of origin.

 

How are Geographical Indications Currently Protected in Australia?

Australia currently has two systems for the protection of geographical indications.

All goods can have a geographical indication registered as a type of trade mark called a Certification Trade Mark (CTM).  This is a trade mark (a sign for distinguishing goods and services) that has been certified by the owner of the mark that the goods or services meet certain standards “…in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture…”.  As such, both registered trade mark requirements and certification requirements have to be met, as well as competition and fair-trade rules.

There is also a separate system for the registration of geographical indications for wines.

 

Purpose of the Public Consultation

Should an acceptable Free Trade Agreement with the EU be negotiated, it is likely that Australia will have to make provision for the protection of certain EU geographical indications, which is currently not possible within the existing Australian systems.

One option being considered is an amendment to the Trade Marks Act 1995 to create a new, clearly defined, Geographical Indications right, which would protect both Australian and international geographical indications.

Were this to go ahead, then the current Certification Trade Mark and wine geographical indication systems could either remain as they are in parallel, or a new single geographical indications system could be introduced.

Whilst any changes would, in part, be driven by the outcomes of the negotiations with the EU, they would need to be developed and implemented to best meet the needs of Australian businesses, industries and consumers.

The consultation, which closes on 30th November 2020, aims to gather relevant views with respect to any potential changes to the geographical indication system in Australia.

Alistair Curson

 

References

Australian Trade Marks Act 1995, s169. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2019C00085

Curson AD. (2019, September 03). “Geographical Indications – Implications of a New Zealand / EU Trade Deal on Product Names”. Retrieved September 07, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=240

European Union: Your Europe. (2020, May 12). “Geographical indications”. Retrieved September 07, 2020, from: https://europa.eu/youreurope/business/running-business/intellectual-property/geographical-indications/index_en.htm

IP Australia. (2019, February 26). “Geographical indications”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-trade-mark/geographical

IP Australia. (2020, September 04). “Australia-European Union Free Trade Agreement: Consultation on a Possible New Geographical Indications Right”. Retrieved September 08, 2020, from: https://consultation.ipaustralia.gov.au/policy/geographical-indications/

IP Australia. (2020, September 04). “The Australia – EU Free Trade Agreement – Consultation on a possible new geographical indications right”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/australia-eu-free-trade-agreement-consultation-possible-new

New Zealand Intellectual Property Office. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.iponz.govt.nz/about-ip/geographical-indications/

Wikipedia. (2020, June 29). “Free trade agreement”. Retrieved September 07, 2020, from: https://en.wikipedia.org/wiki/Free_trade_agreement

Wine Australia Act 2013, Part VIB. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2017C00368

World Intellectual Property Organisation. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.wipo.int/geo_indications/en/

Trust Badge – A Trial of IP Australia’s Smart Trade Mark

Just over a year ago, I posted about the award winning Smart Trade Mark initiative being developed by IP Australia, and its application in protecting supply chains as well as combating counterfeiting activities, both nationally and globally.  The system is now at the trial stage with IP Australia working with the National Rugby League (NRL) to test Trust Badge – IP Australia’s implementation of their smart trade mark.

 

What is Smart IP?

The Smart Trade Mark concept is the first in a series of Smart Intellectual Property (IP) Rights being developed by IP Australia, to support and protect inventors, entrepreneurs and businesses operating on the global stage.

Smart IP Rights are a digital representation or “fingerprint” of an owner’s IP.  They create a connection and a thread of online information between the IP right on the official IP register and relevant digital services, thereby supporting owners in enforcing their IP rights.

 

How Does Smart IP Work?

The concept behind the system is that goods are scanned and tracked as they move through a supply chain using:

  • A series of APIs (application programming interfaces) for connecting digital and online services;
  • Mobile apps, and;
  • Blockchain technology – an open and distributed internet-based record of transactions that cannot be altered without the entire network being made aware and providing their consent

Essentially it is a “track and trace” solution that includes IP and government authenticity stamps, as well as clear information as to the origin of goods.

The system also provides further protection through its use of notifications.  All events and locations are recorded within the blockchain as the goods pass through the supply chain.  Any suspicious activity is notified to the legitimate parties concerned.

Using this information, the Smart IP system also serves to provide greater insight and intelligence around counterfeiting activity within global supply chains.

 

Trust Badge

The Trust Badge is the digital connection between the registered trade mark and the consumer.  During online shopping, it provides a visual link to the registered trade mark, thereby increasing trust in the brand, as well as helping consumers identify authentic products and instil confidence that they are purchasing genuine goods and services.

 

Current Trials and Future Applications

The Trust Badge is currently being trialled with the National Rugby League (NRL) on the NRL Shop and Savvy Supporter websites, with the aim of tackling the problem of counterfeit merchandise.  Initial findings and feedback indicate that consumers have an understanding of the purpose of the Trust Badge, as well as a feeling that it serves its purpose of increasing their confidence when shopping online.

With the success of these preliminary findings, IP Australia is increasing public availability of the system through further trials, which will also ensure the system develops appropriately to meet the needs of businesses.

Alistair Curson

 

References

Clark B. (2018, February). “Blockchain and IP Law: A Match made in Crypto Heaven?”. Retrieved August 20, 2020, from: https://www.wipo.int/wipo_magazine/en/2018/01/article_0005.html

Curson A. (2018, October 05). “Blockchain and the New Zealand Agtech Industry”. Retrieved August 20, 2020, from: http://www.adcpatentsearch.co.nz/Blockchain%20and%20the%20New%20Zealand%20Agtech%20Industry%2005Oct18.pdf

Curson AD. (2019, June 11). “Smart IP Rights – The Future of IP Enforcement?”. Retrieved August 20, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=168

IP Australia. (2019, May 23). “IP Australia’s Smart Trade Mark sweeps the Canberra iAwards”. Retrieved August 20, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/ip-australias-smart-trade-mark-sweeps-canberra-iawards-0

IP Australia. (2020). “As your business moves online, so should your trade marks”. Retrieved August 20, 2020, from: https://smarttrademark.search.ipaustralia.gov.au/

IP Australia. (2020, August 10). “Tackling counterfeit footy fan gear”. Retrieved August 14, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/tackling-counterfeit-footy-fan-gear

Research and Markets. (2018). “Global Brand Counterfeiting Report, 2018”. Retrieved August 20, 2020, from: https://www.researchandmarkets.com/reports/4438394/global-brand-counterfeiting-report-2018

Rossow A. (2018, July 24). “How Can We Make Intellectual Property Rights ‘Smarter’ With the Blockchain?”. Retrieved August 20, 2020, from: https://www.forbes.com/sites/andrewrossow/2018/07/24/how-can-we-make-intellectual-property-rights-smarter-with-the-blockchain/#6ea8f43185ec

Wang B. (2018, March 31). “Moving towards blockchain registration control of Patents and Intellectual Property”. Retrieved August 20, 2020, from: https://www.nextbigfuture.com/2018/03/moving-towards-blockchain-registration-control-of-patents-and-intellectual-property.html

Wikipedia. (2020, August 19) “Blockchain.” Retrieved August 20, 2020, from: https://en.wikipedia.org/wiki/Blockchain

Key Global Shifts – Opportunities for New Zealand Innovation

New Zealand’s annual festival of innovation, Techweek, concluded its 2020 programme just over a week ago.  As part of the programme, Callaghan Innovation, New Zealand’s innovation agency, presented research discussing four global shifts they had identified, as well as the potential opportunities for innovation and entrepreneurialism by Kiwis and Kiwi businesses, that these presented.

 

Callaghan Innovation

Callaghan Innovation is New Zealand’s innovation agency.  It supports innovation and growth for businesses of all sizes through a variety of programmes.  These include R&D services for technology and product development; funding; programmes for business development and to build innovation skills; and enabling people and businesses to connect with experts, opportunities and networks.

The research presented during Techweek 2020 looked at a three to five-year time horizon and identified four key global shifts (as outlined below).  These represent potential opportunities for businesses to adopt a leading role, and to position themselves competitively, to innovate in response to these emerging trends and needs, both within New Zealand and around the world.

 

Key Global Shift: Unpredictable Waters

Uncertainties with respect to water are predicted to increase in the future.  Climate change is causing increases in sea level, as well as extreme weather events.  Combined with the continuing trend within human society towards urbanisation and urban development (two-thirds of the projected world population are expected to live in urban centres by 2050), issues such as river flooding and water security are also likely to be a challenge.

 

Key Global Shift: Beyond Urban and Rural

Despite many societies around the world becoming more urbanised, an increased desire for people to return to nature within these societies was identified by the research.  To accommodate these needs, we may need to redefine how we think about “urban” and “rural”.  Innovative technology could give access to the best of both environments.  This might include virtual rural experiences for an increasingly urbanised population, or an emphasis and prioritisation of rural aspects of products and services including how these are presented to the consumer.

 

Key Global Shift: More Fluid Life-Shapes

A generation or two ago (particularly within Western societies) many people’s lives had a predictable structure beginning with education, followed by work, followed by retirement.  For many, this is no longer the case.  The structures of a lot of people’s lives now follow different patterns with much more fluid changes being experienced.  People may change careers, or re-enter education, later in life, whether by necessity or choice.  Longer life-spans also mean retirement may not look like it once did.  This is likely to be even more apparent in the future, and therefore creates opportunities for technology innovation to support society.

 

Key Global Shift: Distance Redefined

Globalisation has seen the world get “smaller”, whether through readily accessible international travel, or via instant communication around the globe.  The Covid-19 pandemic has changed how we travel and interact, and it may take many years to return to what we once knew, if that happens at all.  There will be opportunities to innovate in how we interact at a distance, whether locally, nationally or internationally, for business, entertainment and social reasons.  This might include the use of robots and avatars to attend events remotely, the use of haptics to facilitate sensory interactions, as well as addressing the challenges of building rapport and trust when people can’t meet face-to-face.

 

The New Future

It’s time to start thinking and innovating, to position New Zealand businesses for the new future.

Alistair Curson

 

References

Callaghan Innovation. (2020, March 27). “About Us”. Retrieved August 05, 2020, from: https://www.callaghaninnovation.govt.nz/about-us

Miller J, Edgar K. (2020, July 28). “Key Global Shifts: What They Could Offer to NZ Innovators”. Retrieved August 05, 2020, from: https://techweek.co.nz/whats-on/2020/key-global-shifts-what-they-could-offer-to-nz-innovators-by-callaghan-801/ and: https://play.stuff.co.nz/details/_6176061334001

Murali M, Cummings C, Feyertag J, Gelb S, Hart T, Khan A, Langdown I, Lucci P. (2018, October 2018). “10 things to know about the impacts of urbanisation”. Retrieved August 05, 2020, from: https://www.odi.org/publications/11218-10-things-know-about-impacts-urbanisation

Techweek. “About Techweek”. Retrieved August 05, 2020, from: https://techweek.co.nz/about/

Wikipedia. (2020, July 27). “Haptic technology”. Retrieved August 06, 2020, from: https://en.wikipedia.org/wiki/Haptic_technology

New Zealand Registered Designs Now Available on DesignView

From 30th June 2020, the New Zealand Intellectual Property Office (IPONZ) has made its registered design data available on DesignView – a searchable international database of registered designs from the European Union Intellectual Property Office (EUIPO).

 

What are Design Rights?

In New Zealand, a registered design protects the visual appearance of a product, or a part of a product.  The protection can cover 3-dimensional shapes and product configurations, as well as patterns and ornamentation in 2-dimensions (such as wallpaper, textiles and labels).

Registered designs protect the way a product looks, not the way it works, and so purely functional designs are not protected (a patent may be more appropriate for protecting the functional aspects of a product).  Examples of products that may be protected by registered design rights include tools, machinery, furniture, jewellery and clothing, as well as their packaging.

The protection afforded allows the owner an exclusive right to use the design in trade or business, including making, importing, selling or hiring any product for which the design is registered.

In New Zealand, so long as the renewal fees are paid, registered designs last for 15 years.

 

Why Search Designs?

In order to qualify for registration, a design must be:

  • New and original
  • More than just functional
  • Appealing to the eye

 

A design search will help answer questions around novelty and originality.  It can also address the likelihood of a product infringing any existing third-party patents and designs in those jurisdictions where you want to operate.

 

DesignView

DesignView is a free global online tool from the European Union Intellectual Property Office (EUIPO) that facilitates searching of over 16 million registered designs from the 72 participating offices around the world.

A range of IP right, bibliographic and legal status information can be searched and investigated, including the product indication, Locarno classification, ownership, legal status and registration date.  Access to details at the office of origin is also provide.

The news of New Zealand joining DesignView follows closely the announcement that the EUIPO had launched improved versions of both its DesignView (designs) and TMview (trade marks) databases.  The improvements include a wider set of search criteria and abilities to fine tune queries, a function to compare designs and trade marks side-by-side, and the capability to export to PDF, Excel and Word formats.

Alistair Curson

 

References

AJ Park. “Designs: Protecting your design in New Zealand”. Retrieved July 14, 2020, from: https://www.ajpark.com/assets/Uploads/Resource/Protecting-your-design-in-New-Zealand.pdf

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Curson A. (2020, April 21). “Expanding the Scope of Free Global Intellectual Property Databases”. Retrieved July 14, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=294

European Union Intellectual Property Network. (2020, June 29). “News: New Zealand joins DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview/news

European Union Intellectual Property Network. (2020, April 02). “News: The EUIPO has launched improved versions of TMview and DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. “DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview

James & Wells. “Design registration FAQs”. Retrieved July 14, 2020, from: http://www.jamesandwells.com/resource/design-registration-faqs/

New Zealand Designs Act 2002, s5. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281716.html

New Zealand Designs Act 2002, s11. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281725.html

New Zealand Intellectual Property Office. “Designs”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/about-ip/designs/

New Zealand Intellectual Property Office. “New Zealand’s designs are now on EUIPO’s DesignView”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/news/new-zealands-designs-are-now-on-euipos-designview/

Fluid Trademarks

Can making minor and temporary changes to your trademark strengthen your brand, or undermine it through increased consumer confusion?

 

Principles of Trademarks

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

What is a Fluid Trademark?

Fluid trademarks are marks that display temporary modifications to, or variants of, the underlying trademark, often to reflect significant events or support commercial promotions.  This may be accomplished by ornamentation or decoration of the trademark whilst retaining its essential characteristics, or by employing more substantial design changes.

One of the most well-known examples of a fluid trademark is the Google Doodle.  These are variants of Google’s underlying logo, either static or animated, that reflect notable events relating to the day or period for which they are displayed.  For example, key anniversaries, sporting events, or the birthdays of historical figures.

In recent months as a consequence of the Covid-19 pandemic, a number of companies have introduced fluidity to their marks with elements of “separation”, in order to support the message of social distancing that we’re all encouraged to adopt in our fight against the virus.  These include the golden arches of MacDonald’s and the rings of Audi, both of which show the respective elements separated rather than attached or interlocked as they normally would be.

 

Pros and Cons of Fluid Trademarks

Fluid trademarks can strengthen the relationship between the consumer and the brand by demonstrating that the brand is energised, evolving and up-to-date with current trends.

However, there are also risks.  People might become confused if the mark is constantly changing and doesn’t appear to consistently identify the source of the goods or services being provided.  Third parties might create their own unauthorised variations of the mark, which could be relatively difficult to police particularly if the brand is employing a large number of fluid variants.  Further, the underlying mark may become vulnerable to claims of non-use and thus be at risk of removal from the trademark register, on the basis that it is not being used in its registered form.

The use of fluid trademarks should be carefully considered and managed, otherwise they risk weakening or even destroying the original mark and the brand it represents.

However, provided they do not undermine the original mark and its purpose, and are applied as part of a structured strategy, fluid trademarks can be a modern and contemporary tool to promote a brand and strengthen the relationship with the market, in ways conventional trademarks may not.

Alistair Curson

 

References

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Gaurav K. (2020, March 28). “COVID-19: Audi, McDonald’s And Other Brands Redesign Logo To Promote ‘social Distancing’”. Retrieved June 27, 2020, from: https://www.republicworld.com/world-news/rest-of-the-world-news/covid-19-audi-mcdonalds-and-other-brands-redesign-logo-for-social.html

The Fashion Law. (2020, June 09). “Fluid Trademarks Can be Marketing Gold But Should Brands Really Up-and-Alter Their Famous Logos?”. Retrieved June 27, 2020, from: https://www.thefashionlaw.com/fluid-trademarks-can-be-marketing-gold-but-should-brands-really-up-and-alter-their-famed-logos/

Pearson L, Welsh JA. (2013, August 27). “Fluid Trademarks: Dynamic Brand Identities for Dynamic Times”. Retrieved June 27, 2020, from: https://www.acc.com/resource-library/fluid-trademarks-dynamic-brand-identities-dynamic-times

Petillion F, Vanleenhove C. (2009, September). “Protect your fluid trade marks in Europe”. Retrieved June 27, 2020, from: https://www.crowell.com/documents/Protect-your-fluid-trade-marks-in-Europe.pdf

Spruson & Ferguson. (2014, October 20). “What Are ‘Fluid Trademarks’?”. Retrieved June 27, 2020, from: https://www.spruson.com/trade-marks/fluid-trademarks/

WIPO PROOF: Protect Your Intellectual Assets with A Digital Time-Stamp

WIPO PROOF is a new online business service from the World Intellectual Property Organisation (WIPO) that provides tamper-proof evidence of the existence of any digital file, in any format, at a specific point in time.

 

Types of IP Assets

Intellectual property (IP) rights and assets deal with the output of creative effort.  These include: inventions; designs; works of art, music and literature; trade secrets; know-how; research; data; and other business records.

Whilst some of these can be protected with formally registered IP rights (such as patents and registered designs), others are only covered by unregistered rights, or the processes within an organisation to prevent unauthorised access and disclosure.  All these assets can be highly valuable to a business, and, as such, appropriate steps should be taken to safeguard them.

Additional support mechanisms that enable management around, or otherwise discourage, unauthorised use, infringement and theft, can be of great benefit.

 

WIPO PROOF

WIPO PROOF is a new digital service to complement existing IP registration systems.  It provides a date and time-stamped fingerprint, in the form of a digital certificate, that serves as tamper-proof evidence of the existence of an asset at a specific point in time.

Using Public Key Infrastructure (PKI) technology, WIPO PROOF generates certificates in the form of tokens.

PKI is an established cryptographic technology, widely accepted internationally, for the creation, storage, and distribution of digital certificates.  In addition, WIPO PROOF meets eIDAS (Electronic Identification, Authentication and Trust Services) standards.  This is a European Union regulation relating to electronic identification and trust services for electronic transactions.

 

Protecting Your Assets with WIPO PROOF

WIPO PROOF is specifically designed for innovation and creativity in the digital world.

Anyone can use WIPO PROOF and request a token for a specific digital file.  Any digital file of any size can be protected, including numeric, image, executable, text or audio-visual files.

WIPO PROOF is not a registration system.  Rather, it offers tamper-proof evidence of the prior existence of a digital file.  This can discourage misuse and misappropriation.  It can also safeguard intellectual assets at every stage of development from concept through to commercialization.

Trade secret strategies can benefit from the certification of a file or data that demonstrates both its value and the steps taken to protect it.  Owners of creative works can show that they were in possession of an original work before anyone else.  Scientific research and other valuable data sets can be managed more effectively through accepted verification of their existence and ownership.

The service offered by WIPO PROOF should be viewed as an additional part of your IP strategy.  It can be used to protect certain assets, lay the foundation for the eventual registration of a formal IP right, and help resolve legal disputes, arbitration and mediation.

Alistair Curson

 

References

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Wikipedia. (2020, June 02). “eIDAS”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/EIDAS

Wikipedia. (2020, June 11). “Public key infrastructure”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/Public_key_infrastructure

World Intellectual Property Organisation. “WIPO PROOF – Trusted Digital Evidence”. Retrieved June 04, 2020, from: https://www.wipo.int/wipoproof/en/

World Intellectual Property Organisation. (2020, May 27). “WIPO PROOF: WIPO Introduces New Business Service That Provides Evidence of an Intellectual Asset’s Existence”. Retrieved June 04, 2020, from: https://www.wipo.int/pressroom/en/articles/2020/article_0012.html

Interactive Patent Analytics from IP Australia of COVID-19 Related Technology

IP Australia has recently launched a set of interactive patent analytics displays related to technologies instrumental in the fight against COVID-19.  These provide researchers and decision-makers with valuable tools to locate key intelligence within the body of patent information around these subjects.

 

IP Australia Patent Analytics Hub

IP Australia’s Patent Analytics Hub is an initiative that has grown out of the Office of the Chief Economist (OCE).  Originally focussed on economics research, the OCE has evolved to include open data products and patent information as part of its research services.

The Patent Analytics Hub delivers patent analytics to customers including research organisations and government agencies.  The reports support customers in identifying opportunities, monitoring competitor and market activity, determining the value of their intellectual assets, and guiding business decisions.

 

COVID-19 Technology Visualisations

As part of the global effort against the COVID-19 pandemic, the Patent Analytics Hub has developed a set of six freely-available interactive visualisations.

The visualisations cover:

  • Ventilators
  • Masks
  • Surgical gowns and goggles
  • Vaccines
  • Repurposed drugs
  • Medical diagnostics

Beginning with a top-level summary and overview of each analysis, users can then view the data as a series of interactive charts and graphs.  These can be drilled into and filtered to view the results for specific regions, applicants, and filing periods.  Once a document or documents are identified, the user can hyperlink directly to view full details of any patent of interest.

This resource will enable researchers and decision-makers to identify potentially useful technology, as well as the relevant patents and their owners.  This can assist in identifying know-how, partners, suppliers and manufacturers to gain a stronger position in the fight against COVID-19.

 

Global Collaborative Efforts

This initiative from IP Australia is just one of many such approaches around the world to support the sharing of innovative knowledge and technology.

WIPO (the World Intellectual Property Organisation) has launched a new search function for its PATENTSCOPE database to assist in the identification of relevant patent documents that may be of value in the fight against COVID-19.  CAS (the Chemical Abstracts Service) has released an open-access dataset of compounds having known or potential antiviral activity, to assist research and analytics efforts.

The Open COVID Pledge is an initiative to encourage more open access to intellectual property in the fight against COVID-19.  Examples of companies supporting the pledge and making their portfolios of thousands of patents available to the world include Intel and Microsoft, amongst others.

Further, Pfizer and BioNTech are working together to jointly develop a COVID-19 vaccine.  BioNTech has provided multiple vaccine candidate compounds, whilst Pfizer has provided access to its research and development, regulatory, manufacturing, and distribution infrastructure.  Initial human trials are already underway.

By working together, we have a much better chance of defeating this common enemy.  Maybe the lessons learned can provide the impetus for more collaborative approaches in the future.

Alistair Curson

 

References

CAS. (2020, March 31). “CAS Releases Open Access Dataset of Antiviral Chemical Compounds to Aid COVID-19 Discovery and Analysis”. Retrieved May 16, 2020, from: https://www.cas.org/resources/press-releases/open-access-covid-19-dataset

CSR Admin. (2020, April 07). “Intel Grants Free Access to Its Intellectual Property to COVID-19 Researchers and Scientists”. Retrieved May 16, 2020, from: https://blogs.intel.com/csr/2020/04/open-covid-pledge/#gs.6mv966

IP Australia. (2020). “Australian Intellectual Property Report 2020 – Chapter 8: Research Program”. Retrieved May 13, 2020, from: https://www.ipaustralia.gov.au/ip-report-2020/research-program

IP Australia. (2020, May 06). “New patent visualisations on the latest COVID-19 technology”. Retrieved May 12, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/new-patent-visualisations-latest-covid-19-technology

IP Australia. (2020, May 06). “Patent Analytics Hub”. Retrieved May 12, 2020, from: https://www.ipaustralia.gov.au/tools-resources/patent-analytics-hub

Open COVID Pledge. (2020, April 07). “Open COVID Pledge”. Retrieved May 16, 2020, from: https://opencovidpledge.org/

Pfizer. (2020, April 09). “Pfizer and BioNTech Announce Further Details on Collaboration to Accelerate Global COVID-19 Vaccine Development”. Retrieved May 16, 2020, from: https://www.pfizer.com/news/press-release/press-release-detail/pfizer_and_biontech_announce_further_details_on_collaboration_to_accelerate_global_covid_19_vaccine_development

Pfizer. (2020, May 05). “Pfizer and BioNTech Dose First Participants in the U.S. as Part of Global COVID-19 mRNA Vaccine Development Program”. Retrieved May 16, 2020, from: https://www.pfizer.com/news/press-release/press-release-detail/pfizer_and_biontech_dose_first_participants_in_the_u_s_as_part_of_global_covid_19_mrna_vaccine_development_program

Szweras M, De Luca C. (2020, April 22). “Patents and Their Role in a COVID-19 Cure”. Retrieved May 13, 2020, from: https://www.lexology.com/library/detail.aspx?g=b757a56e-834f-433f-b548-80fa98b7574d

World Intellectual Property Organisation. (2020, April 21). “WIPO Launches New Search Facility For PATENTSCOPE Database to Support COVID-19 Innovation Efforts”. Retrieved May 16, 2020, from: https://www.wipo.int/pressroom/en/articles/2020/article_0008.html

Yokoyama J. (2020, April 20). “Microsoft commits patents to help fight COVID-19”. Retrieved May 13, 2020, from: https://blogs.microsoft.com/on-the-issues/2020/04/20/open-covid-19-pledge-patents/