Monthly Archive: April 2019

World IP Day 2019

World Intellectual Property Day is celebrated on 26th April every year.  In 2019 the theme is “Reach for Gold: IP and Sports”.

I’ve decided to publish this post a little earlier than usual to coincide with this celebration.  Also, given my base in New Zealand and the importance of sport in Aotearoa, I felt today was a great opportunity to look at how IP is embedded in our sport, and our businesses in general.

 

IP in Sport

Sources:

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171. Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

 

The figure above shows a few examples of where IP might potentially be found in a rugby match.  Whereas the examples chosen aren’t necessarily present in this particular picture, the purpose of this illustration is to show that IP is embedded in all aspects of the game; from the branding of a team and the sponsors (trade marks); to the clothes being worn (designs); to the equipment being used (patents); to aspects of the match event and its broadcast beyond the stadium (copyright).

Looking closely at our own businesses, we can find IP through an organisation and its activities in much the same way.

IP is an important strategic asset protecting the products, processes and software your business relies on, the design and appearance of your products and their packaging, your documentation and business development collateral, as well as your brand and the commercial reputation and goodwill embedded within it.

Understanding your business’s IP and the broader IP landscape in which it and your business sits is an important part of any business management and decision making process.

Alistair Curson

 

References

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171.  Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Immigration. (2018, November 07). “New Zealand Now: Live in New Zealand: Recreation: Sports”. Retrieved April 20, 2019, from: https://www.newzealandnow.govt.nz/living-in-nz/recreation/sports

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

New Division and Merger of International Trade Mark Registrations in New Zealand

From 1st February 2019, the World Intellectual Property Organisation (WIPO) is now allowing international trade mark registrations, made under the Madrid Agreement and Protocol, to be divided and merged.

As a consequence of this, effective 21st March 2019, the Intellectual Property Office of New Zealand (IPONZ) has updated its trade mark regulations for international trade mark applications to accommodate these changes.

 

Division in Trade Mark Applications

In some jurisdictions, there is provision to file a new divisional (child) trade mark application based upon an original parent application.

Such divisionals may comprise part of a series of marks, or some of the classes, and / or some of goods and services from the parental application.  They will retain the priority, application, registration and renewal dates of the parent (as appropriate).

The value of doing this is that it allows trade mark applications having goods and / or services that conflict with another trade mark, or that have been rejected or opposed, to have the conflicting goods and services removed, whilst retaining part of the original application.

The process may also be used strategically.  For example, to progress part of an application that covers goods or services already used in commerce to registration faster and acquire the associated benefits, whilst leaving the remaining goods and services at the application stage.

The subsequent divisional application will then have a greater chance of proceeding to a successful registration.

 

Merger in Trade Mark Applications

Certain jurisdictions also make provision to merge two more trade mark applications or registrations into a single application or registration respectively.

Provided a set of examination requirements are met, such as the request being for the same mark or series of marks; the same filing and priority dates, status, and owner; .and that the marks were classified under the same edition of the Nice Classification, then such an action may be allowed.

Often this is used to bring together applications that had a previously been divided.

 

The Impact of These Changes

The changes recently announced by WIPO now enable trade mark owners to apply the same strategic approaches to those parts of their IP portfolio filed via international mechanisms as was previously possible with certain national filings.

It is important to note that contracting parties may opt out of accepting requests for division and / or merger if their domestic legislation does not provide for these practises.

For New Zealand readers, attention is drawn to notices submitted to WIPO from two of our top trading partners, China and the European Union.  China has notified WIPO that it will not be accepting requests for division or merger of international marks, and the EU that it won’t be accepting requests for mergers.

When formulating your IP and business strategy in these jurisdictions, further clarification of the current position of local law and regulations should be sought in order to make appropriate decisions.

Alistair Curson

 

References

Intellectual Property Office of New Zealand. (2019, March 27). “New division and merger process for International Trade Mark Registrations”. Retrieved April 05, 2019, from: https://www.iponz.govt.nz/news/new-division-and-merger-process-for-international-trade-mark-registrations/

Intellectual Property Office of New Zealand. “Maintain an international trade mark”. Retrieved April 08, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/international/maintain-an-international-trade-mark/

Intellectual Property Office of New Zealand. “Trade Marks: Practice Guidelines: Division”. Retrieved April 05, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/current/division/

Intellectual Property Office of New Zealand. “Trade Marks: Practice Guidelines: Merger”. Retrieved April 08, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/current/merger/

Law Offices of Nikki Siesel Pllc. “Why An Applicant Would Divide A Trademark Application”. Retrieved April 08, 2019, from: https://www.ny-trademark-lawyer.com/why-an-applicant-would-divide-a-trademark-application.html

Stats NZ Tatauranga Aotearoa. (2018, June 05). “Goods and services trade by country: Year ended March 2018”. Retrieved April 08, 2019, from: https://www.stats.govt.nz/information-releases/goods-and-services-trade-by-country-year-ended-march-2018

World Intellectual Property Organisation. (2018, November 07). “Madrid Agreement and Protocol Concerning the International Registration of Marks”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2018/madrid_2018_21.pdf

World Intellectual Property Organisation. (2019, February 01). “The Division and Merger of International Registrations”. Retrieved April 05, 2019, from: https://www.wipo.int/madrid/en/news/2019/news_0002.html

World Intellectual Property Organisation. (2019, March 22). “Madrid Protocol Concerning the International Registration of Marks: Notification under new Rule 27ter(2)(b) of the Common Regulations: European Union”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2019/madrid_2019_16.pdf

World Intellectual Property Organisation. (2019, March 27). “Madrid Protocol Concerning the International Registration of Marks: Notification under new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations: China”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2019/madrid_2019_32.pdf

World Intellectual Property Organisation. “Nice Classification”. Retrieved April 08, 2019, from: https://www.wipo.int/classifications/nice/en/

UK IP Rights After Brexit

With the Brexit story continuing and no-one still yet knowing what the final outcome will be, I’m looking at what is likely to happen to UK intellectual property rights if, when and how the UK leaves the European Union (EU), particularly in the scenario of a no-deal Brexit.

Recently, the UK Intellectual Property Office (UKIPO) published new guidelines as to how IP rights will be handled in the event of a no-deal Brexit.

If your business has IP rights in the UK, how might you be affected?

 

Patents

There are currently two types of patent right available in the UK: a UK (GB) national patent filed with the UKIPO, and a UK-validated European patent filed with the European Patent Office (EPO).

If the UK leaves the EU without a Brexit deal then the impact upon these existing patent rights will be minimal.

UK patents granted by the UKIPO will largely be unaffected as the UKIPO is not an EU institution.  A few areas of UK patent law originate from EU law and regulation, and their implementation, and thus have the potential to be affected.  These include supplementary protection certificates (for pharmaceutical products and agrochemicals); biotechnology inventions; compulsory licensing; and clearance to conduct certain studies, trials and tests in relation to patented pharmaceuticals.  However, the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018, and thus, after exit day, things will continue as they do now.

European patents prosecuted and granted by the EPO under the European Patent Convention (EPC) that designate the UK will also be unaffected.  Again, the EPO is not an EU institution.  Being a contracting state to the EPC is separate from being a member of the EU.

There is a third patent right currently being developed in Europe, the unitary patent, that is close to coming into effect.  This is a new pan-European patent and associated court system, intended to cover all EU member states.  Its jurisdiction will be the EU, and, at the time of writing, the unitary patent has not yet come into effect.

 

Trademarks

If the UK leaves the EU without a deal then the following IP rights will no longer be valid in the UK:

  • Protected trade mark registrations, granted by the EU Intellectual Property Office (EUIPO)
  • Protected international trade mark registrations, filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO), designating the EU

UK law is being revised such that, from exit day, comparable UK trade marks will be created for all EU registered trade marks, and for all international trade mark registrations (under the Madrid Protocol) that designate the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK trade mark (subject to certain conditions) within nine months after exit day.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Designs

Similarly, if the UK leaves the EU without a deal then the following IP rights will cease to be valid in the UK:

  • Registered community designs (RCDs), granted by the EUIPO
  • Protected international design registrations, filed under the Hague Agreement at WIPO, designating the EU
  • Unregistered community designs (UCDs)

UK law is being revised such that, from exit day, comparable UK registered designs will be created for all EU registered community designs, and for all international design registrations (under the Hague Agreement) protected in the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK registered design (subject to certain conditions) within nine months after exit day.

Unregistered community designs that protect a design in the UK will continue to provide protection in the form of a UK continuing unregistered design.  This will arise automatically and will continue for the remaining term of the relevant UCD.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Next Steps

There are further specifics, constraints and details for each type of right.  For further information and advice as to how this might affect your business, contact the UKIPO and / or a registered IP attorney.

Alistair Curson

 

References

Burnett-Hall, G. (2018). “Brexit & Patents”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/MarksClerk/media/MCMediaLib/Reports/Brexit-series-Patents.pdf

European Patent Office. “Unitary Patent & Unified Patent Court”. Retrieved March 30, 2019, from: https://www.epo.org/mobile/law-practice/unitary.html

Marks & Clerk. “What countries will the Unitary Patent and Unified Patent Court cover?”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/Direct-Access-Pages/What-countries-will-the-Unitary-Patent-and-Unif.aspx#.XJ62eJgzaHs

UKIPO. (2019, March 21). “Changes to trade mark law in the event of no deal from the European Union”. Retrieved March 30, 2019. from: https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union

UKIPO. (2019, March 22). “Changes to registered design, design right and international design and trade mark law if the UK leaves the EU without a deal”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-registered-design-design-right-and-international-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

UKIPO. (2019, March 22). “IP and Brexit”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit