Bulletin - IP Updates

Weekly Trademark Update – Sept 2021 (3 of 3)

CHANGE: Improvements to the IPONZ online case management facility

“Improvements to the IPONZ online case management facility as of 23 September 2021.

We’ve made a number of improvements to our website and online case management facility as of 23 September 2021.

New goods and services search on trade mark application form

A new search utility for pre-approved goods and services terms is now available on the forms for Trade Mark applications and Search and Preliminary Advice requests. The new search utility uses the same design and technology as our recently launched Trade Mark Specification Builder. This provides an improved interface and results, and uses artificial intelligence to match concepts as well as keywords.

Trade Mark Specification Builder

The search logic in Trade Mark Specification Builder has also been adjusted to include more diverse results.

We are continually looking for ways to improve our trade mark application process. If you would like to provide us with feedback in this area, you may participate in our Trade mark application process survey, which will run until 29 September 2021 This survey will only take 5 to 10 minutes to complete.

Trade mark application process survey

New user role to help “superusers” in large organisations

If your user account has a “superuser” role, you can now create or assign “administrator” roles to some of your users. Administrators have similar access to superusers: They can manage “member” accounts and access tasks and discussions across member accounts.

Administrator accounts are intended to assist organisations with a large number of users, particularly for instances where the superuser is unavailable.

Case contacts can now view the primary examiner assigned to their application

Whenever you view your application for a trade mark, patent, design, or plant variety right, you can now see the name and contact number of the primary examiner assigned to the application.

GPPH expedited examination requests may now be entered after deadline to request patent examination

Our online system now allows expedited examination under the Global Patent Prosecution Highway (GPPH) to be requested after the 5-year deadline to request examination on a patent application. This option will only be available if the patent applicant has requested examination before the 5-year deadline. Please note that the GPPH expedited examination request must still fulfil all mandatory requirements in order to be considered.

For more information on expedited examination requests under the GPPH, please see Global Patent Prosecution Highway.

Changes to design application amendments

Amendments and alterations made to design applications on the same day the application is filed will no longer be automatically accepted. These changes will now be manually reviewed and processed by our design examiners.

Trade Mark Check navigation improvements

Browser ‘back’ and ‘forward’ buttons now work within Trade Mark Check, and will allow navigation from the details of a trade mark back to the search results.

Trade Mark Check

International trade mark applications now require email addresses

The filing requirements for international trade mark applications have changed. If the applicant or the agent for an international trade mark application with a New Zealand Office of Origin (NZOO) is lacking an email address, our case management system will now prompt for an email address to be added for that entity.

Single designation for NZOO trade mark applications

When submitting an NZOO trade mark application with multiple goods and services classes, we now require that:

  • At least one class designates a jurisdiction; and
  • The International Bureau is designated for all classes.

This reverses our previous requirement that a jurisdiction is designated for all classes. This allows for subsequent designations to be made from the same NZOO application rather than having to submit a new application to designate those classes.”


JURISDICTION: United States of America
CHANGE: UNITED STATES: Standard for Attorney Fees Reconciled Under Lanham Act

“An effort to hold a prior infringer in contempt for violation of an injunction can backfire when the plaintiff does not own the trademark rights it seeks to enjoin, does not participate in discovery, and, ultimately, forces the defendant to file six discovery motions and the court to sanction it for obstructing discovery.

This is what happened in Derma Pen, LLC v. 4EverYoung Ltd., causing the lower court to dismiss Derma Pen’s (plaintiff) motion for contempt and granting the defendants’ motion for attorney fees. When Derma Pen appealed, the U.S. Court of Appeals for the Tenth Circuit, in a decision issued on June 8, 2021, upheld the award against Derma Pen, clarifying the standard for granting attorney fees in Lanham Act cases along the way.

Under the Lanham Act, prevailing parties may collect attorney fees in “exceptional cases.” The Tenth Circuit agreed with its sister circuits that “the exceptional case standard in the Lanham Act parallels the standard in the Patent Act.” As a result, the standard articulated by the Supreme Court of the United States in the patent case Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) applies equally to Lanham Act cases. Under this standard, whether a case is exceptional is determined on a case-by-case basis, “considering the totality of the circumstances” and whether the case is “simply one that stands out from others.” Factors relevant to this conclusion can include “frivolousness, motivation, objective unreasonableness,” and “the need in particular circumstances to advance considerations of compensation and deterrence.”

The Tenth Circuit also held that the district court properly applied the Octane standard, but that courts should continue to look to the factors listed in the Tenth Circuit’s decision in King v. PA Consulting Group, 485 F.3d 577 (10th Cir. 2007), as “useful inquiries for identifying exceptional cases under the Octane standard.” Under King, “[a] case may be deemed exceptional because of (1) its lack of any foundation, (2) the plaintiff’s bad faith in bringing the suit, (3) the unusually vexatious and oppressive manner in which it is prosecuted, or (4) perhaps for other reasons as well.””


CHANGE: OAPI inaugurates its documentation center in Malabo

“The President of the Republic of Equatorial Guinea Théodoro OBIANG NGUEMA inaugurated the OAPI Intellectual Property Documentation Center (CDPI) this Thursday, September 23, 2021 in Malabo.

It was in the presence of many personalities including Mr. Anacleto OLO MIBUY, President of the Scientific and Technical Research Council (CICTE) Administrator of OAPI in Equatorial Guinea and Mr. Denis BOHOUSSOU, Director General of OAPI.

OAPI has undertaken a vast program of building documentation centers in member states. These centers are intended to make available to researchers, students, economic operators, inventors, investors and even the public authorities of the countries concerned, scientific, technical and legal information and documentation relating to the Intellectual Property system in Africa and in the world.”


CHANGE: Efforts to Protect IPR Ramped up

Development targets set for next 15 years to make China a global player

China’s protection of intellectual property rights will be much stricter by 2025, with a high level of public satisfaction and greater market value of IPR, according to a development plan made public on Wednesday.

The plan for developing IPR, jointly released by the Communist Party of China Central Committee and the State Council, China’s Cabinet, sets goals and maps out a number of tasks on protecting IPR and developing relevant industries in the next 15 years.

According to the document, the added value of patent-intensive industries is expected to account for 13 percent of GDP by 2025, and the added value of the copyright industry will make up 7.5 percent of GDP by that time.

The number of high-value invention patents is expected to reach 12 per 10,000 people by 2025.

By 2035, China’s IPR competitiveness will rank among the top in the world, with a completed IPR system, prosperous growth in IPR-driven innovation and a better social environment for an IPR culture, it said.

International cooperation featuring all-around and multilevel participation in global IPR governance will be basically shaped, while the country will be established as a world-class IPR power with Chinese characteristics, it added.

To reach the goals, the plan sets out several key requirements and tasks. These include building an IPR protection system that supports a world-class business environment, establishing an IPR market operation mechanism that encourages innovation, building a public IPR service system that is convenient and beneficial to people and stepping up participation in global IPR governance.

Laws on patents, trademarks and copyright as well as regulations on protecting new varieties of plants should be amended in a timely manner and legislation introduced for some new industries, including big data and artificial intelligence.

Judicial authorities should also improve the professionalism of IPR-related hearings and dispense harsher criminal punishment to infringers, the report said.

Considering many IPR-related cases involve advanced technologies, the document said it is a necessity to build a team of technical investigators to improve the quality of case handling.

Basic information related to IPR should also be made further open to public, it said, while administrators should streamline the process of reviewing patent and trademark applications by making use of new technologies.”


CHANGE: China Issues 15-Year Plan for IPR Protection, With Legislation to Cover Big Data, AI

“China issued a plan on Wednesday for 2021-2035 to strengthen buildup and protection of intellectual property rights (IPRs), by accelerating legislation on IPRs in new fields and forms of business, such as big data, artificial intelligence (AI), algorithms and genetic technology.

The country has set targets for 2025 and vowed to be deeply involved in global intellectual property governance.

Analysts said that the blueprint will improve the innovative environment for enterprises and further improve the legal system for emerging industries in China.

Entering a new stage, promoting high-quality development is an inevitable requirement for maintaining the sustained and sound economic development of China, according to a document issued by the General Office of the Communist Party of China (CPC) Central Committee and the General Office of the State Council, the cabinet, on Wednesday.

Innovation is the primary driving force for development, and the role of IPRs as a strategic resource for national development and a core element of international competitiveness is becoming more prominent, per the plan.

“The emerging information technology industries are technology-intensive and intelligence-intensive, the development of which, including basic algorithms and application scenarios, requires a lot of intellectual property (IP) support.

“Only when IPRs are effectively protected can innovation be encouraged, and scientific research and production capacity of enterprises be improved,” Wang Peng, an assistant professor at the Gaoling School of Artificial Intelligence at the Renmin University of China, told the Global Times on Wednesday.

By 2025, the added value of patent-intensive industries is expected to be equivalent to 13 percent of China’s GDP, and that of the copyright industry for 7.5 percent.

The annual trade volume of IPR royalties will reach 350 billion yuan ($54.1 billion). By 2035, the comprehensive competitiveness of IPRs shall rank among the top in the world, per the 15-year plan.

The country will also formulate and revise laws and regulations on strengthening the protection of business secrets, improve the legal system for regulating the abuse of IPRs, and improve legislation covering monopoly practices and unfair competition related to IPRs.

Zhao Zhanling, a legal counsel at the Beijing-based Internet Society of China, told the Global Times on Wednesday that the blueprint sends a signal that China will further step up a crackdown on monopolistic and unfair competition practices that abuse IP protection, such as companies’ exclusive control over music streaming licenses.

In August, Tencent music announced that its exclusive licensing deals with labels would end as of August 23, as China’s market regulator moved to prevent leading internet players from abusing their dominant market position.

In 2015, the National Development and Reform Commission, China’s top economic planner, fined chipmaker Qualcomm 6 billion yuan ($975 million) in one of the nation’s biggest moves in a wave of anti-monopoly penalties.

The US chipmaker had been found to abuse its dominant market position by charging excessive fees for technology.

Analysts also noted that Chinese regulators will improve legislation to protect domestic leading technologies from being stolen or leaked abroad.

“The internationalization of IPR protection in China also faces several problems. Since its accession to the WTO, China has done a lot of exploration. But the legal system is still inadequate,” Wang said, adding that the quantity of IP is large in China, but the quality still lags behind international advanced levels.

According to the plan, China will accelerate legislation on IPRs in new technologies, new industries, new forms of business and new models, and it will improve the system for protecting IPRs on the internet and of open source.

Market entities should be guided to give full play to the combined effects of patents, trademarks, copyrights and other types of IPRs, and foster a number of world-class enterprises with strong IP competitiveness.

In terms of biological breeding, China will speed up the cultivation of a number of excellent new plant varieties with IPRs and improve the quality of licensed varieties.”

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