Quick Justice? – Reform of trade mark oppositions in Australia

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In March and June 2009 IP Australia released a series of consultation papers proposing reforms to Australia’s patent and trade mark system.

Less than 5% of trade mark applications in Australia are opposed but the opposition procedure is an important part of the trade mark process.
The Australian trade mark opposition procedure may seem relatively nimble and inexpensive in comparison with countries where the opposition procedure is akin to litigation. However, the Australian system has a dark side. A party seeking quick resolution may be frustrated by loose rules of evidence, endless extensions and the lack of a rigorous case management system.

IP Australia sought to address some of these tensions in the June 2009 trade mark reform paper, entitled “Resolving Trade Mark Opposition Proceedings Faster”. This sets out proposals aimed at resolving trade mark oppositions in a quick, efficient and cost effective matter.
Following the consultation process, IP Australia has, in November 2009 released a further consultation paper for the purpose of obtaining views on the revised proposals. Some of the key provisions are discussed below with reference to current Australian trade mark opposition practice.

Current Australian Practice – Notice of Opposition – the document, the deadline, service and extensions

In Australia, a Notice of Opposition is due three months following the advertisement of acceptance. The Notice of Opposition is typically a generic document reciting all or most of the available opposition grounds. Evidence-in-Support is not due until three months following the Notice of Opposition. The initial deadline is for the Opponent to file the Notice and the Opponent must serve the Notice on the Applicant (through its attorney if represented) as soon as practicable.

The initial deadline for filing a Notice of Opposition is typically extended on the basis of genuine negotiations to resolve the matter and / or that the Opponent is undertaking research to decide whether to oppose and / or the grounds of opposition.

The Registrar has broad powers to amend a Notice of Opposition if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.

The current procedure suits a potential Opponent, particularly a foreign Opponent, who has just become aware of an accepted Australian mark through a watch notice. They can quickly and easily take steps to preserve their position in a potential opposition without committing significant resources to the process for some time. Typically this allows for reasonable time to investigate the activities of the Applicant and in some circumstances attempt to resolve the dispute before filing the formal Notice of Opposition.

Proposed reforms

Service:
The Registrar (rather than the Opponent) will serve a copy of the Notice of Opposition on the Applicant as soon as practicable.

Opposition Deadline:
• Two (rather than three) months following the advertisement of the acceptance.
• Cannot be extended for the Opponent to conduct negotiations or undertake research.

Pleadings:
• An Opponent must, within one month of filing a Notice of Opposition, file and serve a statement setting out the grounds of opposition and the particulars relating to each ground – statement of grounds and particulars (SGP).
• If the SGP is inadequate (that is, does not particularise the grounds), the Registrar may direct further and better particulars. Failure to provide further and better particulars could be considered in a costs order or result in dismissal of the opposition.
• Pleadings (the Notice of Opposition and SGP) can only be amended in very limited circumstances.
• The Registrar may dismiss an opposition if the Opponent does not serve / file the SGP and / or particularise the grounds of opposition in the SGP.

If enacted, these reforms mean that an Opponent must act quickly to investigate the Applicant’s activities (if appropriate) and formulate the case in a very comprehensive way. There may be no second chance to refine the pleadings and more limited scope to seek an extension.

Current Australian Practice – Defending an opposition by an Applicant

Following the Notice of Opposition, the next step is that the Opponent has three months to serve the Evidence in Support of the opposition.

A trade mark Applicant does not need to file any statement of defence or indeed any pleadings in opposition proceedings. In fact an Applicant may not take any steps (pleadings or evidence) subsequent to filing the initial trade mark application and if opposed, the Opponent must ultimately prove its case in order to succeed in the opposition.

This is frustrating for an Opponent, especially in a situation where an Applicant has filed the application on a speculative basis (particularly in an environment where it is easy and cheap to file an application online). If the Applicant has lost interest in the application following the opposition, the Opponent may still have to incur enormous costs to formally prove its case.

Proposed reform

Notice of intention to defend a trade mark opposition:

• One month after the Opponent has served the SGP, an Applicant must file a notice indicating an intention to defend the trade mark application.
• The Opponent must serve a copy of evidence in support three months from the day on which the notice of intention to defend was filed.
• The intention is that an opposed application will lapse if the Applicant does not file a notice of intention to defend.

Current Australian Practice – Evidence

Evidence-in-Support (Opponent), Evidence-in-Answer (Applicant) and Evidence-in-Reply (Opponent) are due at three month intervals. The deadlines are typically extended by at least a further three months without too much difficulty. Although the Trade Marks Office has at times adopted a tough approach, the entire evidentiary process can be meandering and frustrating, particularly if the other side is deliberately tardy.

Proposed reform

• An extension in the evidence process will only be granted if the party entitled to serve evidence in that period has acted promptly and diligently at all times in the opposition proceedings and cannot serve the evidence in that period, or where a compelling circumstance justifies the extension.
• The Registrar must not give a direction to extend a period solely because of delays caused by an agent or legal representative failing to act promptly or diligently.
• The time period for serving Evidence in Reply is to be reduced from three to two months.

Other proposed reforms include:
• Introduction of a cooling – off period of 6 months (extendable by 6 months) for parties to negotiate.
• A repeal of the provisions for further evidence.
• There are no proposed changes to the existing position on the production of documents or articles, summoning of witnesses.
• Procedure for filing and serving a summary of submissions prior to a hearing.

Interested parties are invited to make written submissions by 12 February 2010. We are happy to coordinate submissions by any foreign attorneys or trade mark owners ( lance@1p.com.au ) or submissions can be sent to IP Australia at MDB-Reform@ipaustralia.gov.au

Otherwise, all further developments will be reported.

1P – Form 1Planet – ramp to Sydney Harbour Bridge

I ♥ NY

I recently had cause to consider proprietary rights in the wonderfully iconic I ♥ NY symbol.
Designed in 1976 by Milton Glaser, the logo is protected as a registered trade mark in the US (and possibly elsewhere). The logo is used to promote tourism in New York State but more readily identified with New York City. The logo is extensively used on white T-shirts and applied to other goods. New York State has actively sought to protect its intellectual property and prevent knock-offs / derivatives.
For typography heads, the type is American Typewriter.
Designer Milton Glaser talks about his iconic creation on Big Think.

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Mind the gap: copyright and product designs

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“[We] resembled each other like two drops of water, but we had different reflections”.
Salvador Dali, The Secret Life of Salvador Dali

Artistic copyright and registered design rights can each provide protection for a product design but, taking a leaf from Salvador Dali, they provide different reflections. One can long survive the other, or be extinguished by it. The art is in finding the gaps and exploiting them as best you can.

This post addresses the overlap (and gaps) between what is known as “artistic copyright” and design protection in Australia. We present a series of theoretical scenarios involving some of Dali’s designs to illustrate the boundaries of copyright protection for product design.

We continue the Dali theme, because Dali’s work typifies that of many designers in the sense that it spans a broad range of industrial or commercial spheres (see the box). We have taken great artistic licence in relation to actual events (we made them up), timing (now) and location (Australia).

Scenario 1: copycat design when there is no design registration
Dali creates a new design for a sofa in 2007: the Mae West Lips Sofa. He has created some design drawings and a handmade wood and satin prototype but not applied to register the design.

He displays the prototype sofa at a design fair later that year and receives interest from manufacturers. As a result, the sofa is made by Vogue Manufacturer (Vogue), a high end manufacturer with a strong reputation in design, under licence from Dali. The Mae West Lips Sofa is a runaway success, with the first run of 50 sofas sold out at the product launch in 2008.
Rogue Manufacturing (Rogue) is always scouting for new designs with consumer appeal. It buys one of the Mae West Sofas, and makes drawings and measurements from it in order to copy it and make its own line of lip-shaped sofas to sell to the public.

Dali comes across Rogue’s sofas. He has no design registration for his sofa design. Can he stop Rogue on the basis of copyright infringement?

Turning first to Dali’s design drawings, they fall into the category of works known as “artistic works” under the Copyright Act 1968 (s10). Therefore, assuming they are “original” and created by Dali, he will have copyright protection in his design drawings as “artistic works”.

Dali may have created more than one design drawing – perhaps different perspectives and several detail drawings. Each of those drawings is potentially a separate and independent copyright work (to the extent that each is original and not a direct copy of an earlier version). In assessing whether copyright has been infringed, a critical first step is to consider – what are the copyright works and which of those works has been infringed?

What about the handmade sofa prototype? It is an original artistic work in its own right and therefore has copyright protection independent of Dali’s drawings. Therefore, Rogue’s actions may have infringed copyright in one or more drawings as well as the sofa prototype.

Thus a single product design can encompass a body of copyright works, each separately protected by copyright (and indeed potentially other intellectual property (IP) rights). The copyright works recognised in law do not necessarily correspond precisely to the “thing” protected (here, a sofa). Conversely, the physical product or object (sofa) protected is often an aggregation of copyright works, each capable of being independently and separately infringed. It is important to recognise the range of possible copyright works in a single product.

Returning to Rogue’s activities, the drawings and sofas it makes are 2D and 3D reproductions, respectively, of Dali’s design drawings (or at least one of his drawings, but for convenience they will be referred to as drawings). Under the Copyright Act 1968 (Cth) (s21), a 3D artistic work is reproduced if a version of the work is produced in 2D form, and vice versa. However, are Rogue’s 2D and 3D reproductions infringing?

The Copyright Act provides a defence to infringement to reproduce an artistic work by embodying that work in a product if a “corresponding design” of the artistic work has already been industrially applied by or with the licence of the copyright owner (section 77).

In other words, if a corresponding design (namely, Vogue’s sofas) of Dali’s artistic works is applied to an article (50 copies made and sold) then Rogue may have a defence that effectively excludes Dali’s copyright protection in his artistic works. However, all may not be lost because the defence under s 77 does not apply if the artistic work is a “work of artistic craftsmanship”.

Is Dali’s sofa prototype a “work of artistic craftsmanship”? Quite likely, since it possesses aesthetic qualities and, in making his sofa prototype, Dali had significant freedom of design choice relatively unconstrained by the function or utility of the article: see Burge v Swarbrick [2007] HCA 17; (2007) 234 ALR 204. Assuming that Dali’s sofa prototype is a work of artistic craftsmanship, then copyright protection is not excluded even after industrial application of the work. Therefore, production and sales of the sofas by Vogue does not preclude copyright protection in Dali’s sofa prototype.

Conclusion: Rogue’s drawings and sofas infringe copyright in Dali’s sofa prototype.

In relation to Dali’s design drawings, they are not works of artistic craftsmanship and therefore copyright protection in the drawings was extinguished by industrial application of the design drawings to sofas made and sold by Vogue.

Conclusion: Rogue’s drawings and sofas do not infringe copyright in Dali’s design drawings. However, as Rogue’s conduct infringes Dali’s copyright in the prototype, Dali can prevent Rogue from continuing to make and sell the sofas.

Scenario 2: copycat design when there is a design registration
What if Dali had successfully registered the design in relation to articles of furniture?

Dali would have to rely on the design registration to stop Rogue from making and selling copycat sofas. All artistic works (whether a work of artistic craftsmanship or other form of artistic work) lose copyright protection upon design registration of a corresponding design. Therefore, Dali would lose copyright protection in both the drawings and the prototype.

In Australia, design protection is limited to 10 years. As a result, Dali would have no recourse under copyright or design laws to stop Rogue from making and selling copycat sofas after his design registration has expired.

Conversely, if Dali had not registered the design, he would retain copyright in the sofa prototype for life plus 70 years. The risk, however, is that if a court held that the sofa prototype is not a work of artistic craftsmanship, Dali would be left without either copyright or design protection from the day Vogue first offered its sofas for sale.

Scenario 3: the copy is not identical
Let’s assume that Rogue does not make drawings of the sofa but instead makes a mould from the sofa and has it manufactured as a plastic injected bench seat. Can Rogue be stopped from selling the injection moulded version of the design?

Under copyright law
Under copyright law, an artistic work can be infringed by reproduction of the work or a substantial part of the work. The term “substantial” refers to quality rather than quantity. Whether a part is “substantial” depends on whether it is an essential part of the work – a vital or material part, even if only minor in quantity.

The injection moulded product would infringe a substantial part of Dali’s artistic work, assuming that the overall appearance of Dali’s work, including in shape and dimensions, is reproduced. As copyright protection in the drawings has been lost (as described in scenario 1), in order to establish infringement Dali’s sofa prototype would need to be a work of artistic craftsmanship.

A key aspect of copyright protection is that there must be a causal connection between the thing copied and the copy. In other words, if Rogue had independently come up with the injection moulded design of a bench seat shaped in the form of lips (and can prove this) then Dali has no claim to copyright infringement. Copyright does not prevent independent creation of the same expression of an idea. In contrast, independent creation is not a defence to infringement of a design registration.

Under design law
Assuming Dali has a design registration for his design in relation to articles of furniture, would the registration be infringed?
Rogue’s injection moulded bench seat is not identical to Dali’s design. The test then becomes whether Rogue’s sofa is “substantially similar in overall impression” to Dali’s design. “Design” is defined in the Designs Act (s5) to mean the overall appearance of the produce resulting from one or more visual features of the product.

The comparison is made between the visual features of the allegedly infringing product and those of the design registration, not Vogue’s sofa (see LED Technologies v Elecspress [2008] FCA 1941).

Visual features include the “shape, configuration, pattern and ornamentation of the product” but do not include the feel of the product or the materials used (s7 Designs Act). More weight is given to similarities than differences and consideration is given to the quality and importance of similarities in the context of the design as a whole. Therefore, similarities between the shape and configuration of Rogue’s sofa and those of Dali’s design registration (the lip shape, positioning of various components relative to each other) would be important factors, not the differences in materials used (wood and silk versus plastic). On this basis it is likely that Dali’s design registration would be infringed.

Scenario 4: print reproduction
Rogue obtains a copy of a marketing flyer distributed by Vogue at the product launch. The flyer contains a sketch of by Dali of the sofa. Rogue makes its own flyer using Vogue’s flyer “as a guide” but includes a copy of Dali’s sketch. Rogue has infringed copyright in Dali’s sketch by reproducing it in a flyer: see Caroma Industries Ltd v Technicon Industries Pty Ltd [2008] FCA 1465.

Assuming Dali’s sketch for the flyer was a separate sketch made for marketing purposes to his design drawings, this is a separate artistic work with copyright protection independent of the design sketches and prototype. Therefore, copyright in Dali’s sketch is not extinguished by his design registration and Rogue’s flyer infringes Dali’s copyright.

Scenario 5: registration of a 2D design
In collaboration with a fashion designer, Dali creates a trompe l’oueil painting as a fabric design which is printed on fabric and used to create an evening gown. Betty sees the design and copies it for use as a pattern on wallpaper as well as a print for t-shirts.

Assume the design is registered in relation to textile fabrics and garments. The design registrations would not prevent use on wallpaper. However, as the registered designs are purely representations of two-dimensional features, they are not “corresponding designs” under s74 of the Copyright Act (that is, they do not include any visual features of shape or configuration embodied in a product). Therefore, the design registrations do not limit copyright in Dali’s artistic work (the original trompe l’oueil painting) and Betty’s actions will infringe both copyright and the design registration in relation to garments.

A final word
“There is only one difference between a madman and me.
I am not mad.”
Salvador Dali, Diary of a Genius

This post is an expanded version of an article published in Issue 29, Oct 2009, of the industrial design magazine Curve

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