Viennetta Ice Cream Heats up Court: Distinctiveness in Shape Trade Marks Catherine Lee CLAYTON UTZ

AUSTRALIAN INTELLECTUALINTELLECTUAL Law Bulletin PROPERTYPROPERTY Volume 16 Number 3 Information contained in this newsletter is current as at July 2003 Print Post Approved 255003/00767 Looking at smells and sounds: graphical representation of new trade marks Lauren Eade GILBERT + TOBIN

General Editor The Trade Marks Act 1995 (Cth) allowed registration for the first time of a number of new forms of trade marks, including trade marks for colours, sounds Sharon Givoni and scents. There are some special problems for these new trade marks that do not Solicitor, Melbourne exist for ‘old’ trade marks such as words and devices. The first hurdle that must be met by any trade mark applicant is that of graphical representation. Graphical representation is required under reg 4.3(7) of the Trade Marks Regulations 1995 (Cth). Under s 40 of the Act, it is a ground for rejection of an application if a mark cannot be represented graphically. The purpose of graphical representation of trade marks is so that other traders can search the Register to contents determine whether there is any risk in using a particular mark or whether that mark is available for registration. 33 All trade marks under the 1955 Act were by definition capable of graphical Looking at smells and sounds: representation, being visible words and other signs. This is still the case for ‘new’ graphical representation of new shape and colour trade marks which can be represented in much the same way as trade marks old device marks. There are, of course, questions about how best to represent these 36 types of marks to maximise the monopoly afforded by registration (for example, Viennetta ice cream heats up how many perspectives of a shape are enough? Should a colour be described by court: distinctiveness in shape colour name, colour name and shade description, or industry standard colour trade marks system?). But these are not unique to the new marks.1 However, some new marks 39 do face special problems in that it can be very difficult, if not impossible, to Unlocking the mysteries of fair describe them accurately due to their very nature. basis: Lockwood v Doric Colour trade marks 41 Possible problems arise with colour trade mark applications, not because colours Earth Closet orders: cannot be accurately graphically represented — clearly, a swatch of the actual amendments to pleadings in colour claimed could represent a colour perfectly adequately — but because the patent cases databases offered for public searching by most Trade Marks Offices around the 42 world represent marks in black and white. Verbal colour descriptions such as What colour is your trade mark? ‘purple’ are somewhat unsatisfactory as they clearly encompass any number of shades and tones. For example, Cadbury brand chocolate is packaged in purple 43 packaging (dark purple),2 but so is Milka brand chocolate (light purple, or lilac). New Trade Marks Act in The United States Trade Marks Office at one stage had an elaborate cross- New Zealand hatching system for colour designations on trade mark representations.3 An example of this scheme in action is the trade mark below (Registration 701832), AUSTRALIAN INTELLECTUAL PROPERTY LAW BULLETIN

descriptions broadly by reference to Image A colour names, and restrict the descriptions during the examination process if required to do so by the Trade Marks Office. As more applications are filed it may be necessary for applicants to describe colours with greater specificity (for Editorial panel example, ‘dark purple’ rather than just ‘purple’) so as to distinguish their applications from others already on the Simon Gilchrist Register. Solicitor, Gilbert + Tobin, Sydney Sensory trade marks Sue Gilchrist which was filed in Australia using the More significant problems arise in the Partner, Freehills, Sydney cross-hatching system (see Image A). case of the two types of trade marks The cross-hatching system was in fact that can be described as ‘sensory’ rather Yves Hazan even less accurate than a plain words than merely visual; that is, scent and Hazan Hollander, Sydney colour description, as each hatching sound trade marks. Marks of this kind style was used to encompass a range of may face a substantial hurdle under Dr Patricia Loughlan tones and even colours; for example, s 40. Unlike the marks above, it is Faculty of Law, the same cross-hatching was used to obviously not possible to provide a University of Sydney indicate both red and pink. The scheme picture of a sensory mark. Indeed, IP has since been abandoned. Australia typically indexes such marks 4 Debrett Lyons Highly specific graphical colour without even a title; the description of Partner, Berwin Leighton Paisner representation systems are also the mark is placed in the endorsement. London, UK Editor available (for example, the Pantone Matching System, which describes Sound trade marks colours and tones by reference to That said, sound trade mark Caroline Morgan numerical and letter combinations) and applicants have been provided with a Corporate Counsel, have been used in industry for many relatively simple solution, as the Trade Copyright Agency Ltd years. However, these systems generally Marks Office has accepted that a only make sense in combination with musical score notation of the sound Des Ryan an appropriate reference chart. These claimed is acceptable graphical Patent Attorney and Solicitor, are not widely available and as such representation.5 This largely replicates Davies Collison Cave, Melbourne these systems are not of much overseas practice, for example that of assistance to the layperson searching the United States Patents and Patrick Keyzer the Register. Trademarks Office. Only four of the 11 Faculty of Law, University Applicants can take some comfort, Australian sound trade mark of Technology, Sydney however, as at least at present the registrations presently use this kind of Australian Trade Marks Office practice representation.6 is to allow bare colour names to be Representations of sound trade marks used to describe colour trade mark of any kind can be fairly confusing to applications. A sound approach for the layperson. For example, the extent applicants is to draft colour mark of the monopoly claimed in Registration 785034 would be unlikely to be apparent to the person unfamiliar Image B with the Dolby Digital signature tune, whether that person relied on the graphical representation (see Image B) or on the endorsement: The trade mark consists of the sound of a musical tune consisting of a crescendo and decrescendo played by a rubbed crystal, base waterphone, bowed piano, and contrabass, during which five notes are played by a struck crystal, lasting for a duration

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of approximately three seconds. like something else is readily described; applications for colour, sound and scent Of course, some sounds are not hence the Trade Marks Office in its trade marks to ensure that the graphical conducive to representation by musical Examiner’s Manual selected the representation requirements are met. score. In this case, applicants have no relatively comfortable example of ‘the While it is desirable to frame a trade choice but to describe the sound in scent of apple blossoms’, a trade mark mark description as broadly as possible words. An infamous example is already registered in England. The only so as to increase the monopoly afforded Unilever’s New Zealand Trade Mark Australian mark accepted for by registration, it may be necessary for Registration 247094 for ‘a squeak registration was for the ‘smell of beer’ new trade mark applicants to be rather produced by the friction of thumb or on dart flights.8 Pending Application more specific when describing new trade forefinger on dishware’. A less successful 936188 claims ‘the smell of lemon for marks than usual. attempt was Harley Davidson Inc’s tobacco’, and has received an adverse A sound strategy is to file an United States Trade Mark Application report. In the US, scent registrations application with a broad description but 74/485,2234 for the ‘exhaust sound of have been obtained for the smell of to have already prepared a ‘fall back’ applicant’s motorcycles, produced by grape,9 cherry10 and bubblegum11 for narrower description which can be used V-Twin, common crankpin motorcycle industrial oils. These scents, then, to amend the application if the Trade engines when the goods are in use’, would not at first glance appear to Marks Office requires. The narrower which was ultimately abandoned. The present problems. However, a trade description should ideally be prepared Australian Trade Marks Office mark application for the ‘smell, aroma, prior to filing so that an applicant can Examiner’s Manual itself suggests that or essence of cinnamon’ was rejected in be sure that the mark is in fact capable an acceptable graphical representation of England, in part because the of specific description before wasting a sound trade mark would be ‘CLIP, description of the mark was too prosecution costs. ● CLOP, MOO’ so long as this was subjective to amount to a sufficiently coupled with an appropriately accurate description of the trade Lauren Eade, Lawyer, descriptive endorsement such as ‘the mark.12 Gilbert + Tobin, Sydney. sound of two steps taken by a cow on But what of ‘invented’ or combined pavement, followed by the sound of a scents? Existing chemical and sensory Endnotes cow mooing’.7 These verbal descriptions notation systems for scents have been 1. As to the most appropriate means of sounds are, if anything, even less clear developed both in the chemical of drafting endorsements for graphical than musical notations. industries and in those industries where marks so as to maximise the available It is doubtful that graphical scent is critical (for example, perfume monopoly; see Levi Strauss & Co Ltd v representations of sound of the above and food industries). These systems can Kimbyr Investments Ltd (1993) 28 IPR kinds are consistent with the policy vary from complex charts to 249. behind the graphical representation descriptions reminiscent of those of a 2. Indeed, the colour purple (with and requirement; that is, that the Register wine critic.13 The only thing the systems without the colour white) has been the should be readily searchable. Certainly have in common is that they are subject of numerous Australian trade the references in sound trade mark completely inaccessible to the layperson mark applications for Cadbury, all to endorsements to the recorded examples and as a result do not ‘represent’ date unsuccessful; see, for example, Re of sound trade marks supplied by anything about the mark claimed at all. Cadbury’s Application (2002) 55 IPR applicants for sound trade marks to the Such representations have been rejected 561, Australian trade mark Applications Trade Marks Office are of no use in England as unintelligible to people 700809, 700810, 779336, 887589, and whatsoever to those searching the inspecting the Register.14 The Australian 887590. Cadbury’s purple and Register, as they are inaccessible other Trade Marks Office Examiner’s Manual purple/white Applications 926127, than by means of a request under the is silent on the issue of how scent marks 938287, 938288, 947010 and 947011 Freedom of Information Act 1982 (Cth). should be graphically represented. It are presently under examination. However, the very low number of therefore remains to be seen how the 3. Arden T Protection of sound registrations means that at Trade Marks Office will deal with such Nontraditional Marks INTA New York present all registrations can be searched applications; there appears to be little or 2000. easily enough, even if that does involve no international experience with the 4. The title ‘The Trade Mark is hunting up a musical instrument (and, if issue.15 described in the endorsement’ is necessary, a musician) to work out the substituted. sound claimed. Should further sound Conclusion 5. The ATMO Examiner’s Manual registrations accumulate in the future, Whether or not an applicant for a states in Pt 10 para 3.3.3: however, graphical representation of new trade mark can ultimately establish A sign consisting of a musical sound sound trade marks may become a more that their application is capable of might be most appropriately represented problematic issue. distinguishing their goods or services, it in the form of musical notation, is likely that at least some applications however, this will depend on the trade Scent trade marks will fail at the first hurdle of graphical mark. In the case of scents, the situation is representation. A great deal of care 6. Registrations 785034 for the even more complex. A scent that smells should be taken when drafting Dolby Digital signature tune, 844282 in

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the name of Intel, and 898130 and No 2,000,169 (unreported, 893621 for the Twentieth Century Fox English Trade Marks Office theme. 19 December 2000). 7. ATMO Examiner’s Manual, Pt 21 13. See, for example, the notations Ch 5.3. systems reviewed in Lyons D ‘Sounds 8. Lapsed Application 700019. smells and signs’ (1994) 7 IPLB at 9. United States Trade Mark 75-77. Registration 2,568,512. 14. In the Matter of Application 10. United States Trade Mark No 2,000,169, above note 12 Registration 2,463,044. at 5-8. 11. United States Trade Mark 15. No ‘invented’ scents appear to Registration 2,560,618. have been registered as trade marks 12. In the Matter of Application anywhere in the world. Viennetta ice cream heats up court: distinctiveness in shape trade marks Catherine Lee CLAYTON UTZ

What do the Jaguar car, the trade mark under the Trade Marks Act Toblerone triangular chocolate box, the 1994 (UK).2 McDonald’s fries packet and the Coca-Cola bottle have in common? Facts And how about Guylian chocolate In 1982 Walls, a Unilever company, shells, the Conewich ice cream cone launched a ‘pre-formed ice cream bread and the bottle for the Ambi Pur dessert’ under the trade mark air freshener? The first group contains Viennetta in the UK. In 1994 Unilever famous shapes which have been applied to register the three accepted for registration as shape dimensional shape of its ice cream marks in Australia, whereas the second dessert ‘Viennetta’ as two trade marks group contains those shape marks (see diagrams on p 38). It applied for which have been refused registration. the marks for the original dark The recognition of the shapes as chocolate and new white chocolate trade marks is a relatively new concept. versions of the dessert. Unilever Prior to the Trade Marks Act 1995 supported its applications with (Cth), the shapes of products could not evidence of use of the marks. The UK be registered as trade marks. However, Registry found that was sufficient to the 1995 Act now expressly includes accept the applications for registration shapes as ‘signs’ which are capable of and duly advertised them. being registered.1 As with other types Nestlé opposed the registration of of marks such as words and devices, both marks on several grounds. Its the shapes of goods are only registrable main arguments were that the shape of if they can distinguish the goods to the Viennetta had resulted ‘from the which they are applied from similar nature of the goods themselves’ and goods in the marketplace. The English that the marks were not capable of High Court recently considered the distinguishing or had not acquired requirement of distinctiveness in distinctiveness in the marketplace. If relation to the registration of the shape Nestlé succeed on either of these of the Viennetta ice cream dessert as a grounds of opposition, Unilever could

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not register the trade marks. After of the product also led to the product widely and under a well known evidence had been filed and a hearing introduction over time of variants with trade mark. After some while the conducted, the Registrar rejected the different flavours: mint and strawberry product appearance becomes well opposition to the dark mark but upheld in 1987, chocolate in 1989, cappuccino known. He then says the appearance it in relation to the white mark. Both in 1990, praline in 1991 and white alone will serve as a trade mark, even sides appealed to the English High chocolate in 1993. though he himself never relied on the Court. Unilever also extensively advertised appearance alone to designate origin the Viennetta on television and in the and would not dare to do so. He then ‘A shape which results from press. These advertisements prominently gets registration of the shape alone. the nature of the goods used the word Viennetta (nearly always Now he is in a position to stop other themselves’ with the manufacturer’s name ‘Walls’) as parties, using their own word trade Nestlé argued that both the dark and well as pictures of the product. They marks, from selling the product, even white Viennetta products were always also emphasised the Viennetta’s though no one is deceived or misled sold and advertised with prominent use appearance as a whole and when sliced. (at [32]). of the word mark ‘Viennetta’. The Examples of such advertising include Accordingly, his Honour stated that product itself is the three dimensional ‘Pure white ice cream tantalisingly for marks consisting of product shapes ice cream with chocolate and fancy interleaved with crisp dark chocolatey it is not enough to prove the public topping. It submitted that this shape layers’ and ‘The one slice of Viennetta recognises them as the product of a made the product different from others with its irresistible crisp dark layers and particular manufacturer. It must be and was the ‘nature of the goods’. sinfully rich ice cream never seems quite proved that consumers regard the This argument was inconsistent with enough’. shape alone as a badge of trade origin previous English case law. Earlier An opinion poll was used by Unilever in the sense that they would rely upon decisions of the English High Court and to demonstrate massive use of the that shape alone as an indication of European Court of Justice in product and consequently that the trade origin, particularly to buy the Koninklijke Philips Electronics NV v Viennetta had attained a significant goods. Although the requirement of Remington Consumer Products Ltd3 degree of public recognition. This distinctiveness is the same for all suggested that this exclusion intended to market research showed that 55 out of marks, the factual position concerning prevent registration of basic shapes 82 respondents recognised the the shape of goods marks is different. which should be available for public use, Viennetta in an ice cream line-up with The public expects word marks and such as naturally occurring shapes, three other similar products and nearly devices to be used as trade marks, rather than artificially created ones. all of these people knew that Viennetta whereas with shapes they are likely to Since the Viennetta had an artificially was made by Walls. However, it also take the word mark used with the created shape, Jacob J found that Nestlé revealed that 12 out of 82 respondents goods as the trade mark and the failed on this point. However, His stated that one or more of the products appearance as no more than the goods Honour could not say that Nestlé’s were the Viennetta. Unilever argued themselves. Indeed Jacob J concluded argument was beyond all hope and that people recognise the Walls that the presumed expectation of a accordingly he referred a question to the Viennetta product from its shape and member the public is that the shape of European Court on this point. that consequently the mark had Viennetta is there to make it attractive attained a distinctive character in the to the eye and to indicate its virtue as a Issue of distinctiveness marketplace. It did not make reference delicious ice cream product. This was the main issue in the case in its evidence to the misattribution of This is reinforced by the advertising and arose essentially in relation to the a minor portion of respondents. which entices the public to buy the dark mark. Unilever’s evidence Jacob J agreed that this evidence product for its attractive design and purported to show that the dark mark showed that the appearance of the taste, not think of the manufacturer, was not ‘devoid of any distinctive product had achieved considerable Walls. character’ because its extensive use of recognition on its own as denoting Jacob J believed this conclusion to be the mark proved it had ‘acquired a Walls’ Viennetta. However, his Honour consistent with the decision of the distinctive character’. This evidence noted that what was not proved was European Court in Philips. In that case consisted of two broad aspects: evidence whether any member of the public it was said that it may be sufficient to of use and its manner, and an opinion would rely upon the appearance of the show that the mark was distinctive if poll. Nestlé did not dispute the evidence. Viennetta alone to identify the goods; the trader can show either an Following its launch in 1982, that is, that consumers recognise the association with it and no one else or a Viennetta was an instant success. By the product but do not think of it as a public belief that goods of that shape time Unilever applied to register the trade mark. come from that trader. It was then for shape marks in 1994, it had sold nearly Jacob J stated: the national court to consider the 170 million packs of the dessert with a There is a bit of sleight of hand going ‘presumed expectations’ of the average value of nearly £250 million. Although on here and in other cases of this sort. consumer (who is considered by courts the dark mark was the main and The trick works like this. The to be ‘well informed and reasonably original form of Viennetta, the success manufacturer sells and advertises his observant and circumspect’) on these

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Sample A The Dark Mark

The White Mark

points. The European Court further the European Court to determine stated that the identification of the whether public recognition of the product as originating from a given shape as the goods of a particular undertaking must be ‘as a result of the trader without the further qualification use of the mark as a trade mark’. His of recognition as a trade mark is Honour stated that more clarification sufficient for the shape to acquire a in this area was required from the distinctive character. He also referred a European Court. In the absence of question based on whether confusion additional guidance, Jacob J interpreted of a minor proportion of respondents this passage to mean that mere product (namely the 12 out of 82 respondents recognition and association with one who stated that one or more of the trader is not enough — it must be products were the Viennetta) was shown that the public has come to irrelevant to the issue of recognise the shape as a badge of origin. distinctiveness. After applying these principles to the A decision of the European Court is facts of this case, Jacob J refused the awaited to further shape trade mark registration of the dark mark on two law in this area. ● separate grounds: • although substantial public Catherine Lee, recognition of the shape as that of a Solicitor, Clayton Utz, Sydney. particular trader has been established (the product as Viennetta, a Walls Endnotes product), it was not shown that the 1. Section 6 of the Trade Marks Act trader has used the shape to denote 1995 (Cth) states that ‘sign’ includes trade origin or that the public rely the following or any combination of upon the shape to denote trade the following: any letter, word, name, origin; and signature, numeral, device, brand, • the shape had not acquired a heading, label, ticket, aspect of sufficiently distinctive character packaging, shape, colour, sound or because a minor but nonetheless scent. significant proportion of respondents 2. Société de Produits Nestlé SA v considered other similar shapes in Unilever plc [2002] EWHC 2709 (Ch) use by other traders to be the (18 December 2002). Viennetta shape mark. To hold 3. Philips Electronics NV v otherwise would be contrary to the Remington Consumer Products Ltd principle that a trade mark must be a [1999] EWCA Civ 1340 (5 May 1999); unique identifier which denotes one Koninklijke Philips Electronics NV v trader and not another. Remington Consumer Products Ltd Jacob J then referred the matter to [2002] ETMR 955.

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38 ...... vol ●16 no ❸ July 2003 AUSTRALIAN INTELLECTUAL PROPERTY LAW BULLETIN Unlocking the mysteries of fair basis: Lockwood v Doric Paul Kilborn FB RICE & CO

Lack of novelty and absence of will seek to determine what is the actual actuator to render the locking means inventive step are the most common nature of the invention described in the inactive’. grounds for courts finding patent specification and not simply rely on The specification had a brief section invalidity. However, the judgment of the what the specification asserts the describing particular forms of the Full Federal Court on appeal in invention to be. features of the invention as being Lockwood Security Products Pty Ltd v ‘preferred’ or which ‘may’ be present and Doric Products Pty Ltd,1 discussed Lockwood quickly launched into a description of a below, is a sobering reminder that when The patent in the Lockwood appeal particular embodiment of the invention the ground of lack of fair basis is set related to door latch assemblies. These with reference to a number of drawings. running, it can have very sharp teeth. assemblies commonly include a turn There were 33 claims, of which knob or handle, which is located on the claims 1 and 33 were the sole What is fair basis? inside of the door and is rotated to independent claims. The remaining Fair basis is a requirement that exists withdraw the latch bolt into its casing. claims depended directly or indirectly in two guises under the Patents Act Manufacturers of latch assemblies had from claim 1. Claim 33 was an omnibus 1990 (Cth) and the Patents Regulations sought to improve their security by claim directed to the specific 1991 (Cth). The first is in the including a key operated lock, which embodiment. Claim 1 defined a latch attribution of a priority date to a operates to releasably hold the turn assembly in terms of six elements, five claim.2 In this context, a claim will be knob or handle against rotation. These of which were admitted by Lockwood entitled to the priority date of the earlier locks were typically arranged so that to be typical of existing latch document (for example, a Paris they could be operated from the inside assemblies. The sixth element was the Convention basic application, or a but not the outside of the door. This ‘lock release means which is responsive parent of a divisional application) if it is prevents an intruder gaining entry to the operation of the second actuator fairly based on the disclosure of the through, for example, a window, and so as to thereby render the locking earlier document. This is sometimes leaving through the door with large means inactive’. The patentee relied on referred to as ‘external fair basis’. Its objects. However, it had been well this sixth element to distinguish its second guise is in the requirement for a recognised in Australia that this invention from the typical latch claim to be fairly based on the matter arrangement could lead to serious assembly that was well known in described in that specification.3 This problems. A person may inadvertently Australia before the priority date. type of fair basis is sometimes referred leave the key in the outer lock and close All three judges (Wilcox, Branson and to as ‘internal fair basis’. Generally, the the door behind him. Or the key might Merkel JJ) agreed with the trial judge’s courts have regarded internal and be misplaced after the person arrives at finding that all claims but the omnibus external fair basis as being essentially home, having shut the door behind him. claim were invalid. The Court identified one and the same and readily borrow In either case, the person is locked the problem to be solved as the inside precedent from one guise to assist in inside the house. This is a potentially lock of a latch assembly not being determining fair basis in the other. dangerous situation if, as in the case of responsive to the outside actuator. In so Whether a claim is fairly based fire, the person needs to leave the house doing, the Court placed significant depends upon there being ‘a real and quickly. reliance on the object statement in reasonably clear disclosure’ in the body The patent specification included an formulating the problem. Moreover, the of the specification of the matter ‘object statement’: evidence demonstrated that this problem claimed.4 Furthermore, if the claim as It is an object of the invention to provide a had been widely perceived in the trade. expressed ‘travels beyond’ the matter key controlled latch which can be released Wilcox J characterised the ‘invention’ described in the specification, then the from a locked condition by use of a key at described in the specification as solving fair basis requirement is not satisfied.5 the outside of the door or other member the problem of the inside lock not being The notion of ‘travels beyond’ requires with which the latch is used. responsive to the key, or other outside consideration of what is truly disclosed It had one ‘statement of invention’ actuator, ‘by simply making it so’ by the specification in terms of a ‘real (‘consistory statement’), which described (somewhat like waving a magic wand) and reasonably clear’ disclosure rather a latch having the features of typical and thereby did not reflect the real and than a mere coincidence of language latch assemblies ‘characterised in that it reasonably clear disclosure of the between the claims and the body of the includes lock release means which is specification. He concluded that the specification.6 In other words, a court responsive to operation of the second specification only provided a real and

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reasonably clear disclosure of the matter statements that include a reference to covered by the omnibus claim. the actual solution provided by the However, he held claim 1 to be not invention. It is also advisable to avoid fairly based. Merkel J considered that having ‘all one’s eggs in the same the ‘merit’ of the invention disclosed in basket’ by relying on a sole broad the specification and the real and independent claim. The specification reasonably clear disclosure concerned should describe at least one the manner in which an outside intermediate embodiment of the actuator can achieve the object of invention falling between the invention providing a key controlled latch which in its broadest aspect and the detailed can be released from the opposition by embodiment. These intermediate the outside actuator. He did not believe embodiments should be drafted as this to be that which was embodied in independent ‘statements of invention’ claim 1. He characterised claim 1 as to increase the likelihood that they will being wide enough to embrace any form be read as a ‘real and reasonable clear of lock release means operable by an disclosure’ of the invention. Likewise, it actuator on the outer side of the latch is advisable to have at least one assembly, notwithstanding that that independent claim of intermediate type of lock release was not invented by scope falling between the broadest the patentee and so does not use the claim and the specific example patentee’s inventive steps disclosed in described in the specification. ● the specification. Significantly, the Court held that all Paul Kilborn, claims depending from claim 1 were Partner, also invalid. There is no detailed FB Rice & Co, Melbourne. explanation for this outcome. Possibly the Court believed that any claim Endnotes depending from an independent claim 1. (2003) 56 IPR 479. lacking fair basis is automatically 2. For example, ss 43, 86-93. invalid. Alternatively, the Court may 3. Section 40(3). have felt that the specification did not 4. Rehm Pty Ltd v Websters Security provide a real and reasonably clear Systems (International) Pty Ltd (1988) description of an embodiment that fell 81 ALR 79 at 93 and Leonardis v between the broad statement of Sartas No 1 Pty Ltd (1996) 67 FCR invention and the examples. All this is 126 at 142 and the cases there cited. conjecture and the actual reasons may 5. See for example, Olin Corporation be clarified if there is an appeal to the v Super Cartridge Co Pty Ltd (1977) High Court. 180 CLR 236 at 240; Kimberly-Clark Australia Pty Ltd v Arico Trading Conclusion International Pty Ltd (2001) 177 What can we learn from the ALR 460. Lockwood decision? Clearly, one 6. Atlantis Corporation Pty Ltd v should avoid the use of object Schindler (1997) 39 IPR 29. Win for Arsenal The Australian Intellectual Property Law Bulletin has followed the UK case of Arsenal Football Club v Reed (see (2003) 15(9) IPLB 125; (2002) 15(7) IPLB 89; and (2002) 15(5) IPLB 57), which has finally been decided in Arsenal’s favour. The football club triumphed in its action against unauthorised merchandise vendor Matthew Reed in the UK Court of Appeal. Earlier this year Justice Laddie of the English High Court caused controversy when he refused to follow the clear view of the European Court of Justice (ECJ) that trade mark infringement had occurred, on the basis that the ECJ had no jurisdiction to examine the facts of the case. Now the Court of Appeal, while vindicating Laddie in his approach to the powers of the ECJ, has overruled him on the law and the facts and found for Arsenal. ●

Source: www.law-now.com.

40 ...... vol ●16 no ❸ July 2003 AUSTRALIAN INTELLECTUAL PROPERTY LAW BULLETIN Earth Closet orders: amendments to pleadings in patent cases Andrew Fox GRIFFITH HACK

The Federal Court of Australia in upon the making of what is known as an can cause injustice in some circumstances. A’Van Campers Pty Ltd v Camoflag Pty Earth Closet or a See v Scott–Paine order. Accordingly, the better approach is that Ltd [2003] FCA 353; BC200301841 The effect of such an order is to allow the question of whether such an order (23 April 2003) recently reviewed the the amendments to be made but then to should be made lies in the discretion of basis upon which costs may be awarded give the applicant a period of time in the Court. In this regard, Merkel J in respect of the amendment of pleadings which to consider, in light of the referred to the decisions of Laddie J in in a patent infringement matter. amendments, whether it wishes to GEC Alsthom Ltd’s Patent [1996] The applicant alleged infringement by maintain that the patent or design in suit FSR 415 and Sundberg J in Wimmera the respondent of a patent entitled is valid and continue with the Industrial Minerals Pty Ltd v RGC ‘Campervan’ and a registered design in infringement action, or whether it wishes Mineral Sands Ltd [1999] 46 IPR 173. respect of a ‘Campervan’. The respondent to consent to the revocation of the patent In GEC Alsthom Laddie J noted that had filed a defence and cross-claim for or design. Should the applicant wish to a patentee could prepare its case at its revocation of the patent and the design maintain the validity of the patent or own speed and then, when thoroughly on the ground of invalidity. By way of design and continue with the ready, serve its statement of claim and motion filed nine months after its infringement action, Merkel J noted that any particulars of infringement on its defence, the respondent sought leave to the only order for costs would be the competitor. Then its competitor would file and serve an amended defence, ordinary order for costs upon try to put together, within a timetable amended cross-claim and amended amendment; namely, that the respondent set by the Court, an attack on validity. particulars of invalidity. The motion was should pay the costs thrown away by In the majority of cases, this defence heard before Justice Merkel on reason of the amendment. However, if would only be the first attempt at 23 April 2003. the applicant elected to consent to mounting an attack, since searching for revocation of the patent or the design, prior art is frequently time consuming Proposed amendments then his Honour noted that the effect of and difficult. As a result, in most cases The proposed amendments that were an Earth Closet order would be that the the attacking party has little practical in contention at the hearing related to the respondent would be given the costs of alternative to putting forward particulars of invalidity. These the proceedings up until the date of filing additional prior art as the case proceeds amendments fell into three categories. its original particulars of invalidity, and towards trial. Accordingly, the existence The first category sought to put in issue that the applicant (patentee) would then of the possibility of an Earth Closet the fair basing of amendments made by be given the costs of the proceedings order can act as a serious impediment the applicant to the patent claim shortly thereafter. to the attacking party by, potentially, prior to its registration. The second The rationale for the making of an forcing it to elect not to plead more category related to additional prior art Earth Closet order is said to be that if the recent, and probably better, art. upon which the applicants now sought to respondent had exercised reasonable Laddie J added that the existence of an rely. The additional prior art was not diligence prior to filing its original Earth Closet order is ‘frequently seen as identified by the respondent until about particulars of invalidity, then it would a gift from heaven by patentees with September 2002, being about six months have uncovered and pleaded the prior art. very weak patents’. after its defence and cross-claim were Accordingly, the applicant, at that early In Wimmera Industrial Minerals, filed. The third category of amendments stage, may then have elected to give up Sundberg J made similar observations sought to provide further particulars of the patent or design rather than to waste regarding the purpose and operation of the allegation that the applicant was not time and money on the proceedings for Earth Closet orders. the inventor of the patent or the author the period between the date of the In the earlier decisions of Laddie J of the design. respondent’s original pleading and the and Sundberg J it was held that the date of the amended pleading. Court should determine, in its Nature of costs order discretion, the appropriate order as to in dispute Is an Earth Closet order costs by taking into account all the While the applicant formally opposed mandatory or discretionary? relevant facts and evidence. Importantly, the proposed amendments, no ground Merkel J observed that, until recently, Sundberg J stated: was put forward for disallowing them. Earth Closet orders tended to be made as In exercising its discretion the Court Rather, the real contest between the a matter of course. However, his Honour should be aware that the order is parties related to whether the noted that in two recent cases courts had capable of working an injustice to a amendments should be allowed only highlighted the fact that such an order defendant, by enabling a patentee with

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what it knows to be a weak patent to diligence on the part of the respondent. discontinue largely at the defendant’s In addition, the respondent’s explanation cost [at 176]. regarding why the amendments were Merkel J noted that in the UK Earth now sought, the applicant’s awareness of Closet orders are usually made in patent the risk of such amendments being made cases but have also been made in later in the proceedings, and the fact that registered design cases. He saw no reason the prior art and fair basing amendments in principle for differentiating between only related to part of the proceedings, patent and registered design cases in all led him to the conclusion that it was respect of this type of order. inappropriate to make an Earth Closet order in the present case. Application of law to the Importantly, Merkel J identified that present case the refusal to make such an order at this His Honour said that the first question stage did not preclude the applicant from to be resolved in determining whether an making such an application to the Court Earth Closet order should be made as may be appropriate in respect of costs relates to whether, by making reasonably in the event that it decided to discontinue diligent enquiries, the respondent could its claim and accept revocation of its have discovered sooner the availability of patent and design. the prior art and the other defences upon In the end, the Court allowed the which it now sought to rely. amendments sought and ordered that the Overall, Merkel J accepted that respondent pay the applicant’s costs reasonably diligent enquiries if made thrown away by reason of the earlier in these proceedings would amendments. The applicant was ordered probably have resulted in most, if not all, to pay 75 per cent of the respondent’s of the present amendments being made at costs of the motion. ● an earlier stage. However, he was not satisfied that the amendments came Andrew Fox, Senior Associate, about as a result of any neglect or lack of Griffith Hack, Sydney. What colour is your trade mark? Stephen Whybrow CMS CAMERON MCKENNA Companies will now be able to Supreme Court of the Netherlands. The register single colours as European Supreme Court considered the issue of Community trade marks following a distinctive character and referred four significant decision by the European questions to the ECJ relating to the Court of Justice (ECJ). The ECJ held Trade Marks Directive (89/104/EEC). that single colours are registrable if the The four questions referred were as mark fulfils certain conditions and does follows. not conflict with the public interest by 1. Is it possible for a single colour to unduly restricting the availability of acquire distinctive character for colours for other brand owners who certain goods and services? offer goods and services similar to 2. If so, those for which registration was (a) in what circumstances may a sought. colour possess distinctive In 1996 Libertel, the Dutch telecoms character; and group, applied for the registration of (b) does it make a difference if the an orange colour as a trade mark for application is for a wide range telecommunications related goods and of goods and services? services. The mark for which 3. Should account be taken of whether registration was sought was an orange there is a general interest in the rectangle described as ‘orange’. The availability of that colour? Benelux registry, BTMO, refused the 4. Should account be taken of the application so Libertel appealed to the actual facts of the case, including

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the use made of the sign and the trade mark are limited. If a trade mark character provided it can be manner in which it is used? which gives a monopoly over the use of represented graphically. The ECJ first considered whether a a single colour was granted it could • A single colour may be distinctive if colour by itself could constitute a trade create an unjustified competitive the relevant public can identify the mark. It decided that this was possible advantage for one trader, especially if goods or services for which the mark provided that the colour is a sign the mark covered many classes of goods is sought as originating from a capable of graphic representation that or services. The ECJ concluded that the particular undertaking. distinguishes the goods or services of number of classes applied for must be • When considering whether to one undertaking from another. The considered when assessing whether to register a mark, a registry should ECJ held that any graphic grant an application for a colour mark. review the number of goods and representation must satisfy the The ECJ then looked at the services applied for and whether the Sieckmann (C-273/00 [2002] ECR circumstances where a trade mark may registration would be contrary to the I-745) criteria; that is, it must be clear, be considered to be distinctive. It general interest of not unduly precise, self-contained, easily confirmed that the purpose of a trade limiting the number of colours accessible, intelligible, durable and mark is to guarantee the identity of the available to use for similar goods objective. The ECJ stated that a sample origin of the marked goods or services and services. of a colour on paper would not satisfy to the consumer by enabling them to • In assessing whether a trade mark these criteria as it could fade with time distinguish the goods easily from others has distinctive character, all the and therefore was not durable. The with a different origin. Of course, the relevant circumstances of the case, in ECJ indicated that a sample together average consumer is not able directly to particular any use of the sign in with a description may constitute a compare marks and will not have a respect of which the trade mark is graphic representation and the use of perfect recollection of a mark but they sought, should be taken into account. an internationally recognised colour will rely on their memory. It was held • Although colour trade marks have code, for example Pantone, would to be inconceivable that a mark could been allowed in national registries, satisfy the requirements, as it is precise acquire distinctiveness without any they are not frequently or easily and stable. prior use, save in exceptional granted. This decision sets out the The ECJ then considered whether circumstances. However, it is possible parameters clearly and gives there was a general interest in a for a mark to acquire distinctiveness in straightforward guidance for those particular colour remaining available to relation to the goods or services to seeking colour trade marks. ● all. The relevant public was deemed to which it is applied once the relevant be the average consumer who was public has become familiar with the Stephen Whybrow, Partner, reasonably well informed and mark. CMS Cameron McKenna, London. reasonably observant and circumspect. The current situation can be The average consumer is rarely able summarised as follows. This information is provided courtesy of directly to compare two coloured • A single colour, not spatially Law-Now, CMS Cameron McKenna’s products, which means that the number delimited (for example in a online information service, and has been of shades of colours available to use as a rectangle), may have distinctive published with permission. New Trade Marks Act in New Zealand Jill Newton WATERMARK

The Trade Marks Act 2002 (NZ) the new Act provide for the 1953 Act the 1953 Act before the received Royal Assent in late 2002. to continue in force and apply in commencement of the new Act. Those sections of the new Act relating respect of: Further, the new Act will not to regulation making powers and • an application for the registration of invalidate the registration of a trade powers to establish a Maori advisory a trade mark received by the mark that was valid immediately before committee are now already in force. Commissioner before the the commencement of the new Act. After the regulations have been made commencement of the new Act, until and the Maori advisory committee is in that trade mark is registered; Key changes place, the remainder of the new Act • an application received before the Registrability will also be in force and the Trade commencement of the new Act for The new Act, unlike the 1953 Act, Marks Act 1953 (NZ) will be repealed. alteration, renewal, assignment, has a presumption of registrability. The new Act is expected to commence expunction or cancellation of a There are several general absolute by the end of August 2003. registered trade mark; and grounds under the new Act for However, transitional provisions of • any proceedings commenced under refusing registration, including if the

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use or registration of the mark is Generic marks considered likely to offend a significant Under the new Act a trade mark section of the community, including may be removed if, in consequence of Maori. acts or inactivity of the owner, the The current distinction under the trade mark has become a common 1953 Act between Pt A and Pt B of the name in general public use for a Trade Marks Act has been removed in product or service in respect the new Act, which provides that a of which it is registered. Despite trade mark registered under the 1953 considerable lobbying against this Act is deemed to be a registered mark provision, the test under the under the new Act whether it was new Act is now ‘general public use’ registered under Pt A or Pt B under the rather than ‘trade use’ as under the 1953 Act. For new registrations the mark 1953 Act. is simply required to have a ‘distinctive character’. Comparative advertising The new Act specifically includes Under the 1953 Act comparative ‘shape’, ‘smell’, ‘sound’ and ‘taste’ in the advertising was prohibited in relation definition of ‘sign’. to all Pt A and some Pt B marks. The new Act clarifies that a registered trade Protection for well known trade mark is not infringed if it is used in marks strengthened comparative advertising provided the Unlike the 1953 Act, registration may be use is not contrary to honest practices prohibited under the new Act where the in industrial or commercial use or, trade mark application covers a mark that without due cause, takes unfair is similar to a well known mark, even if the advantage of, or is detrimental to, the relative goods and services are different. As distinctive character or the repute of a result there are no provisions under the the trade mark. new Act for defensive trade marks. (A trade mark that was registered as a Renewals defensive trade mark under the 1953 Act Under the new Act the initial will be deemed to be a registered trade registration and any subsequent mark under the new Act but cannot be renewal period is 10 years as opposed revoked for non-use until three years from to the current seven/14 year period the commencement of the new Act.) under the 1953 Act.

Removal for non-use Counterfeiting The period of non-use leading to Provisions under the new Act make removal has been reduced under the it a criminal offence to counterfeit a new Act from five to three years. The registered trade mark, whereas only exception is that a trade mark, previously in New Zealand trade other than a defensive trade mark, mark owners had civil remedies registered within the period of five only. ● years before the commencement of the Act cannot be revoked for non-use Jill Newton, Patent and Trade Mark until five years after its actual date of Attorney and Solicitor, registration. Watermark, Sydney.

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ISSN 1035–1353 Print Post Approved PP 255003/00767 Cite as (2003) 16(3) IPLB

This newsletter is intended to keep readers abreast of current developments in the field of intellectual property law. It is not, however, to be used or relied upon as a substitute for professional advice. Before acting on any matter in the area, readers should discuss matters with their own professional advisers. This publication is copyright. Except as permitted under the Copyright Act 1968 (Cth), no part of this publication may be reproduced by any process, electronic or otherwise, without the specific written permission of the copyright owner. Neither may information be stored electronically in any form whatsoever without such permission. Inquiries should be addressed to the publishers.

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