Pipers Bulletin 2020-4
IB Encourages IPOs to Provide COVID-19 Related Relief Measures
The International Bureau (IB) is interpreting the COVID-19 pandemic as falling within the excuse of delay in meeting PCT time limits under PCT Rule 82quater.1 on the basis that it qualifies as a natural calamity or other like reason.
In its role as a receiving Office (RO/IB) it will treat requests under that provision favourably and not require evidence and is encouraging PCT Offices and Authorities to do likewise. However, that provision does not provide a remedy for applications that are considered to be withdrawn and so the RO/IB will delay issuing such notifications until 31st May 2020 and is encouraging all PCT receiving Offices to do likewise. The IB is also updating its schedule of days on which IP Offices are closed when advised of such the IPO.
The above and other information relating to COVID-19 from the IB are available on the PCT, Madrid Protocol and Hague Convention web pages. The International Federation of Intellectual Property Attorneys (FICPI) has compiled a list of updates from various IPOs regarding whether the IPO is operating and what suspensions or extensions of time limit deadlines apply.
Innovative Prescription Medicines Accepted for Evaluation to be Published Earlier
Following the Therapeutic Goods Administration’s (TGA) February 2019 consultation on whether to publish that a prescription medicine is under evaluation they have now released an implementation options paper with the objective of increasing public transparency around whether treatment options are likely to be available.
Currently the TGA will neither confirm nor deny the acceptance for evaluation of any prescription medicine application so as to respect the confidentiality of that information and to allow applicants to disclose it when they consider it is commercially prudent. However, the TGA notes that there are various other factors that can effectively force publication and that other influential jurisdictions publish that a prescription medicine has been accepted for evaluation. It also notes that there is public pressure to increase transparency around what treatments may be available in the near term so that more informed decisions can be made around what treatment option to select.
In resetting the balance between public availability of the information and respecting confidentiality the TGA proposes that publication of acceptance for evaluation will only apply to innovative medicines and that generic medicines will only be published by the TGA when they achieve registration. However, innovator companies will be provided with confidential earlier notification of a generic application that has passed preliminary assessment so that they can evaluate whether to commence litigation.
The TGA proposed to implement the earlier publication of innovative prescription medicines from June 2020 and the confidential notification of generic prescription medicines to innovator companies in early 2021, however the COVID-19 pandemic may affect this timing. The TGA is seeking feedback on two possible options for implementing the confidential notification of generic prescription medicines to innovator companies. In particular, where the generic application relies upon the innovator’s information, whether to:
(1) only require generic companies to notify that its application has passed preliminary assessment to the relevant innovator company if the patent has not expired; or
(2) require generic companies to notify that its application has passed preliminary assessment to the relevant innovator company whether or not the patent has expired.
EPO President Encourages Efforts to Implement UPC Agreement
Following the recently noted decision by the German Constitutional Court which found that Germany’s ratification of the UPC Agreement breached the German Constitution, the relevant German Minister has indicated that Germany will seek to validly ratify the UPC Agreement.
The President of the EPO has welcomed that announcement and emphasised that the efficiencies that stand to be gained through the UPC will help in the economic recovery from the impact of the various COVID-19 containment and eradication measures.
Furnishing of Corrected Element Soon to be Possible
From 1st July 2020 the PCT Regulations will be amended so as to allow for the possibility of furnishing a corrected element as a replacement for erroneously filed elements, being distinct from current PCT Rule 20.5 which allows for the possibility of furnishing missing parts.
New PCT Rule 20.5bis “Erroneously Filed Elements and Parts” will permit the exchange of the erroneously filed element or part with the correct one, or, through incorporation by reference, will permit the addition of the correct element or part. It will cover the following scenarios:
- the furnishing of a correct element or part on or before the date on which all filing date requirements are fulfilled (new PCT Rule 20.5bis(b));
- the furnishing of a correct element or part after the date on which all filing requirements were fulfilled (new PCT Rule 20.5bis(c));
- the valid incorporation by reference of a correct element or part as contained in an earlier application (new PCT Rule 20.5bis(d))
Under new PCT Rules 20.8(a-bis) and 20.8(b-bis) receiving Offices and national Offices had until 9th April 2020 to notify the IB of the incompatibility of their laws with elements of Rule 20.5bis. The EPO as well as several European States along with the Republic of Korea, Mexico, Chile, Indonesia and Cuba have lodged such notifications.
Court of Appeal Finds ‘Arrow Declaration’ Relief Pleadings Not Off-Target
In 2020 EWCA 473 Mexichem UK Limited v Honeywell International Inc the Court of Appeal upheld the Patents Court Judge’s refusal to strike out a claim for additional declaratory relief in a revocation action involving several patents.
Mexichem is seeking to revoke six of Honeywell’s patents relating to the use of two refrigerant compounds known as R-1234ze (“ze”) and R-1234yf (“yf”) in refrigeration systems in mobile air conditioning (MAC) environments, such as in vehicles. These compounds are claimed either alone for use in MAC environments, or combined with a lubricant, of which there are alternatives, or other refrigerants.
However, in addition to the six patents there are at least four divisional patent applications that could also frustrate Mexichem’s goal of marketing ze and yf for use in MAC environments. Consequently, Mexichem seeks the additional relief of a declaration that the mere idea of using ze or yf in a MAC was obvious at particular dates, thereby nullifying the possible effect of four divisional patents. This type of declaration is known as an Arrow Declaration as it was first allowed in the Patents Court case Arrow Generics Limited v Merck & Co Limited  EWHC 1900 (Pat), and in other subsequent cases the Court of Appeal has approved this type of declaration.
Before the earliest priority date of the patents both compounds were known, at least on account of disclosure in a Japanese patent application, and Mexichem sought a declaration that it was obvious to use either or both of the compounds in the manufacture of a refrigerant product for use in MAC environments.
In the Patents Court Honeywell sought to strike out or obtain summary judgement against the declarations sought by Mexichem on account of not being in relation to a specific product or process that Mexichem seeks clearance for and being insufficiently clear. However, the Judge held that while the sought declarations are in broad terms, they are still clear and of utility. In particular, if the trial Judge subsequently issues the sought declarations, then that will provide a platform from which Mexichem can argue that the patents and divisionals lack an inventive step.
On appeal it was argued that the sought declarations covered many different products involving different combinations of the compounds with lubricants or additional refrigerant and that it is wrong to pre-judge the obviousness of such combinations. In the alternative, it was argued that the declarations lacked clarity. It was also argued that making an obviousness declaration which could be used as a platform for later findings of lack of inventive step would risk using a step-by-step approach to the evaluation of inventive step which could be prone to ex post facto analysis, rather than evaluating whether the alleged invention as a whole involves an inventive step.
The Court of Appeal noted that Judges have a wide and flexible discretion in deciding whether to grant a declaration, subject to it serving a useful purpose and a clearly defined underlying purpose. They rejected Honeywell’s characterisation of Mexichem’s declarations as involving declarations in respect of many different combinations. Such an approach was seen as comparing the declarations to patent claims that cover everything that fall within their ambit. On the contrary, the declarations were found to only involve the obviousness of using the compounds in relation to a particular purpose and did not pre-judge the obviousness of using those compounds with lubricants or additional refrigerants.
The Court of Appeal noted that the normally rejected step-by-step approach to evaluating inventive step was recently found by the Supreme Court to be acceptable in cases where the steps which the notional skilled person would take can readily be ascertained without the taint of hindsight. The Court of Appeal also noted that while the declaration has a wide scope, so too do the claims of the challenged patents, which as a group are designed to protect much broader ideas, such as the idea of using the specific refrigerants in MAC environments.
- Trade Marks
Official Marks Confirmed as Not Immune to Infringement
In 2020 FCA 53 Ontario (Energy) v Quality Program Services Inc the Federal Court of Appeal recently confirmed that the special status given to official marks does not extend to avoiding infringement.
Section 9 of the Canadian Trade Marks Act 1985 concerns prohibited marks, with subsection 9(1) specifying that applicants cannot adopt a mark either identical to or nearly resembling so as to be likely to be mistaken for the various types of prohibited marks listed therein. Most countries have similar provisions consisting of marks that are prohibited under Article 6ter of the Paris Convention along with other domestically protected marks. Subsection 9(1)(n)(iii) prohibits the use of marks that have been adopted and used by any public authority in Canada as an official mark for goods or services provided that the Registrar of Trade Marks has publically notified those marks at the request of the relevant public authority. The protection given to such prohibited marks is extensive, as the prohibition applies to all goods and services, not just the goods or services that the public authority official mark is used in relation to.
In April 2012 the British Columbia company Quality Program Services Inc (QPS) applied for and has used the mark EMPOWER ME in relation to energy awareness, conservation and efficiency with a particular focus on new Canadians who were not making efficient use of energy. The application for the block letter services mark achieved registration in July 2014, although it is generally displayed as EmPower Me in use.
In November 2013 the Ontario Ministry of Energy began using emPOWERme in relation to consumer education regarding the province’s electricity system. In October 2016, after unsuccessfully requesting Ontario (Energy) to cease use of the mark, QPS commenced an infringement action. Ontario (Energy) then applied to have their mark registered and notified as an official mark / prohibited mark, which was recorded as such in January 2018. Ontario (Energy) then claimed that achieving official mark status provided a complete defence to the infringement action.
There was no precedent on this issue, but the trial Judge held that the extensive rights conferred upon official marks does not extend to being able to contravene other provisions of the Act and so does not permit the infringement of prior rights.
The Federal Court of Appeal rejected the appeal of that decision, finding that the context and purpose of subsection 9(1)(n)(iii) does not support an interpretation that it provides a defence to infringement of prior rights. The opposite conclusion would require clear legislative wording to that effect.
Passive Third Party Storage of Infringing Goods Not a Relevant Use for Infringement Purposes
In C 567-18 Coty Germany GmbH v Amazon Services Europe Sarl the Court of Justice for the European Union (CJEU) held that where EU trade mark infringing goods are stored in the EU the party that provides the storage services does not infringe if they are unaware that the goods are infringing and do not place them on the market.
Coty distributes perfume and is a licensee of an EU registration for DAVIDOFF, which amongst other goods and services covers perfume. Coty established that unlicensed DAVIDOFF perfume the rights in which had not been exhausted was being sold on the German Amazon marketplace www.amazon.de. One of the optional services that Amazon Services offers to sellers through its marketplace is a scheme under which goods are stored in a warehouse by Amazon group companies. When sold via www.amazon.de those goods are dispatched by external service providers.
Coty sought a Court Order against Amazon Services and one of its group companies preventing them from stocking or dispatching the branded perfume in question unless they had first obtained Coty’s consent. The Order was denied on the basis that neither party in the relevant sense stocked or dispatched those goods, as at best they were found to be merely kept on behalf of the sellers. Upon further appeal, the German Federal Court of Justice referred the following question to the CJEU:
‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’
Coty objected to the particular phrasing of the referred question as it considered that it did not capture the active role that was played by Amazon Services and its group companies. However, the CJEU admitted the question after noting that questions referred by national courts have a presumption of relevance and that the question doesn’t fall within one of the limited exceptions where the CJEU can decline to answer a referred question.
The CJEU noted from the relevant regulations that amongst the prohibitions on use of a registered trade mark are prohibitions on offering the goods, putting them on the market or stocking them for those purposes. After readily finding that the Amazon companies neither offered the goods nor put them on the market, the CJEU noted that for storage services to constitute stocking the goods for the purpose of offering the goods or putting them on the market there would need to be an active role played by the Amazon companies involving at least indirect control. Namely, in order to fall within the scope of the prohibition on use a relevant third party must have it within their power either directly or indirectly to stop the use being made. The CJEU also noted from precedent that market operators are not liable for infringements by participants and that merely creating the technical conditions necessary for third party use is not itself an infringing use.
Consequently, the CJEU noted that unless the storage service provider puts the goods on the market, such as might happen if the goods are abandoned by the supplier, then the storage service provider is not making a relevant use of the mark for trade mark infringement purposes.
United States of America
Colour Trade Dress Can be Inherently Distinctive – Even if Shape or Border Not Well-Defined
In 19-1073 In Re Forney Industries Inc the Court of Appeal for the Federal Circuit (CAFC) held that colour trade dress can be inherently distinctive.
The Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s refusal to register Forney’s colour mark for packaging for welding and machining goods in the absence of proof of acquired distinctiveness. The examiner had also requested a revised drawing depicting a single three-dimensional view of the goods or packaging showing those features that Forney claimed. Forney’s response stated that the dotted lines merely depict placement of the mark on the packing backer card. In considering various precedents the TTAB concluded that while certain types of product packaging may be inherently distinctive source indicators, a colour mark—whether applied to a product or its packaging—is not among them. The TTAB also went on to hold in the alternative that if a colour mark for packaging can be inherently distinctive it cannot be so without a well-defined peripheral shape or border.
The CAFC found that the TTAB erred in both of the above conclusions. The CAFC noted that trade dress involves the total image of a product and may include features such as size, shape, colour or colour combinations, texture, graphics, or even particular sales techniques. It further noted that while colour on packaging is usually ornamental, it can also act as a source identifier, and that if consumers are pre-disposed to find some uses of colour marks on product packaging to be source identifiers, then it can be inherently distinctive. In considering the same precedential cases as the TTAB, the CAFC found there to be a distinction between the use of colour in product design and product packaging, with only the latter being capable of being inherently distinctive – where the purpose of using distinctive packaging is as a source identifier.
Regarding the TTAB’s alternative requirement of a well-defined peripheral shape or border the CAFC found there is nothing in the case law that supports such a requirement. Rather, noting from precedent, the test to be applied in determining the inherent distinctiveness of trade dress is whether the trade dress “makes such an impression on consumers that they will assume” the trade dress is associated with a particular source. The CAFC remanded the case back to the TTAB requiring them to look to the following factors: (1) whether the trade dress is a “common” basic shape or design; (2) whether it is unique or unusual in the particular field; (3) whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods.