APAA 50th Council meeting, Fukuoka, Japan
New Zealand Group Report
John Terry, Partner, Baldwins
Introduction
The past year has seen a number of interesting developments in New Zealand intellectual property law.
The most significant legislative change was the enactment of legislation in respect of the parallel importing of films. This also included a consequential amendment to the trade marks legislation. The draft Patents Bill previously referred to has yet to be released for public consultation.
Another important legislative change is the ongoing reform of the New Zealand legal profession. The draft legislation which has been introduced to replace the legislation governing legal practice has a number of important consequences for New Zealand registered patent attorneys.
There have also been a number of interesting judicial developments, including a decision of the Court of Appeal in the Pfizer appeal.
Legislative change
Patents
Early 2004 came and went with without the release of a draft Patents Bill. Although it has recently been announced that a draft Bill will be released for initial limited public consultation, as of September 2004 this draft remains embargoed.
Copyright
A new piece of copyright legislation, the Copyright (Parallel Importation of Films and Onus of Proof) Amendment Act 2003, came into force on 30 October 2003.
The Act prohibits the parallel importation of films within nine moths of their first public release anywhere in the world. The prohibition extends to all commercial films in any format, but excludes films intended for educational, rather than commercial purposes. Further it prevents only the parallel importation for commercial purpose, and does not affect the importation of films by private individuals for their own private and domestic use.
This provision was introduced at the behest of copyright owners and New Zealand cinema operators. For various commercial reasons it was not uncommon for films to receive their first theatrical release in New Zealand subsequent to their release on DVD in other countries. The provision was intended to prevent the importation of these releases from destroying the viability of subsequent theatrical releases. It does so by preventing the rental of such films on parallel-imported DVD within that nine month period. The assumption being that now all people who would rent the title would incur the additional effort and expense of purchasing it.
The provision allowing for this nine month exclusion expires five years after the Act come into force.
The Act also reverses the onus of proof of copying in respect of imported copies of films, DVDs, CDs or videos. These are now presumed to be infringing unless the importer is able to provide evidence to the contrary.
Trade Marks
The Copyright (Parallel Importation of Films and Onus of Proof) Amendment Act 2003 also included a minor amendment to the Trade Marks Act 2002. The amendment was intended to prevent registered trade marks from “frustrating legitimate parallel importing”. If goods bearing a trade mark have been put on the market anywhere in the world by the trade mark owner or with their express or implied consent, these goods should be able to be parallel imported into New Zealand.
Previously case law suggested that by having a trade mark held by a different company in New Zealand to the overseas brand owner could be used to prevent the importation of trade mark goods into New Zealand. The amendment was intended to address this problem.
However, as some attorneys have discovered, the wording of the amendment can be used to frustrate its presumed intent. The 2002 Act uses the term “owner” in place of the former term “registered proprietor” to describe the registered owner of a mark on the register in NewZealand. It can be argued that the mark must be applied by or with the consent of the New Zealand registered trade mark owner. Where the owner of a New Zealand registered trade mark is not the owner of the mark in the country from where the goods were sourced, it can sometimes be argued that the mark was not applied by the owner; viz. by the New Zealand registered owner.
Therefore until this matter is clarified by the Courts trade marks will, in certain situations, remain a possible remedy against parallel importing of certain trade marked goods.
Other – Review of the legal profession
The ongoing review of the legal profession in New Zealand has given rise to matters of concern to the patent attorney profession.
The New Zealand patent attorney profession had previously been the subject of review. In October 2002 the Ministry of Economic Development issued a discussion paper proposing a number of changes to the provisions regulating registered patent attorneys in New Zealand. The Ministry invited submissions on it, and a number of organisations and individuals made submissions. The Ministry then prepared a paper for Cabinet, which set out recommended changes. The paper recognised the need for regulation to be balanced against the overall policy of providing for competition in the provision of regulated services. The paper proposed to allow foreign-registered patent attorneys to be recognised as equivalent to New Zealand registration, and allow them to register and practice in New Zealand even when not resident here.
In June 2003 the Lawyers and Conveyancers Bill 2003 was introduced into Parliament. The Bill proposed a wholesale reform of the law governing the legal profession in New Zealand. Parliament received a number of written submissions on the Bill, and a committee heard oral submissions in November 2003.
Some provisions of the Bill appear to be at odds with the changes to the patent attorney profession previously proposed by the Ministry. The Bill may restrict the ability of non-lawyer patent attorneys to provide certain services which are, under the bill, the exclusive domain of qualified lawyers.
The Bill also includes a prohibition on multi-disciplinary practices involving lawyers. A lawyer who shares income from the provision of regulated legal services with any non-lawyer would, under the Bill, be guilty of misconduct. The Bill also prevents a qualified lawyer from providing legal services to the public while employed by a non-lawyer. This would prevent non-lawyer patent attorneys from employing practicing lawyers.
Although these provisions were aimed primarily at potential lawyer-account combinations, it would also prevent practices incorporating both lawyers and patent attorneys, where the partners of that firm were not all qualified lawyers.
Case Law
Trade Marks
AMI Insurance Ltd v New Zealand Automobile Association Inc (CIV2003-485-836)
High Court, Wellington, 15 July 2004 per Miller J
AMI appealed a decision of the Assistant Commissioner of Trade Marks permitting the registration of the trade mark LIFE ASSIST in relation to a helpline service.
The parties to the dispute had close historical associations. In 1926 the South Island Motor Union formed an insurance company known as SIMU Mutual Insurance Limited. In 1928 the North Island Motor Union formed an insurance company known as NIMU Mutual Insurance Limited. For a while these two companies operated as official insurers to the respondent, dividing the market on a geographical basis.
Sometime later SIMU changed its name to AMI Insurance Limited, and NIMU became AA Insurance Limited. Then, in December 1990 AMI acquired the business of AA Insurance. At that time appellant and respondent entered into a number of business arrangements for their mutual benefit. In 1992 AMI launched a helpline service under the name AMI Assist. It spent a substantial sum of money developing this service.
Then in 1994 relations between the parties soured, when the respondent began to offer insurance in competition to AMI. However, both continued to use a similar colour scheme in their branding, and in many instances operated out of adjoining premises.
In August 2001 AA filed an application to register the mark LIFE ASSIST. AMI unsuccessfully opposed the registration of the mark before the Assistant Commissioner. It then appealed to the High Court.
The High Court overturned the Assistant Commissioners decision, holding that the mark was not registrable. In response to submissions that any consumer confusion which might arise between the marks was actually more general confusion between the two parties, Miller J noted that the respondent “ha[d] to take the market as it finds it.”
He held that in considering the likelihood of confusion, “it is necessary to consider the whole of the proposed mark, the use that will be made of it in the market, and the fact that AMI is already in the market with a near-identical service, and the parties’ shared history and branding.”
Patents
Pfizer Inc v Commissioner of Patents (CA22/03).
Court of Appeal, 28 June 2004 per Anderson P, Glazebrook J, Hammond J, William Young J, O'Regan J
On 28 June 2004 the Court of Appeal issued its decision in Pfizer Inc v Commissioner of Patents.
Pfizer had previously been unsuccessful before the High Court in appealing the Commissioners decision refusing claims to a method of medical treatment for humans. The Commissioner’s decision was further upheld by the Court of Appeal, who dismissed the appeal. The Court held unanimously that methods of medical treatments of humans were not patentable.
This follows the 1983 Court of Appeal decision in Wellcome Foundation v Commissioner of Patents [1983] NZLR 385, in which methods of treatment of humans were held not to be inventions entitled to protection under the Patents Act 1953. The decision can be contrasted with the Court of Appeal’s decision in Pharmaceutical Management Agency Ltd v Commissioner of Patents [2000] 2 NZLR 529. There Gault J departed from the view expressed in Wellcome that such methods were not inventions under section 2. Rather, Gault J held that they ought to be excluded from patentability on policy grounds.
The Court of Appeal’s decision can also be contrasted with the position adopted in Australia under the Australian Patents Act 1990. In Bristol Myers Squibb Company v FH Faulding & Co Limited (2000) 170 ALR 439 the Court decided that methods of medical treatment were patentable in Australia.
More than 600 applications had been held in abeyance by IPONZ pending the outcome of the appeal. It has been suggested that IPONZ will now issue objections to these application to these under section 2 of the Patents Act (“not an invention”). In some cases it may be possible for applicants to amend the claims into Swiss claims. However, in other cases this may not be possible.
Copyright
University of Waikato v Benchmarking Services Ltd (CA216/03)
Court of Appeal, 11 June 2004 per McGrath J, Glazebrook J, Randerson J
The University of Waikato Management Research Centre published an annual business benchmarking survey. They had done so for 18 years. The survey compiled financial data relating to New Zealand businesses, and provided benchmark information for a large number of New Zealand industry groups. This was then available for use by businesses as a tool to compare operating performance with industry standards.
In late 2002/early 2003 Benchmarking Services Limited, the first respondent, produced a similar benchmark survey in competition to the Centre.
The University alleged that the first respondent had copied a substantial part of the Centre’s report in a brochure it had produced. The brochure offered the first respondent’s software in the form of a CD-ROM which would contain the software and documentation. The brochure contained sample report for a company the year ended 31 March 2001. This portion of the first respondent’s brochure had copied a substantial part of the Centre’s 2001 report.
The University also alleged that that Benchmarking had used an exact copy of layout and ratios used in the Centre’s survey on a website. The University alleged that Benchmarking had infringed copyright by copying substantial amount of the Centre’s report.
The University had sought unsuccessfully applied for summary judgment. Although the Master was satisfied that the respondents had copied material from the Centre’s reports, he was not satisfied that satisfied the requirements for the granting of a summary judgment.
The Court of Appeal allowed the appeal, and granted judgment in favour of the University. The Court found that the University had satisfied the three step test for infringement from Wham-o Manufacturing. They considered that essence of copyright work had been taken; that there was strong objective similarity between brochure and Centre’s report; and that there was a causal connection between the Centre’s work and respondents work. The Court further held that the University had demonstrated that respondents had no defence and have infringed copyright in respect of Centre’s report in both printed and electronic form.
Designs
Bruce & Toni Sutton v Bay Masonry Limited & Anor CIV 2003 470 000260
In an action for design infringement the defendant counterclaimed invalidity of the design based on lack of novelty and that the design was dictated solely by function.
The design was in respect of a Z-shaped fence post. The plaintiff argued that the design was “new and original in relation to the article to which it is applied, i.e. a fence post”.
The judge considered the shape of the fence post “to be only what is functionally needed or only what is there to “make the article work”” and found that the shape “would appear to be dictated by the function of the task for which it is manufactured”. Furthermore, the shape was found to be “no more than a trade variant”.