May 30, 2010
UK Prime Minister David Cameron has announced (Circular PN013) that UK National Phase Patent Applications having a positive International Preliminary Examination Report (IPER) will be fast tracked and within two months of entering national phase in the UK, the applicant will receive a Notice or Allowance or an Official Action detailing what needs to be done to put the patent application into a position for allowance.
We note that in this regard, the Israel Commissioner of Patents has been there, done that.
Nevertheless, we are pleased to see that the new Prime Minister has an awaremenss of IP and hope that other regimes will follow suit. Ideally, the PCT mechanism should be a fast track not a delaying tactic.
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Posted by Michael Factor
March 12, 2010
The UK Intellectual Property Office (IPO) has announced that the pilot work-sharing programme, the Patent Prosecution Highway (PPH), between the IPO and the Japanese Patent Office has now been made permanent. Under (or should that be on???) the Highway, once an applicant has received a favourable decision from one office they can request accelerated processing of corresponding patent applications filed in the other, which should significantly speed up the patent prosecution process.
Source: IPO press release, 10 March 2010.
Additionally, the US and UK have now agreed to co-operate on patent processing, with the two governments having announced that their respective patent offices, the US Patent and Trademark Office (USPTO) and the UK Intellectual Property Office (IPO), will co-operate to develop a plan to optimise reuse of work on patent applications that are filed jointly at the USPTO and the UK IPO.
The offices will try to identify all potential areas of information utilisation by the end of 2010, and will work on building mutual confidence in the work done by each office.
Source: IPO press release, 10 March 2010.
Under Section 17c of the Law, the Israel Patent Office will grant an Israel patent having the same specification and claims to one allowed by a range of jurisdictions, including the JPO, USPTO and UKPTO, unless the invention relates to subject matter considered non-patentable under Israel Law, such as methods of therapeutic treatment, business methods and software per se. (all currently patentable in the US).
None of the jurisdictions listed currently take much note of what the Israel Patent Office allows or not, albeit the IDS in the United States does have to relate to the citations from Israel as elsewhere. Now that Israel is becoming an International Search Authority for the PCT, it is possible that other countries will be prepared to rely more on the Israel Examination.
Australia has a modified Examination procedure like Israel, and will grant a patent based on allowance elsewhere. At present Israel accepts Australian examination.
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Posted by Michael Factor
March 12, 2010
In the UK trademark office, the ‘appointed Person’ has overturned a ‘hearing officer’s decision concerning a trace mark application filed by Coca Cola for “NO HALF MEASURES” applied for in relation to various services in class 41, including education, training, entertainment and sporting activities. (It is not recorded if the overturning resulted in spillage).
Unlike the hearing officer who considered the mark devoid of distinctive character, and therefore not registerable under section 3(1)(b) of the Trade Marks Act 1994, the appointed person considers the mark not devoid of distinctive character. The hearing officer, Mr. J Pike, had considered that the mark was nothing more than a slogan which sent a message – that the applicant provided services which would meet consumers’ requirements, even if their expectation levels were high – which could apply to any undertaking.
This is in line with an Israel Trademark decision regarding a Coca Cola advertising slogan – of the World. The Appointed Person, cited the recent ECJ decision in Audi AG v OHIM, Case C-398/08, see http://blog.ipfactor.co.il/2010/01/25/european-court-of-justice-recognizes-vorsprung-durch-technik-as-distinctive-trademark/ and held that the mere fact that a mark was perceived as being a promotional statement and, because of its laudatory nature, could be used by others, was insufficient per se to support a finding of non-distinctiveness under section 3(1)(b). He went on to rule that a mark could convey an objective message and still indicate origin, and the mark in issue had distinctive character for the services applied for.
Case: In the matter of application no. 2472042 in class 41 by The Coca-Cola Company, and an appeal to the Appointed Person against the decision of Mr A J Pike dated 30 April 2009, 28 February 2010.
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Posted by Michael Factor
January 22, 2010
A South African entrepreneur Dimitri Philippou, has registered the following phrase as a trademark: “You can’t be a virgin all your life it’s time®”, this despite heavy opposition from Richard Branson’s Virgin Enterprises. Leaving aside the clear lack of accuracy in the phrase – think of nuns, the Madonna (both the Virgin Mary and the rock singer), the victims in episodes of CSI, Law and Order, Quincy, books by PD James where the surgeon conducting the post-mortem notes that the female victim in virgo intacta, Philippou’s company Bodtrade 54 intends using the slogan for one of his core businesses “Bodtrade Hotels” or “Bodtrade Telecoms”.
With a name like Bodtrade, I suspect that the services provided are the sort of thing that should best be used with discretion and without leaving itemised phone statements for family members to find. That as may be, it contrasts nicely with the Virgin candles ruling in Israel see http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/, where Virgin enterprises succeeded in crushing a small business making candles out of olive oil, presumably for sacramental purposes. Unlike the classification for candles, Virgin Enterprises does have telecommunication and hotel businesses, so the case for Branson’s conglomerate arguing dilution, and if my suspicions are correct, tarnishing, are far stronger than they were in Israel. Generally, slogans of the type above are not considered in Israel at all, with the notable exception of “a diamond in your pocket” http://blog.ipfactor.co.il/2009/03/17/israel-patent-office-allows-descriptive-slogan-to-be-registered-as-a-trademark/.
Although the UK decision that virgin is being used a noun is, in my opinion correct, it is apparently the first time in the history of Virgin Enterprises Limited, started by Branson in 1970, during the free love years, that a company outside his group has managed to secure a trademark registration including the word ‘virgin’ apart from marks registered for olive oil in which the word is descriptive (at least according to most – with the Israel Patent Office presumably dissenting).
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Posted by Michael Factor
