Non Parlo Inglese - Australian High Court Takes on Foreign Words as Trademarks

As the world's become evermore global, the mixing of different cultures, conventions and languages is completely inevitable. With this intermingling comes variety and novelty in expression, yet another perspective in this is added confusion and the potential for a well-known foreign brand to be completely overlooked or missed in these new markets with their introduction through immigrants or other people who wish to have access to these goods or services, especially if the mark in question is in a language not commonly used in that new country. This in mind, as trademarks have to distinguish specific goods or services, can a foreign mark achieve this and be considered a trademark, or will the language barrier potentially deter their use in a country? Luckily this matter was recently brought to the Australian High Court, which ultimately decided the fate of foreign marks in Australia, and whether they can inherently distinguish the goods or services provided.

The case in question was Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, which dealt with the ever-loved subject matter of coffee. The claim dealt with two registered trademarks held by Cantarella Bros, an Italian coffee company: Australian Trademark 829098 "ORO" ('gold' in Italian) and 878231 "CINQUE STELLE" ('five stars' in Italian). Modena, an importer of Italian coffee, used similar marks indicating their coffee products, including both of the marks in question, using them in conjunction with their coffee brands as marks of quality.  Modena argued, after being sued for trademark infringement by Cantarella Bros, that the marks are merely signs of quality and cannot inherently distinguish Cantarella's products from others, and therefore be valid trademarks.

The question hinged largely on the Australian Trade Marks Act 1995, more specifically section 41, under which a trademark has to be "...inherently adapted to distinguish the designated goods ...from the goods ...of other persons". If the mark does not do so, due to it being merely descriptive for example, it will be deemed an invalid mark. The High Court saw that the question which needs to be answered, basing their decision quite heavily on UK precedent, is "...an enquiry into the word's ordinary signification and whether or not it has acquired a secondary meaning". To put things in simpler terms, it is an assessment of what the word means ordinarily, and whether that particular meaning has acquired a secondary meaning, indicating a specific origin or quality of product in relation to a brand of goods or services, even if its ordinary meaning can be said to be descriptive or generic.

After a discussion of relevant precedent, the court formulated its final question regarding foreign marks:

Other languages can be very confusing

"The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia".

Effectively what the court is saying, is that the mark has to be examined so it does not impair its use unduly from other traders in a similar field (for example, trademarking the word 'fresh' in relation to bubblegum), and the end assessment is whether the public who will buy and consume that product or service will see a connection between that good or service and the provider. The reference to the goods or services has to be covert and skilful, and not a purely direct usage of that word.

Justices French, Hayne, Crennan and Kiefel, in the majority's decision, saw that, on the face of the evidence given that the marks have are not merely descriptive, and Cantarelle got to keep their trademarks. The general public were not seen as understanding the words sufficiently commonly as to convey a signature of quality, rather than an indication of origin, as there are few people in Australia who speak Italian.

To this writer the decision of the Court is an odd one, especially since the marks are, by their definition in Italian, purely descriptive, with the added issue that the marks have been commonly used even before the marks' registration. Nevertheless, the evidence produced was not enough to establish a case for Modena and the common understanding of these words, and it is hard to argue against that.

Source: Lexology

Retrospective - Computer Software and Copyright

In a world where everything is becoming more and more digital and reliant on computers to handle most tedious or complex tasks, software is king; it is what executes these tasks and makes things easier to do on the aforementioned devices. With the software business booming, more and more value can be placed on having the right software for the right task in the highly competitive space, and with that the desire to protect your product. Even in the wake of the Alice decision some time ago (discussed on this very blog here and here) the protectability of software still remains, albeit quite hindered. In light of the more difficult protectability of software through patents, copyright shines brighter and as a possible alternative, yet poses a question which might be less glaringly obvious to most: is software protected under copyright?

A fairly recent case in the UK Court of Appeals, SAS Institute Inc v World Programming Ltd, attempted to take on this issue and decide once and for all whether copyright does afford protection to software and its underlying code. The SAS Institute is a software development company well-known for its analytical software, often referred to as the SAS System (or just plainly SAS). A core component of the SAS System is SAS Base; a piece of software which allows the user to easily write and run scripts to analyze and use data. The scripts themselves were written in a programming language developed by SAS called SAS Language. Finally, the SAS Base software can be extended upon by three additional components: SAS/ACCESS, SAS/GRAPH and SAS/STAT respectively. In addition to the software SAS have also written manuals for the use of its software. The SAS environment was quite tightly controlled, and customers had no secondary options which to use in the execution of their developed scripts for the platform (the SAS Language only functioned through SAS' System). Their competitor, World Programming, sought to create an alternative piece of software capable of utilizing the SAS Language, so that any programs written in the Language can be used in both their suite and SAS' - the end-result being a program called the World Programming System. The software endeavored to mimic SAS' System as closely as possible; however they had not accessed SAS' source code in their development, merely copying the outputs and inputs of the System. Due to this, SAS sued WPL, asserting that the company had copied its manuals; through the copying of the manuals they had infringed SAS' copyright in their extension components; WPL had infringed its copyright in a version of its System, the Learning Edition, and breached its terms in its misuse; and WPL had infringed SAS' copyright in its manuals after creating its own version called the WPL Manual.

Being 'creative' in programming can be difficult

Confusion in terms of acronyms aside, the court was therefore faced with the ultimate determination of whether copyright exists in SAS' software, and whether WPL had infringed that copyright. Under EU legislation, more specifically Directive 91/250/EEC (now governed by Directive 2009/24/EC with no substantive differences), computer programs are wholly protected by copyright as a form of expression; however the underlying principles of those programs are not. To put this into more simple terms, the code executing a specific function in its particular expression can be protected, but the idea of that execution is not, allowing anyone to create a program doing the same thing, so long as the expression of that execution is not the same as other expressions of it (i.e. different code, same result). Computer programs have since been included in the UK Copyright, Designs and Patents Act 1988, under section 3.

To look at things further, the scope of what is protectable under the above Directives was left quite open, but was subsequently added to in the case of Infopaq International v Danske Dagblades Forening, where the European Court of Justice saw that copyright protects an author's "...intellectual creation" (the wording used in the Berne Convention), potentially encompassing programs quite readily if it can be seen as such a work - supplanting this definition in the Directive's interpretation. What is important in this term's application, in the Court's judgment, lies within whether a computer program can be seen as an 'intellectual creation', and in assessing this the court must decide that if the expression within the computer program is purely a technical one (i.e. derived from necessity for things to work right), the work cannot be seen as an intellectual creation under this definition. To put things in more simplistic terms: "...the author [has to be] able to express his creative abilities in the production of the work by making free and creative choices". If a programmer, in the creation of a specific application, can express his or her creativity and choices in how the program works, it can be protected by copyright. Even if the program has very specific functionality, or combines several different functional approaches to the execution of its desired task, the law does not protect it under copyright. In the court's view the copyrightability of functions or functionality, no matter how well used or combined, would be tantamount to the copyrightability of an idea, and therefore is not within the remit of copyright.

Finally, the court had to assess whether the manuals created by SAS are protected as works, and whether WPL had infringed those manuals' copyright protection.Their content was largely informative, and therefore would encompass most of the 'ideas' expressed in the aforementioned programs, or as expressed by Lord Justice Lewison: "...what counts as an idea, for the purposes of a computer program, also counts as an idea for the purposes of a manual". With this in mind, should the manual express the idea in a way which can be seen as protectable, it can fall within the remit of the law. His Lordship dismissed both claims on the manuals, effectively dismissing their protection due to a lack of any protectable expression, as they merely described the function of the programs without adding anything original on the author's part.

In the end SAS lost their appeal and the Court of Appeal closed the door on the copyright protection for programs, at least for the most part. The case was appealed to the UK Supreme Court, however leave was not given, solidifying the law's position through the Court of Appeal's judgment. The position presented in the case differs drastically to what has been discussed in the United States, where programs can be protected by copyright. Nevertheless the case is without a question an important milestone in relation to copyright and computer software, and this writer for one believes it will stay as such for a while.

Words in Action - Trademarks as Verbs

This writer, for one, will fully admit to often using very well-known brands as the descriptive term for all such items, for example calling all plasters Band-Aids and all cotton-tipped plastic cleaning things (a technical term, undoubtedly) as Q-Tips, regardless of all of those terms having been, or still being, registered trademarks. While my misstep in potentially diluting these valuable brands in using them in this way can be seen as a small error, or even wholly unnoticeable in the grand scheme of things, it still brings light to an issue all trademark holders face; the potential of losing your mark to genericization. While this topic has been discussed on this very blog before quite extensively, the use of trademarks as verbs specifically has been left a bit in the dark, yet is illustrative of a newer problem technology companies especially will face. Who hasn't said they will 'Google' something, or if they will 'Facebook' their aunt Mary; a grave threat the holders of those particular marks will lose sleep over. One such giant facing a recent challenge to its widely recognized trademark is Google, which posed an interesting question to all trademark holders.

The case in question is Elliot v Google Inc, where the claimant, David Elliot, registered over 760 different domain names combining the word 'Google' and another brand or a famous person, for example googledisney.com, or with generic terms such as googletvnews.com. As you might have guessed, Google has trademarked the term 'Google' in a number of variants; two of which were at issue in the case: US trademark 2884502 and 2806075. These two marks encompass the word 'Google' in several categories, such as web indexes and computer software - promptly leading to Google pursuing the domain names through the Uniform Domain-Name Dispute-Resolution Process (UDRP). In his defense Mr. Elliot asserted that the term 'Google' had become generic and could therefore be used by him (and others) without infringing on Google's marks. The domain names Mr. Elliot had registered were transferred to Google in the UDRP, which prompted Mr. Elliot to pursue the matter further in the US District Court of Arizona.

What Mr. Elliot's argument largely states, and what the court had to assess, was whether the term 'Google' had effectively become ubiquitous with the verb 'googling' - defined by the Oxford Dictionary as "[s]earch[ing] for information about (someone or something) on the Internet using the search engine Google" - rendering it generic rather than distinctive as to Google and/or Google's services. As trademarks need to specifically distinguish the origin of goods or services, becoming a generic verb can be the mark's end.

Stacy was unnerved after 'googling' herself

What the court had to determine was whether the mark's "...primary significance" was that of distinguishing the goods or services from other similar ones. The test was phrased well by Justice Brandeis in Kellogg v National Biscuit: "...the primary significance of the term in the minds of the consuming public is not the product but the producer". This is highly important, as if a product is named as the major brand (i.e. if you refer to all plasters as 'Band-Aids') in general terms, the mark loses its status as the seal of origin for that brand, or as stated by Justice O'Scannlain in Filipino Yellow Pages: "...if the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark".

Using a trademark as a verb does not automatically change the primary significance of that mark, and a mark, such as 'Google', can be used for both the designation of an origin for goods and services and as a term describing the searching of information via the search engine - noted by the court in the case. This synecdochian dual-functionality of a mark is wholly valid; however, should the perception of the public change drastically as to the meaning of the word, i.e. if most people would believe and/or use the term "to google" to mean using any search engine online to seek information, then the mark can be determined to be compromised, even with this accepted dual-functionality. This was phrased well by Justice McNamee (the name seems more than appropriate considering the case's subject matter): "It is thus contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark—cultivated by diligent marketing, enforcement, and quality control—has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs". Arguably this argument holds well, and this writer for one agrees wholeheartedly with the court's view, as the stripping of a mark's distinctive nature the moment it becomes even partially descriptive of a class of products or services would run contrary to the value given by trademarks to brands and their place in a given class.

In the end the action failed, as Mr. Elliot failed to demonstrate how the mark 'Google' had turned generic, as the public still strongly perceived it as part and parcel to the company, not just internet search engines or internet searching at large. The case does bring light an important issue, and often something that the general public will not think about; how our daily use of terminology, especially trademarks, can alter their value. Some examples include 'Xerox' (become a term for all photocopying) and 'Thermos' (used as a term for all heat-retaining drinks containers), which have become generic due to their use as the identifying term in a given class. Due to this the International Trademark Association has even issued guidelines on the proper use of trademarks, which most of us will find potentially excessive, yet is quite important. As can be seen, trademarks are a dangerous beast, especially when they become famous to the point of ubiquity; however for most this risk is quite worth it.

Source: JDSupra

Genetic Patents Saga Continues - Next Stop, Canada

After the Myriad Genetics saga has been experienced on both sides of the world, in the US and Australia (both discussed on this very blog quite extensively: US here and here; Australia here), the fight seemed to be over and the decision, at least for now, settled. With the Australian case having been appealed to the High Court of Australia, most IP practitioners and academics awaited the conclusion of the patent's road in Australia, a new challenge in the field of genetic patents has begun in the colder of the North American powerhouses; Canada. The Myriad Genetics patents have not been challenged in Canada, although the Provinces themselves have rejected them and refuse to enforce the patents, and this case would be an important stepping stone in completely answering the question of the patentability of genetic material, at least in North America.

The challenge is being mounted by Children's Hospital of Eastern Ontario (more commonly known as CHEO), however taking the fight to (finally) someone else but Myriad Genetics. The question relates to patents covering the testing and/or assessment of Long QT Syndrome, which, as explained by the Mayo Clinic: "...is a heart rhythm disorder that can potentially cause fast, chaotic heartbeats. These rapid heartbeats may trigger a sudden fainting spell or seizure. In some cases, your heart may beat erratically for so long that it can cause sudden death". One does not catch Long QT, as it is a genetic disorder, which requires identification prior to treatment. CHEO were prevented from conducting their own genetic analyses on-site, as the University of Utah holds the patents for the testing of this genetic disorder, much akin to the Myriad Genetic Patent (Canadian patents 2240737, 2336236, 2337491, 2369812 and 2416545 respectively). Due to the mandatory outside testing at the University of Utah, CHEO's costs to diagnose this disorder are nearly double when compared to internal testing, resulting in increased costs and potentially even diagnosis times; again, very similar to the problems with the Myriad Genetics case.

The Canadian Patent Act reflects the US legislation quite heavily in relation to patentable subject matter. Under section 2 of the Canadian Patents Act an 'invention' is defined as "...any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". A nearly identical definition is set out in 35 USC section 101 in the United States. The relevance of this is very important, as the Supreme Court's rejection of genetic patents in the US will undoubtedly influence the Canadian courts going forward.

Even genes have it tough under today's beauty standards (Source: Dan Collins)

Under the Canadian Patents Act section 27 both scientific methods and abstract theorems are not patentable, although an application of such can potentially be patented. One has to note the omission of an express exclusion of naturally occurring subject matter, which is included in many other jurisdictions. The argument raised by CHEO therefore hangs on whether a naturally occurring phenomena can be patented under section 2, if it is deemed to be a sufficiently marked departure from the naturally occurring thing itself. One has to wonder why the Canadian legislature has left this exclusion out of the law, as it is very much the standard all over the common law.

As for potentially applicable case law the pickings are quite slim. The case of Harvard College v Canada (Commissioner of Patents), the Canadian Supreme Court saw that, even though section 2 is very broad in its wording, it does not include "....anything under the sun that is made by man", and can be therefore limited in its scope. The Harvard case effectively dismissed the patentability of 'higher lifeforms', which has been argued to encompass plants as well as animals, such as the genetically modified mice in question in the case itself, it still remains a useful examination of some of the wording the Federal Court will face. Whether one can include genes in the term 'higher lifeforms' remains to be seen, and in this writer's opinion, it will be a tough argument to press, but a possible one due to the complexity and higher level of function which genes serve in the human body. In Monsanto Canada Inc. v Schmeiser the Supreme Court looked at patents relating to genetically modified crops. The case largely focused on infringement, rather than the patentability of genetically modified crops, but as the Supreme Court did briefly bring the fact to light, it still might be used as a starting point to defend the patentability of other genes; even human genes.

This writer for one will await the emergence of this case in the courts, and wonders if the decision will be different to that of the US Supreme Court. Arguably the Canadian courts should hold that patents are not eligible for patent protection; however, as recently seen in the Full Federal Court of Australia as mentioned above, things are not always as straightforward as you might think. Yet, due to the sheer similarities of the Canadian and US law, and the significant influence of its North American brethren in the South, one can imagine things going CHEO's way on this one. As the case was filed in the very early parts of November a judgment will be a long ways away, but this will be one to look forward to in 2015.

Source: Ars Technica