The rules keep changing over whether plants or plant products obtained by means of an essentially biological process are patentable in Europe.
Under Article 53(b) EPC (and Article 4 Biotech Directive), European patents shall not be granted in respect of plant varieties or essentially biological processes for the production of plants. Originally, this was interpreted to extend to plants and plant products obtained by means of an essentially biological process.
This was challenged in Broccoli/Tomatoes I (G 0002/07 & G 0001/08) and Broccoli/Tomatoes II (G 0002/12 & G 0002/13), following which, it was allowable to have a product claim directed to plants or plant material such as a fruit, even though the plant or plant material might be obtained by an essentially biological process, which is not patentable.
The European Commission considered the issue (2016/C 411/03) and took the view that the EU legislator’s intention when adopting the Biotech Directive was to exclude from patentability products (plants and plant parts) that are obtained by means of essentially biological processes.
The Administrative Council of the EPO then introduced Rule 28(2) to modify Article 53(b) EPC. Rule 28(2) states that European patents shall not be granted in respect of plants exclusively obtained by means of an essentially biological process.
Recently, the Technical Board of Appeal decided that Rule 28(2) is in conflict with Article 53(b) EPC and therefore, in accordance with Article 164(2) EPC, the provisions of the Convention prevail. Accordingly, Rule 28(2) is void.
This means that European patents can again be granted in respect of plants exclusively obtained by means of an essentially biological process. The question now is: how long will it last?
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It is with great pleasure that we announce that Dr Michael Dow has won The Institute of Patent and Trade Mark Attorneys of Australia (IPTA) Institute Prize for 2018.
The Institute Prize is one of IPTA’s most prestigious awards with a long and distinguished history. It is awarded to a newly qualified candidate who has shown excellence in academic subjects and has best demonstrated that they have the potential to contribute substantially to the profession.
Michael joined Madderns in February 2013 after working as a research scientist in Australia and the United States. He studied at the University of Adelaide where he obtained a PhD in plant biotechnology, and previously at Flinders University where he obtained a Bachelor of Biotechnology with first class honours.
Michael is no stranger to success having been awarded a Dean’s Commendation for Doctoral Thesis Excellence from the University of Adelaide and receiving the University Medal for his academic achievements at Flinders University.
We are proud of Michael’s latest achievement, which we believe has resulted from Michael’s outstanding work and has been facilitated by the environment in which Madderns provides for its trainees’ development.
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When choosing a trade mark, keep in mind that marks with geographical connotations can be difficult to protect and enforce.
This case illustrates that even trade marks with references to former geographical locations can be problematic, particularly if that area was and still is well-known as a source of particular products.
The relevant geographical location in this case is the area in the Czech Republic which was formerly known as “Bohemia”. The parties involved in the dispute both distributed crystal-ware and glassware in Australia under different “Bohemia” brands: Bohemia Crystal Pty Ltd under the name “Bohemia”, and Host Corporation Pty Ltd under the name “Banquet Crystal by Bohemia”.
Bohemia Crystal Pty Ltd claimed that, by selling products under the “Banquet Crystal by Bohemia” brand, Host had engaged in misleading or deceptive conduct and infringement of the following Australian Trade Mark Registrations:
- 891129 for the words “BOHEMIA CRYSTAL” covering “glassware being tableware, stemware and decorative items including crystal glass figurines, glass jewellery holders and trophies” in class 21, and
- 952530 for the word “BOHEMIA” covering “glass and glassware, crystal and crystal ware of all kinds not included in other classes including vases, figurines, bowls, wine glasses, goblets, drinking glasses, ornaments, giftware, decorated glass, painted glass; china, porcelain and earthenware” in class 21.
In response, Host Corporation Pty Ltd claimed that Registration Nos. 891129 and 952530 should be cancelled pursuant to sections 41 and 88 of the Trade Marks Act 1995 (Cth). Host Corporation Pty Ltd argued that both “BOHEMIA CRYSTAL” and “BOHEMIA” were too descriptive to be registered as trade marks, given that these marks incorporated the name of a former geographical location that was, and still is, particularly well-known for the type of goods covered.
Bohemia Crystal Pty Ltd did not dispute that the former area of “Bohemia” was previously known as a source of high quality glassware and crystal products. However, Bohemia Crystal Pty Ltd argued that when seeing products labelled with their “BOHEMIA” and “BOHEMIA CRYSTAL” trade marks, ordinary consumers were more likely to think of the “artistic or conventional” Bohemian lifestyle than the former geographical location.
The Court accepted that “Bohemia” could be defined as either (1) the name of a former geographical location in the modern Czech Republic, or (2) a mythical place from which people who “adopt an unconventional lifestyle”, ie “Bohemians”, live or originate. However, in the context of crystal-ware and glassware, the Court held that only the first definition was relevant. The Court noted that, when seeing glassware and crystal products labelled with the “BOHEMIA” and/or “BOHEMIA CRYSTAL” trade marks, both ordinary consumers and other traders were only likely to think of “Bohemia” as “a region from where glassware is manufactured” given the history and reputation of that location as a place of manufacture of quality crystal-ware and glassware. The Court also noted that “BOHEMIA CRYSTAL” may suggest a “style of glassware” originating from Bohemia to some traders and consumers. In light of this, the Court held that both “BOHEMIA” and “BOHEMIA CRYSTAL” were not distinctive enough to be registered as trade marks and, consequently, Bohemia Crystal Pty Ltd’s Trade Mark Registration Nos. 891129 and 952530 were cancelled and they could not prevent Host Corporation Pty Ltd from continuing to use the “Bohemia” name.
Take-home message: trade marks with geographical connotations can be difficult to protect and enforce and we would recommend selecting alternative marks. However, if you still wish to use a trade mark which has geographical connotations, consider incorporating a more distinctive element.
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Congratulations to VitaChar on winning first prize at the University of Adelaide’s Australian eChallenge awards, for most outstanding entrepreneurial venture of the year.
Madderns has been a sponsor of the Australian eChallenge since its inception 18 years ago and Partner Bill McFarlane has been a contributor each of those years to the IP education aspect of the competition. On Thursday evening 15 November 2018 at the formal awards ceremony VitaChar won the first prize in a high quality group of finalists in the competition. Bill was not only a Judge of the finalists he also gave a speech and presented the People’s Choice Award during the event. Madderns has and continues to be an active supporter of the Entrepreneurial ecosystem in South Australia.
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Congratulations to Dr Mary-Louise Rogers from Flinders University on winning the Technology category award at the 2018 Winnovation Awards. Mary-Louise has developed a novel urine test to determine if drugs are working in clinical trials of motor neurone disease treatments. Madderns is a proud sponsor of the Technology category which recognises women who are making outstanding technological contributions in South Australia. The award was presented to Dr Rogers by Madderns partner Megan Ryder. We extend our congratulations also to the other category nominees, Dr Marnie Winter and Felicity Hamilton.
Photograph by Heidi Wolff Photography
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