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Do you use the TM symbol on your packaging? And if not, why not?

/ Bill McFarlane / Articles

A client recently asked me a question regarding the use of the TM symbol on products, and while it might sound like there’s a simple answer, it isn’t as simple as you might think. Here’s what they asked:

“Just wondering whether it’s beneficial for me to have TM on my packaging? I’ve noticed a lot of big brands don’t have TM but are in actual fact trademarked.”

All traders have a right to use the ™ symbol alongside the brand they apply to register or use in connection with the product they offer to the public from the first day that product hits the market (assuming that they are not aware that use of the brand will impinge on the rights of others). I use the term product in this answer however the same rules apply to services but the way the brand is used for services is a topic for another article.

The ™ symbol is not well understood by the general public, with most people thinking it denotes that the brand is a registered brand. That’s not correct, but, it can be an unintended advantage if most people think that’s the case. Note that the ® symbol can only be used on a product when that brand is officially registered and only used on products covered by the registration and offered into the same country in which it is registered. While most brand users know the difference between the ™ symbol and the ® symbol, the public and some competitors don’t always have the same understanding. However, the use of the ™ symbol none-the-less puts everyone on notice that there is a brand that is considered by its user/owner to be the brand for the respective product. That is generally a good thing and can be very important when claiming common law rights (those rights which accrue when the brand is not registered), since it is clear to the reviewing body that the user/owner knew that they were using the ™ symbol intentionally to signify there was a brand being used on the product distinct from any descriptive aspect of their marketing of that product (proper use of brands is a topic for a future article).

The more well-known the brand, the less the owner needs to tell everyone it is a brand (as long as the owner continues to use it as a brand). It could be that those owners want to avoid the possibility that either of the symbols will spoil the aesthetic of the package or the carefully crafted advertising script, and thus the owners are willing to forego any advantage the symbol may provide. That’s an easier choice for a well-known brand and remains a hard choice for the lesser-known brand owner. For example, L’Oréal is a house brand and there are at least 39 sub-brands including Guy Laroche, Redken, Yves Saint Laurent, Heratars, Diesel, Maybelline, and many more. The ™ symbol may not be used with those brands on products bearing the house brand or the sub-brands.

My recommendation would be to use the ™ symbol on the product, its packaging and any promotional material.  It is also useful to use it on invoices for the sale of the product. A fall-back is to mention that the brand is a trade mark of the owner somewhere on the packaging or use directions, and to at least use the ™ symbol on the promotional web page and on all advertising for the sale of the product. If you start using the ™ symbol, there’s no doubt your brand will be better off.

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Preparing for the new “.au” rules– what should I know and what should I do?

/ Bill McFarlane / Important Updates

Does your domain name end with a “com.au” or “net.au” or “org.au” and “asn.au” and you are a foreign entity that uses an Australian Trade Mark to support that domain registration? If so, you may not be able to renew or apply for a domain if it doesn’t exactly match a trade mark you own.

These new rules will apply from12 April 2021. Yes – that’s less than two months from now.

If you are a foreign entity and your trade mark is a word and that same word is the domain name to which “.com.au” or any of the other top-level domains is added, then all is OK. However, if the trade mark is not the same, you should check the rules below. If the trade mark and the domain name are the same, you do not need to do anything at this time.

However, you need to be aware that the changes coming into force will apply the next time you want to register or renew a “.com.au” or “.net.au” domain incorporating your new trade mark. They also apply if you intend to transfer a domain to your entity upon the purchase of a domain name and the corresponding trade mark.

For those with similar domain names to either the trade mark you have applied for, or an existing registered trade mark, then the following information is very important to know.

When the “.au” Domain Administration (auDA) changed the eligibility rules, it strengthened the Australian presence requirement hence the effect of this change on domains held by foreign entities. As for Australian businesses they are not affected since they meet the local presence test and their domains do not need to meet the exact match criteria. The new rules state that the domain name must be an exact match to the relevant trade mark and apply to:

  1. newly applied-for domains;
  2. to domains that are transferred to a new owner; and
  3. all domains that are being renewed after 12 April 2021.

So what is an exact match? This requirement is different from the old rule, which allowed the domain name to be ‘closely and substantially connected to your trade mark’.

The domain name MUST include all the words in the same order as they appear in the Australian Trade Mark or Trade Mark application. However, there are some exceptions:

  1. you can ignore the .com.au and other DNS identifiers;
  2. you can ignore punctuation marks in the trade mark, such as: ‘! And ‘ ;
  3. you can ignore joining terms such as ‘a’, ‘the’, ‘and’, ‘of’; and
  4. you can ignore ampersands ‘&’.

The new rules are tough, and if your domain is not an exact match, you need to do something soon or make sure you act before the next domain renewal date.

There are many possibilities when considering how to act:

  • Change your domain name to ‘match’ your trade mark; or
  • Change your trade mark to ‘match’ your domain name.

At least one of the new rules allows domain registrations to be owned by a related body corporate, as long as the related company meets the Australian presence requirement.

You can read more about the rules changes at .auDA.

All of the above options have several important implications. So the way forward may not be as simple as it seems.  Please consider obtaining professional advice.

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What the heck is a Retroactive Foreign Filing Licence, and why should you care?

/ Bill McFarlane / Articles

Does your company employ US residents, and do those employees or contractors sometimes invent while they are living or working in the United States? Then take note.

Did you know that any United States (US) Patent naming that person as an inventor may be liable to be invalidated – just because a Foreign Filing Licence had not been obtained from the US Patent and Trademark Office (USPTO) prior to filing in another country?

Whether you were aware of the regulations or not, the USPTO administratively examines every US patent provisional and non-provisional (complete) application to determine if the subject matter is of importance to the security of the US.  The details in the patent application could include anything from a method of making a deadly virus, the method of providing unbreakable digital security or the parts and method to make a nuclear explosive.

If someone were to apply for a patent for such methods or devices, the US Government would want to know sooner rather than later. And it’s more than just a concern for the US Government; most countries have a patent application vetting process. If the idea in a patent requires classification as a secret (so it does not become published), it is within the powers provided by the respective patents Act  to prohibit the publication of that patent and prevent the grant of a patent until the patent subject matter is no longer considered a secret. (Refer to an earlier article I wrote on this subject here)

For that reason and others, the USPTO reviews every patent application filed in the US. In most cases, the patent application will proceed into the USPTO system and will have a licence to do so. If you look carefully at the patent filing receipt which is issued by the USPTO, you will note the explicit mention of a Filing Licence. Without even touching on the US resident issue or discussing inventions ‘made’ in the US, you can already see that all patent applications create much more activity than many people would have ever thought necessary.

Why you must file with the USPTO

 The US Government has declared it essential for an American resident (or anyone located in the US) inventing while in the US, to file for a licence before they have filed for their invention overseas (a non-US application). Note that this only applies if the US resident or other person was in the US when they conceived and put the invention into practice, which is not just the making of a prototype but potentially includes the drafting of information that ends up in the patent specification assuming the invention has not been reduced to practice.

How does that affect Australian companies?

You might be wondering how that affects a company based in Australia, and what that might mean for you. In Australia, it is common to file an Australian provisional patent application and within 12 months file a PCT application, which within 30 months of the provisional filing enters into the US as a national phase patent application. The US foreign filing licence law also affects Australian companies if they file by other patent filing routes, and subsequently file a US patent application.

If there is no foreign filing licence and one of the inventors is a US resident and they invented (or made the invention) while in the US, there must be an application to the USPTO for what is termed in this case a Retroactive Foreign Filing License under 37 CFR § 5.25.  This retroactive license empowers the USPTO to authorise those patent applications which were inadvertently filed overseas before the US application was filed. This is assuming you did not know you had a duty to request the Foreign Filing Licence before you filed the Australian provisional.

 US residents who invent and what that means for your business

As mentioned, it is not uncommon for a patent application in the US to eventually become granted, naming that US resident who invented while in the US as an inventor (and it does not matter what level of inventorship was involved). If there is no Foreign Filing License issued by the USPTO, the Granted patent will be declared invalid as soon as the patent is challenged. No ifs, No buts – INVALID.

Another critical point is that the US law relates to the concept of an invention ‘made’ in the US. This means that anyone who is in the US and invents, automatically triggers the need to obtain a Foreign Filing Licence or a Retroactive Foreign Filing Licence.

Foreign inventors studying or working in the US

A resident of another country attending a university in the US is a great example of how the Foreign Filing License laws play out. Although they arenot a US resident, any invention conceived or developed in the US will need a Foreign Filing Licence, and they’ll need it before they file in their own country.

Another scenario of concern is when an Australian resident visiting the US to work temporarily conceives or develops the invention while in the US and then returns to Australia. Any intention to file for a patent for the invention ‘made’ in the US will trigger the need to obtain a Foreign Filing Licence, again technically before filing in their country of choice.

 What should you do if you already have a US patent pending or Granted?

To deal with the US resident issue:

Consult with your inventor/s and find out if they are a US resident and whether they were living or working in the US when the invention was created or prototyped. If so, check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.

To deal with the non-US resident issue:

Consult with your staff and find out which country they were in when they conceived and brought into practice or created a prototype of the idea that has become the subject of a patent (in any country, but more importantly the US). If ‘made’ in the US, then check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.

If you are just venturing into the patent realm and you are employing, or plan to employ a US resident, or your firm contracts a US resident to invent who also happens to be working in the US for you, then keep this sobering issue in mind. If any of your staff are intending to travel to the US and intend to invent while there, you also need to ensure this is a consideration. If your patent attorney does not raise the issue, you need to.

If a foreign filing licence is not in place and it should be, you need to act quickly. You must present your case with complete honesty and candour to the USPTO to seek and obtain a Retroactive Foreign Filing Licence – that step may save your patent and your job.

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What is the Defence Trade Control Act and why should I know?

/ Bill McFarlane / Important Updates

Did you know that sending an email overseas may find you in breach of the Defence Trade Control Act 2012 and that you will be personally liable? Did you know that a penalty for such an act without a licence includes imprisonment?

Australia takes seriously its international counter proliferation obligations, using Australian export control laws to ensure Australia exports responsibly. Australia’s export control policies are in place to enable the export of defence and strategic goods where it is consistent with Australia’s national interests and international obligations.

The Defence Export Control Office (DECO) is the government entity that supervises these obligations as defined in a number of Acts and the one that is the subject of this article is the Defence Trade Controls Act 2012. The DECO web site, from which passages of this article are included, is http://www.defence.gov.au/DECO/Notices.asp#N2 .

The Defence Export Control Office (DECO) is responsible to the Minister for Defence for regulating the export of defence and strategic goods and technologies and importantly for you and the patent attorney profession this includes the export of information about controlled goods and technologies by way of electronic email.

The implementation date for the application of this Act is 17 May 2015, so you have plenty of time to set procedures in place in your working environment so that you, your staff or colleagues are not going to fall foul of this Act.

Thus, the inclusion of such information in an academic paper, patent specification or even an email containing such information, sent overseas or copied to someone, such as a fellow researcher or patent attorney overseas, is prohibited unless a license to do so is obtained before the act of export. It does not matter to where overseas the export of the information is made, so it does not matter that it may only be sent to someone in what most would consider an allied nation such as the United States of America.

Interestingly, an email containing the same information sent and received within Australia is not an export.

More specifically if you want to know whether the information is of the type that MUST be licensed before exportation, the first point of enquiry is the Defence and Strategic Goods List (DSGL) http://www.defence.gov.au/DECO/DSGL.asp .

This list contains all controlled items in relation to the arms control treaties and international export control regimes to which Australia is committed, and identifies specific Australian goods and technologies. The important issue is to realise that information that discloses certain technical details of these goods and technologies is information subject to the Defence Export Controls Act 2012.

The DSGL is made up of two parts.

Part One covers defence and related goods – these are goods and technologies designed or adapted for use by armed forces or goods that are inherently lethal.  These goods include:

  • military goods – goods or technology designed or adapted for military purposes; and
  • non-military lethal goods – equipment that is inherently lethal, incapacitating or destructive such as non-military firearms, non-military ammunition and commercial explosives and initiators.

Part Two covers strategic goods and technologies developed for commercial needs but may be used as part of a military program, for the development or production of a military system or weapons of mass destruction. This is also known as the Dual-Use List.

This document is 361 pages long and unless you are continually required to deal in such matters, it has been a welcome initiative of DECO to provide a web interface to assist concerned and responsible persons to check if their goods or technology fall within its ambit. Thus it is important for academics, their administrators, inventors and patent attorneys to make the check and determine if a planned export will require a licence or at least a further discussion with DECO to determine the circumstances. The web site is http://www.defence.gov.au/deco/ .

DECO has indicated that every effort will be made to assess enquiries and applications within a reasonable time frame, but clearly, the earlier before the planned or intended export you conduct a check or contact DECO the better. It will be unrealistic to expect DECO, to properly assess your situation within hours or days if the type of information is not clearly identifiable as being a restricted export or requires authorisation of an export licence.

Once formalised, the progress of individual cases is closely monitored and reported to the applicant. Applicants are consulted early in the application process and throughout the process and are provided the opportunity to present all relevant information that can assist in making an assessment of the application for a licence or indeed the necessity for a licence. Where it is determined that an application requires inter-agency consultation, applicants are provided with written advice explaining the process and that advising time frames may extend beyond 35 days.

The export control systems in place and the types of goods and technology are continually evolving and must be constantly monitored and updated by DECO into the DSGL. Australia’s export control policies and procedures are therefore regularly reviewed to take account of changes in our strategic circumstances. Thus it is the responsibility of you and your patent attorney to check and recheck the DGSL or enquire with DECO as required.

As stated above the implementation date for the application of this Act is 17 May 2015, so now is the time to create procedures for you your working environment so that you, your staff or colleagues are not going to fall foul of this Act. DECO is relying on education as the main instrument of encouragement to Australians and punitive measures will not be taken. However, DECO has indicated that repeat and intentional export of such information will be met with the full force of this very important law.

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Inventive Mobile Phone Applications?

/ Bill McFarlane / Articles

There are a number of questions that arise when considering this issue. Some of them are fundamental issues: whether software related inventions in the mobile phone application space are patentable subject matter; should the patent be directed to a method or a device or a system; what needs to be included in a supporting patent specification; etc.?

First, what is a phone application? Well it can be a number of things but t ypically it is characterized by the existence of software designed to operate on a mobile platform, such as for example, a mobile phone but which also includes phablets, tablets and portable computer devices. The functionality of the software is merely a matter of the imagination of the developer. That functionality may include interaction between the user and the device only, or interaction of the user or the application with a remote server (which may be cloud based) while using or not using features included in the device such as GPS and accelerometer sensors. Easily overlooked is the specific software located at the server designed to do a number of things including interaction with the mobile platform and backend services such as a payment gateway; maintaining one or more databases, serving the user experience, serving data to purchasers of user data, etc.

Clearly, the functionality of the software may be patentable and claims to a method incorporating the minimum essential steps of the functionality may be available. A method claim patent will allow defense of the unauthorized copying of the functionality by an application that replicates that functionality even if there is no copying of the code – copying of the functionality is the key. It is unlikely that the device itself will be patentable as it is a known device. However, it may be that there is a special interaction of the software with one or more of the in-built mobile platform sensors. It may as also be that there is a special interaction of the application with a remote server and the combination of the application and the remote server is special. What is useful to understand, is that to prove infringement readily, every one of the steps of a method claim must be performed by a single entity. Therefore, it is necessary to create claims that represent the steps performed by either the mobile platform and/or the server.

It may be that there is a money making aspect of the application, e.g. the way the user pays for a digitally based service or virtual product. This can best be defined as a business method involving a system, a computer and/or computer software.

In some countries, the examples given above will not be patentable subject matter and in some countries the functionality alone, or a combination of hardware and software may be patentable. However, it is still necessary that the claimed invention is novel and non-obvious to those skilled in the art as is the case with any computer-related invention.

What needs consideration when reviewing the mobile application is an assessment of what is the essential function, that step or those steps, which provide the commercially valuable aspect of the business behind the mobile application. A flow chart of the process steps is useful, as is a critical review of: which steps are important; which are essential; which are not required; and those that provide essential as opposed to desirable functionality. It will also be useful to identify the smaller step elements that make up one or more of the larger steps. The level of abstraction required to describe the steps can be high and the use of concise and accurate language is useful. However, a more detailed description will need to be provided if there is to be a patent applied for. Some of the other readily available information includes user definition, wireframes, flow charts, screen shots, etc.  All this information will assist you and your Madderns attorney to explore the options available.

Of course, a patent is not the only Intellectual Property (IP) to consider, since copyright will automatically subsist in the code (source and machine code), with no formal application required although in the United States registration is possible and recommended. Yet further, if the server performs the commercially valuable functionality, it may be practical to treat that software as commercially confidential and thus a trade secret, since no user or competitor will be able to access that software. For many mobile applications, a unique and memorable trademark is the most important factor in a mobile application’s success. Note that eventually there will be a public release of the patent specification disclosing all of the important details of the invention and how to implement it.

With more than a million applications (apps) out there – is it worthwhile obtaining a patent for a mobile application? How long do you need the advantage of a patent, 6 months, a year or more? Is your idea useful to other mobile applications or mobile phone companies such that you will be able to license it to others? Well that is a commercial decision based on numerous factors. In my experience, the filing of a provisional patent that will last just one year usually provides enough time to make a better decision in light of the market and competition at the time.

As you should now better appreciate, the question of patentability of a mobile application is not unlike the question of whether a computer related invention is patentable.  What functionality is commercially important will determine the starting point of such a determination. You will also be able to consider and investigate whether the idea is already the subject of a patented. Consult with your attorney to discuss your mobile applications’ patentability and its trademark before it is offered on-line or offered in any form to others.

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