Patents
1) The term of all patents still in effect on January 1, 1995 has been extended to 20 years from their filing date and all patents granted after that date will have a similar 20-year term. The former provisions for extension of patents under certain conditions have been repealed.
2) The power of the Patent Office to reject applications on the ground of non-statutory subject matter have been restricted. The most significant change is that mixtures of substances for use as foods or medicines lacking a synergistic effect will no longer be per se unpatentable.
3) There is a reversal of the burden of proof in infringement actions relating to process claims for products of new processes.
2) The power of the Patent Office to reject applications on the ground of non-statutory subject matter have been restricted. The most significant change is that mixtures of substances for use as foods or medicines lacking a synergistic effect will no longer be per se unpatentable.
3) There is a reversal of the burden of proof in infringement actions relating to process claims for products of new processes.
Trademarks
1) The Trade Mark Amendments Act 1994 broadened the definition of a trademark to include any sign capable of being represented graphically and capable of distinguishing goods or services of one person from those of another person. A registrable mark may include distinctive shapes, such as bottles and containers, and may possibly extend to smells and sounds, if these are capable of being represented graphically.
2) Infringement rights have been extended, so that it would now be an infringement for a third party to use an identical or similar mark on goods or services, even if these are not included in the specification covered by the registration, provided that there is a likelihood of confusion or deception. Prior to this change in the law, an infringement would only exist if the use of the mark took place in relation to goods or services actually covered in the registration being infringed. The unauthorized audible use of another's registered trademark (for example in broadcast advertising) can now constitute infringement, which was not the case previously.
3) Controlled use by an unrecorded licensee will be deemed to be use by the trademark proprietor and, accordingly, evidence of such use can defeat an action for cancellation of the registration based on 5 years non-use. However, the registered user provisions remain in effect and should be observed to ensure protection of licensed trademarks.
4) It is no longer necessary for a defensive trademark to be an invented word and the registration of such a mark is available, provided that it is so sufficiently well-known that its use would cause it to be associated with the proprietor of the trademark; such a defensive registration is not vulnerable to attack on the ground of non-use.
5) The provisions in the Fair Trading Act enabling counterfeit goods to be seized by Customs have been abolished. Under the new provisions counterfeit goods will not be seized by Customs, unless the trademark is registered for the goods concerned and notice of the registration (which can remain in effect for a maximum period of 5 years) has been given to Customs. Counterfeit goods seized by Customs will be released within 2 weeks, unless the registered proprietor commences High Court proceedings and serves Customs within that time.
6) Under the transitional provisions, pending trademark applications that were not advertised prior to January 1, 1995 may be converted into applications under the new law by June 30, 1995.
2) Infringement rights have been extended, so that it would now be an infringement for a third party to use an identical or similar mark on goods or services, even if these are not included in the specification covered by the registration, provided that there is a likelihood of confusion or deception. Prior to this change in the law, an infringement would only exist if the use of the mark took place in relation to goods or services actually covered in the registration being infringed. The unauthorized audible use of another's registered trademark (for example in broadcast advertising) can now constitute infringement, which was not the case previously.
3) Controlled use by an unrecorded licensee will be deemed to be use by the trademark proprietor and, accordingly, evidence of such use can defeat an action for cancellation of the registration based on 5 years non-use. However, the registered user provisions remain in effect and should be observed to ensure protection of licensed trademarks.
4) It is no longer necessary for a defensive trademark to be an invented word and the registration of such a mark is available, provided that it is so sufficiently well-known that its use would cause it to be associated with the proprietor of the trademark; such a defensive registration is not vulnerable to attack on the ground of non-use.
5) The provisions in the Fair Trading Act enabling counterfeit goods to be seized by Customs have been abolished. Under the new provisions counterfeit goods will not be seized by Customs, unless the trademark is registered for the goods concerned and notice of the registration (which can remain in effect for a maximum period of 5 years) has been given to Customs. Counterfeit goods seized by Customs will be released within 2 weeks, unless the registered proprietor commences High Court proceedings and serves Customs within that time.
6) Under the transitional provisions, pending trademark applications that were not advertised prior to January 1, 1995 may be converted into applications under the new law by June 30, 1995.
Applicants whose marks have been or are likely to be refused under the old Act may therefore find it advantageous to file a request to have their applications examined under the new Act.
Copyright
1) Moral rights and performers' rights are established, although exceptions are made to the moral rights provision in respect of copyright for computer programs.
2) Case law treating computer programs as literary works is codified.
3) Databases are specifically protectible as "compilations".
2) Case law treating computer programs as literary works is codified.
3) Databases are specifically protectible as "compilations".
Designs
The term of protection for design works of "artistic craftsmanship" has been extended to 25 years.Semiconductor Chip Protection
A "layout design right" is created providing protection for up to 15 years from creation or 10 years from first exploitation.
April 1995 Index