InIP: What's happening in intellectual property - November 2023

Your regular wrap-up of some of the world's leading and intriguing IP stories 6 min read

Federal Court finds Zoetis's pig vaccine patents invalid in Boehringer appeal

By Max Jones and Saye Kaeo Saylan

The recent decision of Justice Rofe of the Federal Court in Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119 illuminates the boundaries of what meets the threshold of an 'inventive step'. It also provides a reminder to patent applicants of the pitfalls of failing to disclose the best method of performing an invention, and the importance of properly containing claim scope.

Boehringer Ingelheim Animal Health USA Inc, in appealing a decision of the Delegate of the Commissioner of Patents, submitted that Zoetis Services LLC's three patent applications for pig vaccines were invalid on grounds including lack of inventive step, failure to support and sufficiently describe the claimed invention,  and failure to disclose the best method. Justice Rofe held that all but one of the claims in the three Zoetis applications were invalid.

The first claim of each application defined an immunogenic composition, and each claim was found to lack an inventive step because the vaccine would have been obvious to a person skilled in the art, in light of the common general knowledge and a prior art publication. In particular, Justice Rofe found that, due to the variable efficacy of existing vaccines at the priority date, a person skilled in the art would be motivated to look for an improved immunogenic composition by further developing technology that was tested in the prior art document, even though the small scale of testing meant that the results were not statistically significant.

In relation to best method, Justice Rofe found that Zoetis was aware of an experimental vaccine that contained specific concentrations of ingredients that were critical to achieving the benefits of the claimed immunogenic compositions. However, Zoetis's applications only disclosed broad ranges from which these preferable concentrations could not be discovered without significant research and testing. The applications would not relieve a skilled worker seeking to make the invention upon expiry of the patent from 'having to confront the blind alleys and pitfalls … already overcome by the patentee'. On that basis, the applications failed to disclose the best method of performing the invention.

Justice Rofe also found that certain claims in Zoetis's applications were not supported by the specifications, and that the specifications failed to disclose the invention in a manner 'clear and complete enough' for it to be performed by a skilled person. The relevant claims related to combining the immunogenic composition of the applications with additional antigens (and vaccines) that were not the subject of applications. Her Honour found that the applications failed to adequately address the difficulties of combining vaccines, so that the claimed monopoly was more extensive than the contribution to the art disclosed in each application.

It remains to be seen whether Zoetis will appeal the decision.

Wouldn't it be Nice? High Court refuses special leave to appeal in Energy Beverages v Cantarella

By Tim Allen, Tim Golder and Jacob Flynn

The High Court of Australia has refused special leave to appeal from a significant Full Federal Court decision concerning trade marks.

We previously reported on the Full Court's decision. That decision disregarded the practice (previously adopted by the Federal Court on several occasions) of referring to the Nice Classification when interpreting the scope of goods and services in respect of which a trade mark is registered. The Full Court held that 'coffee' as a beverage falls within the scope of 'non-alcoholic beverages' in class 32, despite coffee being specifically identified as a good in class 30 under the Nice Classification, which provides an international classification of goods and services applied for the registration of marks. The Nice Classification is based on a multilateral treaty administered by WIPO.

Like its predecessor, the Trade Marks Act 1995 (Cth) (TMA) adopts the Nice Classification as amended from time to time. Regulations made under the TMA require goods and / or services specified in a trade mark application to be grouped according to the appropriate classes. Under the TMA, any question arising as to the class in which goods or services are comprised is to be decided by the Registrar, and the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under the Act.

Unsurprisingly, Cantarella sought special leave to appeal the Full Court's decision. Leave was refused on the basis that the appeal had insufficient prospects of success.

In light of the Full Court's decision and the failed special leave application, businesses need to consider carefully the implications for trade marks they own or might be at risk of infringing where the goalposts for 'conflicting marks' may have shifted. Monopolies might be broader than previously thought. Registrations presumed valid may have some vulnerability. In filing new applications, descriptions of goods or services might, in limited circumstances, allow for additional breadth without additional classes, although the Registrar might review her approach to descriptions of goods and services in light of the Full Court's decision and the refusal of the leave application.

For validity of designs, 'It's what's on the inside that counts' … or is it? 

By Hamid Hamandi and Rob Vienet

In a recent decision regarding Apple Inc.'s design for an earphone case, Apple Inc [2020] ADO 2, the Registrar of Designs reaffirmed the potential for Statements of Newness and Distinctiveness (SoND) to influence an assessment of substantial similarity of a design application over the prior art base.

Apple's design application (the design), shown below, was assessed in view of a single prior art design (the prior art), where both presented substantially identical exteriors but the design showed an interior of the earphone case not shown in the prior art.

While the Registrar acknowledged this difference at the outset, they nonetheless remarked that this did not outweigh the similarities in terms of overall impression, for a number of reasons.

First, and somewhat uniquely, the Registrar considered that the 'familiar person' through which an assessment of substantial similarity was to be made was the general public, as earphone cases were ubiquitous among the public at large.

From that lens, they agreed with Apple's previous submissions that the case would regularly be opened and the interior hence visible to the familiar person in normal use and, therefore, that the interior does contribute to the design's overall impression.

However, the Registrar asserted that the design still had to be assessed as a whole, noting especially that no emphasis was placed on the interior by Apple when filing the application: eg through the use of the product name or, in particular, through the SoND.

Therefore, as no emphasis was placed on the interior anyway, the Registrar could not place more weight on the interior features in an assessment of substantial similarity and, hence, concluded that the design was substantially similar in overall impression to the prior art.

This decision again emphasises the importance of an appropriately tailored and carefully considered SoND and figure conventions when preparing and filing design applications.

Building distinctions: contrasting outcomes in Lego and Self Care

By Lena Balakrishnan and Rob Vienet

The New Zealand High Court recently considered a factual scenario in Zuru New Zealand Limited & Anor v Lego Juris A/S [2023] NZHC 1808 (the NZ case) that had similarities to the one the Australian High Court considered in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (see our previous report). However, the New Zealand High Court reached a different conclusion as to trade mark infringement, thereby paving the way for others to seek to distinguish Self Care in future matters. 

In the NZ case, the court found that use of the word 'LEGO' in the context of the statement shown below amounted to trade mark infringement under section 89(1) of the Trade Marks Act 2002 (NZ) (the NZ Act) but did not constitute passing off or contravene the Fair Trading Act 1986 (NZ) (the FTA).

In Australia and New Zealand, a registered trade mark is only infringed if the allegedly infringing sign is being used 'as a trade mark'. For example, in Self Care, the Australian High Court found that 'instant Botox® alternative' did not infringe BOTOX because there was no use as a trade mark.

In the NZ case, the court considered that the legal reasoning in Self Care was consistent with leading authorities in New Zealand. However, it held that Zuru did use LEGO as a trade mark, for the following main reasons:

• The word LEGO was followed immediately by the accepted symbol for a registered trade mark (®) (although this was also the case in Self Care);
• The word LEGO was displayed prominently on the packaging (whereas in Self Care, 'BOTOX' was used in much smaller font than the umbrella brands of 'FREEZEFRAME' and 'INHIBOX');
• The word LEGO was used at the beginning of the impugned statement (ie 'LEGO® BRICKS COMPATIBLE') rather than in the middle of the impugned statement (ie 'INSTANT BOTOX® ALTERNATIVE');
• the infringing toys were sold in the same stores as the registered owner's (ie Lego Juris A/S) LEGO branded toys (whereas the cosmetic products of Self Care and Allergan were sold and administered via different channels); and
• the word 'compatible' was not an express comparison with Lego's toys but, rather, suggested that the products are interchangeable. For this reason, Zuru was not able to successfully invoke the defence to infringement under s 94 of the NZ Act on the basis that its use of LEGO was for the purposes of comparative advertising.

As for Lego's allegations of passing off and the FTA, the court dismissed them on the basis that use of the word LEGO was not likely to confuse or deceive the relevant public, having regard to broader considerations such as the prominence of the 'MAX' trade mark and the absence of Lego's famous logo on Zuru's toys.

Ultimately, the NZ case is significant for a few reasons. In particular, it indicates that advertising will only be comparative under s94 of the NZ Act if it contains an express (and not inherent or implied) comparison between the advertiser's product and a competitor's. It also indicates that Australian authorities can be persuasive in New Zealand, even if the factual matrix leads to different outcomes.

Denim heavyweight takes on French fashion house 

By Stefan Ladd

Denim heavyweight Levi's has launched proceedings in the US against French fashion house Coperni, citing infringement of its trade mark rights in respect of the Levi's pocket tab and 'Arcuate' pocket stitching design. In particular, Levi's has challenged the use of branded tabs on a range of Coperni garments, which it says infringe and dilute the value of Levi's trade mark pocket tab.

As part of its complaint, Levi's has also taken issue with the sale by Coperni of unauthorised 'reworked' versions of Levi's garments that retain the Levi's tab and arcuate trade marks – which Levi's says is likely to cause consumer confusion.

Levi's has previously taken action against another French fashion house – the storied Yves Saint Laurent – over the use of allegedly infringing pocket tabs, although the matter was ultimately settled. Reworked Levi's products have also been the subject of litigation in Australia in Levi Strauss & Co v Wingate Marketing [1993] FCA 450 and its appeal (Wingate Marketing P/L v Levi Strauss & Co [1994] FCA 163), which in turn led to changes to Australian law being introduced under the Trade Marks Act 1995 (Cth).

Coperni has yet to file a formal response in this latest matter. Nonetheless, the case raises interesting and important issues for the fashion industry, where the line between homage and infringement can often be blurry (especially in the case of the 'reworked' garment). It is also a pertinent reminder of the value of seeking detailed IP advice at the outset of a project, to help mitigate against the risk of infringement claims arising down the line.