25 February 2011

Central EU Patent System passed by EU Parliament


The European Patent Office is widely recognised as providing a high quality service for patent applicants. It provides a  single authority to examine patent applications which, once approved, can be granted in over 30 countries. However, it is necessary to take the granted European patent to each separate country and obtain translations, comply with local formalities and incur significant country by country expenses. Attempts to establish an EU wide system have foundered on the rocks of language issues and local self interest. All countries, however small, want patents which are enforceable in their country to be in one of their local languages. To perform such a set of translations across the 20 or so languages required to achieve this across the EU is prohibitively expensive. The current EPO grant process requires the patent claims to be translated in French and German.  While some countries have in the last few years simplified the processes it remains still a country by country grant process with corresponding bureaucratic expense. The EU parliament itself accepts that an EU wide patent at present can cost 10 times more than a comparable US patent, mainly because of the translation costs.

After years of struggle, 12 countries who are agreeable to a common patent system (including the UK, France, Germany, the Netherlands, and the Scandinavian countries) decided to form a procedure on an opt in basis – not all countries need to sign up, but those that do could have a common system for grant and renewal. Such a treaty arrangement required the approval of the EU Parliament, to ensure that the EU system as a whole was not undermined. The main objections, and in the end the only ones sustained, were from Italy and Spain, partly because they are the largest states who do not speak French or German.

As a result, the path is cleared for such a system. All EU countries other than Spain and Italy have indicated that they will opt in to the system, the detail of which is still to be finalised. This change will provide very large benefits for Australian applicants; it is expected to greatly reduce translation and renewal costs and so will increase the cost effectiveness of the European patent system. The procedure was approved on 15 February 2011.


by Peter Franke

14 February 2011

UGG – The little word that brings big trade mark disputes


A new year and a new federal court battle looms in the saga of UGG.

The UGG Boot is the sheepskin boot which always attracts attention. Some view the thing as a fashionable must-have item while others view it as a ridiculous fashion crisis. Whatever the case may be, claims for ownership of the brand are ruthless.

The term UGG is now accepted as being a generic term. However, trade mark rights can be attached to uniquely stylised logos which include the word.

Deckers Outdoor Corporation is a U.S. company which notoriously acquired a number of trade mark registrations and rights in various UGG marks and aggressively attempted to enforce those rights. A few years ago, certain marks owned by Deckers were successfully challenged on the basis of non-use. However, Deckers still own a number of other UGG registrations and continue to seek rights for other variations.

A new player in the UGG trade mark saga is Luda Productions, an Australian company which has been selling UGG boots for a significant number of years. Luda sought trade mark protection for a number of logos which include the word UGG.

Deckers challenged the registration of Luda’s marks in an opposition before IP Australia. The oppositions were dismissed. The key factors which influenced the decisions being that Luda were able to provide convincing evidence of prior use of their marks and Deckers failed to prove that they held a reputation in the marks in the Australian market at the time the marks were filed.



Deckers are not giving up and have filed for an appeal of the opposition decisions with the Australian Federal Court. It is likely the case will not be heard until late 2011, so stay tuned!



by Simon Ellis