Obama picks Moorhead grad for key post in U.S. patent office

FARGO – A Moorhead High School graduate who served as a national co-chairman of Lawyers for Obama last year has been picked by the president to be chief of staff of the U.S. Patent and Trademark Office.

Andrew C. Byrnes is a partner at the global law firm Covington & Burling LLP in Redwood Shores, Calif. He has practiced intellectual property law in the Silicon Valley for the past 16 years, representing technology companies mostly in patent matters.

In a phone interview Tuesday, Byrnes said he enjoyed his time in the private sector, and while he never ruled out public service, he didn’t actively pursue it.

“Following the president’s re-election, I really began considering what more I could do to help serve him and the country, and when this opportunity arose, I jumped at the chance to take it,” he said.

A native Californian, Byrnes was born in Los Angeles and moved with his family to Moorhead, Minn., when he was 11. He said he became interested in government and politics at an early age, recalling how in the summer of 1986 he dragged his junior high classmates to the campaign headquarters of now-U.S. Rep. Collin Peterson, D-Minn., to make campaign signs.

“I was not a typical junior high student in Moorhead, I’ll tell you that much,” he said, laughing.

At Moorhead High, Byrnes was involved in choir and theater. He graduated in 1990 and attended Stanford University in California, where he earned a degree in political science in 1994 and became interested in the law. He graduated magna cum laude from Harvard Law School in 1997 and returned to California to practice law in the Silicon Valley, focusing on patent work for tech firms.

Byrnes also has represented candidates, political committees, corporations and nonprofit organizations in election and political law matters, Covington & Burling’s website states. He’s a past co-chairman of the California Democratic Party’s Finance Committee and past chairman of the San Mateo County Democratic Party.

Byrnes isn’t the first Covington & Burling partner to land a position with the Obama administration. The firm counted Eric Holder among its partners before Obama named him attorney general in 2009.

At a time when major technology players such as Apple, Samsung and Motorola wage legal war against each other in patent disputes, Byrnes said people are focused on intellectual property issues as essential to American business and growth. He said he’s excited to join the Obama administration because the president and his team “understand how important it is that we have an intellectual property system that promotes and doesn’t hinder innovation.”

Byrnes will begin his new job Sept. 3 at the patent office headquarters in Alexandria, Va., with the official title of chief of staff in the Office of the Under Secretary of Commerce for Intellectual Property and director of the U.S. Patent & Trademark Office. He and his wife will keep their home in California and live on both coasts, he said.

Byrnes said he stays in touch with his Moorhead classmates via social media and still visits the Fargo-Moorhead area about once every five years. He was last here in March 2012 for the screening of a documentary film he produced, “The Power of Two,” during the Fargo Film Festival.

“I have tremendously fond memories of Moorhead and of Fargo-Moorhead and of the people there,” he said. “It really was a great place to grow up, and I wouldn’t have changed it for the world.”

 

http://www.grandforksherald.com/event/article/id/270666/group/homepage/

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Samsung, Chipotle, Espinel, Elekta: Intellectual Property (1)

Samsung Electronics Co. (005930) may not get the sort of presidential reprieve Apple Inc. (AAPL:US) won earlier this month from an order limiting U.S. imports of some smartphones and tablet computers.

Samsung can’t make the public-policy arguments Apple used to sway President Barack Obama’s administration, which vetoed an import ban ordered by the U.S. International Trade Commission on certain iPhone 4 and iPad 2 models, according to lawyers and analysts. That makes it more likely a separate ban ordered on some Samsung products Aug. 9 will take effect after a presidential review period ends in October.

Apple could show its case dovetailed with the administration’s expressed interest in limiting the power of patents underlying fundamental technology used across an industry. Samsung’s products were ordered banned Aug. 9 for infringing two Apple patents on features that differentiate one phone from another — an issue between the two companies that doesn’t involve a widely used standard.

Samsung, the world’s largest smartphone maker, was ordered to stop selling phones and tablet devices that infringe Apple patents for multitouch technology and headphone jack detection.

The commission said Samsung products including Continuum and Transform models infringe the headphone jack patent, while the Galaxy Tab 7.0 tablet computer and Galaxy S II — the precursor to Samsung’s top-selling Galaxy S4 — do not.

The decision must be reviewed by U.S. Trade Representative Michael Froman, who is designated by the president to review ITC bans.

In his Aug. 3 letter stopping the import ban on certain older iPhones and iPads, Froman said he based his decision on Samsung’s ownership of standards patents being at the core of the case. Obama’s administration has expressed concerns that “potential harms” can result if patent holders use those as leverage against competitors, he said.

Froman repeated guidelines sent to the agency in January by the U.S. Justice Department and U.S. Patent and Trademark Office. He didn’t say whether he believed Samsung had misused its patents that relate to standards for how devices transmit data.

The administration could veto the Samsung import ban to push the two companies into ending their global litigation that’s lasted more than two years and cost hundreds of millions of dollars, said Jung Dong Joon, a patent lawyer with SU Intellectual Property.

The administration, by not blocking the Samsung ban, could open itself up to criticism that it was favoring an American company over a Korean one.

“The U.S. administration can’t just unconditionally use its power to veto the import ban on Apple’s products alone,” said Lee Sun Tae, an analyst at Seoul-based NH Investment & Securities. “Obama may issue the reprieve again for Samsung, and if not, it will only bring up even bigger international conflict.”

Trademark

Chipotle, Jack in the Box Settle Dispute Over ‘Chipotle’ Mark

Chipotle Mexican Grill Inc. (CMG:US) and Jack in the Box Inc. (JACK:US) settled a trademark dispute over the term “chipotle,” according to an Aug. 7 court filing. Terms weren’t disclosed.

Denver-based Chipotle sued Jack in the Box in a Colorado federal court in September objecting to the fast-food chain’s use of “Chipotle” and “Chipotload” in connection with a chicken club sandwich menu item. Chipotle, which has been in business since 1993, registered its first “Chipotle” trademark in 1998. A chipotle is a smoke-dried jalapeno chili pepper commonly used in Mexican food.

Chipotle claimed that Jack in the Box was trying to trade on the Mexican-themed chain’s fame through its use of the term, and that the public would probably assume falsely that an affiliation existed between the two entities.

Chipotle asked the court to bar San Diego-based Jack in the Box from using “Chipotle” in connection with its products, and for awards of money damages, attorney fees and litigation costs.

The case is Chipotle Mexican Grill Inc. v. Jack in the Box Inc. (JACK:US), 12-cv-02511, U.S. District Court, District of Colorado (Denver).

Copyright

‘Copyright Czar’ Victoria Espinel Departs From White House Job

Victoria Espinel, the Obama administration’s “copyright czar,” has left her post after four years, according to the Hollywood Reporter.

Espinel, who had widespread support from the content industries, helped develop strategies for intellectual-property policies and actions, the publication reported.

She came to her post from the Office of the U.S. Trade Representative and is a graduate of Georgetown University’s law school, according to the Hollywood Reporter.

In addition to her responsibilities with copyright issues, Espinel was involved in the development of the “America Invents Act,” a comprehensive overhaul of U.S. patent law, the newspaper reported.

E-Book Sellers to Share Customer Data With Anti-Piracy Group

The BREIN Foundation, a Dutch anti-piracy organization, will work with digital-book sellers to develop a system to identify customers who share their content on the Internet, the TorrentFreak anti-copyright news website reported.

Under the proposed system, if digital books show up on BitTorrent file-sharing networks, BREIN will be able to match embedded digital watermarks in the books to the customer who bought them, TorrentFreak reported.

Customers will be informed at the point of sale that this data will be shared if they attempt unauthorized sharing of the content, according to TorrentFreak.

Book vendors will be required to store customer transaction data and make it available to BREIN and copyright holders for a minimum of two years, TorrentFreak reported.

Trade Secrets/Industrial Espionage

Imax Brings Trade Secrets Case to California State Court

Imax Corp. (IMAX:US), the Canadian producer of large-screen film projection systems, sued a competitor in state court in Los Angeles for trade secret misappropriation.

Imax sued the same defendant in federal court on June 26. Mississauga, Ontario-based Imax said it voluntarily dismissed that case against GDC Technology LLC of Burbank, California, because of the “complex and apparently interwoven corporate relationships with and among the defendants.” GDC didn’t respond to the federal complaint, Imax said.

Imax claims a former employee stole proprietary technologies related to large-format digital projection systems and film conversion. The ex-employee allegedly provided the technology to a Chinese company where acted as chief engineer.

GDC acquired the trade secrets through its relationships with the Chinese competitor, Imax claims. Imax said it sued the ex-employee in both Canada and China and uncovered “voluminous conclusive proof” of the thefts, which included the source code for Imax’s 2D to 3D conversion process.

The ex-employee remains “an international fugitive,” Imax said. He worked for the Canadian company as a software engineer from July 1999 until he was terminated in November 2009, according to court papers. While working at Imax, he signed a confidentiality agreement, Imax said.

Imax said the ex-employee, while he still worked for Imax, formed a Chinese company that also provides projection technology. It was impossible for the new company to have developed the necessary technology independently, Imax said.

After he was terminated by Imax, the ex-employee allegedly fled to China and started a company known as Dmax, to compete with Imax, according to the complaint. The Chinese company and the ex-employee aren’t named defendants in this case.

Imax said that GDC has acquired and is using the Canadian company’s trade secrets in its large-screen format technology. It said GDC hasn’t responded to a cease-and-desist letter and continues its unauthorized use of the Imax trade secrets.

GDC didn’t respond immediately to an e-mailed request for comment on the suit.

Imax asked the court for awards of money damages, “reasonable royalties” for use of its trade secrets, extra damages to punish GDC for its actions and for awards of litigation costs and attorney fees.

The case is Imax Corp. (IMX) v. GDC Technology (USA) LLC, BC518132, California Superior Court, Los Angeles County (Los Angeles). The federal case was Imax Corp. v. GDC Technology (USA) LLC, 13-cv-04640, U.S. District Court, Central District of California (Los Angeles).

Elekta Says Trade Secrets Case Brought by Varian Is Settled

Elekta AB (EKTAB), Swedish maker of the Gamma knife and other cancer treatment devices and technologies, said it resolved a trade-secrets dispute with Varian Medical Systems Inc. (VAR:US) of Palo Alto, California.

Varian sued Elekta in Texas state court last August, claiming that two former Varian employees brought company trade secrets with them to their new jobs with Elekta.

Terms of the settlement weren’t disclosed by Elekta in a statement. Spencer Sias, a Varian spokesman, confirmed that the case had settled.

IP Moves

Sheppard Mullin Expands IP Practice With Foley & Lardner Hire

Sheppard Mullin Richter & Hampton LLP hired Lorna Tanner for its intellectual-property practice, the Los Angeles-based firm said in a statement.

Tanner, who does patent acquisition and portfolio management work, joins from Milwaukee’s Foley & Lardner LLP. She has represented clients in the pharmaceutical, life science and medical-device industries, with an emphasis on pharmaceutically active small molecules.

She has an undergraduate degree from the University of California at Berkeley and a law degree from Santa Clara University.

 

http://www.businessweek.com/news/2013-08-14/samsung-chipotle-espinel-imax-elekta-intellectual-property#p2

Samsung Seeks Galaxy Gear Smart Watch Trademarks In US, Korea

Seoul: Samsung Electronics has applied for US and South Korean trademarks for a watch that connects to the Internet in the latest sign that consumer technology companies see wearable devices as the future of their business.

Samsung described “Samsung Galaxy Gear” as a wearable digital electronic device in the form of a wristwatch, wrist band or bangle in its July 29 application with US Patent and Trademark Office. A month earlier, it applied for a “Samsung Gear” trademark in South Korea.

The trademark applications did not show the shape of the products. But drawings from a Samsung design patent approved in May show a watch-like design with a flexible screen that curves around the wrist.

The US trademark application said the device will be “capable of providing access to the Internet, for sending and receiving phone calls, electronic mails and messages” as well as “for keeping track of or managing personal information.

“The trademark filings in the US and in South Korea show that Samsung is deep in preparations for what tech industry experts expect will be a new generation of mobile technology that dramatically expands the utility of single-function objects such as watches and glasses. The South Korean consumer electronics giant was caught flatfooted by Apple’s invention of the smartphone but through what turned out to be a legally risky strategy of imitation was able to capture a dominant share of the global smartphone market within a few years.

Apple applied June 3 for a trademark in Japan for “iWatch.” Industry watchers have long speculated that Apple is working on a smart watch that uses a version of the operating system that powers the iPhone and iPad. The company has not confirmed those rumors but CEO Tim Cook has hinted it may be developing a wearable computing device.

Google is testing an early version of Internet-connected spectacles called Glass. It uses a small screen above the right eye that displays information and imagery retrieved from the Internet.

The South Korean patent office said the Gear trademark will not be approved this year as it takes seven to eight months to start reviewing applications due to a waiting list. Samsung applied for the South Korean trademark on June 21.

It was not clear if Samsung would use the “Samsung Gear” trademark for a Smart Watch. The trademark application covers 38 possible products including mobile telephones, bracelets, glasses and software interfaces that monitor human vital signs.

South Korea’s patent office said in June that Samsung had patented watch designs in which more than three quarters of the device is covered by a flexible display that curves around the wrist. Illustrations showed ‘back’ and ‘home’ buttons at the bottom of the screen. Another illustration shows a rectangular screen with an edge that tapers toward the top.

The product is made of metal, synthetic and glass materials, Samsung’s patent document said.

Samsung executive vice president Lee Young Hee said in March interview with Bloomberg that the company’s mobile division has been working on a smart watch. Samsung declined to confirm the report then.

Company spokeswoman Chenny Kim declined to comment on the patent applications.

 

 

http://www.authintmail.com/news/science/tech/samsung-seeks-galaxy-gear-smart-watch-trademarks-us-korea?nopaging=1

CIPC says ‘updated’ electronic filing system back online

THE Companies and Intellectual Property Commission (CIPC) says it has successfully implemented its updated electronic annual return filing system after shutting it down for a month to effect “substantial programming changes”.

The CIPC had been plagued by system problems earlier in 2013 and acknowledged the frustration and uncertainty this caused. It also assured businesses that it would not deregister any entities before the end of June.

On Tuesday, the commission said penalties for late filing were waived during the period the system was down, but companies that were due to file in July should file on or before September 30, as penalties would apply thereafter.

All companies and close corporations are required by law to file their annual returns with the CIPC. This serves to confirm whether or not a company or close corporation is still in business, and whether or not it will still be in business in the foreseeable future.

Strategic communications manager Karin Coode said within the first 24 hours of the system going live, more than 8,000 annual returns were successfully lodged, which is more than four times the number of lodgments a day previously.

She said by Monday more than 31,000 annual returns had been lodged successfully.

However, not all the system glitches have been fixed as some annual return filings are still reflected as unpaid even when they have been paid.

“CIPC is aware of this data issue challenge and is working on it. The percentage of enquiries relating to this is very small, and minimal enquiries have been received since launching the new web service,” Ms Coode said.

The commission has been installing additional servers and in April it started work on an improved backup and archiving system. It is hoped these changes will improve system performance and security.

 

http://www.bdlive.co.za/business/2013/08/13/cipc-says-updated-electronic-filing-system-back-online

Mobiveil Announces the Availability of All Key IP Components and Subsystem for an Integrated NVM Express Based PCIe-SSD Solution

MILPITAS, CALIF., AUG. 13, 2013 — /PRNewswire/ — Mobiveil, a leading silicon intellectual property and platform solution provider, today announced the availability of all key IP components for an integrated NVM Express based Solid State Drive (SSD) solution. SSD fills the increasing gap in the price/performance of DRAM and hard drives. This New NVM Express Controller IP provides FPGA and SOC (system on chip) designers a proven solution to shorten their time to market.

At the center of its Integrated PCIe based flash controller solution, Mobiveil offers a highly configurable and feature rich NVM Express controller IP core (UNEX) compliant with NVMe specification version 1.1.  UNEX controller is available with AXI interface for easy integration in to FPGAs and SoCs targeting high performance SSD solutions.  Other IP components in the subsystem include highly configurable Silicon proven PCI Express Gen3 (GPEX), DDR4/3 and ONFI Controllers.  To enable faster product development for its customers, Mobiveil with its overall IC and System expertise also offers a complete FPGA development platform with board support package and low level drivers to validate the solution against their user applications.

Ravi Thummarukudy, CEO of Mobiveil, said, “PCI Express based SSDs offer superior performance as they can be directly interfaced with the host processor. The PCIe based SSD approach helps overcome the performance and processing overheads and enables the use of standard drivers removing the hassles resulting from proprietary driver definitions that causes OEMs to spend unnecessary time in device qualification. With the software infrastructure for NVM embedded in the operating systems already, it offers a seamless integration into many products including servers and tablets.”

On Mobiveil’s integrated PCIe based SSD solution, he added, “With our IP and System level capabilities, we provide a one-stop-shop solution, where customers can leverage our configurable IP solutions catering to their exact performance needs in terms of power optimization, reduced latency, high throughput and low silicon footprint. Our Gen 3 PCIe controller enables our SSD solution to interoperate with host side implementations with support for up to 16 lanes.”

“Standard compliant IP will enable interoperability between products and increase the pace of adoption of NVM Express technology in the fast growing SSD market,” said Amber Huffman, chairperson for the NVM Express Workgroup and senior principal engineer, Intel Storage Technologies Group. “The NVM Express Workgroup is pleased that Mobiveil is announcing the availability of NVM Express IP that will help designers accelerate their product development.”

Mobiveil’s NVMe compliant UNEX controller supports host memory page sizes of up to 128MB, provides well defined and highly efficient command interface for local processors, provides configurability for a number of IO queues and associated depth, and supports all optional NVM Express administrative and I/O commands. It provides highly efficient DMA Engine for performance critical IO operations with support for both PRP and SGL based Host memory accesses.

About Mobiveil

Mobiveil is a fast-growing Technology company that specializes in creation of Intellectual Properties, Frameworks and Solutions for the Networking, Enterprise and Device Mobility markets. The Mobiveil team leverages decades of experience in delivering high-quality, production-proven, high-speed serial interconnect Silicon IP cores and custom and standard form factor hardware boards to leading customers worldwide. Mobiveil is headquartered in the Silicon Valley with engineering development centers located in Milpitas, CA, Chennai and Bangalore, India, and sales offices and representatives located in US, Europe, Israel, Japan, Taiwan and People Republic of China.

 

GI certification sought for Thai silk

Thailand has requested Geographical Indication (GI) certification for Thai silk from Vietnam to increase recognition for Thai handicrafts in the international market.

Pajchima Tanasanti, director-general of the Intellectual Property Department, yesterday said the agency had requested GI certification from Vietnam’s National Office of Intellectual Property.

“Thai silk, which is produced in the Northeast of Thailand, has a unique texture. GI certification will not only help promote the fame of Thai silk, but also result in added value for farmers and producers,” she said.

She said the department had not sought GI certification for Thai silk in the European Union, as such moves had until now been focused on agricultural products.

If Thai silk received GI approval from Vietnam, it would be the first Thai handicraft product to receive such certification from abroad, she added.

The development and promotion of raw Thai silk is one of Her Majesty the Queen’s initiatives to help farmers.

The production process has been adopted from local wisdom, and takes place largely in the Northeast of the Kingdom.

Three of the 35 products that have received GI certification by the Vietnamese authorities are non-indigenous. Peruvian pisco cognac and Scotch whisky are among them.

Meanwhile, Vietnam has requested GI certification for its Buon Ma Thuot coffee in Thailand, making it the first product from another ASEAN country to be the subject of such an approach in the Kingdom.

Pajchima said her department would carefully study whether the product should be granted certification.

Muzz Buzz all a jitta : the Australasian intellectual property market – a bridge over the Tasman too far?

“In 2013, it can hardly be doubted that New Zealand and Australia may, for the purposes of enforcing intellectual property rights, be regarded as one market.”

Despite many strides made towards closer economic relations between New Zealand and Australia, the words of Justice Toogood above in the case of Muzz Buzz Franchising Pty Limited v JB Holdings (2010) Limited [2013] NZHC 159 may come as a surprise to many.

The Muzz Buzz case concerned an Australian drive-through coffee outlet franchise business, “Muzz Buzz”, established in Western Australia in 2002, and its New Zealand foe, “Jitta Buzz”, which set up a similar business in Auckland in 2010.

From 2004 onwards the Muzz Buzz business had expanded through parts of Australia, but a substantial majority of its outlets (36 out of 51) remained in Western Australia. Although Muzz Buzz registered trade marks in New Zealand in 2004 and 2007, it was not until August 2011 that a master franchise for Muzz Buzz in New Zealand was granted.

Meanwhile, in 2010, Mr and Mrs Christie opened their first Jitta Buzz drive through coffee outlet in Auckland. Jitta Buzz adopted a similar get up to the Muzz Buzz outlets and the Christies created a web page with a very similar content and look. The Christies denied that they had in any way copied the Muzz Buzz brand or ‘look’, essentially claiming that any similarities were coincidence. Toogood J was not impressed with this evidence, finding in particular that Mr Christie’s denials that he had copied the Muzz Buzz website “offended commonsense”. It was clear that his finding that Mr Christie had been untruthful in that respect also influenced his view as to the credibility of Mr Christie’s explanation as to how the name and branding of Jitta Buzz had come about. He concluded that the success of Muzz Buzz in Western Australia (which Mr Christie admitted he was aware of) must have led them to the conclusion that the branding and marketing strategy worked, and that they had decided to appropriate it to themselves for use in New Zealand by copying the essential elements of the brand.

While the judgment also deals with copyright and trade mark infringement, it is the findings in relation to passing off which is perhaps of most interest. The general requirements for passing off are well established and can be summarised as follows:

  • The plaintiff must show goodwill in the relevant market;
  • There must be a misrepresentation by the defendant, likely to lead the public to believe there is a connection between its goods and/or services and the plaintiff;
  • The plaintiff must have suffered, or be likely to suffer, damage as a result of the misrepresentation.

The problem faced by Muzz Buzz was that they had not traded in New Zealand before Jitta Buzz started business in 2010. Jitta Buzz therefore argued that they had no goodwill in New Zealand at the relevant time. Indeed the only possible sources of reputation in New Zealand appeared to be generalised spill over of reputation from Australia (for example, as a result of New Zealanders visiting Australia and hearing of brand) and the existence of an Australian website and Facebook page accessible to New Zealanders.

In considering this issue, Toogood J turned to the judgments of the Court of Appeal in Dominion Rent a Car Ltd v Budget Rent A Car Systems (1970) Ltd [1987] 2 NZLR 395 (CA), in which it was called upon to consider the extent to which an Australian based company could establish goodwill in New Zealand. The judgments in that case clearly distinguished between reputation, which is not alone sufficient for passing off, and actionable goodwill.

While accepting that where a business has an international reputation extending to New Zealand, the reputation may be tantamount to goodwill, it appears clear from Dominion Rent a Car that some business connection with New Zealand is required, albeit minimal if the international reputation is sufficiently strong. The example of a large multinational such as MacDonalds comes to mind. Even before it entered New Zealand, it most likely had considerable reputation here and little in the way of actual activity would have been required to create goodwill. Cooke P went onto in Dominion Rent a Car to note progress made between New Zealand and Australia towards a common market and suggested that this should be part of the background which should influence the development of the common law in Australasia in this respect.

Having considered Cooke P’s comments in this regard, Toogood J commented:

“This discussion of the globalisation of the marketplace, particularly in relation to New Zealand and Australia, preceded the creation of the Internet and global access to the Web. In 2013, it can hardly be doubted that New Zealand and Australia may, for the purposes of enforcing intellectual property rights, be regarded as one market. This view adopts the indication given by Cooke P in Dominion Rent a Car Ltd over 25 years ago that the courts of New Zealand and Australia should be prepared as far as reasonably possible to recognise the progress that has been made towards a common market…. Nearly three decades on, there can be no doubt that the two markets are even more integrated now.”

On the basis of such market integration, Toogood J concluded that not much in the way of business activity would be required to establish the goodwill and reputation of Muzz Buzz in New Zealand and found that Muzz Buzz had satisfied that requirement.

So what were the activities of Muzz Buzz which allowed it to establish goodwill? Toogood J refers to the fact that Muzz Buzz had registered a trade mark here in 2007, a fact unlikely to have had any bearing on its reputation in New Zealand, and the fact that it “had a well established reputation in Western Australia and elsewhere, including New Zealand, through internet access”. Nowhere in the judgment are there any details of any evidence as to how Muzz Buzz’s internet presence reached New Zealand, or whether even a single New Zealander (other than the defendants) had viewed their web site. One certainly wonders what interest New Zealanders would have had in viewing a web site for a primarily Western Australian drive through coffee business, given that such services are inherently location based and unavailable in New Zealand.

The judge also appears to have been influenced by the confusion evidence of two witnesses. The first was the captain of the Perth Wildcats basketball team, a team sponsored by Muzz Buzz. He deposed that on seeing a Jitta Buzz outlet when visiting Auckland, he had thought it was associated with Muzz Buzz. While this might provide evidence of Muzz Buzz’s reputation in Western Australia, it appears to say little about its reputation here. The second witness was the general manager of Gull New Zealand, who gave evidence that he was familiar with Muzz Buzz, having been a frequent visitor to Perth, and had inspected a Muzz Buzz kiosk there because of the possibility of Gull Australia combining Muzz Buzz services with Gull outlets. Again, he clearly obtained knowledge of Muzz Buzz from a specific connection with the business in Western Australia. It seems unlikely that the experiences of either of these witnesses could be extended to the general New Zealand public.

It may not be doubted that the Australian and New Zealand markets are now far more integrated than 30 years ago. However, in the absence of specific evidence, it is, I submit, a considerable leap further to conclude that a drive through coffee business primarily based in Western Australia with no New Zealand outlets at the relevant time has a reputation or goodwill in New Zealand as a result of its Australian web site and/or Facebook page. The core of passing off is a misrepresentation to consumers of a connection with a pre-existing business, and such misrepresentation simply cannot occur if that business has no awareness, reputation or goodwill.

It is interesting to contrast the Muzz Buzz case with the increasingly stringent approach of the Trade Marks Commissioner, recently endorsed by the High Court in Unilever PLC v McPherson’s Consumer Products Pty Limited [2013] NZHC 1458, to establishing awareness of a mark in New Zealand for the purposes of preventing registration of a confusingly similar mark.

Section 17(1)(a) of the Trade Marks Act 2002 prevents a trade mark being registered where its use would be likely to deceive or cause confusion. This section is often used by third parties without a New Zealand trade mark registration to argue that use of a trade mark which is sought to be registered would cause confusion with their own mark, as used in the New Zealand market. In such circumstances, the third party is required to show an awareness of its mark in the market, before the onus shifts to the applicant to show there will be no confusion. It is generally accepted that the threshold for establishing awareness of a mark for this purpose is a low one, and not as high as the passing off threshold for establishing goodwill.

Nevertheless a number of recent cases have shown that the requirement to prove such awareness is not merely a technicality, and cannot be established on the basis of general assertion. Parties have been criticised for not providing details which might help to show such awareness, for example sales figures proportional to the market size, the number of New Zealanders having accessed relevant web sites and the readership, dates and circulation of publications carrying advertisements for the relevant brand.

It is these types of details which one might expect could have shown actual reputation of Muzz Buzz in New Zealand, yet they are noticeably absent from discussion in the judgment.

Whereto from here for the so-called single Australasian intellectual property market? Have we really reached the point of integration where an Australian company with no business activities in New Zealand can prevent a New Zealand business from using a similar name purely by virtue of the fact that it has an Australian web site, even if the services it offered are inherently restricted to a location in Australia?

No doubt the Internet has internationalised business exponentially since the days of Dominion Rent a Car. However it is worth reflecting on the fact that even in those thirty years, reputation does not appear, as a matter of course, to have transcended the Tasman. While there will be some Australian businesses not operating in New Zealand which still have reputation here, there are plenty more which do not. Businesses which are inherently location based seem less likely to make the leap, unless they have a strong element of tourist attraction. So if passing off is to continue as a tort based in misrepresentation, then it seems that it should still be necessary for an Australian business to prove reputation in New Zealand.

Let’s check back in another 30 years, but for now, in the absence of actual evidence, the assumption of reputation on the basis of the Internet seems somewhat misplaced.

 

http://www.lexology.com/library/detail.aspx?g=6a5f0e95-20fb-404d-9f03-c18f9a87e56a