Archives for September 2010
Recent developments in the US concerning patent markings may have a significant effect on companies that are producing products which may be protected by way of a US patent.
The question here is: Are the patents still valid? If the patent in question has expired, do you still indicate the patent number on the packaging of the product? What if the mould that is used to produce the product still has the expired patent number on it?
Patent marking refers to an indication of the granted patent number on the product packaging. The main purpose of patent marking is to provide a notice to potential infringers that the product in question is protected by way of a patent or a pending patent application.
The GIORDANO saga continues! This case highlights that goodwill and reputation in a trademark do not extend merely to goods which are in the same class that the mark is used for, but also to goods having the “same description”.
The case involved Walton International Ltd (the appellant), one of the companies owned by Giordano Holdings of Hong Kong, which brought an opposition action against the registration of the mark “GIORDANO” in Class 9 by Yong Teng Hing B/S Hong Kong Trading Co. (the respondent). The appellant’s case was that the respondent was trying to ride on the mark’s reputation, goodwill and commercial advantage. When the opposition failed at the Trademark Registry level, the appellant appealed to the High Court. In 2007, the High Court dismissed the appellant’s case, stating that the respondent was the true owner of the mark, as they were the first user of the mark for Class 9 products (optical goods, sunglasses, etc) in Malaysia and that the appellant had never applied for the registration of the mark “GIORDANO” in Class 9.
The Applicants, consisting of six correlated parties from India, had sued the registered owner of the mark “Ponni”, for obtaining the exclusive rights to the word “Ponni” by erroneous means. The six Applicants included the Agricultural and Processed Food Products Export Development Authority of India (APEDA), Tamil Nadu Agricultural University (TNAU), Indian rice farmers and two exporters; whereas the Respondent was Syarikat Faiza Sdn Bhd, who conducted their rice business under the name of “Beras Taj Mahal” and/or “Beras Faiza Herba Ponni” (hereinafter referred to as “Faiza”).
The Applicants contended that Faiza should not be given the exclusive rights to the word “Ponni” and that the entry of the mark in the Malaysian Register of Trade Marks was wrongly made. The Applicants asked for the mark to be expunged from the Registry, as the registered mark had, prior to proceedings, affected two of the six Applicants in exportingPonni rice into Malaysia.
Looking at the current global trend to go “green” or develop a more “eco-friendly” lifestyle, it has become quite clear that the world now recognizes the need to resolve or mitigate environmental impact and to conserve our natural environment and resources.
South Korea, the United Kingdom and the United States of America have recently enacted measures to speed up the prosecution of patent applications on green technology. The expected outcome of this is to expedite public access to green technology and encourage additional private investment in new green technology, which can only spur green technology innovation and in turn benefit us all.
In Korea, patent applications relating to green technology will undergo a complete substantive examination process within 1 month from the date of filing, making it the fastest in the world. It is referred to as the “super speed” examination system.