AUSTRAILIA AND SOUTH PACIFIC---- IP OVERVIEW OF THE REGION

By Cullens Patent & Trade Mark Attorneys in Australia,[Comprehensive Reports]

General

There are a variety of opinions as to what constitutes the South Pacific region but it is a common ground that the region is centered on the islands of the tropical Pacific Ocean. For the purposes of this discussion, we will focus on Australasia, Melanesia, Micronesia and Polynesia.


There are a large number of countries within the South Pacific region. The major countries are as follows:

1. Australasia includes Australia and New Zealand as well as the external territories of Australia.

2. Melanesia includes Papua New Guinea, Fiji, Solomon Islands, Vanuatu and the French territory of New Caledonia.

3. Micronesia includes a large number of small islands including Kiribati, Nauru, Palau, the Federated States of Micronesia as well as the US territories of Guam, Wake Island and the Northern Mariana islands.

4. Polynesia is generally held to include the US state of Hawaii and the US territory American Samoa as well as French Polynesia but the major independent economies in Polynesia are Samoa and Tonga.


The total population of the region is in the order of 35 million people spreading over approximately 8.5 km? of land area so the population intensity is very low with only 4.2 people per square kilometre. This population also includes approximately 1.4 million people living in Hawaii.


Australia and New Zealand are by far the largest economies present in the region and together account for approximately two thirds of the population in the region.


IP Overview

We will focus on the six major countries in the region, these being Australia, New Zealand, Papua New Guinea, Fiji, Samoa and Tonga, with only brief comments made about the protection in the other independent countries of the region.


Intellectual Property protection in the South Pacific region can be classified into three parts: indigenous intellectual property systems, inherited intellectual property laws from the UK, New Zealand, or Australia and national legislation.


Australia

Australia has a Trade Marks Act, Patents Act, Designs Act and Copyright Act.


Trade Marks

Registrable trade marks include words, devices, labels, aspects of packaging, colours, sounds, shapes, scents; provided that they are distinctive. Other types of registrable marks include certification marks, collective marks, and defensive marks.
Actual use of a trade mark is not required for filing; an intention to use is sufficient. Further, use of the trade mark is not required for renewal. However, a registered trade mark may be removed if unused for a continuous period of 3 years.


Each application undergoes a combined search and substantive examination before registration. Goods and services are classified according to the Nice Agreement.


There is a pre-registration opposition to registration process which can be exercised by third-parties. Once registered, the initial term of registration is 10 years from the date of application. Registered marks are renewable in terms of 10 years.


Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only.
It is also possible to designate Australia in an application filed under the Madrid Protocol.


Patents

There are two types of patents in Australia-standard patents and innovation patents. Their principal features are summarised below.

  • Standard Patents

Standard patents have a term of 20 years (the term of a pharmaceutical patent which meets specific requirements can be extended for up to 5 years).


Examination must be requested within a prescribed time period. A combined search and substantive examination is undertaken before grant, and there is a requirement for absolute (universal) novelty, and that the invention as claimed possesses an inventive step.


Once allowed, the application is advertised for third-party opposition purposes and, in the absence of opposition, a patent will be granted. There is also a mechanism for post-grant re-examination.


Renewal fees are payable annually to maintain an application or patent, commencing on the fourth anniversary of the filing date.
Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only.

 

  •  Innovation Patents (similar to Chinese Utility Model)

Innovation patents have a term of 8 years and are granted within 3 months from filing following formalities examination only before grant. An innovation patent can have a maximum of 5 claims.


Substantive examination (certification) is optional, but it is a prerequisite for enforcement of an innovation patent. During examination, the claimed invention must meet an absolute (universal) novelty requirement as well as possess an innovative step, which is a significantly lower threshold than the inventive step required for a standard patent. Third parties may request examination of a granted innovation patent.


Once certified, an innovation patent can be opposed by a third-party at any time after certification.


Annual renewals are payable, commencing on second anniversary of filing date.


Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only.


Industrial Designs

Once filed, a design application is subjected to formalities examination before registration which takes place within 3 months. Once registered, the design registration has an initial 5 year protection term, and is renewable once for another 5 years. Substantive examination (certification) is optional but is a prerequisite for the enforcement of a design registration.During examination, design must meet a relative novelty requirement (use in Australia, documentary publication anywhere).  Further the design must be new and distinctive, but it needs not be ornamental. Third-parties may request examination of a registered design.


A single renewal fee is payable by the 5th anniversary of filing to extend the registration to the maximum period of 10 years.


Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only. There is also a spare parts exemption to infringement.


New Zealand

New Zealand has a Trade Marks Act, Patents Act, Designs Act and a Copyright Act.


Trade Marks

Registrable trade marks include: devices, brands, headings, labels, tickets, names, signatures, words, letters, numerals, colours, sounds, shapes and scents provided that they are distinctive and can be represented graphically. Other types of registrable marks include certification marks and collective trade marks.


The classification of goods and services is under the Nice Agreement. It is also possible to designate New Zealand in an application filed under the Madrid Protocol.


Actual use of a trade mark is not required for filing; an intention to use is sufficient. Further, use of the trade mark is not required for renewal.  However, a registered trade mark may be removed if unused for a continuous period of 3 years.


Each application undergoes a combined search and substantive examination before registration.


Once registered, the initial term or registration is 10 years from the date of application. Registered marks are renewable in terms of 10 years.


Marking is optional, but recommended. Infringement proceedings may be taken in a court of law only. A registration may be revoked by the Commissioner or Court on application by an “aggrieved” third-party.


New Zealand trade marks are also effective in Cook Islands, Niue and Tokelau.


Patents

Standard patents have a term of 20 years.


Examination is automatic in New Zealand and combined search and substantive examination is undertaken before grant. Legislation to change the local novelty standard to an absolute novelty test and to introduce an inventive step test during examination has been drafted but has not yet entered into law.


Once allowed, the application is advertised for third-party opposition purposes and, in the absence of opposition, a patent will be granted.


Renewal fees are required to maintain a patent. The renewal fees are due on the 4th, 7th, 10th and 13th anniversaries of the filing date.


Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only.
New Zealand patents are also effective in Cook Islands, Niue and Tokelau.

Note: a new Patents Act is in preparation.


Industrial Designs

Once filed, a design application undergoes combined search and substantive examination prior to registration. A local novelty test is applied. Also, a design must be new or original and must not be dictated solely by function (must have some aesthetic properties).


Once registered, the design registration has an initial 5 years protection, and is renewable for 2 further terms of 5 years each.
Renewal fees is payable before each 5 year extension.


Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law. However an application for cancellation of registration by the Commissioner can be made by an interested third-party any time after sealing.


New Zealand designs are also effective in Cook Islands, Niue and Tokelau.


Papua New Guinea

Papua New Guinea has a Trade Marks Act, a Patents and an Industrial Designs Act, and a Copyright Act.


IP is administered in Papua New Guinea by the Intellectual Property Office of Papua New Guinea (IPOPNG) within the Investment Promotion Authority (IPA). IPOPNG is located in the national capital Port Mores by and is responsible for all elements of the IP system. There are a total of approximately 20 officers in IPOPNG.


Application Activity

Trade Marks: Approximately 800 applications per year and 3,000 renewal notifications per year. About 30% of filings are local and this proportion is increasing.


Patents: PNG joined the Patent Cooperation Treaty (PCT) in 2002 and national phase into PNG is possible although the mechanisms for doing so seem to be a little haphazard. The number of local patent applications that have been filed is low (that is fewer than 1,000) and few of these have been granted.


Industrial Designs: 4 or 5 applications are received per year with basically all being foreign filings. Very few industrial designs are currently registered.

Copyright: Automatic rights.


Enforcement

Enforcement of IP rights in PNG is a matter of concern with much infringement and counterfeit activity in the community. The trademarks legislation contain senforcement provisions and IPOPNG hopes to further develop proposals for enhanced enforcement measures in consultation with the National Intellectual Property Committee (NIPC).


Fiji

Fiji has a Trade Marks Act, Patents Act, and a Copyright Act.
In Fiji IP is administered by the Office of the Attorney General and Ministry of Justice. Trademarks and patents are handled within the Registration of Companies, Business
Names, Patents and Trademarks Office, and copyrights come under the Solicitor General’s responsibilities. There is no industrial designs law currently in Fiji.


At last count (in 2005), the office had 2 staff working full-time on trademarks and patents.


Application Activity

Trade Marks: Approximately 600-700 per year. Trademarks have been registered in Fiji since the1890s and there are some 34,000 entries in the Register. There are in the order of 1,000 renewals processed annually but it is unclear as to how many registrations are currently active. The office examines applications both formally and substantively, and there is currently no delay in processing. Due to lack of appropriate staff there is currently a backlog of approximately 100 cases of opposition to registration of trademarks, representing about 10 years delay in this area.
Patents: 1 or 2 applications per year. Fiji has had patent grant since 1800s, and around 1,000 patents have been granted in that period. No substantive examination is conducted locally; IP Australia currently provides examination services free of charge and the Fiji office performs formality examination and decides on the grant or otherwise.


Enforcement

The IP laws make provision for rights holders to enforce their IP, but lack of resources and training for police and other enforcement officials mean that there is little or no ex officio enforcement action. This observation applies even to copyright despite the apparently much greater level of sophistication and activity associated with its administration.


Samoa

Samoa has a Trade Marks Act, Patents Act, Industrial Designs Act and a Copyright Act.


The IP Office is within the Ministry of Commerce, Industry and Labour. It has dual responsibility for intellectual property and company registration. The resources are shared approximately equally between these responsibilities with approximately 3.5 officers working full-time on IP administration.


Application Activity

Trade Marks: Approximately 100-150 applications per year, of which 90-95% originate from overseas. Currently there is a delay of around 12 months in processing these applications. Applications are examined both as to formality requirements and to substantive registration requirements. Only trademark applications in respect of goods are receivable; there is as yet no provision for marks in respect of services. There are approximately 5,000 trademarks recorded but it is not clear how many of those are active registrations.


Patents: Approximately 5 per year, all originating from overseas. If filed within 12 months of a corresponding grant elsewhere the patent is granted in Samoa, subject only to formality requirements being met. There is no capacity in the IPO to conduct substantive examination of patent applications.


Industrial Designs: No applications received in last 8-10 years; small number of live registrations.


Enforcement

The IP laws make provision for rights holders to enforce their IP, but lack of resources and training for police and other enforcement officials mean that there is little or no ex officio enforcement action.


Tonga

Tonga has an Industrial Property Act and a Copyright Act.
In Tonga IP is administered within the Intellectual Property and Company Registration Office (IPCR) within the Ministry of Labour, Commerce and Industry.


Application Activity

Trade Marks: Approximately 50-60 per year. When the present Trademarks Act came into force in 2000, a process of re-registration was undertaken by the IPCR .


Patents: Approximately 5 per year. IP Australia provides substantive examination services and Tonga conducts the formalities examination and makes the final decision to grant the patent.


Industrial Designs: No applications have been received and there are no entries in the Designs Register.


Utility Models: No applications.


Enforcement

The IP laws make provision for rights holders to enforce their IP, but lack of resources and training for police and other enforcement officials mean that there is little or no capacity for ex officio enforcement action.


Other Countries in South Pacific Region

A secondary group of countries had adopted intellectual property laws in their entirety from the UK, New Zealand and Australia. Thus, the Cook Islands, Niue and Tokelau are subject to the Copyright Act 1962 (New Zealand), the Trademarks Act 1953 (New Zealand) and the Patent Act 1953 (New Zealand). Both Kiribati and Tuvalu have also adopted parts of the Copyright Act 1956 (United Kingdom). In Nauru, somewhat confusingly, the copyright law is English while the trademark law is Australian.


The only patent legislation that exists in Kiribati, Vanuatu, the Solomon Islands and Tuvalu is the Registration of UK Patent Act. Similarly, in these jurisdictions, the only trademark legislation is the Registration of United Kingdom Trade Marks Act. Therefore, these countries only recognise patent and trade mark rights that have already been registered in the UK. In Nauru, the situation is similar in relation to patent protection, recognising only patents already filed in Australia, the UK or the US.


Some countries in the region have national intellectual property legislation. The Federated States of Micronesia has a Copyright Act; Kiribati has a Copyright Ordinance; The Solomon Islands has a Copyright Act; and Tuvalu has a Copyright Ordinance.


Issues in IP in the South Pacific

1. Traditional Rights-Many Pacific Island countries are considering whether to introduce intellectual property legislation or to amend existing legislation to increase the protection provided to traditional knowledge of the country that is currently not adequately protected from the risk of exploitation of third parties. Many of the South Pacific island countries already have some form of protection for traditional rights and consideration needs to be paid towards these rights when filing applications for protection. This is particularly the case in terms of traditional remedies and also traditional or cultural signs or symbols.


2. Timeliness-As may be evident from the outline given above in relation to the national intellectual property offices of the smaller Pacific Island nations, many have small staffs, are subject to low budget allocations from government and generally, lack procedural systems to effectively process applications for intellectual property rights in those nations.


As a result, there are typically large application backlogs in most of the smaller Pacific Island countries.


3. Peculiarities-many of the South Pacific island nations apart from Australia and New Zealand have peculiarities in processing caused by the adoption of legislation from other, larger countries which are sometimes evident from the different sources of the law. Some countries in the South Pacific have a combination of national law, inherited law and traditional law which can complicate the protection process.


In summary, when considering protecting intellectual property in Australia and the South Pacific region, it is important to appoint an attorney with experience not only in the technical area, but also in the Australia and South Pacific region given the diversity of law in the different countries in the area and the particular issues in this geographic area particularly in relation to protection of traditional or cultural heritage.


 

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