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LW/OCT 2007/LAW587/475

UNIVERSITI TEKNOLOGI MARA FINAL EXAMINATION

COURSE COURSE CODE EXAMINATION TIME

: : : :

INTELLECTUAL PROPERTY II LAW587/475 OCTOBER 2007 3 HOURS

INSTRUCTIONS TO CANDIDATES 1. This question paper consists of THREE (3) parts : PART A (5 Questions) PART B (2 Questions) PART C (1 Question)

2.

Answer ALL questions in PART A, PART B and PART C in the Answer Booklet. Start each answer on a new page. Candidates are allowed to bring in the following statutes (unannotated): i) Patents Act 1983 ii) Trade Marks Act 1976 Do not bring any other material into the examination room unless permission is given by the invigilator. Please check to make sure that this examination pack consists of: i) the Question Paper ii) an Answer Booklet - provided by the Faculty

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DO NOT TURN THIS PAGE UNTIL YOU ARE TOLD TO DO SO

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LW/OCT 2007/LAW587/475

PART A QUESTION 1 Sam has a successful confectionery business. He had just introduced a new line of sweets shaped like a spaceship. These sweets are packed in boxes also shaped like spaceships with pictures of little spaceships all over it. Advise Sam whether he can register the trade mark "Spaceship" for his sweets and also the spaceship shaped box that contains the sweets. (6 marks)

QUESTION 2 Tim works for a company that manufactures and sells toiletries and personal hygiene products. The company intends to register the trade mark "Clorocks" for a new mouthwash that they have produced. By referring to relevant authorities, state whether the application is likely to succeed. (6 marks)

QUESTION 3 Starlight Pic uses the brand name "Cherish" for its ceiling fans sold in the U.S.A and the U.K. Amar applies to register the trade mark "Cherish" for his new line of traveling bags. Starlight has opposed the application of this trade mark on the grounds that its mark is a well known mark and must be protected in Malaysia. However, their trade mark is not registered in Malaysia. Can Starlight still protect its trade mark? What is a well known mark under the Trade Marks Act 1976? (6 marks)

QUESTION 4 Explain how the assessment of an 'inventive step' is carried out. What are the factors that could be taken into consideration to assist the examiner in the Patent Office in deciding whether an invention satisfies the requirement for non obviousness? (6 marks)

QUESTION 5 The general rule is that when information about an invention has already been disclosed to the public before the priority date of an application, the invention is deemed to be anticipated. Give two situations when such disclosure will not anticipate an invention the subject of a patent application. (6 marks)
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LW/OCT 2007/LAW587/475

PARTB QUESTION 1 Daffy Sdn Bhd has been manufacturing and selling toothpaste since 1980. In 1985, it applied for and obtained registration of the trade mark SWIRL for toothpaste. However, it has not been manufacturing its toothpaste for the past four years because it had been experiencing some problems with getting supplies of a special ingredient, ie a specific herb from Paraguay because of the internal political upheaval there. Only special herb can give the toothpaste its minty taste and special colour when processed in a particular way and this herb can only be obtained from its supplier in Paraguay. While waiting for supplies to get back to normal, it has instead gone into the manufacture of toothbrushes and selling them under the SWIRL brand. Last year it came to Daffy's notice that Nasem Products Bhd (Nasem) has been manufacturing and selling toothpaste under the trade mark SWIRL. When requested to cease doing so, Nasem told Daffy that because of Daffy's non use, it no longer has any right to prevent others from using the trade mark SWIRL. In fact, Nasem informs Daffy that it intends to apply for removal of Daffy's trade mark from the Register. Daffy is also concerned about another matter. It appears that due to the success of its advertising campaigns in the early nineties, members of the public are in the habit of using the word "SWIRL" to refer to toothpaste in general. While Daffy is happy to have the public associate toothpaste with its trade mark "SWIRL", it is worried that the validity of its registered trade mark might be affected. In fact, last year, two manufacturers have started using the word "SWIRL" instead of "toothpaste" to describe their products. The first manufacturer, whose trade mark is "Sugi" advertises its toothpaste as "Sugi Swirl", whereas the second manufacturer, whose trade mark is "Minty", advertises its toothpaste as "Minty Swirl". Advise Daffy on the above matters. (20 marks) QUESTION 2 It has been said that parallel importation of patented and trade marked goods should be allowed, to encourage free competition. With reference to the relevant provisions of the Trade Marks Act 1976, the Patents Act 1983 and relevant cases, discuss the extent to which parallel importation is allowed under the law. (20 marks)

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LW/OCT 2007/LAW587/475

PARTC QUESTION 1 FizziFast Laboratories Sdn Bhd (FizziFast) is the proprietor of a patent for a chemical compound, Urena, used as an ingredient in facial moisturizer. Urena is a whitening agent which is safe and effective to protect skin from ultra violet rays. Tests had shown that it can reduce wrinkles and fine lines on facial skin. The facial moisturizer produced by FizziFast is sold under the trade mark "Oil of Urena" and FizziFast is the proprietor of the trade mark. Due to vigorous advertising campaigns and road tour promotions, "Oil of Urena" became FizziFast's best seller and it decided to carry out more research on the compound. Its research team discovered that Urena is also very effective for the treatment of etopic eczema, a skin condition which is usually suffered by babies and toddlers. However, although excited and enthusiastic over the discovery, it was unsure of whether this invention could be protected since the patent on the compound Urena is due to expire in two years time. FizziFast seeks your advice on how this new invention could be patented. FizziFast is also concerned about two other matters. It appears that, one Songlap has been selling facial moisturizer in the market under the name "Eurena Oil". In addition, Songlap also sells tissue paper, talcum powder and soap under the brand name Eurena Oil. When asked by Fizzifast to withdraw his products from the market, Songlap refused, stating that his brand is different from Fizzifast. Another person, Eksyen, set up a beauty salon in Shah Alam and called it "House of Urena Beauty and Spa". FizziFast had never entered into any agreements for its product to be endorsed by anyone. Advise FizziFast whether any action can be taken against Songlap and Eksyen under the Trade Marks Act 1976 or under common law. (30 marks)

END OF QUESTION PAPER

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