New NZ Trade Marks Act
On 20 August 2003 New Zealand trade mark law received a major revamp with the introduction of the New Zealand Trade Marks Act 2002 ("The Act"). The Act and new Trade Mark Regulations introduce some major changes to existing New Zealand trade mark law, including:
- Multi-class applications and divisional applications;
- Existing trade mark registrations or applications for the same trade mark filed at the same time can be merged into a single trade mark registration/application, subject to certain conditions;
- Stricter enforcement of deadlines with no late extensions allowed;
- 10 year renewal period;
- Prohibition against registration of marks which are likely to offend significant sections of the community (including Maori);
- Reduction of the non-use period from five years to three years;
- Infringement of "Well Known" trade marks;
- Comparative advertising will not constitute trade mark infringement;
- The ability to remove trade marks which have become generic through general public use, rather than generic use in trade.
These changes provide a good opportunity for anyone who trades in New Zealand to review their trade mark portfolio and consider how they are using their trade marks in New Zealand. In conducting this review, owners may like to consider the following questions:
Do you own any New Zealand trade mark registrations/applications for the same trade mark registered at the same time?
If so, you may wish to merge those registrations or applications into a single multi-class registration or application, to simplify the administration of your New Zealand portfolio.
Have you checked how your trade marks are being used in New Zealand?
Under the Act, if a trade mark registration becomes a common product name in general public use, then the registration could be revoked. This is a shift from the current law in New Zealand and other countries (including Australia), all of which focus only upon generic use in the relevant trade. In New Zealand, the focus will shift to generic use of a mark by the general public. Accordingly, trade mark owners should actively monitor the use made of their trade marks in the public arena including dictionaries, newspapers, magazines and on the Internet. They should also ensure that liberal use is made of the symbols ® and ™ and that trade marks are used correctly.
Do any of your promotions use comparative advertising?
Under the new Act, comparative advertising will not constitute trade mark infringement. However, there is a qualification to this general rule, such that some comparative advertising in New Zealand will be treated as trade mark infringement. We recommend that any comparative advertising which is planned for New Zealand be cleared by us prior to use. As most Australian newspapers or magazines also circulate in New Zealand, any comparative advertising in those newspapers or magazines should also be reviewed.
Do any of your trade marks contain Maori words, images or symbols?
Under the Act, applications for trade marks which are likely to offend a significant section of the community, including Maori, may be objected to. In practice, a trade mark owner may find that their new distinctive trade mark is in fact a Maori word or symbol, which means that they may encounter this ground of refusal for registration.
Have you licensed the use of your trade mark in New Zealand?
Under the new Act, a registered licensee may be able to assign the right to use the trade mark to another party, without obtaining the trade mark owner's consent. As such, it is important that all trade mark owners review their license agreements, to ensure that they specifically prohibit any assignment of a licensee's interest in a trade mark.
Are you faced with current acceptance or opposition deadlines?
If so, then it will be very important to monitor all deadlines closely, especially those relating to registration of a trade mark, opposition, non-use or rectification actions. Under the new Act, if any deadlines are not complied with, then the opposition, application or opportunity to oppose will be lost or deemed abandoned.
Have you registered all of the trade marks which you use/intend to use in New Zealand?
We recommend that trade mark owners review their Australian portfolio against the marks which they have registered (or applied to register) in New Zealand, to ensure that they have taken steps to protect all of their relevant trade marks in New Zealand.