Category: Trade Marks

Banksy Decision Highlights the Importance of Trade Mark Usage and Filing in Good Faith

A recent decision around a trade mark application from the street-artist Banksy highlights the importance of usage and filing in good faith for trade mark applications.

 

What is a Trade Mark?

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

Usage Requirement

It is a basic principle of trade marks that a connection exists between a trader and the goods and services they provide, and that there is no such connection if the mark is not used.  To remain valid, trade marks must therefore be used in the course of trade in relation to the goods and services specified in the scope of the right.

In New Zealand, a continuous period of non-use of three years or more may be accepted as grounds for revocation of a registered trade mark.

 

Good Faith Requirement

Trade mark registration can also be refused or invalidated if the application was made in bad faith.  In this context, bad faith relates to having unfair intentions when filing the application, and may include:

  • Using the trade mark for purposes other than the intended function of a trade mark to act as an indicator as to the origin of goods or services
  • The scope of protection having the effect of introducing unfair competition in the market
  • Prior knowledge of an identical or similar third-party mark, that your mark may be confused with

There has to be a genuine intention to use the trade mark appropriately at the time of making of the application.

 

Banksy Case and EUIPO Decision

“Flower Thrower” is one of Banksy’s most recognisable works.  Depicting a masked man in the act of throwing a bunch of flowers, it first appeared in 2003, and has been used and reproduced, as has much of his art, in a variety of settings.  In 2014, Banksy’s representatives made a successful application to trade mark the Flower Thrower in the European Union.

In 2019, a greeting’s card company, Full Colour Black, which often uses Banksy’s artworks on their products, started an invalidity action against the mark, on the grounds that the registered image had never been intended to be used as a trade mark in the first place.  Later that year, Banksy created an online gift shop and shop front, Gross Domestic Product, in an attempt to comply with EU trade mark law by showing use of the contested mark.

Earlier this month (September 2020), the European Union Intellectual Property Office (EUIPO) Cancellation Division ruled against Banksy and that the trade mark should be declared invalid.  They found that, at the time of filing his application, he had no intention to use the mark as a trade mark for the commercialisation of goods or services, and that his shop had only been set up in response to the invalidity action.

They also found that the trade mark application had been made to avoid using copyright laws to protect his works.  Enforcing a breach of copyright would require Banksy to reveal his true identity, whereas trade marks can be owned and enforced through a third-party representative.

Trade marks are an important, well defined, and valuable form of intellectual property, with clear differences from other types of IP right such as copyright, patents, designs, geographical indications etc.  A registered brand is a valuable business asset that indicates the origin and quality of the goods and services a business provides.

This decision highlights the importance for any business, big or small, to protect, manage and enforce their intellectual property appropriately.

Alistair Curson

 

References

Angelopoulou SL. (2020, September 18). “Banksy loses trademark legal battle with greeting-card company while his identity remains a mystery”. Retrieved September 22, 2020, from: https://www.designboom.com/art/banksy-loses-trademark-legal-battle-graffiti-greeting-cards-company-09-18-2020/

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Bakare L. (2020, September 17). “Banksy trademark ‘at risk’ after street artist loses legal battle”. Retrieved September 22, 2020, from: https://www.theguardian.com/artanddesign/2020/sep/17/banksy-trademark-risk-street-artist-loses-legal-battle-flower-thrower-graffiti

BBC. (2020, September 17). “Banksy loses battle with greetings card firm over ‘flower bomber’ trademark”. Retrieved September 22, 2020, from: https://www.bbc.com/news/entertainment-arts-54189113

Bonadio E. (2019, October 12). “Banksy’s trademark battle exposes a huge hypocrisy in his anti-copyright views”. Retrieved September 22, 2020, from: https://qz.com/quartzy/1726408/banksys-trademark-dispute-with-full-colour-black-could-backfire/

Curson AD. (2020, January 14). “Changes to the New Zealand Trade Marks Act”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=266

Curson AD. (2020, June 30). “Fluid Trademarks”. Retrieved September 21, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=317

European Union Intellectual Property Office. EUTM File Information 012575155. Retrieved September 23, 2020, from: https://euipo.europa.eu/eSearch/#details/trademarks/012575155

Lince T. (2020, September 14). “Gross Domestic Failure – Banksy trademark portfolio “at risk” after registration ruled invalid”. Retrieved September 21, 2020, from: https://www.worldtrademarkreview.com/brand-management/gross-domestic-failure-banksy-trademark-portfolio-risk-after-eu-registration-declared-invalid

MyArtBroker. “Banksy Portfolio: Love Is In The Air (Flower Thrower)”. Retrieved September 23, 2020, from: https://www.myartbroker.com/artist/banksy/love-is-in-the-air-flower-thrower/

New Zealand Copyright Act 1994, s22. Retrieved September 23, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345932.html

New Zealand Trade Marks Act 2002, s17. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164459.html

New Zealand Trade Marks Act 2002, s66. Retrieved September 21, 2020, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164640.html

Official Journal of the European Union. (2006, December 27). “Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights”. Retrieved September 23, 2020, from: https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:32006L0116

Sullivan B, Butler D. (2019, October 14). ” ‘Trade mark dispute’ 2019 Banksy”. Retrieved September 22, 2020, from: https://www.ajpark.com/insights/ip-updates/trade-mark-dispute-2019-banksy/

van de Mortel L. (2020, January 13). “Need to know: ‘Bad faith’ in trademark law”. Retrieved September 21, 2020, from: https://www.novagraaf.com/en/insights/need-know-bad-faith-trademark-law

Wikipedia. (2020, September 18). “Banksy”. Retrieved September 21, 2020, from: https://en.wikipedia.org/wiki/Banksy

Geographical Indications in Australia – Public Consultation on the Creation of a New IP Right

On 4th September 2020, the Australian Government opened public consultations on the creation of a new geographical indications right.  This relates to the ongoing negotiations between Australia and the European Union (EU) for a Free Trade Agreement, where the protection of geographical indications is one of the key objectives of the EU’s negotiating position.

 

What is a Geographical Indication?

A geographical indication is a sign that informs the consumer that a product with specific characteristics comes from a particular geographical location.  For example, sparkling wine can only be called Champagne if it comes from the Champagne region in France.

It also assures that the product has been made in accordance with the specific recipes and processes necessary to give it the expected attributes.

Where the consumer attributes certain characteristics, including quality and reputation, to be associated with products originating from a specific place, this form of IP right provides assurance that the product does indeed originate from there.

 

Difference Between a Trade Mark and a Geographical Indication

There is some overlap between trade marks and geographical indications as both provide an assurance to the consumer as to the origin of a product.  However, the two are subtly different.

A trade mark provides a “badge-of-origin” as to the commercial source of a product or service, i.e. the company or other entity that is providing it.

A geographical indication, on the other hand, distinguishes the product itself and its actual global location of origin.

 

How are Geographical Indications Currently Protected in Australia?

Australia currently has two systems for the protection of geographical indications.

All goods can have a geographical indication registered as a type of trade mark called a Certification Trade Mark (CTM).  This is a trade mark (a sign for distinguishing goods and services) that has been certified by the owner of the mark that the goods or services meet certain standards “…in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture…”.  As such, both registered trade mark requirements and certification requirements have to be met, as well as competition and fair-trade rules.

There is also a separate system for the registration of geographical indications for wines.

 

Purpose of the Public Consultation

Should an acceptable Free Trade Agreement with the EU be negotiated, it is likely that Australia will have to make provision for the protection of certain EU geographical indications, which is currently not possible within the existing Australian systems.

One option being considered is an amendment to the Trade Marks Act 1995 to create a new, clearly defined, Geographical Indications right, which would protect both Australian and international geographical indications.

Were this to go ahead, then the current Certification Trade Mark and wine geographical indication systems could either remain as they are in parallel, or a new single geographical indications system could be introduced.

Whilst any changes would, in part, be driven by the outcomes of the negotiations with the EU, they would need to be developed and implemented to best meet the needs of Australian businesses, industries and consumers.

The consultation, which closes on 30th November 2020, aims to gather relevant views with respect to any potential changes to the geographical indication system in Australia.

Alistair Curson

 

References

Australian Trade Marks Act 1995, s169. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2019C00085

Curson AD. (2019, September 03). “Geographical Indications – Implications of a New Zealand / EU Trade Deal on Product Names”. Retrieved September 07, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=240

European Union: Your Europe. (2020, May 12). “Geographical indications”. Retrieved September 07, 2020, from: https://europa.eu/youreurope/business/running-business/intellectual-property/geographical-indications/index_en.htm

IP Australia. (2019, February 26). “Geographical indications”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-trade-mark/geographical

IP Australia. (2020, September 04). “Australia-European Union Free Trade Agreement: Consultation on a Possible New Geographical Indications Right”. Retrieved September 08, 2020, from: https://consultation.ipaustralia.gov.au/policy/geographical-indications/

IP Australia. (2020, September 04). “The Australia – EU Free Trade Agreement – Consultation on a possible new geographical indications right”. Retrieved September 08, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/australia-eu-free-trade-agreement-consultation-possible-new

New Zealand Intellectual Property Office. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.iponz.govt.nz/about-ip/geographical-indications/

Wikipedia. (2020, June 29). “Free trade agreement”. Retrieved September 07, 2020, from: https://en.wikipedia.org/wiki/Free_trade_agreement

Wine Australia Act 2013, Part VIB. Retrieved September 08, 2020, from: https://www.legislation.gov.au/Details/C2017C00368

World Intellectual Property Organisation. “Geographical Indications”. Retrieved September 07, 2020, from: https://www.wipo.int/geo_indications/en/

Trust Badge – A Trial of IP Australia’s Smart Trade Mark

Just over a year ago, I posted about the award winning Smart Trade Mark initiative being developed by IP Australia, and its application in protecting supply chains as well as combating counterfeiting activities, both nationally and globally.  The system is now at the trial stage with IP Australia working with the National Rugby League (NRL) to test Trust Badge – IP Australia’s implementation of their smart trade mark.

 

What is Smart IP?

The Smart Trade Mark concept is the first in a series of Smart Intellectual Property (IP) Rights being developed by IP Australia, to support and protect inventors, entrepreneurs and businesses operating on the global stage.

Smart IP Rights are a digital representation or “fingerprint” of an owner’s IP.  They create a connection and a thread of online information between the IP right on the official IP register and relevant digital services, thereby supporting owners in enforcing their IP rights.

 

How Does Smart IP Work?

The concept behind the system is that goods are scanned and tracked as they move through a supply chain using:

  • A series of APIs (application programming interfaces) for connecting digital and online services;
  • Mobile apps, and;
  • Blockchain technology – an open and distributed internet-based record of transactions that cannot be altered without the entire network being made aware and providing their consent

Essentially it is a “track and trace” solution that includes IP and government authenticity stamps, as well as clear information as to the origin of goods.

The system also provides further protection through its use of notifications.  All events and locations are recorded within the blockchain as the goods pass through the supply chain.  Any suspicious activity is notified to the legitimate parties concerned.

Using this information, the Smart IP system also serves to provide greater insight and intelligence around counterfeiting activity within global supply chains.

 

Trust Badge

The Trust Badge is the digital connection between the registered trade mark and the consumer.  During online shopping, it provides a visual link to the registered trade mark, thereby increasing trust in the brand, as well as helping consumers identify authentic products and instil confidence that they are purchasing genuine goods and services.

 

Current Trials and Future Applications

The Trust Badge is currently being trialled with the National Rugby League (NRL) on the NRL Shop and Savvy Supporter websites, with the aim of tackling the problem of counterfeit merchandise.  Initial findings and feedback indicate that consumers have an understanding of the purpose of the Trust Badge, as well as a feeling that it serves its purpose of increasing their confidence when shopping online.

With the success of these preliminary findings, IP Australia is increasing public availability of the system through further trials, which will also ensure the system develops appropriately to meet the needs of businesses.

Alistair Curson

 

References

Clark B. (2018, February). “Blockchain and IP Law: A Match made in Crypto Heaven?”. Retrieved August 20, 2020, from: https://www.wipo.int/wipo_magazine/en/2018/01/article_0005.html

Curson A. (2018, October 05). “Blockchain and the New Zealand Agtech Industry”. Retrieved August 20, 2020, from: http://www.adcpatentsearch.co.nz/Blockchain%20and%20the%20New%20Zealand%20Agtech%20Industry%2005Oct18.pdf

Curson AD. (2019, June 11). “Smart IP Rights – The Future of IP Enforcement?”. Retrieved August 20, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=168

IP Australia. (2019, May 23). “IP Australia’s Smart Trade Mark sweeps the Canberra iAwards”. Retrieved August 20, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/ip-australias-smart-trade-mark-sweeps-canberra-iawards-0

IP Australia. (2020). “As your business moves online, so should your trade marks”. Retrieved August 20, 2020, from: https://smarttrademark.search.ipaustralia.gov.au/

IP Australia. (2020, August 10). “Tackling counterfeit footy fan gear”. Retrieved August 14, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/tackling-counterfeit-footy-fan-gear

Research and Markets. (2018). “Global Brand Counterfeiting Report, 2018”. Retrieved August 20, 2020, from: https://www.researchandmarkets.com/reports/4438394/global-brand-counterfeiting-report-2018

Rossow A. (2018, July 24). “How Can We Make Intellectual Property Rights ‘Smarter’ With the Blockchain?”. Retrieved August 20, 2020, from: https://www.forbes.com/sites/andrewrossow/2018/07/24/how-can-we-make-intellectual-property-rights-smarter-with-the-blockchain/#6ea8f43185ec

Wang B. (2018, March 31). “Moving towards blockchain registration control of Patents and Intellectual Property”. Retrieved August 20, 2020, from: https://www.nextbigfuture.com/2018/03/moving-towards-blockchain-registration-control-of-patents-and-intellectual-property.html

Wikipedia. (2020, August 19) “Blockchain.” Retrieved August 20, 2020, from: https://en.wikipedia.org/wiki/Blockchain

Fluid Trademarks

Can making minor and temporary changes to your trademark strengthen your brand, or undermine it through increased consumer confusion?

 

Principles of Trademarks

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

What is a Fluid Trademark?

Fluid trademarks are marks that display temporary modifications to, or variants of, the underlying trademark, often to reflect significant events or support commercial promotions.  This may be accomplished by ornamentation or decoration of the trademark whilst retaining its essential characteristics, or by employing more substantial design changes.

One of the most well-known examples of a fluid trademark is the Google Doodle.  These are variants of Google’s underlying logo, either static or animated, that reflect notable events relating to the day or period for which they are displayed.  For example, key anniversaries, sporting events, or the birthdays of historical figures.

In recent months as a consequence of the Covid-19 pandemic, a number of companies have introduced fluidity to their marks with elements of “separation”, in order to support the message of social distancing that we’re all encouraged to adopt in our fight against the virus.  These include the golden arches of MacDonald’s and the rings of Audi, both of which show the respective elements separated rather than attached or interlocked as they normally would be.

 

Pros and Cons of Fluid Trademarks

Fluid trademarks can strengthen the relationship between the consumer and the brand by demonstrating that the brand is energised, evolving and up-to-date with current trends.

However, there are also risks.  People might become confused if the mark is constantly changing and doesn’t appear to consistently identify the source of the goods or services being provided.  Third parties might create their own unauthorised variations of the mark, which could be relatively difficult to police particularly if the brand is employing a large number of fluid variants.  Further, the underlying mark may become vulnerable to claims of non-use and thus be at risk of removal from the trademark register, on the basis that it is not being used in its registered form.

The use of fluid trademarks should be carefully considered and managed, otherwise they risk weakening or even destroying the original mark and the brand it represents.

However, provided they do not undermine the original mark and its purpose, and are applied as part of a structured strategy, fluid trademarks can be a modern and contemporary tool to promote a brand and strengthen the relationship with the market, in ways conventional trademarks may not.

Alistair Curson

 

References

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Gaurav K. (2020, March 28). “COVID-19: Audi, McDonald’s And Other Brands Redesign Logo To Promote ‘social Distancing’”. Retrieved June 27, 2020, from: https://www.republicworld.com/world-news/rest-of-the-world-news/covid-19-audi-mcdonalds-and-other-brands-redesign-logo-for-social.html

The Fashion Law. (2020, June 09). “Fluid Trademarks Can be Marketing Gold But Should Brands Really Up-and-Alter Their Famous Logos?”. Retrieved June 27, 2020, from: https://www.thefashionlaw.com/fluid-trademarks-can-be-marketing-gold-but-should-brands-really-up-and-alter-their-famed-logos/

Pearson L, Welsh JA. (2013, August 27). “Fluid Trademarks: Dynamic Brand Identities for Dynamic Times”. Retrieved June 27, 2020, from: https://www.acc.com/resource-library/fluid-trademarks-dynamic-brand-identities-dynamic-times

Petillion F, Vanleenhove C. (2009, September). “Protect your fluid trade marks in Europe”. Retrieved June 27, 2020, from: https://www.crowell.com/documents/Protect-your-fluid-trade-marks-in-Europe.pdf

Spruson & Ferguson. (2014, October 20). “What Are ‘Fluid Trademarks’?”. Retrieved June 27, 2020, from: https://www.spruson.com/trade-marks/fluid-trademarks/

Expanding the Scope of Free Global Intellectual Property Databases

The capabilities and scope of freely available global intellectual property (IP) databases are constantly growing.  Recently, TMview and PubChem announced updates that widen their capability for IP search and analysis from various global jurisdictions.

 

IP Australia Joins TMview

IP Australia has joined TMview, a free global online tool from the European Union Intellectual Property Office (EUIPO) that facilitates word and image trade mark searching from the 74 participating offices around the world.  Over 1.6 million Australian trade marks have now been added to the database.

A range of IP right, bibliographic and legal status information can be searched and investigated, including the words and images constituting the mark, the goods and services protected, ownership, legal status and registration date.  Access to details at the office of origin is also provide.

This news follows closely the announcement that the EUIPO had launched improved versions of both its TMview (trade marks) and DesignView (designs) databases.  The improvements include a wider set of search criteria and abilities to fine tune queries, a function to compare trade marks and designs side-by-side, and the capability to export to PDF, Excel and Word formats.

 

PubChem Chemical Search Enhanced with WIPO Chemical Structures

PubChem is the National Institutes of Health (NIH) open chemistry database that provides the world’s largest collection of freely accessible chemical information.

The World Intellectual Property Organisation (WIPO) has an extensive searchable database of IP-related chemical data, built through a collaboration with German cheminfomatics software company InfoChem.  This dataset is made available through WIPO’s patent database PATENTSCOPE.

WIPO has recently contributed over 16 million chemical structures to PubChem.  These can be searched within PubChem by name, molecular formula, structure, and other identifiers.  Information including chemical and physical properties, biological activities, safety and toxicity information, patents, and literature citations can be retrieved.  PubChem users also have access to relevant patent information via direct links back to PATENTSCOPE.

 

Overview

These developments expand and advance the provision of freely available intellectual property information.

For those with an interest in the Australian market, who wish to understand the IP landscape there, the provision of Australian trade marks on TMview improves their abilities to conduct such analyses.

Similarly, for anyone working in the chemistry and related fields, WIPO’s contribution to PubChem is a welcome enhancement for accessing comprehensive patent information in such disciplines.

Alistair Curson

 

References

European Union Intellectual Property Network. (2020, April 02). “News: The EUIPO has launched improved versions of TMview and DesignView”. Retrieved April 09, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. (2020, April 06). “News: Australia joins TMview”. Retrieved April 09, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. “TMview”. Retrieved April 09, 2020, from: https://www.tmdn.org/tmview/welcome#/tmview

European Union Intellectual Property Network. “Tools”. Retrieved April 09, 2020, from: https://www.tmdn.org/network/iptools

InfoChem. (2019). “InfoChem”. Retrieved April 14, 2020, from: https://www.infochem.de/

IP Australia. (2020, April 07). “IP Australia joins global trade marks database TMview”. Retrieved April 09 , 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/ip-australia-joins-global-trade-marks-database-tmview

PubChem. “Explore Chemistry”. Retrieved April 14, 2020, from: https://pubchem.ncbi.nlm.nih.gov/

PubChem Blog. (2020, March 25). “Integration of WIPO’s PATENTSCOPE data with PubChem”. Retrieved April 14, 2020, from: https://pubchemblog.ncbi.nlm.nih.gov/2020/03/25/integration-of-wipos-patentscope-data-with-pubchem/

World Intellectual Property Organisation. (2020, March 25). “WIPO Contributes Millions of Searchable Chemical Formulas to Database at U.S. National Institutes of Health”. Retrieved April 09, 2020, from: https://www.wipo.int/patentscope/en/news/pctdb/2020/news_0002.html

World Intellectual Property Organisation. “Patentscope: Chemical Compounds Search”. Retrieved April 14, 2020, from: https://patentscope.wipo.int/search/en/chemc/chemc.jsf?new=true

New Patent and Trade Mark Fees in New Zealand

In a couple of days, on 13th February 2020, changes to the fees charged by the Intellectual Property Office of New Zealand (IPONZ) for patents and trade marks will come in effect.

 

The Changes

There are a number of fee changes, but to summarise:

 

Patents will see the following fees increase:

  • Filing and examination request fees
  • Renewal and application maintenance fees
  • Some amendment and restoration fees

 

Trade marks, however, will see the following fees decrease:

  • Application fees
  • Renewal fees

The trade mark search and preliminary advice fees will also change, with the fees for the individual services increasing, but the fee for the combined S&PA service decreasing.

 

Fees relating to design rights remain unaffected.

 

Possible Implications and Effects

Thus, at first sight, patent owners are likely to be financially impacted the most, with trade mark owners seeing financial benefits.  The actual impacts of these changes, however, are only likely to be realised over time.

 

From a patent perspective, costs appear to be increasing.  However, since a patent is providing the owner with a temporary monopoly in the market, these increases in costs are likely to be reasonable if the patent is truly of value and the invention appropriately monetised.

Further, some commentators have speculated that the increase in fees may actually benefit New Zealand businesses.  As in many other global jurisdictions, there is no usage requirement for a patent in New Zealand.  Patents are often filed and used strategically to frustrate competitors, with no intention to work the claimed invention.

The longer-term impact of the patent fee increases may be to dissuade foreign competitors who have been filing in New Zealand with the sole aim of disrupting their competitors here, such that they allow their patents to lapse early, or do not file here in the first place.

 

From a trade mark perspective, costs appear to be decreasing, which will be welcomed by New Zealand businesses looking to establish and protect their brands.

However, it has been speculated that this may actually lead to an increase in trade mark filings, particularly for applications with an unduly broad scope or from applicants with no real intention to use the mark, resulting in the trade mark register becoming relatively bloated with poor quality registrations.

Ironically, this may lead to an increase in branding costs as oppositions and actions brought for non-use and invalidity may be needed to enforce genuine marks and those registered in good faith.

Alistair Curson

 

References:

Allens. (2019, October 24). “IPONZ fee changes – how you can save on patent and trade mark fees”. Retrieved January 28, 2020, from: https://www.allens.com.au/insights-news/insights/2019/10/IPONZ-fee-changes-how-you-can-save-on-patent-and-trade-mark-fees/

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Blijlevens A. (2019, August 22). “Protecting innovation using patents and designs”. Webinar attended August 22, 2019; available from: https://www.ajpark.com/insights/videos-and-webinars/resource/protecting-innovation-using-patents-and-designs-recording

Ellis Terry. (2019, October 07). “Fee Changes For NZ Patents and Trade Marks”. Retrieved February 04, 2020, from: https://ellisterry.com/official-fee-changes-for-patents-and-trade-marks-in-new-zealand/

McIvor R. (2019, June 25). “IPONZ fee changes coming for Patents and Trade marks”. Retrieved February 04, 2020, from: https://www.baldwins.com/news-resources/news/iponz-fee-changes-coming-for-patents-and-trade-marks

New Zealand Intellectual Property Office. (2019, September). “Patent and Trade Mark Fee Changes on 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/assets/pdf/about-iponz/patent-and-trade-mark-fee-changes-september-2019.pdf

New Zealand Intellectual Property Office. (2020, January 28). “New patent and trade mark fees will commence from 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/news/new-patent-and-trade-mark-fees-will-commence-from-13-february-2020/

Tidbury K, Coughlan O. (2019, September 27). “Changes to IPONZ patent and trade mark fees”. Retrieved February 04, 2020, from: https://www.simpsongrierson.com/articles/2019/changes-to-iponz-patent-and-trade-mark-fees

Ting S, Henning K, Griffiths T. (2019, October 02). “Changes to the Intellectual Property Office of New Zealand’s fees to come into force on 13 February 2020”. Retrieved February 04, 2020, from: https://www.ajpark.com/insights/ip-updates/intellectual-property-office-of-new-zealands-fee-changes/

Changes to the New Zealand Trade Marks Act

Yesterday (13th January), a number of changes to the New Zealand Trade Marks Act 2002 came into force, as part of the Regulatory Systems (Economic Development) Amendment (No 2) Bill.

Two main developments are a shorter grace period for trade mark renewals, and clarification on there being no discretion in cases of revocation on the basis of non-use.

 

Trade Mark Renewals

Provided they meet the requirements for registration and are used in the course of trade, trade mark registrations in New Zealand can potentially last indefinitely.

Registered trade marks have to be renewed every 10 years.  Before the 13th January 2020, trade marks could be renewed 12 months either side of the renewal date (the grace period).  The recent law changes have reduced this grace period to six months either side of the renewal date.  Now, if the mark is not renewed before six months after the renewal date the registration will lapse and will not be able to be restored.

 

Usage Requirements

It is a basic principle of trade marks that a connection exists between a trader and the goods and services they provide, and that there is no such connection if the mark is not used.  To remain valid, trade marks must therefore be used in the course of trade in relation to the goods and services specified in the scope of the right.  In New Zealand, a continuous period of non-use of three years or more may be accepted as grounds for revocation of a registered trade mark.

In some jurisdictions, for example Australia, the decision maker in a trade mark revocation case has the legal discretion not to remove a successfully challenged trade mark from the Australian register, provided certain conditions are met.  Such conditions include the unused mark having residual reputation from an earlier use, having significant reputation overseas, having been used for similar or closely-related goods and services, or where removal of the mark could lead to consumer confusion.

In New Zealand, the situation was less clear.  It has generally been accepted that the Hearing Officers may have some discretion, but only under special circumstances, however there has been a lack of clarity as to how this should work in practice.

Now, there is greater clarification that there is no discretion in New Zealand for either the Intellectual Property Office or the Courts to decide not to remove a mark from the register when the grounds for revocation have been met.

 

Implications

The reduction in the renewal grace period highlights the importance of good IP management practices.  Marks should be monitored, or otherwise protocols put in place, so that the trade mark owner is notified in good time of an impending renewal in order to take appropriate action.  Remaining aware of any law changes in other jurisdictions where your mark is registered, that may impact your portfolio there, is also good practice.

Trade mark owners must now defend a revocation case using an argument based around evidence-of-use of the mark.  The clarification on no discretion for upholding an otherwise revoked trade mark means that there is more certainty for parties bringing such a case.

Alistair Curson

 

References

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Cheung A., Smith M. (2019, December 04). “New Zealand trade mark law changes: shortened grace period for renewals and no discretion for non-use revocations”. Retrieved December 06, 2019, from: https://www.ajpark.com/insights/ip-updates/new-zealand-trade-mark-law-changes-2020?fbclid=IwAR29EVnOWHetZmQ-3nPvJyBVqFsNV41r2FoaafgBGN3tpHh3qCPYlQGZI9o

Drew I, Holmes N. (2014, January 23). “The Commissioner’s discretion – defending unused trade marks in New Zealand revocation proceedings”. Retrieved December 07, 2019, from: https://dcc.com/services/trade-marks/the-commissioners-discretion-defending-unused-trade-marks-in-new-zealand-re/

New Zealand Intellectual Property Office. (2019, November 14). “Update on Regulatory Systems (Economic Development) Amendment (No 2) Bill”. Retrieved January 14, 2020, from: https://www.iponz.govt.nz/news/update-on-regulatory-systems-economic-development-amendment-no-2-bill/

New Zealand Intellectual Property Office. “Renew a trade mark”. Retrieved December 06, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/renew/

New Zealand Trade Marks Act 2002. Retrieved December 06, 2019, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164240.html

New Zealand Trade Marks Act 2002, s58. Retrieved December 07, 2019, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164629.html

New Zealand Trade Marks Act 2002, s59. Retrieved December 07, 2019, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164630.html

New Zealand Trade Marks Act 2002, s66. Retrieved December 07, 2019, from: http://www.legislation.govt.nz/act/public/2002/0049/latest/DLM164640.html

Szentivanyi E. (2014, January). “Trade mark revocation for non-use: Australia and New Zealand compared”. Retrieved December 07, 2019, from: https://www.henryhughes.com/site/news/trade-mark-revocation-for-non-use-au-and-nz.aspx

Fair Labelling of Plant-Based Products

In a recent blog post I looked at Geographical Indications, which act as a label to distinguish the geographical origin of a product.  When the consumer attributes certain characteristics, including quality and reputation, to be associated with products originating from a specific place, this form of IP right provides assurance that the product does indeed originate from that global location.

While researching for this current post I found an interesting article that raised the question of “fair labelling” in relation to the constitution of products.  Specifically, a call by New Zealand Federated Farmers to restrict the use of meat and dairy terms to describe plant-based food products.

 

Legal Assurance as to the Origin of Products and Services

Various forms of legislation exist with the intention of ensuring consumers have accurate information as to the origins of the products and services they’re buying.

For example, trade marks and geographical indications provide assurance that a product or service originates from a particular company / entity or geographical location respectively.

Under the New Zealand Fair Trading Act, consumers are protected from various behaviours, including misleading or false statements as to the origin of products.

 

Trends Overseas

Current interest in this matter in New Zealand has been driven by trends overseas, including in both the European Union and Australia.

In the EU, terms such as steak, sausage, escalope, burger and hamburger may become designations reserved for meat-based products.  Previously, in 2017, the European Court of Justice ruled that dairy terms, such as milk and butter, could not be used to sell soya and tofu products.  Similar changes are being campaigned for in Australia.

 

Opinion

There is an argument that the use of terms previously associated with meat-based products has now become common language when referring to non-meat products, and thus there is little or no consumer confusion.

However, with increasing consumer awareness of food origins as well as trends towards changing our diets, for example as a consequence of climate change, such restrictions on the labelling of certain products may facilitate a better-informed choice for the consumer.

Alistair Curson

 

References

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Boffey D. (2019, April 04). “‘Veggie discs’ to replace veggie burgers in EU crackdown on food labels”. Retrieved November 14, 2019, from: https://www.theguardian.com/food/2019/apr/04/eu-to-ban-non-meat-product-labels-veggie-burgers-and-vegan-steaks

Burry M. (2019, July 31). “Federated Farmers quest for ‘fair labelling’ of plant-based products: ‘Call it almond juice’”. Retrieved November 03, 2019, from: https://www.rnz.co.nz/news/national/395689/federated-farmers-quest-for-fair-labelling-of-plant-based-products-call-it-almond-juice

Curson A. (2019, September 03). “Geographical Indications – Implications of a New Zealand / EU Trade Deal on Product Names”. Retrieved November 03, 2019, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=240

Ministry of Business, Innovation and Employment. “Consumer Protection: misleading prices or advertising”. Retrieved November 14, 2019, from: https://www.consumerprotection.govt.nz/general-help/common-consumer-issues/misleading-prices-or-advertising/

New Zealand Fair Trading Act 1986. Retrieved November 14, 2019, from: http://www.legislation.govt.nz/act/public/1986/0121/latest/DLM96439.html

New Zealand Intellectual Property Office. “Geographical Indications”. Retrieved November 14, 2019, from: https://www.iponz.govt.nz/about-ip/geographical-indications/

Thomas D. (2019, June 19). “Would you call this a vegetable tube?”. Retrieved November 14, 2019, from: https://www.bbc.com/news/business-48676145

Worthington B. (2018, October 11). “Federal Government pushes to stop plant-based products labelled as ‘meat’ or ‘milk’”. Retrieved November 14, 2019, from: https://www.abc.net.au/news/2018-10-11/federal-government-wants-food-standards-reviewed/10360200

IPONZ Online Case Management Improvements

The New Zealand Intellectual Property Office (IPONZ) recently published a number of improvements to both its website and online case management facility.  These are summarised below:

 

Patent Cases: Search by Patents Act

New Zealand’s patent law landscape changed significantly a few years ago with the enactment of the Patents Act 2013, aligning the law more closely with other international jurisdictions.

Under the previous 1953 Act, patentability within New Zealand required relative novelty (i.e. was the invention new within the prior art base of New Zealand only).  The 2013 Act introduced, among other things, examination practices that require absolute novelty, examination for inventive step, and additional subject matter qualification.

The IPONZ patent register search now includes a field (under the Status Search option) to specify the Act under which the cases being searched were examined.

 

Patents: Declaration for Amendments After Grant

As part of the maintenance process for patents in New Zealand, there is a facility to request amendments to both pending applications and granted patents under certain circumstances.

Previous, such requests were required to be accompanied by a formal letter declaring that the information provided was correct and that there were no known lawful grounds for objection.  This declaration is now included as a field in the online request form.

 

Trade Marks: Partial Renewal of a Subset of Classes

A part of the scope of protection provided by a registered a trade mark is the specification of the goods and services that the mark is intended to be used in association with.

The IPONZ trade mark renewal facility now enables owners and agents to select only those classes of goods and services they wish to renew for a specific trade mark registration.

 

Divisional Applications: Ability to Display the Full Chain

A divisional patent application is a provision within the Paris Convention 1883, where an applicant is able to “divide” out one or more claims from an earlier parent application.  Although the divided application cannot extend the subject matter beyond that which was covered in the parent application, it will typically retain the filing and priority dates of the parent.

Usually, the filing of a divisional application is pursued when a patent examiner has objected to the parent application on the grounds of a lack of unity of invention.  In other words, the parent application is considered to claim more than one invention or inventive concept.  To address this, the appropriate claims are divided into child divisional applications, each one having a single unity of invention.

Trade mark applications can also be divided to remove goods and services that conflict with other marks whilst retaining a part of the original application.

The bibliographic display of the IPONZ case register now interactively shows the hierarchical relationship of IP cases related by divisional practices.

 

Renewal Fee Reminders: Inclusion of the Renewal Due Date

IP rights have to be renewed and maintained in accordance with the Acts and other regulations that govern them, if they are to remain in force.

IPONZ has improved the email notifications it sends as reminders of upcoming renewals.  The renewal date is now included in the subject line and the body of these email messages.

Alistair Curson

 

References

AJ Park. (2014, September). “New Zealand’s new Patents Act 2013: The key differences between the Patents Act 1953 and the new Act”. Retrieved October 22, 2019, from: https://www.ajpark.com/assets/Uploads/New-Zealands-new-Patents-Act-2013-The-key-differences-between-the-Patents-Act-1953-and-the-new-Act.pdf

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Curson A. (2019, April 16). “New Division and Merger of International Trade Mark Registrations in New Zealand”. Retrieved October 22, 2019, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=139

Macaskill, D. (2013, September 12) “New dawn for the New Zealand Patent Landscape – the New Patents Act”. Retrieved October 22, 2019, from: http://www.mondaq.com/NewZealand/x/260548/Patent/New+Dawn+for+the+New+Zealand+Patent+Landscape+the+New+Patents+Act

New Zealand Intellectual Property Office. (2019, October 10). “Improvements to the IPONZ online case management facility”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/news/improvements-to-the-iponz-online-case-management-facility-6/

New Zealand Intellectual Property Office. “Apply for a patent”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/patents/apply/

New Zealand Intellectual Property Office. “Apply for a trade mark”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/apply/

New Zealand Intellectual Property Office. “Maintain a patent”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/patents/maintain/

New Zealand Intellectual Property Office. “Renew a trade mark”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/renew/

Paris Convention for the Protection of Industrial Property 1883, Art. 4G. Retrieved October 22, 2019, from: https://www.wipo.int/treaties/en/text.jsp?file_id=288514#P83_6610

Wikipedia. (2019, September 18). “Divisional patent application”. Retrieved October 22, 2019, from: https://en.wikipedia.org/wiki/Divisional_patent_application

World Intellectual Property Organisation. “Nice Classification”. Retrieved October 22, 2019, from: https://www.wipo.int/classifications/nice/en/

Intellectual Property and Cultural Appropriation

Last month saw a debate take place in New Zealand around intellectual property rights and the use of items of indigenous cultural significance.

 

IP Mātauranga Māori

The indigenous people of New Zealand are the Māori.  Mātauranga Māori (Māori Knowledge) is the knowledge originating from Māori ancestors.  It covers Māori world view, perspectives, creativity and cultural practices, as well as the Māori language, Te Reo.

There are provisions within New Zealand’s intellectual property laws that recognise and respect Māori culture and traditional knowledge, prevent its exploitation or inappropriate use, and prevent the registration of IP rights that would be considered offensive by Māori or contrary to Māori values.

The New Zealand Intellectual Property Office has Māori Advisory Committees to which IP right applications are referred for advice should an application be considered to incorporate a Māori element.

 

Kia Ora

“Kia Ora” is a versatile phrase from the Māori language Te Reo.  Often used to say “hello” or “thank you”, it has a deeper meaning and usage as a term of acknowledgement of a person.

 

Air New Zealand Inflight Magazine “Kia Ora”

New Zealand’s national carrier, Air New Zealand, provides an inflight magazine that is also entitled “Kia Ora”, that has been in publication for several years.

Back in May of 2019, the company made a trademark application for a logo mark that incorporated the phrase “Kia Ora”, a move that was controversial and prompted criticism from Māori.

The application itself was a response to a New Zealand multimedia company using the phrase on a digital magazine.

A few months later in September, following discussion with Māori leaders, Air New Zealand withdrew their trademark application.

Although Air New Zealand had only sought to trademark the logo of its magazine (to protect it against potential confusion with another publication) and had not sought to trademark the phrase “Kia Ora” itself, the application still initiated a fresh debate between Māori, IP law experts and the Government around the use, recognition and protection of Te Reo in the context of intellectual property.

With all sides positive on the eventual handling of the matter, there is acknowledgement of the importance of further debate and action around balancing the needs, recognition and protection of indigenous communities and their cultural heritage, with the needs of business and the framework of intellectual property rights.

Alistair Curson

 

References

100% Pure New Zealand. “Māori Culture”. Retrieved September 20, 2019, from: https://www.newzealand.com/int/maori-culture/

100% Pure New Zealand. “The Meaning of Kia Ora”. Retrieved September 20, 2019, from: https://www.newzealand.com/int/feature/the-meaning-of-kia-ora/

Air New Zealand Media Release. (2017, September 1). “Air New Zealand says ‘Kia Ora’ to new-look inflight magazine”. Retrieved September 19, 2019, from: https://www.airnewzealand.co.nz/press-release-2017-air-new-zealand-says-kia-ora-to-new-look-inflight-magazine

Air New Zealand Media Release. (2019, September 18). “Air New Zealand calls for more kōrero on te reo trademark issues”. Retrieved September 19, 2019, from: https://www.airnewzealand.co.nz/press-release-2019-airnz-calls-for-more-korero-on-te-reo-trademark-issues

Māori Dictionary. (2019). “Kia ora!”. Retrieved September 20, 2019, from: https://maoridictionary.co.nz/search?idiom=&phrase=&proverb=&loan=&histLoanWords=&keywords=kia+ora

McConnell G. (2017, September 15). “Kia ora is everywhere, but what exactly does it mean?”. Retrieved September 20, 2019, from: https://www.stuff.co.nz/national/96883326/kia-ora-is-everywhere-but-what-exactly-does-it-mean

New Zealand Intellectual Property Office. “Māori IP”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/

New Zealand Intellectual Property Office. “Māori IP: Concepts to understand”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/concepts-to-understand/

New Zealand Intellectual Property Office. “Māori IP: Māori Advisory Committees”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/maori-advisory-committees/

Radio New Zealand. (2019, September 11). “Māori Council accuses Air NZ of appropriating Māori culture”. Retrieved September 19, 2019, from: https://www.rnz.co.nz/news/te-manu-korihi/398589/maori-council-accuses-air-nz-of-appropriating-maori-culture

Radio New Zealand. (2019, September 18). “Air New Zealand drops Kia Ora trademark bid”. Retrieved September 19, 2019, from: https://www.rnz.co.nz/news/national/399044/air-new-zealand-drops-kia-ora-trademark-bid

Te Puia. “Kia ora!”. Retrieved September 20, 2019, from: https://tepuia.com/news/kia-ora/