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.
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.
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.
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
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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