Trade mark owners should be aware of recent amendments to the New Zealand Trade Marks Act 2002 (TM Act), introduced under the Regulatory Systems (Economic Development) Amendment (No.2) Act. These changes, which came into effect on 13 January 2020, are summarised below.

Renewal Grace Period

The grace period to renew a New Zealand trade mark registration after its due date for renewal has expired (“expiry date”) has been reduced from 12 months to 6 months.

While in this 6-month grace period a trade mark will show the status of “registered-past expiry date” on the Register and, if is not renewed within 6-month grace period, will then be removed from the Register and cease to have effect.

While having the status of “registered-past expiry” (within the 6-month grace period) no civil proceedings for trade mark infringement, criminal proceedings for counterfeit or other trade mark offences can be commenced. However, other actions, such as assigning the trade mark or third-party revocation proceedings against the trade mark for non-use, can still be performed. The trade mark will also continue to be treated during the grace period as a valid trade mark for the purposes of preventing the registration of a conflicting later trade mark application filed by a third-party.

If the trade mark is renewed before the end of the grace period, new section 60(3) of the TM Act provides that the renewed registration takes effect from the expiry date and that the “trade mark is taken to have remained a registered trade mark for all purposes from that date as if its status had not changed”. The legislative intent was not to encourage trade mark registrations to be infringed during the grace period and so, according to new section 60(3), any ‘infringing” act that occurs within this 6-month grace period will be considered an infringement, if the trade mark is renewed. This can be contrasted with section 128 of the Australian Trade Marks Act 1995, which provides that, if a trade mark is renewed within the 6-month grace period after it has expired, an action may not be brought in respect of an “infringing” act “after the registration had expired and before it was renewed”.

Non-use Revocation and Removal of Commissioner’s Discretion

Any possibility of the New Zealand Commissioner for Trade Marks exercising discretion not to revoke a trade mark registration for non-use has been removed.

Previously, it was unclear whether the Commission had a residual discretion to allow a registered trade mark to remain on the Register, notwithstanding the trade mark owner failing to show the trade mark has been used or that there were special circumstances outside the owners’ control that prevented its use. For example, exercise of the discretion might have been appropriate, where the registered trade mark had had been used only for goods that were closely related to the registered goods. The amendment now makes it clear that there is no such discretion.

This contrasts with the position in Australia where the Registrar has a broad discretion.

Ownership restriction on Certification Trade Marks

The owner of a certification trade mark must not own another trade mark registration for the same goods and services.

Certification trade marks are used to indicate that goods or services have been “certified” as meeting a particular standard of quality or accuracy, have a particular composition, mode of manufacture, performance, geographical origin or some other characteristic. Approved users of a certification trade mark must follow a set of rules that ensure that their goods or services meet the certified characteristic and the owner of a certification mark is responsible for setting these rules and controlling the approved users’ compliance.

Examples of registered certification marks in New Zealand include:

To be effective, a certification trade mark must serve as a reliable indication to consumers of the characteristic certified and denote independent and objective certification that the goods and services possess that characteristic. If the registered owner of a certification trade mark were also to own and use the same trade mark for the same kind of goods and services, the registered owner could not objectively and independently provide and regulate the certification scheme and the certification standards to be followed by the approved users.

To this end, new section 13A of the TM Act will now ensure that the registered owner of a certification trade mark cannot separately register a trade mark for goods or services of the same kind for its own use.

Security for costs

In any legal proceedings before the court or Commissioner, including an opposition to a trade mark application, non-use revocation action, or invalidity proceedings against a registered trade mark, a party to the proceedings can seek an order that the other party pay security for costs within a specified time. Previously, the Commissioner and courts could order a party to pay security for costs only when that party did not reside or carry on business in New Zealand. This has now been extended to any party the Commissioner or court has reason to believe will be unable to pay the other party’s costs if unsuccessful in the proceedings. If a person does not comply with an order to pay security for costs, the Commissioner or court can treat the proceedings as abandoned by that person.

Fee Changes to New Zealand Trade Marks

In other news, the New Zealand Intellectual Property Office (IPONZ) has announced reduced fees relating to pre-filing search and advice provided by IPONZ and the filing and renewing of New Zealand trade marks, which will apply after 13 February 2020. These reduced fees are set out in the following table.

(These can be found on the IPONZ online classification tool at https://app.iponz.govt.nz/ipol/app/ui/services/preApprovedGS)