Ellis Terry features in 2018 Managing IP Results

Ellis Terry is, in 2018, once again ranked by Managing IP as one of New Zealand’s preeminent firms for patent prosecution.

For more information see here.

Brexit Trade Mark Changes Update

State of Play So Far

  • 23 June 2016 referendum held in the United Kingdom (UK) to decide whether to leave the European Union (EU) was held – 52% majority to depart.
  • 29 March 2017, Article 50 of the Treaty of the EU was invoked and started the ball in motion.
  • 29 March 2019 due date for UK to leave.

Current Trade Mark Laws

For many years a cost-effective way to secure trade mark protection across all Member States of the EU has been to file a European Trade Mark (EUTM) application.

Not only is the cost of filing a EUTM much less than filing separate National trade mark applications in 28 countries, use in any one Member State is deemed sufficient to support the entire EUTM. This means traders did not need to show use throughout all Member States to benefit from a Register right throughout the EU.

Under current timetables, following 29 March 2019 the UK will no longer be part of the EU and will not benefit from rights as an EU Member State.

Effect on Validity of Current EUTM Registrations

Once the UK is no longer an EU Member State there will be certain immediate impacts on EUTM registrations:

  • Registered rights in an EUTM will no longer cover the UK.
  • Use in the UK will no longer be enough to support an EUTM registration.
  • Seniority claims in EUTMs based on UK registrations will no longer have effect.
  • Reference to the EU as a legal jurisdiction will no longer extend to include the UK.

What Could Happen

Laws to manage what will happen to UK rights previously encompassed by EU laws are still being drafted, so there is still much uncertainty around the EUTM. Recent reporting envisages three possible options for current EUTM rights:

  • EUTM registrations could automatically be translated to corresponding UK registration rights; or
  • Having an EUTM registration could create an option for the applicant to seek UK registration using the EUTM as a priority base. UK registration will issue after examination of the UK application under the UK trade mark laws; or
  • EUTM registration rights in the UK could simply cease to have effect in the UK, with no provision to translate those rights to a UK registration.

What Should You Do Now?

Identify your true market.

You should first identify where your market is situated. You should ask yourself if your business is truly European in its spread, or focussed on the UK.

If you are focussed on the wider European market, you must consider whether your current use is enough to support an EUTM. For example, can you show use of your trade mark in EU Member States outside of the UK which will continue to support your EUTM?

Keep your UK and EU trade marks in force.

If you have EUTM or UK trade mark registrations due for renewal in the next year or so, and assuming the trade mark and the coverage is current, we recommend you do not let these listings lapse.

While there are indications that there will be an opportunity to create UK register rights out of EUTM registrations, nothing has been released regarding process, cost or effect. Until it is clear what will happen, we recommend you keep your current registrations to ensure you retain valuable priority claims.

Update any out of date Register rights.

If your current trade mark coverage is out of date because the trade mark is “old” or the goods and services are not current, think about filing now in the UK and EU to give you a “belts and braces” approach in advance of new laws being enacted.

Do not forget about third party agreements.

Many legal documents such as co-existence or settlement agreements will refer to the EU where the actual market interest may include or be factually limited to the UK. Separate provisions for the UK may not have been included. After 29 March 2019, there is no automatic extension into the UK of obligations and restraints that are effective in the EU.

Any EU agreements should be reviewed to see whether clarification is required to ensure the UK is covered.

Geographical Indications for Wines and Spirits now Registrable in New Zealand

The Geographical Indications (Wine and Spirits) Registration Act 2006 (“the Act”) and the associated regulations came into force on 27 July 2017.

The Act creates a Register where geographic locations in New Zealand can now be registered as Geographical Indications (“GIs”) and where GIs registered overseas can be recorded. Use of the registered GIs are then reserved for wines and spirits from those areas.

Applications for GIs are made at the Intellectual Property Office of New Zealand (“IPONZ”). The Act provides tools to allow IPONZ to determine if a location is geographically indicative of the wine or spirits from a particular area. This includes an assessment of the impact the terroir of a location has on wine or spirits from that area. Since 27 July 2017, applications for registration have been lodged for a number of well-known wine regions as GIs.

The most obvious impact registration of GIs will have on wine retailers is the restriction that will be imposed on the way in which GIs can be used on wine labels. If a wine is made from grapes sourced from a variety of different locations, use of a GI on the label may breach the new Act.

There is also the potential for branding based on locations to become less distinctive over time because of the development and registration of new GIs.

It is worth noting that the Act does not limit the registration of New Zealand GIs to locations identified on a standard map. New areas can be identified as significant for a style of wine or spirit. Provided those areas meet the criteria set out by the Act, those areas can then be registered as GIs.

The registration of new GIs over time means that limitations on wine retailers and producers will also change.

We recommend that all wine producers and retailers review their current labelling as well as their plans for brand development to ensure that branding steers clear of potential breaches of the Act.

With a wealth of experience in working with renowned New Zealand wineries, Ellis Terry is well-placed to assist in identifying limitations to use of geographic names in New Zealand and in identifying and protecting strong trade mark rights for importers and exporters alike.

NZ joins Global Patent Prosecution Highway

New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme on 6 July 2017. The GPPH is an agreement between patent offices around the world that provides a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.  The patent offices participating in the GPPH pilot programme include some of New Zealand’s largest export partners including Australia, Canada, Japan, South Korea and the United States.  At present the European Patent Office (EPO) and China (SIPO) are not part of the GPPH pilot programme.  Both are members of the IP5 Patent Prosecution Highway (EPO, JPO, KIPO, SIPO and USPTO) so they may join the GPPH at a letter stage.

Expedited examination may lead to the earlier grant of a patent, this is particularly advantageous in some of the participating counties that have traditionally been slow (5 – 10 years) to examine patent applications.  While GPPH does not guarantee grant of a patent in a participating office, GPPH speeds up examination for the patent application and an allowance or grant in one of the offices gives an earlier indication of the scope of protection that will likely be allowed in other participating countries.  Such information is valuable when making decisions with respect to overall commercialisation strategy.  If filing a GPPH request in New Zealand, IPONZ is usually respectful of other offices and is likely to apply findings of other offices unless there is good basis to find otherwise.

Examination in the New Zealand Patent Office is usually reasonably fast compared to other countries.  Overseas and New Zealand based applicants, can use the accepted claims of their New Zealand patent application and the GPPH to expedite examination of corresponding applications in other participating countries.  Alternatively, overseas applicants can use accepted/allowed/granted claims of a corresponding application from a GPPH member country to expedite examination of their New Zealand patent application.

Should I use GPPH?

The decision to use or not to use the GPPH program depends on your IP and commercial strategy and your current patent portfolio. The use of the GPPH provides another tool that can be integrated into your overall IP strategy.

The requirements of New Zealand and Australia are similar and so the GPPH can be used cost effectively for both countries through one agent, as both countries require similar concordance tables and an application prepared for New Zealand could be applied in Australia with minimal adjustment allowing the same work product to be used in both countries.

For more information and expert commentary, go here.

China’s Official Trade Mark Fees Reduced by 50%

As of 1 April 2017, the Chinese Trademark Office has reduced a number of official trade mark fees by 50%. It has done this as part of the Chinese government’s effort to encourage entrepreneurship and innovation.

The 50% reduction in fees covers:

  • Filing trade mark applications
  • Renewing trade mark registrations
  • Opposing trade mark applications
  • Cancelling trade mark registrations
  • Recording updates to existing owner details on the Register
  • Recording assignments of trade mark rights on the Register

New Zealand brand owners may perceive the fee reductions to be relatively modest, and not particularly advantageous. However, they should be aware that the reduction in fees may incentivise trade mark squatters to file trade mark applications in bad faith, which is an ongoing problem in China. This problem is exacerbated by the fact that China’s trade mark system is based on a ‘first to file’ rather than a ‘first to use’ principle.

We recommend you review your existing trade mark portfolio in China, with a view to filing new applications and/or updating Register details for your existing Chinese trade mark registrations.

We also refer you to a previous Ellis Terry article which contains helpful information about protecting your trade marks in China.

If you are interested, please contact us to discuss how you can protect your trade marks in China in more detail.

Disclaimer: This article is intended to provide general information only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Ellis Terry named New Zealand IP Prosecution Firm of the Year at Managing Intellectual Property Awards ceremony

We are delighted to announce that Ellis Terry was awarded the New Zealand Prosecution award for 2017 at the Managing IP Global Awards on 9 March 2017. The Managing IP Global Awards recognise the best Intellectual Property firms in the world.

The annual awards ceremony, which took place at The Savoy in central London, saw over 250 IP professionals celebrate successes and achievements within the international IP world.

Among the accolades this year was Managing IP’s first ever prosecution award for New Zealand, presented to Ellis Terry for its outstanding work in prosecuting patents, trade marks and designs. The increased number of awards for the New Zealand category acknowledges the growing importance of the New Zealand IP landscape.

Ellis Terry partner Blayne Peacock said “we are thrilled to accept this award and the acknowledgement of our clients and colleagues around the world. The team at Ellis Terry has worked tirelessly to help protect and enforce innovation for New Zealand based organisations for many years. This recognition is a testament to the success of our clients in their chosen markets and to the high quality of research and development, and products, coming out of kiwi technopreneurs”.

For more information, please visit: http://www.managingip.com/Article/3668349/Awards/Managing-IP-Global-Awards-Winners-2017.html.

About Ellis Terry

Ellis Terry has offices in Auckland and Wellington and practices in all aspects of intellectual property law. Established to serve a local and international client base, but with a strong New Zealand client focus, we advise on patents, trade marks, registered designs, copyright, litigation and commercial law. We do more than just protect ideas, creativity and brands. We put the legal issues into their proper commercial context so that intellectual property can be managed just like any other business asset. We think outside the box to help develop successful commercial strategies and to implement them through our network of funders, advisors and businesses.

Ellis Terry offers legal assistance to innovative entrepreneurs and corporations in a range of industries. Creators of artistic works, inventors and designers from diverse specialist fields, including mechanical, electrical and computer engineering, have sought our guidance. Our trade marks team works with clients from a variety of industries, including the food and beverage, pharmaceutical, technology, film and entertainment, insurance, farming and agricultural, building, clothing and textiles, automotive and wine industries.

About Managing IP

Founded in 1990, Managing IP is the leading source of news and analysis on intellectual property developments worldwide.

The annual Managing IP Global Awards are the premier international awards for the intellectual property profession. The awards are based on extensive research and interviews with practitioners worldwide. A team of researchers based in London, Hong Kong and New York contact firms and clients in 75 jurisdictions to ask them for information and feedback.

Managing IP is part of the Euromoney Legal Media Group. Euromoney Institutional Investor PLC is listed on the London Stock Exchange.

Protecting the Material World

21 October 2016

Season after season, upmarket designers produce runway looks which are then swiftly replicated and manufactured by more affordable chain stores. This practice – known as fast fashion – fuels the global fashion industry. But while some participants in this copycat economy simply draw inspiration from current styles and trends, there are others who push the boundaries by copying designs outright.

Copied designs can be attractive to consumers who would be reluctant, for instance, to pay $700 for a Self-Portrait dress when they could simply purchase a ‘Self-Portrait style dress’ from alibaba.com for around $30. But for the fashion industry as a whole, these cheap knock-offs can tarnish the exclusivity and desirability of leading brands and take money out of the hands of the talented designers who created the dress in the first place.

This is why Intellectual Property (IP) laws are a critical part of the multibillion-dollar fashion industry. These laws strive to protect the interests of designers, without going so far as to stifle healthy competition. That said, designers still face a number of obstacles when it comes to defending their IP. There is time and cost involved with pursuing infringers every season, as well as reputational issues, including opening themselves up to attacks on social media for ‘bullying’ smaller players.


Copyright is an unregistered IP right which protects original creative works, including clothing designs, for up to 16, or even 25 years, depending on the particular article.

Last year, the New Zealand Court of Appeal upheld a claim by G-Star RAW that Jeanswest had infringed the copyright in their 5602 Elwood Jean. While Jeanswest only made $325 profit from selling its version of the jeans, the Court awarded G Star $50,000 in damages, plus interest and legal fees.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Drawings of the Elwood “Biker” Jean by G-STAR RAW (left) and the Jeanswest “Dean Biker” Jean (right) as used in the G-Star RAW case.

Registered Designs

A registered design can protect the external appearance of a manufactured article for a specified period of time, as long as it is new or original. While it may be impractical and costly for a designer to register every style they produce, a registered design might give valuable exclusivity to special cuts that will feature over a number of seasons, but in different colourways or fabrics. The catch is that the design application must be filed with the Intellectual Property Office before the garment is “published” to the world, so designers are well-advised to plan in advance.

Across the ditch, high profile designer Toni Maticevski recently announced on Instagram that his unique ruffle styles are now protected by Australian Design Registrations. It will be interesting to see if more Australasian designers with stand-out styles will follow suit.

Toni Maticevski

Extracts of Toni Maticevski’s Designs from the Official Australian Design Register

Registered Trade Marks

It is vital for designers to protect their brand names and logos. Consumers rely on branding to differentiate the products and services of one designer from another. They are loyal to brands they enjoy and have grown to trust.

Some designers will go to great lengths to protect their branding from unauthorised use, and rightly so. The exclusivity of designer brands is part of the reason why fashion houses like Chanel can command luxury prices year after year.

Registered trade marks are an especially valuable tool to counteract domain name squatters and similarly-named rivals. Infamous trade mark disputes involving New Zealand designers include RUBY vs Rubi Shoes, and Trelise Cooper vs Tamsin Cooper.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

Extract from the New Zealand Trade Mark Register of a Swanndri Trade Mark which was applied for in 1913 and is still registered to this day.

If designers are to thrive in the cut-throat world of the fashion industry, they need to understand how far they can go in looking for inspiration from other designers, as well as how they can safeguard their own livelihood from copycats. Consumers should also be mindful of the creative efforts which have gone into their favourite designs. While that $30 ‘Self Portrait style dress’ may seem tempting, it is this type of mind-set which is derailing the innovations of the fashion world.

Disclaimer: This article is intended to provide general information relating to New Zealand only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Ellis Terry named among world’s top patent professionals

Ellis Terry is proud to announce that John Terry and Blayne Peacock have again featured in the Managing IP survey and IAM Patent 1000 survey for 2016 under patent prosecution and patent litigation. The IAM survey refers to Ellis Terry as “New Zealand’s foremost specialists for all things electronics and mechanical”. Blayne has also been recognised as an expert in patent prosecution, copyright and litigation in the 2016 edition of Asia IP Experts.

Read more here.

Why and how your client should protect their branding

Brands and trade marks are powerful business assets. As consumers, we rely on branding to differentiate the products and services of one trader from another. We familiarise ourselves with the brands we use, and are loyal to brands we enjoy and have grown to trust.

No client wants the exclusivity and reputation of their branding to be undermined by a competitor. Clients should therefore seek timely expert advice in order to protect their trade marks. If a trade mark is protected at the right time and in a correct manner, the playing field can be levelled between individual traders, SMEs and corporations. Competition becomes less about “David v Goliath” and more about even competition among brand identities.

Let’s consider the hypothetical case of a client, Ace Corp Limited, who wants to set up a new venture. This case example is not a substitute for advice, and is instead a brief overview of some of the issues which should be considered by lawyers and their clients.

Ace Corp’s brand is born

When setting up a new venture, Ace Corp will probably have in mind a trade mark or two to be used on its product or to promote its services. Ace Corp’s trade mark might be in the form of a logo, a word, a shape or a colour, or a combination of various features.

Due diligence

In an ideal world, Ace Corp would first consult its intellectual property professional who can search the applicable registers and the online marketplace in Ace Corp’s key markets. The IP professional could then advise on the availability of the proposed trade mark(s) in terms of both:

whether the trade mark is capable of registration and therefore exclusive ownership; and
whether there is a risk the trade mark will infringe upon the rights of another trader.
The fact that Ace Corp may own the copyright in its brand does not remove the risk of trade mark infringement proceedings. An original logo which attracts copyright protection may still be attacked on the basis that it is too similar to a competitor’s mark used in respect of similar goods or services.

If Ace Corp does not instruct an IP professional to conduct relevant searches, and is not aware of the risks its choice of trade mark may pose, Ace Corp may find itself in a dispute with another party over the trade mark.

In a worst case scenario, Ace Corp might have to defend legal proceedings for trade mark infringement and potentially be exposed to damages. Even if this can be avoided, Ace Corp may have to re-brand. Re-branding can have significant consequences for a newly established business, adversely affecting growth and brand recognition.

Application process

Let’s assume Ace Corp’s IP professionals have analysed the search results and concluded that the trade mark is free to use. Ace Corp can then consult the IP professional to develop a filing strategy so that it can apply to register the trade mark in the countries in which it intends to trade, over a specified period of time.

The nature of the trade mark laws in the countries must be considered too. Certain countries such as China should be considered early on, given that it is difficult to battle trade mark squatters who take advantage of the reputation of overseas businesses. Further, depending on the countries where coverage is sought, Ace Corp may be able to delay filings for up to six months while being able to claim the filing date of the first trade mark application made worldwide.

The search may also have alerted Ace Corp to potential obstacles to the registration of its trade mark. Many applicants give up when a hurdle to registration is raised, but there may be strategies to overcome obstacles. If there is a trade mark which Ace Corp is dead set on using, or in which it has already invested significant resources, as part of the filing strategy Ace Corp’s IP professional can help manage these obstacles in a cost-effective way.

There are many benefits once Ace Corp’s trade mark application matures to registration. The presence of the trade mark on the register will serve as a warning to other traders who may be contemplating whether to adopt an identical or similar trade mark. Further, if a trade mark dispute arises it is usually easier and more cost-effective for Ace Corp to rely on its registered rights than it would be to rely on fair trading provisions and common law rights, including the tort of passing off.

Importantly, clients should note that a trade mark registration owned by a small local player can be used to hold at bay much larger companies who seek to enter the same market.


Ace Corp must carefully consider who should own the trade mark application. As with any asset, the implications of differing ownership structures must be fully thought out. It is common for a director to file a trade mark application in their own name, or for the wrong company to be inserted as owner of the trade mark, which may have adverse consequences down the line.

For example, during a merger or sale of a business, a company’s assets may be liquidated and the company dissolved. If the trade mark registration is not transferred at the right time, the registration will be deemed vested in the Crown, pursuant to the doctrine of bona vacantia, or “ownerless” property. If this is not addressed promptly, it may be a difficult process to claw back the registration.

Alternatively, if a trade mark has been filed in the name of an individual who is now deceased, the vesting of the mark in the individual’s estate may have unexpected consequences for the business, unless this was deliberate.

Importantly, the value of a registered trade mark is easier to conceptualise and quantify than that of an unregistered mark. This means that a registered mark can easily be identified in business agreements, including for the sale and purchase of a business, the assignment of property, distributorship and licensing. A trade mark registration may also need to be valued for taxation purposes, or it could form a registrable security under the Personal Property Securities Act 1999.

Domain name protection

As well as registering Ace Corp’s trade mark, it is wise to secure domain name protection. As the owner of a registered trade mark, Ace Corp has the right to own the corresponding domain name, unless another trader in a different industry who owns an identical trade mark registration has already secured the domain name. Ace Corp may also wish to purchase adult-themed domains, such as .xxx and .adult, or the controversial .sucks domain, in order to prevent others from purchasing these domains and tarnishing the reputation of its brand.

Growth of Ace Corp’s business

Registering a trade mark is not the end. Ace Corp and its lawyers must continue to consider the importance of trade mark registrations as the business enters different phases of development.

As part of this growth, Ace Corp might update its branding. Ace Corp could introduce a new style, colour or other additional features to its core trade mark. At this stage it is important to consult an IP professional to assess whether the trade mark protection already in place is enough, or if additional steps are required to secure protection for the revised branding.

Otherwise, Ace Corp may later find its trade marks are not properly protected, and it may be too late to secure exclusivity in the market if another trader has built up a reputation in similar branding for similar goods or services in the meantime.

How trade mark registration provides protection

For most businesses, branding is a valuable part of commercial practice. The scope of any trade mark registrations Ace Corp owns must therefore provide solid practical protection for its business activities, and should be future-proofed where possible.

When preparing an application for a trade mark registration it is important to consider how the trade mark is to be represented on the register. For instance, Ace Corp’s trade mark could be a word used in conjunction with a label that varies as to the quality of the product, or it could be a logo moulded into a particular point on a beverage bottle. In both cases, care and expertise is required so that the application best represents the trade mark in question.

A trade mark application can cover up to 45 classes of goods and services. Each of these classes are then broken down into further detail; often referred to as the specification. Specification drafting is an art. It is important that the trade mark specification covers Ace Corp’s proposed activities without being so narrow as to allow other traders to use similar branding on similar goods or services. Equally, the specification should not be so broad that Ace Corp’s application is frustrated by unnecessary obstacles, or later becomes vulnerable to removal on the basis of non-use.

It should also be reiterated that a business in an entirely different industry may be able to use the same brand as Ace Corp if there is no cause for confusion. There may, however, be grounds to take action if Ace Corp’s trade mark ultimately becomes a well-known or famous trade mark.

In conclusion

Branding is a very powerful asset and can make or break a business. It is important that a client’s trade marks are sufficiently protected, appropriately valued, and recognised in commercial transactions. Clients must undertake due diligence at the outset and as their business grows, in order to reap the benefits of owning a successful brand.

This article was first published in LawTalk, Issue 894, 11 August 2016.

Protecting your Trade Marks in China

If China is a market of interest to you, or you already trade in China but have not yet sought registered trade mark protection there, then it is advisable to do so sooner rather than later for the following reasons.

Third Party Registration of Foreign Trade Marks

Recent cases involving New Balance and Apple have emphasised that China’s trade mark system is based on a ‘first to file’ rather than a ‘first to use’ principle. Third parties often take advantage of the growing reputation of international brands by registering the corresponding trade marks in China, and Australasian brands are not immune.

While the 2014 law reforms recognise to a greater degree the existence of famous trade marks, brand owners with low levels of sales in China may encounter difficulties retrieving registered trademarks from third parties.

From a practical perspective, some of our clients have had to pay an inflated amount to retrieve their own trade marks, or rebrand in the Chinese market.

Chinese Character Trade Marks

It is important to consider how your English word trade marks are read in Chinese characters. It is easier for the Chinese public to identify and recognise a brand in Chinese characters, making the purchasing experience a memorable one.

There are multiple ways to translate an English word into Chinese characters, for example by translation or transliteration, or a combination of both. If you do not control this process and come up with your own Chinese character trade mark then the Chinese public could come up with their own version. This may adversely reflect on how you want your brand to be portrayed.

You should also secure registration for both your English word and Chinese character trade marks. This is because a Chinese character trade mark can prevent registration of your English word trade mark and vice versa, depending on the similarities in meaning and sound.

If you are interested, we can discuss ways in which you can translate your trade marks with our tried and trusted Chinese agents.

Disclaimer: This article is intended to provide general information only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.