Declaration of Use for Trade Marks — Why and Why Not?

In an increasing number of countries, a declaration of use must be filed either before a trade mark is registered or at renewal. However, declarations of use are not a requirement under New Zealand trade mark law. This raises the question – is implementing a declaration of use requirement the right way to go?

The Current Situation in New Zealand

Under New Zealand law, an application for a trade mark is filed based on current, or intended, use of a trade mark. The action of filing a trade mark is considered enough to support a claim to use or an intention to use. No extra declaration or evidence to show use is required, so registrations can be obtained for broad goods and services. In addition, at renewal, a trade mark can be secured for a further 10-year term on payment of a fee without any requirement to show use on all the goods and services covered.

For this reason, unless a third party seeks to revoke a registration for non-use, trade mark registrations can exist for years without the trade mark ever being used.

The Effect of a Declaration of Use Overseas

Countries requiring a declaration of use during the application phase also necessarily require that an application is limited to the goods and services where use can be demonstrated before registration. Owners who file for wider goods or services must limit the application to area of use to secure final registration, or otherwise risk losing the entire register right under attack on the ground the claimed use was fraudulent.

Declarations of use before or at renewal also provide the trade mark owner an opportunity to review the register right and keep it relevant to current use. In this way the register is “cleaned” of trade marks no longer used on the goods/services covered by the registration without requiring third-party intervention.

In Favour of a Declaration of Use Requirement

With the increasing ease of the trade mark application process, comes the increase in risk of speculative trade mark applications.

Reduces Burden on Businesses: If legislation does not require proof of use before applications mature to registration, or at renewal, then the burden necessarily falls on businesses to “clean” the register of potentially spurious trade marks that bar their own trade mark applications.

Businesses must then factor into branding strategy the cost and delay of oppositions, invalidity actions and non-use actions, increasing cost and complexity.

Encourages Careful Branding: The additional requirement of a declaration of use before registration would encourage traders to consider the application more than a “tick-box” matter. Having an extra hurdle between application and registration should discourage speculative registrations and encourage considered decisions around branding.

Increased Weight in Enforcement: A registration secured after filing a use declaration, or a renewal supported by a use declaration, will provide at least initial demonstrable use. The underlying registration can then be assumed to be valid at the time of the declaration and this would add weight to the impact of a registration in an infringement action.

Ongoing Audit: On-going renewal declarations would also incentivise traders to keep their trade marks in use matching the trade marks on the register, and vice versa.

Against a Use Declaration Requirement

A system requiring declarations of use may stifle brand expansion given the economies of re-filing for each new iteration of a brand.

Continual Need for Registration Review: Filing for limited goods may also result in unworkably narrow register rights that do not allow for reasonable expansion of products or services offered over the lifetime of a business. Each new use could require a new trade mark application, meaning traders must bear in mind future expenditure in keeping the register up to date.

Risk that Register Rights are Sacrificed: The cost of needing to continually update trade mark registrations may mean registration of trade marks is not pursued as an avoidable expense. This could be to the detriment of the business’s ability to protect its interests in the future.

Encourages Complicated Fair Trading Litigation: If a registration for broader goods/services than those in use at the time of filing is not allowed, business owners may also be forced to adopt a litigious position through fair trading legislation or other commercial avenues because the deterrent value of a narrow registration is also less.

Excessive Legislative Hurdle: Current legislation already provides means through opposition, invalidity action and revocation for non-use where third parties can keep the register clear of trade marks unsupported by use or a genuine intention. Adding an extra legislative requirement during the application/renewal stage may be an excessive hurdle for genuine businesses.

Burden of Action Sits with Trade: Where there is no requirement under legislation to file additional documents, the costs of keepings the register clean sits with businesses who will benefit from the outcome. Public costs (through portioning of taxes) will not need to accommodate extra administrative steps at the Government level to ensure compliance with law.

Our View

While there is a risk of a cluttered register where proof of use before registration is not required, a registration limited by actual use is arguably too inhibitive.

A registration that covers an area of bona fide intended use broader than the current use provides trade mark owners with the margins of exclusivity necessary to develop a business over time. Overly restricted trade mark registrations run the risk increasing compliance cost in securing registered trade mark protection. Faced with increased cost at early stages, businesses may well decide to forego registered trade marks, leaving themselves open to uncertainty and potential cost in the future by relying on common law rights.

A good compromise may be to require a use declaration at renewal. This will allow for normal business growth and will prevent un-used trade marks remaining on the Register where the owner has no use to justify the monopoly granted by a registration.

Recommendations

The best way to ensure a wide sphere of rights is to identify a trade mark which is wholly distinctive for goods/services to be covered.

A distinctive trade mark is not only easier to register, but it is also typically easier to enforce under the Trade Marks Act and under common law rights.

Having identified a strong brand, owners should recognise that there is an art in crafting a description for trade mark applications which reflects intended use and is broad enough to provide a good sphere of rights. A well-filed trade mark will meet the bench-mark of current laws and will also be able to translate to accommodate any new requirements in the future, such as use declarations.

Your IP professional is the best person to assist you – talk to us today for assistance.

Trade Mark Renewal Reminders — Should You Act?

Trade mark owners are receiving an increasing number of offers from agents to renew registered intellectual property for New Zealand and overseas. While some of these agents look like they are offering a good deal, it is important to check that you will be getting the service you need.

Some claim: Renewal is due in the next couple of months and if you don’t instruct now you will lose your register rights.
The truth: Often the date noted is more than 12 months before renewal is due. You have plenty of time to instruct.

Some claim: They can renew for much less cost than our services.
The truth: The initial fee may be less, but having agreed to the service, the agent may issue several invoices to finalise renewal in addition to the first estimate. The overall cost is then much higher.

Some claim: The renewal will be processed once they receive your money.
The truth: The money disappears, and the renewal is never processed.

What to do: Don’t instruct without checking first!

If you filed through an attorney firm, your IP provider should have register rights and renewal dates noted on its records. If you receive a reminder and it is not from your provider, we recommend you make contact so that details can be checked, and a trusted agent can confirm what action you should take (if any).

Geographical Indications, European Trade and Indigenous Rights – a Fair Exchange?

Earlier this year the Ministry of Foreign Affairs and Trade (“MFAT”) held consultation workshops discussing the inclusion of mutual recognition of geographical indications in negotiations for a free trade agreement with the European Union (“EU”). In this forum, questions were raised around the equity of the proposed exchange. While this article discusses some of these concerns, and proposes an alternative basis for negotiation, the contents are not part of the MFAT negotiation process.

What are Geographical Indications?

The term “geographical indication” refers to a place that is recognised as the origin for product containing special characteristics. This can be a special tang to the wine, or bite to the cheese, or a special method of manufacture that lends the crystal that extra gleam.

The EU has a well-developed portfolio of produce indicative of the place of origin developed from centuries of farming and industry. Laws to identify and protect these geographical indications are already developed and recognised throughout the EU.

In the current negotiations there are over 2000 identified European geographical indications for wine, spirits and food goods.

By comparison, New Zealand (NZ) is a young country. While NZ produce is fast becoming known for its own flavours and styles, formal recognition of geographical indications is still a relatively new concept in law. NZ recognition of geographical indications is at present limited to the Geographical Indications (Wine and Spirits) Registration Act 2006 and registration has only been available since 2018.

NZ currently has 25 recognised local geographical indications for wine – including Marlborough and Matakana.

The Current Proposal

Put simply, the proposal is for mutual recognition of registered geographical indications. In exchange for recognising the EU geographical indications, the EU will provide trade advantages to NZ to make it easier to trade into Europe.

Detail around a regulatory framework is needed and will be subject of a further negotiation if the negotiation has a satisfactory outcome. It is proposed that an agreement could include recognition of future geographical indications pertaining to food and beverages.

MFAT’s Position

MFAT recognises that there is an imbalance of size and power that makes trade into Europe difficult. The impression the writer was left with after the consultation meeting, was the MFAT considers the provision of reciprocal recognition of geographical indications was a small part towards achieving an agreement with significant financial benefits for NZ.

What this Means in Practice

Many terms that may be considered a geographical indication in the EU function more as an indicator of style in NZ – for example, cheese types like camembert and feta, or effervescent wines like prosecco.

Under the current proposal EU geographical indications will be recognised in NZ unless there is a successful objection to recognition of any one term. The onus therefore is on New Zealanders to review the proposed list of over 2000 geographical indications and raise an objection to inclusion.

If NZ recognises EU listed geographical indications, producers and traders will also need to review the list of geographical indications and consider any adjustments to their use. This may mean adopting new “style” terms and taking steps to change the way consumers approach and recognise produce.

Where will NZ “miss out”

Nothing in the current scope of negotiations allows NZ to propose indigenous terms unrelated to geography for recognition by the EU.

NZ holds high cache in its Maori language term for aspects of tapu and taonga and equally for noa terms that carry with them connotations of origin and quality.

Maori words are often exploited by overseas producers, including prominent use of the word HAKA, ta moko and pukana, with seemingly no thought as to whether use of these terms is offensive.

In the event of a successful negotiation on the current grounds, NZ will recognise EU geographical indications, but the EU will not be compelled to recognise NZ’s own special linguistic terms.

A Workable Alternative?

Mis-use and offensive use of Maori terms and images often makes the news headlines. NZ provides a framework to some degree to allow for objection to use of Maori terms as a trade mark. However, in the writer’s opinion, formal recognition in a searchable register would go a long way towards enabling consumers in NZ and abroad to identify and recognised special terms.

International negotiations require a firm frame of reference in order to recognise rights with clarity. So once a register of special Maori terms exists, surely there is an ability to enter this as framework for negotiations?

What Should You Do

The benefits to NZ traders in establishing free trade into EU needs to be carefully weighed up against the potential downfalls of the proposed framework currently under negotiation. As well as questioning whether we should sacrifice the ability for local traders to continue to use terms they’ve used for years, like FETA, we should ask whether these negotiations risk being a missed opportunity to introduce means to prevent the EU from using words significant to NZ such as Maori words which arguably act as GIs.

For NZ food and wine producers: Understand the implications of recognising EU geographical indications and get advice now about your current use of style-based terms. Are these terms likely to be identified as geographical indications? Do you need to adjust your use?

For those who are keen to protection NZ’s special identity: Have your say! Not just for lawyers and producers to weigh in on negotiations – we all need to have a say when invited. Look out for opportunities to be involved in consultation process.

Educational Purposes Exemptions and Copyright

It is relatively common knowledge that authors and artists are entitled to copyright protection for original work. What is less well understood is how to identify who owns those rights, and in what circumstances the work can be used without being at risk of legal breach.

Copyright Act under Review

There are several points where educators may need to consider ownership and the ability to use copyright material. This article looks in brief at the educational purposes exemptions under the Copyright Act 1994 focusing on materials used by teachers when preparing a teaching course. Because the Copyright Act 1994 is under review, the parameters for these exemptions may well change, however a clear understanding of some of the founding principles of the exemptions is a valuable tool.

The Copyright Act 1994

The Copyright Act 1994 (“the Act”) provides a framework for authors and artists to identify a period of statutory monopoly for original work and an opportunity to reap a financial reward through licence or sale of original work during that period. The ability to benefit financially is meant to encourage artists and authors to develop original works. This must be balanced with a public interest in making certain information available to the wider community 1. The Act sets out various scenarios where the balance of public interest means copyright work should be able to be disseminated without risk of legal breach, including exemptions for educational purposes.

These exemptions to infringement are not an inherent permission for large scale copy and dissemination of whole bodies of work. Therefore, it is important to work carefully through the legal framework.

First Steps: Finding Out Who Owns the Copyright

Copyright does not need to be registered in order to exist. While the Act provides a framework to identify ownership and transfer of copyright, it does not provide for a Register and as such there is no cohesive central repository which records who owns copyright in various works. Some, but not all, work may be listed with Copyright Licensing New Zealand 2, but it is not enough to simply check this resource and assume that anything not listed there is free to use.

Copyright is generally owned by the author of an original work, unless it is a commissioned work or the work of an employee for an employer undertaken in the course of employment. Copyright may also be transferred in writing with the agreement of the first owner to another company or other individual 3.

A good first point of reference is to look for the © symbol. Proper marking will include a date from which copyright is claimed and the owner of that copyright.

In the absence of this sort of marking a series of questions will help identify copyright ownership:

  • Is the material original?
  • Is the author alive?
  • Is it published by a company or an individual?

Some Common Myths

A common misunderstanding is that copying of 10% or less of an original work is permitted and does not constitute copyright infringement. This is not correct in New Zealand. The Act makes no mention of 10% and you should not rely upon this formula. There is also no overarching fair use exemption for use of copyright materials.

It also does not matter where the material has been found – copyright can still exist regardless of whether the material is a printed publication or found on the internet.

If your use does not fit within the educational purposes exemptions, and you do not have permission for the copy, then you are at risk of legal breach.

The Educational Purposes Exemption

To fall within the educational purposes exemptions under the Act, the person providing the material must be part of an educational establishment or resource supplier as defined under the Act 4.

The Act then sets out a series of situations where copyright work can be copied for educational purposes and the calculation of acceptable level of copying for each scenario 5.

At a minimum in all circumstances the copying must be done by or on behalf of the person giving the course, and the material must be related to the course of instruction.

Copies Beyond the Educational Exemption

Where material could fall outside of the educational purposes exemptions, it is important to ensure permission has been obtained from the copyright owner.

A common way to secure permission is to obtain a licence. Licences must be negotiated with the copyright owner, or an agent employed by the copyright owner. The fee for the licence should be reasonable for the work and level of copy. While the Copyright Tribunal is available to assist in setting reasonable fees, it will not insist upon a licence where the owner refuses.

There are also important differences between a licence scheme for a body of work or group of users, and a series of individual licences which achieves the same end. It is important to be cautious and clear when negotiating the different options 6.

Acknowledging Sources

In all cases owners of original work are entitled to recognition of their authorship and to integrity in copies that are made – so called “moral rights” 7.

When using copies of original work, you should acknowledge your source every time and ensure the copy is accurate.

Guidelines are Key

Guidelines set in place early can help educators work through the exemption provisions and avoid potentially costly difficulties. Key points to note for educational exemptions guidelines include:

  • Exemptions are limited to statutorily recognised educators.
  • The material must be linked to a course of study.
  • The Act sets out formulas which limit the information that can be copied. This is not 10%!
  • Sources need to be acknowledged and copies need to be true.

Talk to your IP Advisor today for further help.


1 University of Auckland v Copyright Licensing Limited [2014] NZHC 1015 at paras 11 and 12

2 Copyright Licensing New Zealand

3 Copyright Act 1994 section 21.

4 Copyright Act 1994 interpretation of educational establishment references in turn the Education Act 1989 and Private School Conditional Integration Act 1975.

5 Copyright Act 1994 sections 44 to section 49.

6 Copyright Licensing Ltd v University of Auckland [2015] NZCA 12 discusses the limits of the powers of the Copyright Tribunal to become involved in negotiating fees for individual licences and licence schemes.

7 Copyright Act 1994 Part 4.

What should you do if your trade mark is used on the internet?

As commerce moves away from traditional physical stores and onto the internet, it becomes increasingly difficult to know when the actions of another trader on the world wide web are an actionable breach of your trade mark rights.

While the factors involved in this assessment are best worked through with the guidance of an IP professional, we note below some of the key points to consider:

How do I know if the use infringes my trade mark registration?

You need to think about what is actually covered by the trade mark registration:

  • Is the trade mark the same?
  • Are the goods and services the same?
  • Are there obvious sales in the country in which the trade mark is registered?

In some cases, it is quite clear that the trade mark is in use in a way which directly conflicts with your registered trade mark rights and this will probably be your main avenue for attack.

But what if the use does not look like it falls within the registration coverage?

Fear not, just because the case for trade mark infringement may not be strong does not mean you do not have any grounds for redress.

You may still be able to establish a case under fair trading legislation and/or for the tort of passing off.

What do I need for fair trading breaches and/or passing off?

The rule of thumb for a fair trading breach or passing off is that you have a reputation in a brand which is being adversely and unfairly affected by the activity of another trader. The use must be in the course of commerce.

What about if I have rights in New Zealand, but the company using my brand is based somewhere else?

It is important to look closely at the use and identify each country where you could say the brand is being used to see if you can choose a country where you have best rights.

If a website offers the option to purchase products you should look at the country where the product is packaged and offered for sale. You should also think about whether product can be shipped to New Zealand direct from the seller. Drilling down into the supply chain may help you choose the best jurisdiction in which to take action.

The Private International Law (Choice of Law in Tort) Act 2017 summarises many years of case law on the topic of choosing a jurisdiction for tortious action and confirms that the general rule is that the country in which the tort is committed is the country whose laws will apply.

For the purposes of passing off, if part of the act is in one country (for example, order received and shipping) and the rest of the act is in another country (goods delivered and released to market) the tort can be pursued in the country in which “the most significant element … of those events occurred”.

This Act confirms you no longer need to be eligible to have an action in both countries involved in order to pursue your rights in one country.

Do I have to send a formal letter?

Laws are constantly being developed to place obligations on internet-based sales platforms to ensure the rights of trade mark owners are recognised and respected.

In many cases international sites such as Ebay, YouTube and Alibaba have IP protection clauses which help trade mark owners control potentially infringing use by dealing directly with them.

In less straightforward cases, it is likely formal cease and desist correspondence will be necessary.

In all cases, your best first step is to review your options with your legal advisor as early as possible.

New Zealand’s New Grace Period

On 30 December 2018, New Zealand will implement a grace period for disclosures by an inventor or applicant made in the year before a patent application is filed.

This follows from New Zealand ratifying the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) on 25 October 2018, and the CPTPP being scheduled to enter into force on the same day.

This article discusses how the new New Zealand grace period will work.

Current situation

Currently, any public disclosure of an invention could prevent an applicant obtaining a New Zealand patent for that invention. There are only very limited situations in which disclosure can be disregarded (such as being in breach of confidence). This change will align New Zealand with countries like Australia, the United States, and Japan.

Many jurisdictions (notably Europe and China) still have limited, or no, grace periods for disclosures. A disclosure before filing a patent application can therefore still be damaging, and should be avoided if possible.

The new law

From 30 December 2018, the Patents Act 2016 will have a new grace period provision in section 9(1)(f). This will provide:

(1) For the purposes of section 8, the disclosure of matter constituting an invention must be disregarded if 1 or more of the following applies:

    (f) that disclosure occurred during the 1-year period immediately preceding the patent date and the disclosure was made by any of the following persons:
        (i) the patentee or nominated person:
        (ii) any person from whom the patentee or nominated person derives title:
        (iii) any person with the consent of the patentee or nominated person:
        (iv) any person with the consent of any person from whom the patentee or nominated person derives title.

Which patent applications can use the grace period?

A patent application must have a patent date within 1 year of the disclosure. The disclosure must have occurred on or after 30 December 2018 (future Schedule 1AA(4) of the Patents Act 2016).

The patent date is the date a complete specification was filed (s 103(1)(a)) or that the PCT application was filed (s 46). The filing date of a provisional specification, or any other priority date, is not the patent date.

The provision is not retrospective. Any disclosures that occur before 30 December 2018 are not covered by the grace period.

If you wish to take advantage of the grace period, a complete specification must therefore be filed within one year of the disclosure. It may be worth filing a PCT application in the first instance to use the grace period in multiple countries at once.

Who can disclose?

The new provision expressly covers disclosures made by the patentee (or nominated person who will receive the granted patent, if different) (s 9(1)(f)(i)), the inventors (or anyone else the patentee derives title from) (s 9(1)(f)(ii)), and anyone else with consent of these parties (s 9(1)(f)(iii)–(iv)). This seemingly covers anyone directly involved in a patent application.

This complements the existing provisions which provide a 1-year grace period for disclosures made unlawfully or in breach of confidence (s 9(1)(a)–(b)).

What about third parties?

If a third party receives the inventor’s public disclosure, then on-discloses the information they received, would this third party on-disclosure be covered by the grace period?

Maybe not. A strict reading of the provision would suggest third party on-disclosures are only covered if the third party has the consent of the patentee or inventor. How this works in practice is unclear. Can an unknown party in unknown circumstances receive consent? Does the act of making the information available to the public give implied consent to the public generally for on-disclosure? Would a copyright notice that the information is not to be copied be equivalent to an express lack of consent?

For example, a common scenario would be when an inventor discloses their invention publicly at a conference, and a third party (unknown to the inventor) then publishes a summary of the invention. It is unclear if the third party summary is covered by the grace period or whether it would be prior art.

This exposes a potential hole. Some disclosures may not have consent (and therefore cannot use the new s 9(1)(f) grace period) but are not in confidence or obtained unlawfully (and therefore cannot use the existing s 9(1)(a)–(b) grace period). These disclosures will therefore still be prior art.

Whether third party on-disclosures are covered by the grace period may need to be settled by the courts. Interestingly, the underlying text of the treaty contains no reference to consent being required for the grace period to apply. Instead, the treaty requires that disclosures by “a person who obtained the information directly or indirectly from the patent applicant” must be disregarded (Trans-Pacific Partnership Agreement art 18.38). Depending on the interpretation by the courts, it may therefore be that New Zealand law is not fully in compliance with this part of the treaty.

In the meantime, to mitigate the potential risk of third party on-disclosure, patent applications should be filed as soon as possible after a public disclosure.

How does this compare with Australia?

Australia has had a 1-year grace period since 2002.

The Australian grace period provision is worded differently. The Australian grace period covers information made publicly available by or with the consent of an inventor or applicant (Patents Act 1990 (AU) s 24(1)(b)). The Australian provision therefore focuses on the information disclosed, rather than who made the disclosure. This side-steps the issue of whether a third party needs consent for the grace period to apply to on-disclosure, as long as the initial disclosure was made with consent.

It appears the New Zealand provision was based on the Australian provision. But the change in wording to focus on the person disclosing rather than the information disclosed may be meaningful. It may suggest an intention from Parliament that unconsented third party on-disclosures are not covered by the grace period, and therefore should still be usable as prior art. It remains to be seen how this is applied by the courts in practice.

UKIPO Update on Brexit

As the Brexit date approaches, recent reports indicate that the UK Government will offer automatic and free conversion of EU registered trade marks into UK registered trade marks.

But how accurate is this?

White Paper on Future Relationship issued by UK and EU 12 July 2018

The UK Government continues to negotiate with the EU as the Brexit date approaches and confirms a desire to minimise disruption to businesses.

This does not go so far as to confirm free and automatic conversion of trade marks.

The White Paper rather proposes that the UK should continue to have an active relationship with the EU to support EU and UK rights holders. It still remains to be seen which option will be followed.

What Should You Do Now – August 2018?

We caution against relying on conversion of rights by the UK Government. In order to put your business in the best position, we recommend following the same steps noted in our previous article:

  • Identify your true market and make sure your protection covers that market.
  • Keep your UK and EU trade marks in force. If you have a trade mark registration which is due for renewal, and the registration reflects what you are using, then we recommend you renew your registration and do not allow it to lapse.
  • Update any out of date Register rights. This could mean new UK or EU applications, either national filings or under an application under the Madrid Protocol system.
  • And finally, do not forget about third party agreements – review what you have and update what you need to update now!

And throughout all these steps, remember that we are here to help!

Ellis Terry Overturns Restrictive Amendment Practice

Applicants in New Zealand have been suffering under a restrictive amendment practice adopted by IPONZ that would have left applicants unable to remedy potentially fatal deficiencies. Ellis Terry recently took a case1 to a hearing that has overturned this practice.

New Act and Regulations

Under the new Patents Act 2013 it is a requirement that all claims must be “supported” by matter disclosed in the specification. The regulations governing the process for amendment of the specification also use the word “support”.

IPONZ Practice

IPONZ interpreted the regulations to require “support” (as used in the Act) for any amendment to either the description or claims. This practice was adopted despite the fact that the Act specifically provides for the post-dating of amendments; post-dating could clearly only occur in the case of unsupported amendments.

The issue in question

It is uncertain under the new Act whether classical inutility (where a claim is invalid if it fails to meet the objects of the invention) still exists, although the IPONZ website says that classical inutility does still apply, as is the case in Australia by virtue of an explanatory memorandum to a similar section.

In the case in question an amendment was requested to amend objects of the invention by adding the alternate object “to at least provide the public with a useful choice”. Such amendment had been routinely allowed under the previous Act.

IPONZ objected that there was no “support” for the added words. It is true that there was no wording that could be pointed to that provided “support” (as used in the Act) for this wording. Failure to allow such an amendment could have left the applicant with an incurable flaw that could render its patent invalid with no way to remedy the situation. This would have put foreign applicants, unaware of this arcane ground of invalidity, in a perilous position.

Decision

Upon reviewing the statutory context the hearing officer ruled that the regulations did not impose a substantive requirement for specific support for every amendment. Rather, the regulations are procedural and are intended to expedite the examination process; an applicant relying on support in the original specification for an amendment should point to support so an examiner does not have to ‘go hunting’. The hearing officer indicated that support may not be required for deletions or amendments to improve conciseness. The addition of ‘or to at least provide the public with a useful choice’ was allowed.

This is a welcome decision that will relieve applicants that have been faced with exasperating support objections.

Trade mark protection – What should you register?

Picture this; you develop a trade mark for a hat, do some due diligence, find it is clear and secure a trade mark registration for “hats”. Fast forward five years, and business is going well. You’re thinking about expanding your product range into “belts” and invest a lot of money into the new product. Then on launch day, you find out someone else is using just about the same trade mark on “belts”. Worse still, these other people have a trade mark registration and they are now suing you for trade mark infringement.

What could you have done to avoid this situation?

Under New Zealand law there is no requirement for the filer of a trade mark application to show that it has used its trade mark in New Zealand in order to gain registration. This allows applicants to claim an area of exclusive right which is actually broader than the area where the trade mark is currently being used and to mark out areas of potential future growth.

A key benefit in spending the time and money in securing a broad registration at the outset is the fact you do not need to show evidence that your trade mark is in use before you sue for trade mark infringement. This means you could use your broad trade mark registration rights to stop other traders encroaching into your future growth areas.

By comparison, an action under the Fair Trading Act or for passing off requires that you have a reputation in trade before you assert your rights. By their nature, these actions are limited to the area where you are actually using your trade mark. A broadly scoped registration will therefore mean you could sue on more rights than if seeking to sue under the Fair Trading Act and/or for passing off.

The next question is how broad is too broad?

The fact that you have a registered trade mark does not mean that it is invulnerable to attack by third parties. If you file for goods where you have no real intention to the trade mark, the registration may be immediately vulnerable to removal from the Register.

Further, once a trade mark registration is more than 3 years old, it is vulnerable to removal in relation to all the goods and services described in the registration where no use has been made.

If your registration is obviously too broad, an attempt to sue for trade mark infringement could result in a counter-suit for removal of the trade mark registration.

A good rule of thumb therefore is focus your trade mark on your goods and services, and cover what you are using, but to also bear in mind the option to seek more rights.

The skill in crafting application descriptions which allow the owner to focus rights to their best advantage is developed through years of reviewing the Register, the market place and recent trends in examination for trade mark applications, removal actions and infringement action.

Our recommendation is to always take advice before filing applications. Extra outlay in the early stages of a filing strategy could avoid litigation and argument in the future.

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.