RECENT NEWS

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.

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.