RECENT NEWS

New Zealand’s Newest Website Domain Extension: .nz

The shortened domain extension .nz became available for registration as of 1pm on 30 September 2014.

This means individuals and companies, from both New Zealand and around the world, can now register theirname.nz.

New Zealand follows in the footsteps of the UK in dropping the .co and it is sure to be the most popular domestic domain name extension in time – rather than a question of if, it is inevitably a question of when this extension will take over .co.nz as the most prevalent and sought after domain extension.

Rights given to existing .__.nz registrants

If you have an existing .__.nz domain (e.g. .co.nz, .org.nz, .net.nz etc.) registered before 9am 30 May 2012 you are granted certain rights to obtain the .nz equivalent.

However, the effectiveness of these rights depend on whether there are other .__.nz registrations for your domain name (registered before 9am 30 May 2012) and what the intentions are of the other registrants with regard to the new .nz extension.

If you and another registrant, with the same domain but different extension (e.g. yourname.co.nz and yourname.net.nz), both want the .nz domain name, the new domain will enter into the conflicted name process. The DNC does not go into specifics as to what this process involves.

If there is no clear outcome from the conflicted name process the DNC will offer a facilitation process to aid in resolving who should acquire the new domain.

Alternatively, if there are no other registrants of your domain name you can register or reserve (free for two years) the new shortened version of your domain name.

Issues to be aware of

The opening up of this top level domain name does not come without the usual squatting issues.

Again, New Zealand’s domain name commission (DNC) have disregarded trade mark rights as a barrier to registration. This is in contrast to Australia, where a legal claim to a name (such as a registered trade mark) is required before you can register a domain.

Examples of suspected squatters are already emerging in the .nz domain space, including the following registered domains:

Mercedesbe.nz
Mercedes-be.nz
Splite.nz

As is made clear from the above registrations, the protection afforded by the DNC’s protocols may not extend to stop anyone registering domains which include words which are confusingly similar to existing registered trade marks.

Be aware that the prior registered rights granted to the holders of a .__.nz domain name are only given to those who have been registrants since before 9am 30 May 2012.

This means that if you registered after this date, and the .nz extension is important to you, you will need to register the new domain as soon as possible before it gets snapped up by another interested party as names without prior rights are governed by the first come, first served policy.

But remember that you won’t have any claim to the new domain extension if someone else has registered it prior to 9am 30 May 2012.

You can check the status of any proposed .nz domain name at www.anyname.nz

If you would like help registering your domain, or if you are having trouble obtaining a domain you feel you have existing rights in, please feel free to get in touch.

Please visit www.ellisterry.com for further information on all aspects of Intellectual Property, or email Emily Ellis at emily.ellis@ellisterry.com if you would like to discuss any issues relating to avoiding genericism in your brand.

First award of indemnity costs by the Intellectual Property Office of New Zealand

Ellis Terry was recently successful in obtaining what is believed to be the first award of indemnity costs by the Intellectual Property Office of New Zealand (IPONZ).  Despite their power to award indemnity costs, IPONZ has always been reluctant to award costs greater than the scale.  Numerous applications for indemnity costs have been unsuccessful over the years.
In Compudigm International Ltd and Bally Technologies Inc v Cardno [2013] NZIPOPAT 31 (13 December 2013) IPONZ reversed the incorrect registration of Bally Technologies as a joint applicant of a patent application.  Registration of the alleged assignment to Bally Technologies would have required the consent of all joint applicants, including Mr Cardno.  Bally Technologies and their lawyers were aware of this requirement. Nevertheless, in the absence of Mr Cardno’s consent, Bally applied for registration as joint applicant on two separate occasions and on the second occasion their application was incorrectly allowed.  In view of that conduct, indemnity costs were deemed appropriate.

Key changes under the Patents Act 2013 (the “New Act”)

Effective 13 September 2014

Higher Thresholds

  • Change from local novelty (known or used in New Zealand) to absolute novelty (known or used anywhere).
  • Patentability threshold changes from ‘benefit of the doubt’ to ‘balance of the probabilities’.
  • Examination will include “obviousness” rather than just simple novelty.
  • Computer software protection is likely to be more restricted.

New Procedures

  • Increased filing, examination and maintenance fees – renewal fees will be payable annually from the 4th year of filing.
  • Examination must be requested instead of the old automatic examination system.
  • Automatic publication of all New Act applications 18 months from filing – no more submarine patents hidden from view.

Challenge Options

  • Third Party Notifications can be lodged by any interested party challenging the novelty or inventiveness of a published application and the Commissioner must consider the objection.
  • Re-examination of a patent application or granted patent may be requested by any interested party.
  • Opposition remains with stronger grounds than under the Old Act.
  • Revocation before the Commissioner or the Court is available throughout the life of a patent (previously only available before the Commissioner for one year after grant).

Old Act Cases (Patents Act 1953 continues to apply)

  • “Old Act” cases are those where a “complete specification” is filed before 13 September 2014.
  • Old Act cases will be examined under the provisions of the Old Act (Patents Act 1953).
  • A divisional from an Old Act case will be treated as an Old Act case.
  • A PCT national phase application entering New Zealand before 13 September 2014 will be treated as an Old Act case but a pending PCT application filed before 13 September 2014 that has not entered the national phase in New Zealand will be a New Act case.
  • The validity of Old Act cases will be determined under the Old Act grounds.

Strategic Issues

Filing

Complete specifications filed before 13 September 2014 will enjoy the more lenient provisions of the Old Act. Consideration should be given to:

  1. Completing any provisional application already filed before 13 September 2013.
  2. Filing any new application as a complete in the first instance before 13 September 2014.
  3. Entering the national phase in New Zealand for any pending PCT application before 13 September 2014.

Challenges to Validity

  1. New Act Re-examination will be cheap but an interested party cannot participate further after a request is filed.
  2. New Act Opposition will be a more powerful option with the enhanced grounds of opposition and has the key advantage of suspending grant.
  3. Old Act Oppositions may be refiled as New Act revocation proceedings, gaining the stronger revocation grounds under the Old Act and simple balance of probability applies rather than the benefit of the doubt.
  4. New Act Revocation before the Commissioner offers a more cost effective challenge option for older patents.

Important: This note is intended to provide general information as to changes when the Patents Act 2013 comes into force. Other factors may be relevant in developing a strategy for a particular situation and you should seek our advice before deciding upon a strategy.