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Frequently Asked Questions about Protecting Your Trade Mark on Tropical Islands

Advances in communication and travel have opened trade routes and access for consumers and traders across many industries.  Commerce in far-flung islands is no longer hampered by distance and a number of island states are now establishing their own intellectual property laws.  It is increasingly important to bear in mind the development of National trade mark laws particularly in countries where formal trade mark rights have been dependent on overseas registrations.

These are some of the countries where we have recently been asked how best to protect trade mark rights:

The British Virgin Islands allocates registered trade mark rights through an extension of an existing UK trade mark application.  The resulting British Virgin Islands registration is dependent on the UK base registration and any changes to the UK base registration must also be made to the British Virgin Islands registration The British Virgin Islands Trade Marks Act 2013 comes into force on 1 September 2015. Once the new Act is in force, trade mark registrations in the British Virgin Islands must be secured through a registration filed on a National basis.

French Polynesia has historically been covered by an extension of the French National registrations.  The extension of those rights is no longer automatic.  Older National registrations will continue to cover French Polynesia but National applications filed between 3 March 2004 and 31 January 2014 require separate validation if French Polynesia is to be covered.  National trade mark applications filed after 31 January 2014 require the owner to opt in to coverage in French Polynesia, if it is desired.

Vanuatu previously required an existing UK trade mark application or registration as a base to secure a Vanuatu trade mark right.  The Trade Marks Act 2011 transfers any rights secured under this system to National Vanuatu trade mark rights.  Trade mark applications should now be filed under the new Act and re-registration of a UK registration is no longer possible.

The Marshall Islands was once a US territory and trade mark rights were covered by US legislation.  No National legislation has been adopted since the Marshall Islands secured full sovereignty in 1986 so at the moment trade mark registrations cannot be secured.  Trade mark rights in the Marshall Islands depending upon common law rights and publication of cautionary notice is recommended to draw attention to those rights.

The Cook Islands was covered by the New Zealand Trade Marks Act 1953.  However, when that legislation was repealed and replaced by the 2002 Act, reference to the Cook Islands was removed.  Nothing was included in the 2002 Act to address transfer of trade mark registrations which used to cover the Cook Islands or to cover new trade mark rights sought in the Cook Islands.  At the moment there are no mechanisms to register trade mark rights in the Cook Islands so traders need to rely on their common law rights.  Publication of cautionary notices are recommended to draw attention to those rights.

Tuvalu, Kiribati and the Solomon Islands still operate under a system of re-registration based upon a registration in the UK.  The registration is valid for the duration of the UK registration and renewable once the UK registration is renewed.

This list is by no means exhaustive and we recommend on-going review with our network of local agents as the law continues to develop.

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.