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European Union Trade Mark Reforms

Significant changes to the laws, systems and processes concerning European Union trade marks will be implemented on 23 March 2016. The intent behind the changes is to increase efficiency and to harmonise the laws between the EU Intellectual Property Office and the Intellectual Property Offices of the individual EU member states. Member states must implement the majority of changes into their laws within the next three years.

Some of the notable changes are outlined as follows:

Terminology

While simply a cosmetic change, EU trade marks, presently known as Community Trade Marks will be renamed ‘European Union Trade Marks’. The Intellectual Property Office is presently known as the Office for Harmonization in the International Market, and will be renamed the ‘European Union Intellectual Property Office’.

Graphical Representation

A trade mark will no longer have to be capable of graphical representation (e.g. as a word, a logo or sounds represented by musical annotation). Non-traditional marks such as smells, sounds and holograms can be applied for, assuming that technology is available to denote them in a precise manner. It has been noted that as technology develops, different types of trade marks will likely become available to register.

Goods and Services

Registrations filed before 22 June 2012 that contain Nice class headings only in their specification will no longer be able to claim all of the goods and services in the affected classes. Only the literal meanings of the headings will be considered to be covered by the registrations, unless owners amend their specifications to include the relevant goods and services beyond the literal meaning of the class heading before 23 September 2016.

Proof of Use

Under the new rules, when the owner of an EU Trade Mark registration brings an infringement action, the defendant can require the owner to provide proof of use of the trade mark (or suitable reasons for non-use) for the five years prior to the commencement of the infringement action. This removes the need for the defendant to counterclaim on the basis of non-use in a new action. Proof of use is already required for oppositions and cancellation proceedings.

Administrative Procedures

Some EU member states allow revocation and invalidity proceedings to only be heard before a court. This is time consuming and costly. These member states, for example Italy and Spain, have seven years to provide an efficient and expeditious administrative procedure for these actions.

Fees

Previously, the OHIM charged a flat fee for filing trade mark applications in up to 3 classes. As of 23 March 2016, there will be a one fee per class system in an attempt to discourage applicants from seeking protection in multiple classes unless genuinely required. Applicants intending to file in three classes or more should file before 23 March 2016 to benefit from the current fee structure.

Notably, after this date, registration renewal fees will be decreased.

There are also moderate reductions to the fees for opposition, cancellation and appeal proceedings.

Geographical Scope of Use

Aside from these reforms, it is worthwhile to note the recent case law regarding what amounts to ‘proof of use’ when defending an EU trade mark registration in proceedings. It appears that the use of an EU trade mark in only one EU member state may not suffice, although this depends on the nature of use and the goods and services concerned. There has been recent conflicting case law on the matter, and it may be wise in some circumstances to supplement EU trade mark protection with national registrations in member states of importance to you. In this situation, professional advice should be sought.

The Silver Fern Flag & Related Intellectual Property Issues

A country’s flag is a distinctive symbol of the country it represents, much like a trade mark is a badge of origin for a business. The future of our national symbol is up for debate, and on 20 November 2015 we will be given the opportunity to pick our preferred alternatives to the current flag design via the Government-led Flag Consideration Project.

This article discusses how one of the shortlisted designs, Alofi Kanter’s Silver Fern (the Kanter Flag), raises issues from an intellectual property (IP) perspective.

The Kanter Flag:

 The Kanter Flag

The credit for the design in the Kanter Flag is attributed to The New Zealand Way Limited (NZWL), which is the proprietor of the following registered New Zealand trade mark which covers a wide array of goods (the NZWL Silver Fern Trade Mark):

NZWL Silver Fern

History of the NZWL Silver Fern Trade Mark

NZWL is owned by the government, its shareholders being New Zealand Trade and Enterprise (NZTE) and the NZ Tourism Board. Operating through the New Zealand Story Group (NZSG), NZWL’s purpose is to provide and manage an online library of images and recordings.

The NZWL Silver Fern Trade Mark is entitled to be used by two different groups, the first being government-owned entities including NZTE, Tourism New Zealand, Qualmark and Air New Zealand. New Zealanders may recognize the NZWL Silver Fern Trade Mark on Air New Zealand’s fleet, or even from the 2003 America’s Cup Yacht.

The second group is made up of New Zealand private businesses which meet the strict criteria relating predominantly to their good character and repute, and their New Zealand made products. These business are all exporters.

Rules Around the new Flag Design

Under the Flag Design Terms and Conditions of the Flag Consideration Project, the intellectual property and moral rights in the shortlisted designs have been assigned to the Crown. If the public votes to keep the current flag, the Crown will still retain those rights to the shortlisted designs unless the designer of any part of that flag requests that the rights are re-assigned back to them.

If one of the shortlisted designs is the ultimate winner, New Zealand individuals and organisations will, as has always been the case, be able to use that design in advertising or for commercial purposes in New Zealand and abroad, in accordance with the rules and protocols established by the Ministry for Culture and Heritage. The Ministry notes that individuals seeking to do so should contact the Ministry to discuss their ideas first.

It should also be noted that there is no provision in the Flags, Emblems, and Names Protection Act 1981 which expressly prohibits the use of the New Zealand Flag (although it is an offence to destroy, damage or alter the Flag in any way).

Implications for the NZWL and users of its Silver Fern Trade Mark if the Kanter Flag wins

The rules discussed above put the existing users of the NZWL Silver Fern Trade Mark in an interesting predicament. These users’ rights are very likely to be compromised, given that the NZWL no longer retains ownership and control over the intellectual property rights in the design.

NZWL’s attitude toward the use of their trade mark as a candidate for the new New Zealand flag is in direct contrast with the stance taken by the New Zealand Rugby Union (NZRU). The NZRU declined to approve their silver fern trade mark for use during the design submissions process. Undoubtedly, it would have been undesirable for the NZRU to assign or authorise the use of its trade mark in a way that diminished the commercial value of the mark or interfered with the rights of the existing authorised licensees from whom the NZRU leverages income.

Conclusion

If the Kanter Flag is the ultimate winner, it is likely to pose a puzzling predicament for the existing users of the NZWL Silver Fern Trade Mark. We will be following the after-math of the flag referenda with great interest.

Rugby World Cup 2015 Etiquette: What Your Business Needs to Know

With the opening ceremony for the Rugby World Cup (RWC) kicking off tomorrow in London at 6am NZST, it is safe to say that RWC fever has officially hit home. Businesses may recall that when New Zealand hosted the tournament in 2011, there were stringent guidelines via the Major Events Management Act around how and when traders could market goods and services which made reference to the RWC or the All Blacks. While the 2015 tournament is based in England, this does not mean that NZ businesses can get carried away in showing their support for the RWC. They still need to consider the potential risk of infringing the intellectual property rights of the owners of the RWC and ALL BLACKS brands.

Trade Marks

The Irish company, Rugby World Cup Limited (RWCL), is the owner of an impressive portfolio of registered trade marks in both New Zealand and internationally, in respect of the RWC brand. Marks on the New Zealand register include ‘RUGBY WORLD CUP’, ‘RWC’ and the logo:

RWC

The registrations cover a vast array of goods and services, including sporting activities, rugby balls, clothing, and even stationery and household utensils.

New Zealand Rugby Union Incorporated (NZRU) is an incorporated society which is the owner of multiple registrations in both New Zealand and internationally. Marks on the New Zealand register include ‘ALL BLACKS’ and the logo:

ALL BLACKS

These marks are registered for a variety of goods and services, including sporting activities and clothing.

The trade marks of both the RWCL and the NZRU are well known and businesses should be wary of using these trade marks in association with their own goods and services, so as not to mislead or deceive consumers into thinking that their goods are in some way associated with the RWC or the All Blacks. If this is the case, they may be liable for trade mark infringement.

New Zealand is no stranger to trade mark issues when it comes to Rugby. In 2011, Giltrap Audi was told by the NZRU during the world cup season to remove a large sign with the lettering “Go the All Blacks”. The sign was replaced with “Go the ABs”, at significant cost to Giltrap Audi. More recently, it was reported that the launch of a black burger bun by fast food chain Wendy’s became the subject of discussions between the burger chain and a “certain sports team” over whether the burger had the potential to infringe trade marks associated with that team.

In both cases, Giltrap Audi and Wendy’s were far from pleased. The chairman of Giltrap Audi described his experience with the NZRU as “bloody ridiculous”, saying he had “never heard anything so stupid in my life”. CEO of Wendy’s NZ Danielle Lendich said that the discussions around the burger “highlights the ridiculous debate that can happen around certain words and events”.

On the other hand, it is important to keep in mind that trade mark owners have often expended a considerable amount of time and resources to protect their branding. If brand owners were to acquiesce to or tolerate unauthorized uses of their trade marks, their ability to defend their trade marks against future breaches may be diminished in the eyes of the law. In the sporting context, businesses often pay large sums to become sponsors of teams and tournaments; they would have no incentive to do so if their competitors were also associating themselves with those teams and tournaments, devaluing the association which the sponsor would have otherwise received.

 Copyright

Copyright protects artistic and literary works, such as logos, shirt designs, and publications from unauthorised use. New Zealand businesses should be careful not to reproduce material associated with the RWC or other sports teams as these materials may be protected by copyright. As New Zealand and the United Kingdom are parties to the Berne Convention, the rights of copyright authors in the UK are recognized by the NZ courts. Copyright infringement can occur if a ‘substantial part’ of a work is copied.

Fair Trading & Passing Off

Businesses should also consider their obligations under the Fair Trading Act so not to mislead or deceive consumers in trade. Section 13 of the Act prohibits conduct which constitutes a false or misleading representation that a person has any sponsorship, approval, endorsement or affiliation.

The tort of passing off may also apply if as a result of misleading or deceptive conduct, a trader suffers damage to their goodwill.

Conclusion

As with any major sporting event, there are bound to be a number of intellectual property disputes regarding the RWC in New Zealand and worldwide. In addition to the rugby, we will be following this topic with close interest over the course of the tournament.

Go the ABs!