New Trademarks Act receives royal assent

New Zealand

The Trademarks Act 2002 has received royal assent. The new act replaces the Trademarks Act 1953 and brings New Zealand into compliance with several obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Some of the most important amendments are the following:

  • A single-part register replaces the previous A and B two-part register system.

  • The definition of 'trademark' covers signs capable of (i) being represented graphically, and (ii) distinguishing the goods or services of one person from those of another.

  • Multi-class applications (where a single application can cover as many classes of goods and services as the applicant wishes) are now possible.

  • Protection for well-known marks is extended. Infringement will occur if the use of a trademark takes unfair advantage of, or is detrimental to, the distinctive character or repute of a well-known mark.

  • The term of non-use in removal actions is reduced from five to three years.

  • A trademark can be revoked if it has become a common name in general public use.

The new act also includes provisions that increase protection of indigenous rights. For example, a statutory advisory committee shall advise the trademarks commissioner on whether a proposed use or registration of a trademark that derives from a Maori sign is likely to offend the Maori people. If the commissioner considers that the sign is likely to offend a significant section of the Maori community, then the sign cannot be registered.

Kate Duckworth and Edwin Hamilton, Baldwin Shelston Waters, Wellington

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