Registry fails to register its own name as a trademark

New Zealand

A hearing officer for the Intellectual Property Office of New Zealand (IPONZ) has refused IPONZ's application to register its acronym as a trademark for, among other things, printed matter, business advice and online communication on the grounds that it was not being used in connection to services offered in the course of trade (Case 23/2003).

IPONZ charges fees for handling patent, trademark and design applications. However, it issues booklets, pamphlets and information, and conducts seminars designed to promote intellectual property awareness for free. The hearing officer held that case law requires that a fee must be charged for goods or services for them to qualify as being provided in the course of trade.

However, many trademarks have been registered for charities and non-profit organizations such as hospices, societies, trusts and foundations, even though they do not charge a fee for some or all of their goods and services. Even assuming that the hearing officer's decision is correct, it was issued prior to the implementation of the Trademarks Act 2002. It remains to be seen, therefore, whether the examination criterion that a mark is not eligible for registration unless the owner intends to charge a fee for the goods and services to which it relates will be applied under the new act.

Edwin Hamilton and Kate Duckworth, Baldwin Shelston Waters, Wellington

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