UK-inspired Trademarks Act comes into force
The Trademarks Act 2002 and Trademarks Regulations 2003 have come into force, repealing the Trademarks Act 1953. The new act, which is based largely on Singapore's Trademarks Act 1998, which itself is based on the UK Trademarks Act 1994, is the first major rewrite of New Zealand's trademark law for many years.
The new law brings in a number of significant changes, including the following:
- The two-tiered Part A and Part B registration system of the 1953 act has been abolished. Instead, the eligibility of all marks for registration will be judged under one set of criteria, based on whether the mark has distinctive character.
- Multi-class applications may be filed.
- Trademark registrations have a renewal term of 10 years. Under the 1953 act, the first and subsequent renewal periods were seven and 14 years respectively.
- The non-use period has been reduced from five to three years, although marks already registered as at the commencement date of the new act cannot be challenged unless five years have passed since the mark was registered, or use of the mark has been suspended for five years.
- The test for deciding whether a mark is generic is no longer whether the mark is used in a descriptive sense in the trade. Instead, the test is whether the mark has become, as a consequence of the acts or inactivity of the owner, a common name used by the general public for the goods or services in question.
The Intellectual Property Office of New Zealand has issued comprehensive guidelines regarding its interpretation of certain provisions of the new act. For instance, transitional provisions apply to applications that were pending as at the commencement date of the new act: the applications must meet the requirements of the 1953 act to be registered but the provisions of the new act will apply once the marks have been registered.
In view of the origin of the 2002 act, it is expected that overseas case law, and UK and EU decisions in particular, will have a greater impact on New Zealand than before. However, it remains to be seen how the new act will affect New Zealand trademark owners in practice.
For background information on the new act, see Benchmark Case highlights differences between Trademarks Acts, Discussion paper foreshadows implementation of new trademarks law and New Trademarks Act receives royal assent.
Carrick Robinson, James & Wells, Auckland
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