New Zealand

Exclusive roundtable – how four leading IP offices are cracking down on scams and fraudulent activity

The Long Read: Scams targeting trademark owners are fast becoming commonplace and increasingly sophisticated. Four leading IP offices share their insights on which scams are most prevalent, what you can do to stay safe, the resources on offer to help and how offices are collaborating across borders to fight fraudsters.

Exclusive roundtable – how four leading IP offices are cracking down on scams and fraudulent activity
Activision strikes back with Warzone lawsuit; France.com fight continues; Leason Ellis brand refresh – news digest
13 Apr 2021

Activision strikes back with Warzone lawsuit; France.com fight continues; Leason Ellis brand refresh – news digest

In our latest round-up, we look at the IP Office of New Zealand launching a new hearings initiative, Canopy Growth acquiring a leading marijuana brand, and much more.

United States tumbles down Brand Finance Soft Power Index due to covid-19 response
26 Feb 2021

United States tumbles down Brand Finance Soft Power Index due to covid-19 response

In a star-studded launch event, Brand Finance held a virtual conference with speakers including Hilary Rodham Clinton, Carl Bildt and David Miliband.

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24 Aug 2021

Watch your evidence (again!) in trademark proceedings

This New Zealand case is a prime example of one in which a different outcome would almost certainly have been reached if the invalidity applicant had filed appropriate and admissible evidence. Read more

13 Aug 2021

Is TRAUMAGEL really too similar to TRAUMEEL?

The decision serves as a warning to owners of pharmaceutical and medical brands that, in New Zealand, no trademark opposition should be dismissed. Read more

6 Aug 2021

Disclaimers in trademarks – not so sweet after all

In these opposition proceedings against a composite trademark covering a broad range of goods in Class 30, the applicant’s statutory rights were restricted significantly - not by the opponent’s prior rights or reputation, but by savvy legal arguments. Read more

30 Jul 2021

Kiwis will not confuse port and other wines

These New Zealand opposition proceedings serve as a reminder that, even where the marks and the goods are found to be similar, the opponent is not always certain to win. Read more

Anti-Counterfeiting

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30 Jun 2020

Bordeaux wine win in China; USPTO seeks TPAC nominations; Iskcon declared well known – news digest

In our latest round-up, we look at the Qatar versus Saudi Arabia piracy battle escalating, former employees of Hermès appearing in court for counterfeiting, a legal blow for Stan Lee’s daughter, and much more. Read more

12 Nov 2019

Counterfeit hotspots in Australia and New Zealand that brand owners must be aware of

In the latest edition of our regular series focused on marketplaces across the world that reportedly engage in the trade of counterfeit goods, we head to Australia and New Zealand. Read more

27 Sep 2019

INTA’s Brands Manifesto, Liverpool trademark blow, fighting scammers: news digest

In our latest news digest, we look at INTA’s release of a Brands Manifesto, the Paraguay IP Office conducting another counterfeit crackdown, fee changes in New Zealand, and much more. Read more

9 Apr 2019

IPONZ fee changes, Estonia new online trademark system, and Game of Thrones at INTA Annual Meeting: news digest

In our latest round-up, we look at Stella McCartney prevailing in a trademark dispute, Lego being named the United Kingdom’s favourite brand, the Mexican Industrial Property Office announcing a new electronic notification service, and much more. Read more

Brand management

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16 Jul 2020

A connected world: learnings from the first internationally linked trademark database

In an exclusive guest post, academics in Australia share findings from their new study into the first database that links equivalent trademarks across national offices into a single comprehensive offering. Read more

6 Apr 2020

How trademark service providers are helping customers through the coronavirus pandemic

Sortify.tm has offered free access for the next three months. WTR spoke to them and reached out to other service providers on their circumstantial offerings. Read more

21 Sep 2019

New Zealand thrives where others have failed – and it is all down to brand

The small island country has boosted its tourism by turning itself into a brand; the jurisdiction is increasingly attractive for multinational brands and it makes its presence known on the world stage. Read more

3 May 2019

“Just be respectful” – why brands must wise up to indigenous IP rights

WTR analyses how indigenous cultures are protecting their intellectual property and speaks with an expert on how trademark practitioners must be more aware of this burgeoning field of rights. Read more

Enforcement and Litigation

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29 Jun 2021

Trademarks and prime ministers’ nicknames: AUNTY HELEN and JACINDARELLA

This recent decision by the New Zealand Trademarks Office raises interesting issues as to the extent to which media-generated nicknames might be protectable. Read more

28 Apr 2021

New Zealand’s strict ‘use it or lose it’ approach in partial revocation proceedings - and how it differs from Australia’s approach

This decision provides helpful guidance on the principles for partial revocation of trademark registrations in New Zealand, while highlighting important differences between the law and practice on non-use removal proceedings in Australia and New Zealand. Read more

3 Mar 2021

Supreme Court: ‘zombies’ do exist in New Zealand after all

In a dispute between SC Johnson and Son and International Consolidated Business over the ZIPLOC mark, New Zealand’s highest court has effectively held that ‘zombie’ trademarks do exist in the country. Read more

25 Feb 2021

New Zealand far-right group’s use of certification mark demonstrates importance of politically minded enforcement

WTR spoke to brand experts on what recourse Buy New Zealand Made has available, as well as when entering the political fray is necessary to protect a mark’s reputation. Read more

Government/Policy

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15 Jul 2020

Call for New Zealand intellectual property framework to incorporate Māori rights

Lynell Tuffery Huria discusses the need for Māori traditions and cultural expressions to be protected by New Zealand’s intellectual property laws. Read more

25 Feb 2019

UKIPO ranked most accessible IP office platform, as registries urged to improve website usability

New research from WTR has found that the IP offices of the UK, Brazil, Japan and Benelux have the most accessible website platforms for users, including those with motor or vision impairment. Read more

18 Dec 2018

Building on success: IPONZ 2018 in review

Already a leader in terms of online offerings, the IP Office of New Zealand is now seeking to maximise business IP awareness in order to allow companies to make the most of their intellectual property. Read more

16 Mar 2018

Plain packaging in New Zealand, JD.com in “counterfeit scandal” and WHOIS future remains uncertain: news round-up

In our latest round-up, we look at how the future of WHOIS remains up in the air, New Zealand implementing plain packaging on tobacco products, and much more. Read more

Law Firms

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26 Oct 2017

The blunt approach: New Zealand attorney’s innovative strategy to trademark education following public outrage

After public outrage over a trademark infringement dispute, a New Zealand-based attorney has penned a column claiming that New Zealanders are “unsophisticated and naive” in their attitude towards IP rights.

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6 May 2016

Trademark solicitation company agrees to refund duped business owners; over $200,000 discovered in bank account

Following a recent investigation into trademark solicitation scams by <i>World Trademark Review</i>, the Commerce Commission in New Zealand has confirmed that it has reached an interim agreement with a trademark solicitation company to refund businesses that inadvertently paid an invoice for the publication of filed trademarks.

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IP Offices

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1 Mar 2018

An open data revolution

The Intellectual Property Office of New Zealand is a quiet pioneer when it comes to handling trademark data and now it wants the rest of the world to follow suit. In this article, it explains how it can be done. Read more

20 Feb 2018

Online trailblazers – the IP offices breaking new ground in digital services, and those falling behind

In the second of our four-part series on IP office innovation, we take a look at digital tools and services. We reveal the registries leading the way in areas including website functionality, e-filings and open data access. Read more

28 Nov 2016

Breakthrough in fight against trademark solicitations? Lessons from New Zealand’s $600,000 refund success

The constant flood of trademark solicitation scams has been a blight to the IP community for a number of years now. But a recent success in New Zealand has led to over NZ$600,000 in refunds being paid to affected parties. Expert commentators are hopeful that this positive outcome could be repeated in other jurisdictions and may serve as a deterrent to other trademark solicitation operators.

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Online

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6 Apr 2018

Court of Appeal: initial interest confusion in internet search results allowable

In <em>National Mini Storage Limited v National Storage Limited</em>, the New Zealand Court of Appeal appears to have allowed initial interest confusion to occur in search engine results.

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25 Mar 2014

High Court issues first decision on use of third-party trademarks as keywords

In <I>Intercity Group (NZ) Limited v Nakedbus NZ Limited</I>, the High Court has held that Nakedbus had not infringed Intercity’s trademark INTERCITY when it purchased the keyword ‘inter city’ via Google AdWords. However, the court found that Nakedbus had infringed Intercity’s mark by using the words 'inter city' in Google advertisements. Among other things, the court rejected Nakedbus’ argument that it only used the words descriptively.

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21 Oct 2013

Registry considering whether to introduce domain names directly under '.nz'

The Domain Name Commission Limited, the body responsible for running the ‘.nz’ namespace, is considering whether to introduce second-level registrations directly under ‘.nz’. There have been two consultation periods so far. Following the initial consultation, the DNCL proposed an initial sunrise period for holders of third-level domain names registered before a certain date to register or reserve the equivalent ‘.nz’ domain names in priority.

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10 Oct 2012

Clash of the kiwis as InternetNZ launches '.kiwi.nz'

The ‘.nz’ domain name registry has launched a new second-level domain, ‘.kiwi.nz’. The extension has no restrictions and is available for registration by anyone. However, the launch has not pleased everybody: the CEO of Dot Kiwi Ltd, the company that has applied for the new gTLD ‘.kiwi’, claimed that "there will now be widespread confusion” between ‘.kiwi.nz’ and ‘.kiwi’.

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Portfolio Management

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23 Feb 2021

NOTHING BUT strong evidence of confusion will suffice in a New Zealand spill-over reputation case

This decision of the assistant commissioner demonstrates both the strengths and pitfalls of New Zealand’s unique ‘reverse onus’ opposition ground. Read more

1 Sep 2020

ACTAZIN v ACTIPHEN: a tale of two cities or in the ear of the beholder

The Court of Appeal of New Zealand has confirmed that concurrent use of the marks ACTAZIN and ACTIPHEN was likely to cause confusion. In contrast, the Australian Trademarks Office had found that the marks were not deceptively similar. Read more

6 Jul 2020

Green with envy? Energy Beverages fails to revoke Frucor’s mark for colour green

Under threat of trademark infringement proceedings, Energy Beverages LLC has unsuccessfully challenged Frucor Suntory’s trademark registration for the colour green in New Zealand. Read more

22 Nov 2019

Tempting Brands retains the PIERRE DE COUBERTIN trademark in New Zealand

The High Court of New Zealand has put an end to the dispute between the International Olympic Committee and Tempting Brands over the trademark PIERRE DE COUBERTIN. Read more

Trademark law

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21 Mar 2017

Supreme Court rules against Lacoste in battle over crocodile mark

In <I>Crocodile International PTE Ltd v Lacoste</I>, the Supreme Court has ruled that one of Lacoste’s trademarks must be removed from the trademark register because Lacoste has not used it. Interestingly, the court ruled that, if a trademark has not been used, there is no discretion not to revoke it.

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1 Dec 2016

Battle of the masters

Two organisations with substantial reputations recently came head to head in a trademark battle in <i>World Masters Games 2017 Limited v MasterCard International Incorporated</i>. The decision indicated that all parties to proceedings needed to “tidy up their respective acts” as poor pleading and irrelevant evidence would be dealt with rigorously.

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22 Nov 2016

Additional damages approved in line with TPPA

Despite the uncertain future of the Trans-Pacific Partnership Agreement (TPPA), the New Zealand government has introduced legislation to bring its trademark laws into line with the TPPA in relation to additional damages.

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19 Oct 2016

Red Bull gets its interim injunction

The New Zealand Court of Appeal has issued a decision after Red Bull appealed the High Court's decision against an interim injunction to prevent Drink Red from selling a ready-mixed drink containing vodka and an energy drink, and an energy drink without alcohol.

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