New Zealand

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.

Bordeaux wine win in China; USPTO seeks TPAC nominations; Iskcon declared well known – news digest
How trademark service providers are helping customers through the coronavirus pandemic
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.

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

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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

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

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

Anti-Counterfeiting

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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

8 Jul 2016

How New Zealand’s FernMark licence is helping Kiwi businesses to build brands and fight counterfeiters

In the latest issue of <i>World Trademark Review</i>, we explore how the FernMark collective mark licensing programme is helping New Zealand businesses (like start-up tea producer Zealong) to expand and protect their brands overseas. Selling tea to China – which alone produces one-third of the world’s supply – may sound like a Sisyphean task, but it is one that New Zealand start-up Zealong has taken up with aplomb.

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25 Sep 2013

NZ winemakers consider GI protection but commentators identify significant challenges

Recent reports indicate that New Zealand winemakers are seeking GI protection for their labels. As wine consumption grows in emerging markets such as China and Russia, domestic producers are increasingly concerned about potential knock-offs being passed off as premium labels. However, while the wine industry considers using GI status as a way of fending off counterfeiters, a number of commentators have expressed scepticism over its practical benefits.

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13 May 2010

First criminal charges laid under Major Events Management Act

The government has laid the first criminal charges for counterfeiting in relation to the Rugby World Cup, which is being held in New Zealand in 2011. The charges were laid under the Major Events Management Act, which deals with ambush marketing for 'major events'.

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Brand management

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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

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

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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5 Apr 2016

McDonald’s pricing backlash highlights brand control challenge in franchise arrangements

Allegations that McDonald’s restaurants have been charging customers in some of New Zealand’s poorest areas more than those in wealthier districts have highlighted the challenge facing franchisors when trying to control brand messaging.

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Enforcement and Litigation

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17 Jul 2019

Crunch time for Kellogg’s Nutri-Grain cereal

Multinational food and drink giant Nestlé has successfully opposed the registration in New Zealand for the 3D shape of Kellogg’s Nutri-Grain cereal. Read more

17 Sep 2018

A monster left licking its wounds: Monster Energy suffers three opposition losses

Energy drink giant Monster Energy has been involved in three trademark oppositions in New Zealand so far this year, and was unsuccessful in all three. Read more

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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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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Government/Policy

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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

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

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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IP Offices

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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

Online

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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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4 Jul 2008

Telstra Corporation victorious in typosquatting case

In <i>Telstra Corporation Limited v E-Promote</i>, a Domain Name Commission expert has ordered the transfer of the domain names 'telstaclear.co.nz', 'telsraclear.co.nz' and 'telstarclear.co.nz' to Telstra Corporation Limited. According to the expert, the inference that the domain names were registered with misspellings of Telstra's trademarks in order to direct traffic to the registrant's websites was inescapable.

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Portfolio Management

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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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6 Sep 2016

Geographical indications: ready or not here they come

The New Zealand Ministry of Business Innovation and Employment has carried out a consultation on the draft Geographic Indications (Wines and Spirits) Registration Regulations 2016.

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15 Jun 2016

Lacoste snaps up victory in Court of Appeal

In <i>Crocodile International Pte Ltd v Lacoste</i>, Lacoste faced an issue that many owners of registered logos may encounter – the stylisation of its logo had evolved from the one protected by its New Zealand Registration. The question to be decided was whether the marks used by Lacoste qualified as use of that registration.

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Trademark law

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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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9 May 2016

High standard for Red Bull to meet in interim injunction case

Red Bull has failed to obtain an interim injunction preventing Drink Red from selling a ready-mixed drink containing vodka and an energy drink and an energy drink without alcohol, despite evidence suggesting that confusion was likely and that Drink Red had a serious case to answer.

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14 Mar 2016

MANUKA DOCTOR and MANUKA PHARM trademarks – health claim, therapeutic claim or marketing puffery?

A recent case provides an interesting look at the foods standards regulations and how they apply to trademarks in the context of claiming health benefits of certain foods.

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