Region: New Zealand

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’.

10 October 2012

A tale of two Marmites: market entry when your trademarks belong to someone else

Customs authorities in New Zealand have seized several thousand jars of Marmite originating from the United Kingdom. The consignment of the yeast-derived edible paste, which is produced by Unilever and marketed in the United Kingdom and much of the rest of the world under the name Marmite, allegedly infringes upon the trademarks of New Zealand manufacturer Sanitarium, which produces a similar spread also called Marmite. So what is a brand to do when seeking to expand into jurisdictions where a trademark has already been laid claim to for the same goods and services?

10 September 2012

Ka Mate haka is denied trademark protection

In <i>Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited</i>, the Intellectual Property Office has upheld an opposition against four word marks, each comprising a phrase from the haka <i>Ka Mate</i>, a traditional Māori dance. The assistant commissioner found that the evidence was clear that other traders would legitimately want to use the “entire” wording of the haka <i>Ka Mate</i>, because of its connection with New Zealand heritage.

28 June 2012

Qantas successfully opposes registration of mark for coffee, tea and biscuits

In <i>NV Sumatra Tobacco Trading Company v Qantas Airways Limited</i>, Qantas, which operates the airline Jetstar, has successfully opposed a trademark application for the mark JETSTAR for various goods including coffee, tea, biscuits and confectionery. The central finding in this case was that the goods consisted of a kind that might be provided by Qantas in relation to its airline service.

22 June 2012

IPONZ invites submissions on proposed amendments to Trademarks Regulations

As part of the country’s preparations to implement the Madrid Protocol, the Intellectual Property Office of New Zealand has issued a discussion document inviting submissions on a number of proposed amendments to the Trademarks Regulations 2003. Among other things, IPONZ proposes to increase its official fees for most of the trademark services that it provides, but does not intend to charge a handling fee for Madrid Protocol applications.

19 June 2012

No evidence that words contained in earlier marks had ceased to be descriptive

In <i>Mars New Zealand Limited v Heinz Wattie's Limited</i>, the High Court has overturned a decision of the assistant commissioner of trademarks refusing to register the mark ADVANCE ADVANCED PET NUTRITION based on the earlier marks CHAMP ADVANCED DOG NUTRITION and ADVANCED DOG NUTRITION. Among other things, the court was not convinced that the words ‘advanced dog nutrition’ had ceased to be descriptive.

15 May 2012

KIWI held to lack distinctiveness in New Zealand

In <i>Pankhurst v Saramar LLC</i>, the Intellectual Property Office has rejected an opposition by Saramar LLC, the owner of the KIWI mark for shoe polish and shoe laces, against the registration of the trademark KIWISOLES for flip flops. Among other things, the assistant commissioner found that KIWI was non-distinctive in New Zealand because it is commonly used to describe New Zealanders.

15 March 2012

DC Comics fails to prevent registration of superhero character

In <i>Superloans Limited v DC Comics</i>, DC Comics has failed in its attempt to oppose a trademark application for a superhero character in relation to financial services in Class 36. Among other things, the assistant commissioner held that the mark would not be perceived as being from the same stable as the Superman character or any of DC Comics' superhero characters.

11 January 2012

Common sense prevails in refusal of ‘my’ trademark applications

In <i>AA Insurance Limited v AMI Insurance Limited</i>, the High Court has overturned the assistant commissioner of trademarks’ decision to accept for registration several trademarks including the words 'my' and 'insurance' for various Class 36 services, including insurance, financial, monetary, investment and real estate services.

02 December 2011

No leave to appeal despite commissioner and lower courts reaching different decisions

In <i>NV Sumatra Tobacco Trading Company v New Zealand Milk Brands Limited</i>, NV Sumatra Tobacco Trading Company has had its application for leave to appeal to the Supreme Court, the highest court in New Zealand, refused. The Supreme Court ruled that the appeal did not raise any particular point of law, despite the assistant commissioner, the High Court and the Court of Appeal all reaching different decisions.

26 October 2011

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