Region: New Zealand

First stage of joint comparative examination project complete

The first stage of the comparative trademark examination project between the Intellectual Property Office of New Zealand and IP Australia is now complete. The project aims to examine concurrently 300 trademark applications, where the same application is filed simultaneously in New Zealand and in Australia.

22 November 2007

IP guide for Maori organizations released

The New Zealand government has released a free Guide to Intellectual Property for Maori Organizations and Communities. The guide is part of the first phase of a three-step programme to examine more closely the relationship between IP rights and systems and traditional knowledge.

19 November 2007

Magazine title snapped up, but with good intentions?

A dispute between two magazine publishers, Bernard McDonald and Jack Yan, has broken out following the registration by Yan of the mark PAVEMENT, which was used as a magazine title by McDonald for over 10 years. McDonald has reportedly requested that Yan cancel the registration and not use the PAVEMENT mark.

12 November 2007

Supreme Court sinks AQUA TECH application

In a case involving the mark AQUA TECH, the Supreme Court of New Zealand has rejected an application for leave to appeal from a decision of the Court of Appeal. Among other things, the Supreme Court found that challenging the credibility of a witness was not a matter for an appeal and should have been dealt with at the opposition hearing by calling and cross-examining the witness.

09 October 2007

Not so Happy Valley following interim injunction ruling

In <i>Solid Energy NZ Limited v Save Happy Valley Coalition</i>, the High Court of New Zealand has upheld the plaintiff's motion for an interim injunction in relation to the defendant's use of the plaintiff's marks in a parodic report. Interestingly, the court chose not to examine the normal trademark infringement requirements when coming to its decision.

26 September 2007

Books and ducks can't be yellow, court rules

In <i>YGP IP Limited v Yellow Pty</i>, the High Court of New Zealand has agreed with the plaintiffs that the mark YELLOW BOOK was confusingly similar to their own YELLOW PAGES mark. The court thus issued orders restraining the defendants from hosting business directories at '; and ';.

20 September 2007

HONEST not registrable for beverages

The assistant commissioner at the Intellectual Property Office of New Zealand has upheld an opposition against the registration of the mark HONEST in relation to goods in Classes 29 and 32 of the Nice Classification. The assistant commissioner agreed that the mark lacked inherent distinctive character for the goods concerned and had not acquired secondary meaning.

17 September 2007

Convention priority must be considered before registrability

The High Court of New Zealand has held that a claim of prior rights under the Paris Convention must be considered before issues of registrability when two marks are in conflict. Among other things, it dismissed the argument that considering convention priority first would result in unnecessary expense where the mark purportedly protected under the convention is not registrable.

10 September 2007

No love lost for heart shape mark application

In <i>Build-A-Bear Workshop v Commissioner of Trademarks</i>, the High Court of New Zealand has upheld a decision to refuse registration of the three-dimensional shape of a heart in Classes 28 and 35 of the Nice Classification in relation to, among other things, toys and dolls, and the retail of such items. The court agreed with the assessment that the shape lacked distinctive character.

04 September 2007

PURPLE word mark refused for confectionery and bakery goods

The New Zealand Court of Appeal has refused Cadbury's application to register the word 'purple' for a variety of food products, "none ... being coloured purple", on the grounds that PURPLE is not capable of distinguishing such goods. The court followed the <i>POSTKANTOOR</i> line of reasoning that exclusions of characteristics of goods (as opposed to categories of goods) should not be permitted because they are uncertain as to scope.

25 July 2007

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