Region: New Zealand

Registered protection for GIs now one step closer

The government has introduced the Geographical Indications (Wine and Spirits) Registration Amendment Bill, which will revise the Geographical Indications (Wines and Spirits) Registration Act. Although the act was passed in 2006, it had never come into force. The act will create a register for GIs, and interested parties will be able to apply to register the names and boundaries of GIs for wines and spirits.

20 November 2015

Unusual grounds pleaded in opposition proceedings involving crocodile logo

In <I>Crocodile International Pte Ltd v Lacoste</I>, the High Court has allowed Lacoste’s appeal and dismissed Crocodile International’s appeal in opposition proceedings involving an application by Lacoste for the registration of a crocodile logo. Crocodile International, which trades under the crocodile logo, had raised some rather unusual opposition grounds.

29 October 2015

Well known - yes, similar - no: Daimler finds no joy on appeal (again)

In <I>Daimler v Sany</I>, the Court of Appeal has confirmed a decision of the High Court finding that Sany’s logo mark, which consists of a three-pronged device with the word ‘Sany’, was not confusingly similar to Daimler’s earlier three-pointed star marks. Among other things, the Court of Appeal agreed with the High Court’s findings that the marks are not similar, stating that “when we look at the Sany mark, we do not think of the Daimler marks”.

22 September 2015

Whittaker's successfully registers shape of chocolate bar as trademark

In <I>J H Whittaker & Sons Limited v Empire Confectionery Limited</I>, the Intellectual Property Office has dismissed an opposition against the registration of the shape of Whittaker’s 'Santé bar'. The mark consisted of the 3D shape of a rectangular finger or bar with two tapered ends. This decision can be contrasted with the recent opinion of Advocate General Wathelet in <I>Nestlé v Cadbury</I>, which concerned the shape of Nestlé’s Kit Kat bar.

15 July 2015

Encouraging origins - GIs may finally become registrable

New Zealand may finally be enacting legislation for GIs for wine and spirits. In March ministers Tim Groser and Paul Goldsmith announced that by the end of 2015, Parliament will amend the Geographical Indications (Wine and Spirits) Registration Act 2006, with an eye toward bringing the act into effect in 2016. The aim of the act is to create a system for GIs that operates like the current trademark system.

22 April 2015

Supreme Court declines leave to appeal in ZOGGS case

In <I>Zoggs International Limited v Sexwax Incorporated</I>, the Supreme Court has declined leave to appeal a decision of the Court of Appeal, meaning the end of the road for Zoggs International Limited in its bid to register the mark ZOGGS for clothing. The application had been opposed by Sexwax Incorporated, the owner of the MR ZOGS SEX WAX mark, which was not registered in New Zealand.

27 March 2015

FIPROLINE decision overturned by Court of Appeal

In <I>Virbac SA v Merial</I>, the Court of Appeal has overturned a High Court decision in which the latter had held that the mark FIPROLINE would be confused with the opponent's FRONTLINE mark for veterinary products. The Court of Appeal's decision addressed what many had seen as an unusual assessment made by the High Court as to whether the marks were likely to be confused with one another.

27 February 2015

NYDJ Apparel successful in registering cross-stitch pattern for jeans

In <I>NYDJ Apparel LLC v Commissioner of Trademarks</I>, the High Court has overturned a decision of the commissioner refusing NYDJ Apparel LLC’s application to register a criss-cross stitching pattern used in the inside pocket of jeans. Among other things, the court was satisfied that NYDJ’s promotion of its jeans with the criss-cross symbol served to link the criss-cross pattern to NYDJ.

14 January 2015

The Co-operative Bank fails to prevent use of 'co-op'

In <I>The Co-operative Bank Limited v Anderson</I>, the High Court has dismissed the Co-operative Bank’s application for an interim injunction restraining the defendants - the trustees of the New Zealand Association of Credit Unions - from using or asserting a right to use certain names including the word ‘co-op’. The judge noted that courts are unsympathetic to parties who try to monopolise descriptive words and that some degree of confusion must be tolerated.

11 December 2014

Second-level domain name registrations directly under '.nz' now allowed

Second-level domain name registrations directly under ‘.nz’ are now allowed. Anyone can register any ‘.nz’ domain name on a first-come, first-served basis, provided there is no equivalent domain name already registered at the third level. The registry has put in place a six-month Preferential Registration Eligibility period running from September 30 2014 to March 30 2015.

17 November 2014

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