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27 September 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.

03 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.

06 April 2018

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

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

16 March 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.

26 October 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.

21 March 2017

Supreme Court rules against Lacoste in battle over crocodile mark

In Crocodile International PTE Ltd v Lacoste, 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.

01 December 2016

Battle of the masters

Two organisations with substantial reputations recently came head to head in a trademark battle in World Masters Games 2017 Limited v MasterCard International Incorporated. 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.

28 November 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.

22 November 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.

19 October 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.

06 September 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.

08 July 2016

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

In the latest issue of World Trademark Review, 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.

15 June 2016

Lacoste snaps up victory in Court of Appeal

In Crocodile International Pte Ltd v Lacoste, 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.

09 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.

14 March 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.