New Zealand: New Year brings changes to Trade Marks Act

Sections 59, 60, and 60A: Grace Renewal Period Reduced

The grace period for trademark owners to restore an expired registration after the renewal deadline passed has been reduced from 12 months to six months. The status of such a mark will now be listed on the Register as “Registered - past expiry date,” whereas previously a mark would have the status “Expired but restorable.” Certain trademark enforcement benefits will not apply to trademarks with the “Registered - past expiry” status. These include civil proceedings for infringement, criminal proceedings, and border protection measures.

Registrations which had an “Expired but restorable” status before January 13, 2020, will retain this status and can still be restored within the 12-month period.

Sections 13A and 14: Certification Marks

New sections have been introduced to the Act affirming that the owner of a certification mark cannot register a standard trademark for the same goods or services, or vice-versa. This will prevent the certifying party from objectively and independently providing and implementing certification and certification standards to third parties if that certifying party is also trading in the same goods and/or services. However, the existing prohibition in Section14 has been extended beyond merely carrying on trade to include an alternate ground of owning a trademark with respect to the goods or services of the kind certified.

Section 167: Security for Costs in Opposition Proceedings

The Commissioner’s powers have been expanded so that he or she can now order security for costs if there is reason to believe that a party will be unable to pay costs. Previously, security for costs would only be granted if a party to proceedings was based overseas. The amendment also clarifies that, if security for costs is not paid, the Commissioner may consider the proceedings to be abandoned by that party and determine the matter accordingly.

Section 66: No Discretion in Revocation Actions

The amendment of Section 66 provides greater certainty regarding the application and interpretation of non-use actions in New Zealand by making it clear the Commissioner has no discretion to maintain a registration when the grounds for non-use have been established and no special circumstances outside the owner’s control are applicable. This follows the finding in the Supreme Court decision in Crocodile International Pte Ltd v. Lacoste, [2017] NZSC 14.

Additionally, from February 13, 2020, amendments to the Trade Marks Regulations 2003 reduce some official fees in New Zealand, including:

• The filing fee is reduced from NZ$150 to NZ$100 per class.
• The renewal fee is reduced from NZ$350 to NZ$200 per class.

It is expected the individual fees for filing and renewing International Registrations designating New Zealand will also be reduced.

This article first appeared in the INTA Bulletin and is reprinted with permission from the International Trademark Association (INTA).