The New Zealand Trade Marks Amendment Act 2005

The New Zealand Trade Marks Amendment Act (“the Act”) came into force on 15 December 2005 and has made two significant changes to the Trade Marks Act 2002 (“the 2002 Act”).

1. OWNERSHIP

The Act requires that the applicant for registration is the “owner” of the mark.

As obvious as this may seem, ownership disputes arise regularly and do not always involve bad faith. This provision will be relevant where a trade mark application is challenged by a person who has been making use of the trade mark unaware that someone else has filed an application for that mark. If the prior user can establish that he or she is the owner of the mark because of the rights established through use, this new provision will give grounds for that person to challenge the application.

The “owner” of a mark is defined as the person who owns “all the rights” in the mark. This will have implications for distributors who attempt to register their suppliers’ marks. It will also be relevant where a trade mark includes copyright works (such as a picture or logo) and the “trade mark" rights and “copy" rights are owned by different parties.

2. REVOCATION BASED ON NON-USE

The Act has attempted to clarify the non-use provisions, particularly the transitional provisions set out in the 2002 Act.

Under the 2002 Act a trade mark registration may be revoked for non-use on two grounds.

Ground 1: Where there has been a continuous period of 3 years between the actual trade mark registration date and 1 month before the revocation action was commenced, during which the there has been no genuine use of the trade mark made in the marketplace on the relevant goods or services.

Ground 2: Where use of the trade mark has been suspended for a period of 3 years without interruption.

The Act also alters the transitional provisions set out in the 2002 Act so that a trade mark owner who registered a trade mark under the law when the non-use period was 5 years (under the Trade Marks Act 1953) has an initial 5 year period before the registration becomes vulnerable to removal.

Please contact us if you would like more information about these amendments and how they may impact on your trade mark portfolio.

Marcus Woodhouse
Associate

Iconic New Zealand brand - Edmond's SURE TO RISE

In 1879, Mr Thomas J Edmonds, arrived in Lyttleton from the United Kingdom and set up business as a grocer. Recognising a need for a reliable good quality baking powder, he set about blending his own mixture.

Later that year, when he was confident he had the mixture just about right, he started by delivering 200 samples around his neighbourhood. This resulted in a small and consistent demand for his baking powder.

One day Mr Edmonds was asked if his baking powder was “any good”. Struck by the question he replied, “It is sure to rise, Madam”. Recognising the aptness of this comment he used it to design the famous trade mark SURE TO RISE with the rising sun, which is one of New Zealand’s most durable, colourful and recognisable trade marks.

It took time for Edmonds to develop a demand for his baking powder. But he was convinced his mixture was good and did not give up. He took steps to lift the awareness of his trade mark by leaving a tin of baking powder with almost every householder he visited in the local Canterbury region (whether they wished to buy it or not). The deal was if the householder was not satisfied, they could give him back the baking powder on his next visit. Apparently no tins were ever returned. By 1912 over one million cans of baking powder had been sold.

In 1891, Edmonds won two first prizes for his baking powder and egg powder at the Dunedin Exhibition. At the New Zealand International Exhibition cooking competition in 1906, five first prize winners used Edmonds baking powder in their recipies.

The trade marks associated with Edmonds baking powder have been registered. The trade mark featured in this article was registered in 1912.

Thomas Edmonds retired in 1911 but he maintained an active interest in the business until his death in 1932.

Nowadays, not only is the Edmonds name associated with baking power and other related cooking ingredients, the Edmonds Cook Book is a sure find in every household. It is the biggest ever selling book ever published in New Zealand with sales reaching over 3.5 million.

Still going strong after over 125 years, this iconic brand certainly has a treasured place in New Zealand history. This is an amazing achievement from such humble beginnings.

Corinne Blumsky
Partner

Bio of the month: Fionna Cumming

Fionna Cumming is a Trade Mark Executive in our Wellington Office specialising in protecting and enforcing trade marks.

Fionna acts for a wide range of New Zealand clients in a variety of industries including horticulture, fisheries, clothing and technology.
Many of Fionna’s clients are established New Zealand companies. She has a particular interest in helping New Zealand businesses realise and protect the value of their brands. Often, she helps people who are “starting out” in their business and want to know more about trade marks and branding.

Fionna is a solicitor and is training to be a patent attorney.

DDI: +64 4 498 3436
Email: fionna.cumming@ajpark.com