New Zealand trade mark law changes: shortened grace period for renewals and no discretion for non-use revocations

Article  \  4 Dec 2019

Changes to the New Zealand Trade Marks Act 2002 will come into force on 13 January 2020. Trade mark owners should be aware of these changes and consider their options to meet the new renewal requirements and to take advantage of the clarified law.  

The main changes affecting trade mark owners are summarised below:

Shortened grace period for trade mark renewals

From 13 January 2020, the grace period for renewing a trade mark registration will be shortened from 12 months to six months.

Currently, all trade mark registrations can be renewed up to 12 months before/after the expiry date (ie, there is a 12-month grace period for renewal). With the new changes, any trade mark registration that expires on or after 13 January 2020 can only be renewed within six months of the expiry date. After this period, the trade mark registration cannot be restored and the owner will lose the rights from that trade mark registration. However, trade mark registrations that expire before 13 January next year will continue to have a 12-month grace period for renewal.

The shorter grace period for renewal will impact all trade mark owners, particularly those with extensive trade mark portfolios and owners of pending trade mark applications. As a trade mark owner, you should monitor the renewal deadlines for your trade mark registrations and ensure that all renewals are completed in time. The changes to renewal requirements in New Zealand also highlight the importance for trade mark owners to be aware of, and comply with, any changes to the renewal requirements in other countries.

How AJ Park can help

AJ Park has a dedicated, in-house renewals team that specialises in managing renewals for our clients’ trade mark portfolios. Our team proactively monitors renewal deadlines and legislation changes to ensure that our clients’ trade mark rights are maintained in every country.

If you would like our help with managing your trade mark renewals, please contact our IP renewals team.

No discretion in non-use revocations

Upcoming changes will also clarify that there is no discretion for the Intellectual Property Office of New Zealand, or the Courts, to uphold a trade mark registration when the grounds for revocation have been met, and there are no special circumstances.

Historically, it has been ambiguous whether such a discretion existed in New Zealand, as it does in Australia.

The clarification that there is no such discretion will provide more certainty for parties seeking to revoke a registered trade mark. A trade mark owner can now only defend a revocation action based on evidence of use or special circumstances.

How AJ Park can help

Our trade mark and litigation teams can assist clients with challenging and defending trade marks in revocation proceedings, including by preparing and presenting the strongest evidence available. We are experienced in acting for local and international companies in revocation proceedings, and in achieving favourable outcomes for our clients.

If you would like advice or assistance regarding revocation of a trade mark, please get in touch with one of our trade mark experts.

Other changes

The following changes will also apply from 13 January 2020:

  • A third party can seek to revoke a trade mark registration, registered on/after 13 January 2020, during the period that it is ‘Registered (past expiry date)’.
  • During the same period, the trade mark owner can assign the trade mark registration.
  • A person owning a standard trade mark for goods or services cannot register a certification mark for the same goods or services, and vice versa.
  • The Commissioner may require security for the costs of a hearing where a party to the hearing is based overseas, or if there is reason to believe that a party will be unable to pay costs.

If you have any questions about these changes, please contact us.