Kate Giddens, Senior Associate at AJ Park and member of the IPONZ Trade mark Technical Focus Group, summarises the key trade mark trends seen in New Zealand in 2021, shaping the landscape for what 2022 might bring
In November 2020, the Intellectual Property Office of New Zealand (IPONZ) reported record high filings of national trade marks following a 1% dip in total filings from July 2019 to June 2020.
Jump forward to November 2021, and IPONZ has reported that September 2021 set a new record for the largest number of classes filed, fuelling a 10% increase in filings from the previous year. As in 2020, the growth in filings over the past year has been driven by national applications, with small increases from designations via the Madrid system.
Goods and services on trend
New Zealand trade mark filings reflected international trends around the protection of cannabis products for recreational and medical cannabis use. Cannabis brand owners have continued to seek protection for their trade marks, despite the proposed Cannabis Legalisation and Control Bill being rejected in the 2020 public referendum.
In 2020 there was a 75% increase in trade marks containing ‘cannabis’ with numbers holding steady in 2021.
Non-fungible tokens (NFTs) burst into mainstream media with record sales in early 2021, along with the new task of classifying these goods and the related services, along with talk of web3 and the metaverse. Reese Witherspoon recently tweeted: “In the (near) future, every person will have a parallel digital identity. Avatars, crypto wallets, digital goods will be the norm. Are you planning for this?” It would appear brand owners of traditional physical goods and those of the new digital kind are doing so.
In 2021 the number of New Zealand trade mark applications that contained the term NFT or ‘digital token’ rose by 542%, applications that contained ‘cryptocurrency’ were up 160%, and applications mentioning ‘blockchain’ increased by 67%.
Trade marks on trend
In New Zealand, trade mark applications containing Māori words (kupu) or imagery are referred to the Māori Trade marks Advisory Committee (MTAC) for its advice. The MTAC’s role is to advise if the use of the trade mark on the goods and services applied for would be offensive.
Over the past two years, the record numbers of national filings have also seen increases in national trade mark applications noted as containing Māori words (kupu) or imagery. In the year ending September 2020, filings increased by 21%. In the same period in 2021, this grew again by 31%.
The year ending September 2020 saw an 88% increase in designations via the Madrid system (the Māori language often shares words with other languages such as Japanese and Hawaiian). This number decreased by 7% in the period ending September 2021 but was still up a considerable amount on the 2019 figures.
The importance of drawing on New Zealand’s culture to help differentiate a brand needs to be finely balanced with celebrating Māori language, imagery, and Māori culture or mātauranga Māori respectfully. This principle will ensure that taonga (treasures, including socially or culturally valuable objects, resources, phenomenon, ideas and techniques) are not misused, tikanga (values, practices and protocols) are not diluted, and that Māori culture is not exploited solely for commercial gain.
This increase has been noted by the MTAC and the New Zealand profession alike. They are keen to ensure clients understand and obtain specialist advice to ensure that the use of Māori words (kupu) or imagery is appropriate and not offensive.
The MTAC and IPONZ trade mark examination team are working together on revising the Practice Guidelines to include more guidance for those seeking to protect marks that comprise or contain elements of Māori culture.
Legislative changes to look out for
The pandemic undoubtedly slowed down legislative change as parliament focuses on priorities elsewhere.
The long-awaited Copyright Act review was set for the release of the consultation paper in 2021, but paused in early 2021 to allow resource prioritisation and remains so until the Free Trade Agreement with the UK is finalised and signed.
An exposure draft of the IP Laws Amendment Bill was due for release in mid-2021 but is now expected to be released in March/April 2022. Key points to watch for include:
- tightening of the criteria for registration of series trade marks, and placing a cap on the number of marks that can be included as a series
- allowing prior continuous use of a trade mark to be considered as a means to overcome a citation, similar to that provided for under Australian law
- providing partial refusal of national trade mark applications, allowing for acceptance of the non-refused goods/services where the applicant does not respond to the objection within the timeframe
- the removal of the ‘aggrieved person’ requirement when applying to revoke or invalidate a trade mark registration.
Looking forward to 2022
The emerging trends we saw in 2021 are expected to stay.
Trade mark filings, particularly national filings, are likely to continue to increase and perhaps break new volume records. New and existing brand owners seek to protect their brands for emerging technology in preparation for web3 and the metaverse.
New Zealand brands are likely to continue to draw on New Zealand’s history and culture to differentiate themselves, including applying for trade marks that contain or draw on Māori words and imagery. 2022 should also provide more guidance on this use, potentially new trade mark regulations to facilitate the protection of these new IP rights.