The new trade mark law, which came into force today, is the first complete overhaul of the law for 50 years and brings some welcome changes for brand owners.
20 August 2003 is a red letter day in the New Zealand trade mark world as new mark law comes into force. It ‘s the first complete overhaul of the law for 50 years, New Zealand’s trade mark law having lagged behind that of its major trading partners for some years.
The new legislation brings some welcome changes for brand owners. For instance:
It will now be possible to have a single registered trade mark covering a whole range of goods and services, instead of having to make multiple applications.
There is increased protection for internationally well known marks, which will meet the approval of the international mega-brand owners.
There is more extended protection against counterfeit products and the penalties for infringing counterfeit products are much tougher.
Overall, the procedures are simpler, and the cost of obtaining and maintaining trade mark registration should be reduced.
Consumers will notice other important changes which may find less favour with brand owners. In line with other countries, businesses can now use the trade marks of their competitors in comparative advertising - providing they do so fairly.
Registered trade marks which have become words in everyday use, and are used as part of ordinary language can be removed from the trade mark register more easily, freeing them for unrestricted use.
Trade marks such as “trampoline” and “thermos” are examples of words that started out as trade marks and have ended up in common parlance as generic terms. To counter this, trade mark owners will need to correctly use their trade marks themselves and vigilantly police use by others to prevent them from becoming generic.
Trade marks not used for 3 years can be removed from the register. Trade mark owners will need to regularly review their trade mark use and ensure some substantive commercial use of a trade mark every three years, if they want to retain control of a mark and prevent its use by a competitor.
There is also increased protection for indigenous marks. While it has been difficult to register these for some time without meeting strict criteria imposed by the Intellectual Property Office of New Zealand, that practice is now enshrined in law.
No harmonisation with Australian law
There are, however, a couple of frustrations with the new act.
First, New Zealand has missed an opportunity to harmonise its trade mark law with that of our closest neighbour and largest trading partner, Australia. We have enacted legislation which differs in form and to some extent in substance from that which applies across the Tasman.
Australia modernised its legislation in 1995, and its statute would have been the logical starting point for our long awaited new law. Instead, the government has derived the New Zealand Trade Marks Act 2002 from the Singapore Trade Marks Act 1998, which is in turn based on the United Kingdom Trade Marks Act of 1988.
Why, you might ask? I did and, so far I’ve heard nothing to sufficiently justify why we did not look to the equivalent Australian legislation. I have heard it said that the Singaporean Act was chosen because it updated the British Act. While New Zealand intellectual property law has traditionally been directly taken (mostly word for word) from British law, the justification for that is no longer strong.
British law is now heavily influenced by European law. The government has long made clear its plans to jettison the Privy Council as New Zealand’s court of last resort, and case law issuing from the United Kingdom will inevitably be less relevant than it might have been, with Singaporean case law even less so.
Not using Australian law also defies business reality. Much of the international business world treats this region commercially under the one umbrella, and has difficulty grasping that we are not in fact part of Australia. As a country, we do most business with Australia. We should make this as easy as possible, and common laws help.
Harmonised legislation would have enabled close co-operation between the two intellectual property offices charged with administering the two acts. Lawyers could have advised their clients with more certainty as to the meaning of the new law and the courts would have had a ready-made body of decided cases based on legislation drafted in the same terms to help them interpret the new law.
This would have decreased the costs to the business community, which will most likely bear the expense of working out what the new law means on those occasions where there is a lack of clarity.
Hopefully, the same path will not be followed with the new patents legislation to be introduced over the next year. In the absence of good reason to the contrary, we should capitalise on the experience gained by Australia since it first modernised its patent legislation in 1990 and has subsequently amended it.
The new Trade Marks Act is awkwardly drafted in more than one respect. While some improvements were made during the legislative process, there are still some problems. Attempts to point this out have been met with the response from the relevant authorities that interpretations placed on some of the apparently anomalous provisions are not what the draftsman intended and anyone reading it can work out it means. We shall see.
This article was also published in The Independent, 20 August 2003