Upcoming changes to New Zealand trade mark law

Article  \  13 Dec 2019

From 13 January 2020 a number of changes will take place, the key changes being as follows:

Renewal grace period

The current generous 12-month grace period for renewing a trade mark will be cut back to six months. However, this will only apply to cases falling due after 13 January 2020, and all earlier expired cases will continue with the full 12-month grace period.

This will bring New Zealand into line with many other jurisdictions, and help reduce the long delays caused by “Expired but restorable” cases blocking new trade mark applications.

Associated with the grace period change will be the creation of a new status “Registered (past expiry date)”. This will remove such cases from an effective “limbo” state, and allow actions such as assignment recordals and non-use revocations to take place.

Non-use revocation

The provisions concerning revocation on the basis of non-use will be clarified. The Intellectual Property Office of New Zealand (“IPONZ”), or the Court, will have no discretion to allow a trade mark registration to be maintained once the grounds for revocation on the basis of non-use have been made out, and there are no special circumstances that are outside the control of the trade mark owner.

This step will effectively codify the current approach taken by IPONZ and the Supreme Court of New Zealand.