Snap to it - amendments to the Trade Marks Act 2002 taking effect in January 2020

A number of amendments to the Trade Marks Act 2002 will take effect from 13 January 2020.

The amendments have been made via an omnibus bill amending various pieces of legislation administered by the Ministry of Business, Innovation and Employment. The policy objective of this bill is to improve regulatory systems by ensuring that they are effective, efficient, and accord with best regulatory practice.

The two most significant amendments are discussed below.

Snap to it: shortened grace period to renew trade mark registrations

For any trade mark due for renewal from 13 January 2020 the renewal grace period will be only six months compared with the current 12 months.

During the grace period the trade mark will have the status registered-past expiry date. If the trade mark is not renewed during the grace period the registration will expire and cannot be revived.

If the registration is renewed during the grace period the renewal will take effect from the previous registration expiry date. Upon renewal the trade mark is taken to have remained a registered trade mark for all purposes as if its status had not changed.

While an owner will have a shorter grace period to renew their registration, it does mean that unused or no longer relevant trade marks will be removed from the Register in a more timely fashion.

Snap to it: findings in Crocodile case put into law and clarifies the non-use provisions

In Crocodile International Pte Ltd v Lacoste the Supreme Court determined that there was no residual discretion to save the registration of an unused trade mark.

The Trade Marks Act has now been amended to implement the Court's findings and to clarify the wording of the non-use provisions.

Sections 65(1) and 66 are being amended to read (deletions in italics and new wording in bold text):

65 Application for revocation of registration of a trade mark

(1) An aggrieved person may apply to the Commissioner or the court for the revocation of the registration of a trade mark on any of the grounds set out in section 66.

66 Grounds for revoking registration of trade mark

(1) (The registration of a trade mark may be revoked on any of the following grounds:) Grounds for revoking the registration of a trade mark are as follows
(a) that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:

(2) However, (despite subsection (1), a trade mark may not be revoked) there are not grounds for revoking the registration of a trade mark for its non-use if its non-use is due to special circumstances that are outside the control of the owner of the trade mark.

The above amendment resolves what has been an issue of some uncertainty since the enactment of the 2002 Act.

If you have any questions regarding any provisions of the Trade Marks Act 2002 old or new please contact us.

Elena Szentivanyi - November 2019

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