Newsletter – March 2019

In this March Issue

  • New IPONZ hearings-costs Schedules now in effect
  • EU Free Trade and New Hearing Costs
  • Global Market Tip
  • Brexit – Effect on Trade Marks
  • Holidays Hours

New IPONZ hearings-costs schedules now in effect

New schedules of costs for IPONZ trademark and patent hearings took effect on 1 February 2019. The updated schedules are the result of consultation on proceedings costs for trademarks and patents by the IPONZ Hearings Office and are to help ensure that awards of costs are set at the correct level.

Standard practice is for the unsuccessful party to pay costs to the successful party as set out in the schedule of costs, although the Commissioner has the power to award costs deemed reasonable to a party depending on the particular situation.

EU-NZ free trade agreement – Consultation on geographical indications

New Zealand began negotiations towards a free trade agreement with the European Union (EU) in June 2018. Under the proposed agreement, the EU is looking for recognition and protection of a list of EU geographical indications (GI’s) in New Zealand. New Zealand may also provide the EU with a list of New Zealand product names for consideration as GI’s for protection in the EU.

Geographical indications identify a product as originating in a particular place (for example, a region or territory) where a certain quality or characteristic is attributed to products produced or made in that place.

New Zealand Foreign Affairs & Trade is now consulting on products to be submitted to the EU for GI registration and protection from New Zealand wine, spirit, aquaculture and agriculture producers and producer groups and any objections to the list of proposed GI’s for which recognition and protection is sought by the EU.

Trade Marks and the Global Market

It is important to remember there is no system that allows for the registration of a ‘world wide trade mark’.

This means that when you register a trade mark in a certain jurisdiction, such as New Zealand, it is protected and enforceable in that country only.

There is a EU trade mark that covers all 28 EU countries, (soon to be 27) and there is an African trade mark that covers 15 African nations.

If you wish to use your trade mark in other countries, for example by exporting products under that brand, it is best to register your trade mark in those countries separately. Once registered, it means that you are legally entitled use your mark in those countries. If you fail to do so, you may be at risk of infringing the rights of other traders in those countries.

Registering a trade mark in other countries is much easier and more cost effective than it used to be due to international systems such as the Madrid Protocol. Zone can help with international trade mark research and registration to protect your rights around the world. Contact us today to find out more.

Brexit – Effect on Trade Marks

There is currently a lot of uncertainty surrounding Brexit. The good news is that it is becoming clear what Brexit will mean for owners of European Union trade marks.

EU trade marks currently cover the UK. However, the UK is set to leave the EU on 29 March 2019. For owners of existing registrations, the current plan is for the UK Intellectual Property Office to automatically create equivalent, identical trade mark registrations that will appear on the UK register. Therefore, nothing further will need to be done, although the new UK registration will now need to be maintained separately.

However, this will only apply to registrations, and not pending applications. Owners of pending applications will need to officially request that their EU mark be recognised in the UK. However, there is no need to do anything yet. It is currently planned that applicants will have a nine-month period from the Brexit date (whenever that may be) to apply for their EU application to be recognised in the UK.

As there is still a lot of uncertainty around Brexit, this is subject to change. If you do have an application in the EU, Zone will be in touch with you to discuss the next steps as Brexit progresses.

Easter and ANZAC Hours

Zone will be closed for business on Friday the 19th of April, and Monday 22nd of April 2019 for Easter, as well as Thursday 25th April for ANZAC day.

Please note the New Zealand Intellectual Property Office is also closed. Applications and documents submitted on this date will have the following working day as their filing date. If the deadline for filing an application or document falls on this date, then the application or document will be filed the following day.