Archive for the ‘trade mark’ Category

11 True Stories Behind Tech’s Top Names

In Intellectual Property, IP, trade mark on September 10, 2010 at 1:26 pm

Some thing light for a sunny Friday (well it is sunny here in Wellington).  I have wondered about the derivation of some of these names so it is fun to have the low down: 11 True Stories Behind Tech’s Top Names.


NZ’s accession to the Madrid Protocol

In IP, legislation, Madrid Protocol, New Zealand, trade mark on July 7, 2010 at 7:41 pm

At the INTA meeting in Boston in May, I gave a brief presentation at the LinkedIN Madrid Protocol Group regarding the progression of New Zealand’s accession to the Madrid Protocol – NZ’s accession to the Madrid Protocol

It had been hoped that the Trade Marks (International Treaties and Enforcement) Amendment Bill would have its second reading in June. Not only has the Bill not had its second reading, it is slipped from number 28 to number 31 on the order paper of business before the House. Parliament is scheduled to next sit on 20 July.

IPONZ – New processing timeframes for applications and correspondence

In IP, IPONZ practice, New Zealand, trade mark on July 6, 2010 at 6:38 pm

The Intellectual Property Office of New Zealand (IPONZ) has introduced new processing timeframes for some applications and correspondence effective 1 July 2010 – “While the turnaround times have increased in some areas, IPONZ will seek to maintain the efficient timeframes that clients have learnt to expect and have enjoyed from IPONZ”.
If you wish to check current processing timeframes see here

The timeframe for examining trade mark applications has been extended from 5 working days to 15 working days.

On the one hand I think that this is a good move. It was apparent that the examiners were under much pressure to meet the 5 day turnaround which did mean that objections that should have been raised in that first report were missed from time to time increasing the time and cost to prosecute an application.

On the other hand, if the first compliance report issues 15 working days after the application is examined, then the applicant will have a very short period of time to add classes to the application to cover wrongly classified goods and services. Regulation 43
of the Trade Marks Regulations 2003 provides that:

Additional classes may be added after filing
(1) An applicant for registration of a trade mark may apply to the Commissioner for a class or classes to be added after the application has been filed.
(2) The Commissioner may allow the addition of a class if—
(a) the application for addition is made within 1 month after the application for registration is filed; and
(b) the application is accompanied by the fee prescribed for an application to register in 1 class; and
(c) the goods or services to which the additional class or classes relate are within the original specification.
(3) The Commissioner must not allow an application for addition if the applicant has previously deleted the goods or services to which the additional class relates from the application for registration.
(4) The Commissioner must not extend the deadline in subclause (2)(a).

Thus, under IPONZ’s new practice, applicants will now be left with as little as 10 days in which to apply to add an extra class to an application. It is intended that the one month period allowed by Regulation 43 be amended but this will of course require amendment of the Regulations by Parliament.

NZ’s most trusted brands

In IP, New Zealand, trade mark on July 1, 2010 at 3:23 pm

One of the key features of a brand is the element of trust it conveys to consumers.

After many years reign as New Zealand’s most trusted brand Cadbury has been knocked off its perch – presumably due in part to its change from cocoa butter to palm oil and discontinuation of three iconic NZ sweets (snifters , tangy fruits and sparkles) by Watties. From one food icon to another… Sadly neither of these companies are New Zealand owned companies, the former now being part of the Kraft family and the later owned by Heinz.

However, when the full list of category winners is looked at it is pleasing to see that a number of New Zealand owned companies (Mitre 10, Kiwibank, Fisher & Paykel, New World, Air New Zealand, NZ Post and Resene) feature in the list.

IPONZ change of practice for extensions of time to prosecute trade marks

In IP, New Zealand, trade mark on May 11, 2010 at 2:38 pm

The New Zealand Trade Marks Act 2002 provides a period of 12 months from the filing of the application to have it in order for acceptance. If the application is not in order for acceptance, or an extension of time has not been allowed, then the application is deemed abandoned. Once an application is marked off as abandoned it cannot be restored.

Therefore, it is critically important that any deadline set by the Commissioner is met.

The Trade Marks Regulations 2003 provides for extensions of time. The Commissioner has allowed extensions of time under Regulation 32 which requires there to be “genuine and exceptional circumstances” for the extension.

The Commissioner accepts that every extension is “genuine” however, a recent High Court decision has put doubt on what is meant by “exceptional circumstances”. Following the issue of the High Court decision, the Commissioner has required fairly detailed and different reasons for each subsequent extension. In the High Court, Lang J., considered that “exceptional” meant “quite out of the ordinary” and seemed to apply an objective rather than subjective test. In particular, His Honour found that “oversight is a common cause of deadlines being missed”. In this case, counsel had drafted the necessary correspondence to meet the deadline but for some reason that letter was not sent to IPONZ. I would have thought that subjectively the failure to mail a letter that had been finalised is out of the ordinary.

However, this looks set to all change following the Maestro decision of the Commissioner of Trade Marks. In that case, the Commissioner determined that extensions of the time to prosecute an application should be granted under Regulation 62 and not Regulation 32.

Regulation 62 provides that “The Commissioner may allow an extension, in the Commissioner’s discretion, and may allow subsequent extensions”. Thus, the Commissioner will have a wide and unfettered discretion to consider and grant extensions without being hampered by the requirement in Regulation 32 that there be “exceptional circumstances” for the extension.

The Hearings Office has indicated that there is a further decision on this issue that should be published in the near future that will provide more guidance on the issue.

This change is welcome, particularly for those occasional cases they take a long time to resolve notwithstanding diligence by the applicant.