IPONZ Updates Trade Mark Examination Guidelines on Restoration and Revocation

In light of recent legislative changes and judicial decisions IPONZ has updated its Trade Mark Examination Guidelines.

The Regulatory Systems (Economic Development) Amendment Act 2019 received Royal assent on 13th November 2019 and its provisions commenced 2-months later on 13th January 2020. As previously noted the main focus of the amendments in relation to trade marks was to:

• Reduce the grace period for late renewal from 12-months to 6-months; and
• Specify that during the new grace period the marks remain on the register while deeming that they are not considered registered in relation to subparts 1-3 of part 4 of the Act, which concern civil and criminal proceedings and border protection measures – whereas previously marks were removed from the register if not renewed by the renewal due date but could be restored during the grace period.
• Specify that during the grace period such trade marks would have the status “registered-past expiry date” rather than the previous status of “Expired but Restorable”.

The Amendment Act contained a transitional provision to account for trade marks removed from the register for not being renewed by the renewal due date prior to the commencement of the Amendment Act still having a 12-month renewal grace period. Now that the transitional period has ended IPONZ has updated its examination guidelines to reflect the above noted changes.

Other changes to the Trade Marks legislation brought in by the Amendment Act are:

• Broadening the long-standing exclusion from registration of a certification mark in the name of a person who carries on trade in the goods or services concerned to include the owner of a trade mark for the goods or services concerned;
• Specifying a corollary of the above exclusion – namely a trade mark must not be registered in the name of a person who owns a certification mark in relation to the same goods or services;
• Removing any discretion on the part of the Commissioner in issuing a replacement certificate of registration;
• Specifying that revocation is limited to the grounds in section 66;
• Broadening the ability of the Commissioner or the Court to require security of costs or to treat the proceedings as abandoned if security is not provided to include situations in which there is reason to believe that the party will be unable to pay the costs of the other party if unsuccessful in the proceedings.

IPONZ has also updated its examination guidelines regarding the filing of non-use revocation actions in light of a decision in the Supreme Court and an Assistant Commissioner’s decision. In response to the Supreme Court’s decision in International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated [2020] NZSC 110, (summary here) which gave prominence to the pleaded date for revocation, the guidelines now provide:

• The applicant should specify in their pleadings the date it wishes to have the trade mark registration revoked from and the alleged period of non-use. If no date is pleaded by the applicant, the date of revocation will usually be taken to be the date of filing the application for revocation.
• Revocation from a date earlier than the filing date will only be granted if the Commissioner or the Court is satisfied that the grounds for revocation existed at that earlier date and the pleadings should specifically reference section 68(2)(b), and the relief sought, to support this earlier date.
• If a party applies to revoke a mark which has been cited against their own pending application, the date of revocation requested should be (at least) one day before the application date (or convention priority claim) of that pending application.
• An earlier revocation date will not be accepted on the grounds of non-use where it falls within three years of the actual registration date of the cited mark (section 66(1)(a) and (1A)).

In response to the Assistant Commissioner’s decision in Nitro AG v Nitro Circus IP Holdings LP [2020] NZIPOTM 23, (summary here) the guidelines provide:

• If necessary where a cited mark is involved, an earlier revocation date can be pleaded as one of two dates for revocation with the alternative date being the date the application for revocation was filed. Other than this situation, alternative dates of revocation should not be necessary.  If the applicant pleads alternative dates of revocation other than in this scenario, the date of revocation will usually be the filing date of the revocation application.

Author: Quinn Miller

//piperpat.com/news/article/iponz-updates-trade-mark-examination-guidelines-on-restoration-and-revocati