The MBIE discussion paper on the IP Amendment Bill was issued recently. It is divided into four parts: patents, trade marks, designs, and use of AI by IPONZ.
I’m doing a few posts highlighting what I see as the key issues. The discussion on patent reform is here.
My picks for the top three trade mark issues are proprietorship, prior continuous use, and getting rid of the “aggrieved person” requirement.
Proprietorship
Oh dear, here we go again with the vexed problem of proprietorship.
MBIE proposes that the Act should be amended to make it clear that proprietorship is a proper ground of invalidity. This would at least be an improvement on the status quo. (Currently, the case law provides that proprietorship is a proper ground of invalidity, but this isn’t apparent from the Act itself.)
But the analysis in the discussion paper doesn’t go nearly far enough. I think that MBIE needs to consider and engage with this issue at a much more sophisticated level. There is an excellent article by Rob Batty on this topic, which would be a good starting point.
I think the first question should be, “Do we need proprietorship at all?” Arguably, it was deliberately written out of the 2002 Act and has only weaseled its way back in through the case law. Do we think this is a good thing?
And if we do decide to keep proprietorship, should there be legislative limits placed upon it? In some ways, proprietorship rights exceed those of registered trade mark rights, which is crazy. We now have the decision of the Court of Appeal in Ziploc, which suggests that proprietorship rights should be time limited where there has been non-use. (I have written about that decision here.) The Court of Appeal decision must play an important part of this analysis.
And what about oppositions? Proprietorship causes problems there, too, not just in the invalidity context. The legal gymnastics required to establish that proprietorship is a real ground of opposition are not quite as contorted as in the invalidity context, but they are still awful.
prior continuous use
It has been suggested that New Zealand should have a “prior continuous use” provision similar to s 44(4) of the Australian Trade Marks Act 1995.
This change would allow a trade mark to be registered – even if there is a similar mark on the register – if the applicant or its predecessors in title have continuously used the mark in relation to similar goods or services from a date earlier than the the priority date of the registered mark.
I am not sure how often this would make a difference in practice, given that s 26 already allows for a mark to be registered if the owner of the earlier registered mark consents, or if there is honest concurrent use, or if there are other special circumstances. All the same, harmonisation with Australia often makes sense, and this change would also bring the registration provisions into closer alignment with the infringement provisions of the New Zealand Act. (Section 96 provides that prior continuous use is a defence to allegations of infringement of a registered trade mark.)
aggrieved person requirement
MBIE proposes amending the Act to remove the requirement that only an “aggrieved person” can apply to revoke or invalidate a trade mark registration.
This gets a “yes” from me. The proposed amendment would bring us into line with other jurisdictions, and it removes an unnecessary hurdle that can lead to injustice.
An occasional applicant for revocation or an ADI will not know about the need to file evidence showing that it is an aggrieved person, potentially putting its case in peril. Often, the applicant will have filed its own application for a similar trade mark, but if this was done after the date of application for revocation or ADI then arguably it cannot be taken into account.
Usually, it is pretty clear despite the lack of explicit evidence that the applicant is in fact an aggrieved person – the fact that it has paid lots of money to lawyers and to IPONZ in the form of filing fees/hearing fees is a useful clue – but decision-makers are bound by the words of the section to require something further. The upshot of this is that the merits of the case risk getting lost in the procedural requirements.
submissions
Submissions on the Bill are due by 5pm on Friday 2 August 2019. It’s not often that we get a chance to fix things up in the legislation itself, so make the most of the chance!
