I was taken aback to read a submission advanced by Pharmazen in Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 3016, namely that actual market use and conditions should be relevant to the assessment of confusion and deception under s 25(1)(b) of the Trade Marks Act 2002 as well as to the assessment of confusion and deception under s 17(1)(a) . Such a bold submission! And what would the consequences...
I wrote this piece a long time ago, before the world changed. I wondered about swapping it for something corona-ish, especially as there are some fascinating things going on in the patent world in that area right now. For example, there is talk of both patent rights being “undermined” by State march-in rights under existing legislation, and patent rights being increased under proposed...
I know, I know – we are all intellectual property specialists; we have the words ‘intellectual property’ sprinkled liberally throughout our websites; we read intellectual property articles and cases; we go to intellectual property conferences…. And yet. “Intellectual property” is just a catch-all, a voluminous handbag filled with largely unrelated items, some...
Section 17(1)(a), which prohibits registration of a trade mark if its use is likely to deceive or cause confusion, is a funny provision in terms of onus. An opponent relying on an earlier mark must meet an initial threshold test of showing that the earlier mark has a sufficient reputation, and if it can do so then the onus of proof flips to the trade mark applicant. Traditionally, that initial...
Applications for non-use are all about making sure that the owner has crossed every t and dotted every i. The owner’s evidence is put under the microscope. Has it shown evidence of use that relates unequivocally to the right period? The right jurisdiction? The right goods and services? Is the mark used in the same form as the mark that is on the register? And...
This post is the second in a two-part series highlighting areas of trade mark law that wouldn’t be easy to find out for the non-expert (Part I, which is about proprietorship, is here). In Man Truck & Bus AG v Shaanxi Heavy-Duty Automobile Co Ltd [2017] NZHC 2821 Woodhouse J held that the applicant in s 17(1)(a) oppositions involving specialist goods and services will fail automatically...
This post is the first in a two-part series about aspects of trade mark law that are invisible to non-experts. These areas of the law are invisible because they have developed through case law – and sometimes pretty obscure case law – rather than being set out in the legislation. IN PRAISE OF CODIFICATION The good thing about statutes is that they are known, they are usually pretty clear...
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...
Earlier this year, comedian Tim Batt registered a handful of “Coalition Party” domain names, shortly after the Destiny Church-brigade announced that it was starting a political party under that name. I thought it was such a New Zealand-style protest: gentle, non-confrontational, and kind of sweet. The best part, as you probably know, is that he uploaded an episode of The Male Gayz, a...
Earlier this year I went to a workshop on the GI aspects of the EU – New Zealand Free Trade Agreement negotiations. New Zealand’s lead negotiator, Martin Harvey, gave an update on the status of those negotiations. As is widely-known, the EU wants New Zealand to recognise GIs that are protected in the EU, and it would reciprocate in kind. Of course, the number of European GIs far...
