Many of the provisions in the New Zealand Trade Marks Act 2002 have been amended by virtue of the Regulatory Systems (Economic Development) Amendment (No.2) Act. New Zealand trademark owners should be aware of these changes since their rightful and legal ownership can be questioned in case of failure to comply.
These amendments came into effect on January 13, 2020. If you have yet to read about these changes, now is your chance so keep reading.
Change in the Renewal Grace Period
Under previous New Zealand trademark law, the grace period for trademark renewal after the expiry date was 12 months. The expiry date refers to the specific date after the due date for renewal of a registered trademark has expired.
With the amendment, the grace period has been shortened to just six months. During the 6-month grace period, the registered trademark will still be on the register but it will have a note to it (“registered – past expiry date).
If it isn’t renewed within six months, it will then be removed from the register. As a consequence, it will not have its registered status.
This can mean a wide range of adverse effects in case the trademark is still being used by the owner. Other third parties, for example, can use the expired trademark for commercial purposes and profit from it.
During the 6-month grace period, there will be no civil and criminal proceedings. These means trademark infringements, counterfeit trademarks and other offenses will be made in any government agency. But other actions can be made, said actions of which include third-party revocations for non-use and assignation of trademarks.
The registered trademark will also be considered as valid even when it’s in the past expiry date category. Third parties cannot register for a conflicting trademark during this period, too.
In case of a successful renewal within the grace period, the renewed registration is considered in effect from its expiry date until the next expiry date. So, if a third party infringes on the trademark in any manner during the grace period, it can be a ground for infringement proceedings.
Removal of the Commissioner’s Discretion on Non-use Revocation Issues
Before the amendments, the law wasn’t clear about the Commissioner’s residual discretion whether a registered trademark will remain on the register or not in case of non-use. This provision was notwithstanding whether the New Zealand trademark owner didn’t show proof of use or wasn’t able to provide special circumstances for its use.
Under the amendments, the New Zealand Commissioner for Trade Marks absolutely doesn’t have the authority, power and discretion to revoke a registered trademark due to non-use.
Note: The case is different in Australia since the Registrar is authorized with broad discretion over registered trademarks that aren’t in use.
If you want more information about these amendments, you should contact a professional trademark representative.
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