Trademarks in New Zealand 2024

TRADEMARKS 2024

NEW ZEALAND

Sally Paterson, Thomas Robinson-Piper

(PIPERS)

LEGAL FRAMEWORK

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in New Zealand is:

International law

Which international trademark agreements has your jurisdiction signed?

New Zealand is a party to the following international agreements:

the Paris Convention for the Protection of Industrial Property;
the Agreement on Trade-Related Aspects of Intellectual Property Rights;
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
the Singapore Treaty on the Law of Trademarks.

Regulators

Which government bodies regulate trademark law?

The Intellectual Property Office of New Zealand (IPONZ) administers the registration and maintenance of trademark rights. IPONZ is a division of the Ministry of Business, Innovation and Employment (MBIE). The MBIE is also responsible for various consumer protection and competition regulation laws and policies that impact on the use or registration of trademarks, including the Fair Trading Act 1986, the Commerce Act 1986, the Geographical Indications (Wine and Spirits) Registration Act 2006, the Major Events Management Act 2007 and the Plant Variety Rights Act 1987.

IPONZ must consider whether the use or registration of a trademark would be prohibited by other New Zealand laws. Therefore, legislation overseen by other government ministries also affects the ability to use or register a trademark. For example:

the Ministry for Culture and Heritage and the Ministry for Justice jointly administer the Flags, Emblems and Names Protection Act 1981; and
the Ministry of Foreign Affairs and Trade administers the Geneva Conventions Act 1958.

REGISTRATION AND USE

Ownership of marks

Who may apply for registration?

Any person or legal entity claiming to be the owner of a trademark may apply to register a trademark. Certification trademarks can be owned by any person or organization who will authorize traders and (or) certify that goods or services comply with the certification criteria. However, the owner cannot be someone who is using or will use the trademark.

Collective trademarks must be owned by a collective association (defined as a body constituted for the joint benefit of its members and in a way that its membership can be ascertained at any time). Joint ownership of trademarks is possible provided one of the applicants is entitled to use the trademark on behalf of all applicants, or in relation to goods or services with which all applicants are connected in trade.

Scope of trademark

What may and may not be protected and registered as a trademark?

To be protected or registered, a trademark must be composed of a sign (or any combination of signs) that can be represented graphically and is capable of distinguishing one trader’s goods or services from those of another. A sign is defined non-exhaustively as including a brand, color, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word. Series trademarks (where the applicant applies to register more than one mark in a single application) are allowable under certain conditions.

Unregistered trademarks

Can trademark rights be established without registration?

Yes, the common law right of passing off is recognized in New Zealand and can be used to protect unregistered trademarks. In addition, the Fair Trading Act 1986 provides protection for unregistered trademarks where another trader uses the same or similar mark in a way that is likely to mislead or deceive consumers. Both of these legal avenues for protection of unregistered trademarks require that the owner of the trademark has established a reputation through use of the trademark in New Zealand (or in some cases use in other countries if there is sufficient evidence that the trademark is well-known in New Zealand).

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous trademarks that are not used in New Zealand may be afforded protection under the tort of passing off or the Fair Trading Act 1986 if it is possible to prove that the mark has a reputation in New Zealand, and use of a conflicting mark is likely to mislead or deceive consumers, and in the case of passing off, cause damage.

The Trade Marks Act 2002 also provides protection for famous or well-known trademarks not used (in trade) in New Zealand by enabling the famous trademark owner to oppose the application of an identical or similar mark by another trader in relation to the same or similar goods or services, or unrelated goods or services. The owner of the allegedly famous or well-known trademark must establish that the use of the trademark would be taken as indicating a connection in the course of trade, and registration would be likely to prejudice the interests of the owner. Significant evidence needs to be provided to establish that the trademark is famous or well-known in New Zealand.

The benefits of registration

What are the benefits of registration?

Registration of a trademark provides the following benefits:

exclusive rights to use the mark throughout New Zealand in relation to the goods and services for which it has been registered;
the ability to enforce the registration against others who are using an identical or confusingly similar trademark in relation to the same or similar goods and services;
prevents other parties from subsequently registering any identical or confusingly similar trademarks;
creates an asset that can be transferred or licensed with or without the goodwill of the business in which it is used;
removes the need to establish reputation in the trademark when alleging infringement (whereas reputation is required under passing off and Fair Trading Act 1986 actions);
increases the strength of any Uniform Domain Name Dispute Resolution Policy (UDRP) complaint;
if opposing or seeking a declaration of invalidity against another third-party application or registration, certain grounds are only available for marks that are registered (or have priority), and are generally easier to satisfy than other available grounds;
forms part of a searchable public database of trademark rights (on the Intellectual Property Office of New Zealand (IPONZ) register);
the ability to use the ® symbol to indicate the registered status;
enables a Border Protection Notice to be lodged with New Zealand Customs;
can be used as collateral for lending (and security interests can be recorded against it on the Personal Property Securities Register); and
is presumed to be valid seven years after the filing date, which protects the registration from certain third-party challenges.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Electronic filing is mandatory and the following information is required when filing a standard trademark application:

a clear representation of the mark, being one that is capable of graphical representation. For some non-traditional marks, a description of the mark is generally also required (the clearer the better);
a list of the goods or services (specified within a particular class or classes);
the applicant’s name and address;
an address for service in Australia or New Zealand;
the name and address of any agent (if applicable); and
details of any convention priority being claimed (if applicable).

Depending on the type of trademark, there is provision to provide additional information such as a mark description (e.g, for shape marks), a limitation (e.g, to certain colors) or translation or transliteration (e.g, if the mark contains non-English words or characters). If a certification mark is filed, the draft regulations that govern the use of the certification mark need to be provided within six months of the filing date.

Trademark searches are not required before filing, but are recommended to ensure the mark is available for use and registration.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

A trademark application cannot be registered earlier than six months from the filing date, to accommodate incoming convention filings that may have priority. In a straightforward case, registration may be achieved between seven and nine months from filing. If any objections are raised during examination, the applicant is given 12 months to overcome the issues. Extensions of time are possible in some circumstances. Once accepted, the application is published for a three-month opposition period.

Any opposition filed against the application will increase the estimated time and cost of obtaining a registration. Other circumstances that can increase the time and cost of obtaining registration include additional time and cost associated with obtaining letters of consent from third parties (if needed), filing of non-use actions against cited marks (if needed) and awaiting the outcome, and preparing and filing evidence of use (if available) to address objections raised during examination.

Rights may not be enforced until the mark is registered, although rights will commence from the filing date, or an earlier priority date if one is claimed.

The costs to register a trademark will vary depending on the number of classes. The official fees for registering a mark are NZ$100 per class. Generally, the costs to register a trademark in a single class in a straightforward case, using an authorized agent, will range between NZ$800 and NZ$1,200.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

New Zealand is a party to the Nice Agreement and the Nice Classification System has been used in New Zealand since the early 1940s. Multi-class applications have been allowed since the commencement of the Trade Marks Act 2002, although these do not provide cost savings in terms of the official fees payable. Most attorneys offer a discount of their services fees if an application is filed in more than one class.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

Once filed, an application will be assigned to an examiner who will initially check that all filing formalities have been complied with and subsequently carry out substantive examination. An objection will be raised if the mark or use of the mark:

is likely to deceive or cause confusion;
is contrary to New Zealand law;
would be likely to offend a significant section of the community;
is not a sign that can be represented graphically;
is descriptive and (or) lacks distinctiveness, and is therefore not capable of distinguishing the relevant goods or services;
contains a protected geographical indication, a person’s name or commonly used chemical names;
contains certain prescribed or prohibited signs;
is identical to an earlier trademark application or registration in respect of the same or similar goods and services, and its use is likely to deceive or cause confusion;
is similar to an earlier trademark application or registration in respect of the same or similar goods and services, and use is likely to deceive or cause confusion;
is, or an essential element of it is, identical or similar to a trademark that is well known in New Zealand in respect of the same or similar goods and services (or any other goods or services) if use would be taken as indicating a connection in the course of trade and would be likely to prejudice the earlier trademark owner’s interests.

Applicants have 12 months to respond to any objections raised and may make multiple sets of submissions to the examiner. Extensions of time are available in certain circumstances. Evidence of use can be submitted to overcome some of the above objections and written letters of consent will overcome citation objections.

An applicant must have an address for service in either New Zealand or Australia to correspond with IPONZ. Therefore, the use of an agent to respond to rejections is compulsory for foreign applicants who do not have a suitable address for service.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark in New Zealand (or elsewhere) is not a requirement of registration. Foreign registrations are not granted any rights of priority, unless priority is claimed from a first application filed in a convention country within six months of the filing date of the New Zealand application.

If a trademark is not used genuinely in the course of trade in New Zealand for a continuous period of three or more years following the date of registration, it is vulnerable to removal from the register if it is challenged by a third party. To defeat a third-party challenge on the grounds of non-use, the trademark owner must prove genuine use of the mark within the preceding three-year period ending one month before the date of the non-use revocation application, unless the applicant for removal specifically seeks revocation from an earlier date. Alternatively, the trademark owner may be able to prove special circumstances that may excuse the non-use but this is only possible in certain limited circumstances.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The ® symbol can only be used in association with a registered trademark. If a trademark is not registered in New Zealand, but is registered in a foreign jurisdiction, then the ® symbol can still be used in relation to goods imported into New Zealand if the trademark was legitimately applied in that foreign jurisdiction.

The TM symbol can be used in respect of both registered and unregistered trademarks to assert that a sign is being used as a trademark. Neither type of marking is mandatory and the relief available does not depend upon whether marking was used. However, the use of markings can reduce the likelihood of the mark being infringed or of the same or similar mark being applied for by other parties.

Appealing a denied application

Is there an appeal process if the application is denied?

If IPONZ declines to register a trademark, the applicant can request a hearing before an Assistant Commissioner. If the applicant is not satisfied with the decision of the Assistant Commissioner, it can file an appeal to the High Court. The applicant can appeal the High Court decision as of right to the Court of Appeal. The applicant can seek leave from the Supreme Court to appeal the Court of Appeal decision.

In addition to an appeal, there is also the option of judicial review of a decision by the Assistant Commissioner or High Court Judge, if it is alleged that the decision-maker incorrectly exercised or failed to exercise a statutory power.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Following acceptance, applications are published for opposition purposes. Oppositions must be filed within three months of the publication date, although this deadline is extendable by one or two months in certain circumstances.

The grounds of opposition include:

the applicant is not entitled to claim to be the owner of the mark;
use of the mark is likely to deceive or cause confusion;
use of the mark is contrary to New Zealand law;
use of the mark will likely offend a significant section of the community;
the application was made in bad faith;
the mark is not a sign or a trademark;
the mark has no distinctive character;
the mark is descriptive or is commonly used in trade;
the mark is identical or similar to a trademark registration or application that has priority, for the same or similar goods and (or) services, and its use is likely to deceive or confuse; and
the mark is identical or similar to a well-known mark.

To prevent abandonment of the opposed application, the applicant must file a counterstatement within two months from the date the opposition was filed. The opponent then has two months from when the counterstatement is filed to file evidence in support of the opposition. The applicant then has two months to file their evidence, and the opponent then has an optional one month to file evidence strictly in reply. All of these time frames are extendable provided certain requirements are met. Once the evidence is filed, the parties can elect to attend an in-person hearing, or for the case to be decided on the basis of written submissions only or on the papers as filed.

Registrations can be canceled by an ‘aggrieved person’ (to be given a liberal or wide interpretation) on the following grounds:

a condition of registration has not been complied with;
for certification trademarks – the owner is no longer competent to certify any goods or services, the owner has not complied with deposited regulations, it is not in the public interest for the mark to be registered; and
for collective trademarks – the collective association is an unlawful association, the collective association no longer exist, it is not in the public interest for the mark to be registered.

The owner can oppose cancellation within two months of the cancellation application being filed, in which case the same process and procedural time frames described above for opposition will apply.

Registrations can be revoked by an ‘aggrieved person’ on the following grounds:

that at no time during a continuous period of three years or more was the trademark put to genuine use in the course of trade in New Zealand, by the owner, in relation to goods or services in respect of which it is registered;
that, in consequence of acts or inactivity of the owner, the trademark has become a common name in general public use for a product or service in respect of which it is registered, that:
the article or substance was formerly manufactured under a patent or the service was formerly a patented process;
a period of two years or more has elapsed since the expiry of the patent; and
the word is or the words are the only practicable name or description of the article, substance, or service; and
that, in consequence of the trademark’s use by the owner or with the owner’s consent in relation to the goods or services in respect of which the trademark is registered, the trademark is likely to deceive or confuse the public, for instance, as to the nature, quality, or geographical origin of those goods or services.

The owner can oppose revocation within two months of the revocation application being filed, in which case the same process and procedural time frames described above for opposition will apply. However, if the revocation ground is non-use, the owner’s counterstatement must be accompanied by evidence of use (or evidence of special circumstances explaining the non-use).

Registrations can be invalidated on the same grounds as for opposition with the procedural time frames for the counterstatement onwards being the same. However, with invalidation, the owner can rely on distinctiveness acquired through use up until the date of the invalidation application. A registered trademark cannot be found invalid after seven years from the filing date unless it is made out that:

registration was obtained by fraud;
use of the mark is likely to deceive or cause confusion;
use of the mark is contrary to New Zealand law;
use of the mark will likely offend a significant section of the community; or
the application was made in bad faith.

An invalidated trademark is treated as if it never existed, whereas a canceled or revoked trademark only loses effect from the date of cancellation or revocation.

There are official fees for commencing opposition, cancellation, revocation or invalidity proceedings, each being NZ$350. The official fee for requesting a hearing is NZ$850. Attorney fees will be incurred and depend on the number of grounds raised and the amount of evidence submitted. The successful party is entitled to recover some of its costs from the unsuccessful party on a fixed-scale basis.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration initially remains in effect for 10 years from the filing date. Thereafter, it can be indefinitely renewed for subsequent 10-year periods. Each renewal application can be made 12 months in advance of the renewal due date and may be made up to six months after the renewal due date. IPONZ does not require proof of use when renewing a trademark, however, evidence of use will need to be submitted to maintain a registration if a revocation application based on non-use grounds is filed by a third party.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark registration can be canceled voluntarily (partially or in full) by the trademark owner or their authorized agent via the online IPONZ case management system.

Related IP rights

Can trademarks be protected under other IP rights?

Figurative, shape and sound marks can potentially qualify for copyright protection under the Copyright Act 1994 provided they are original artistic or musical works. Registered design protection under the Designs Act 1953 is possible for shape marks, although the novelty criteria for a design registration makes this uncommon (the design would have to be unused and inherently distinctive if simultaneous trademark and design protection is sought).

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Trade Marks Act 2002, the Fair Trading Act 1986 and the tort of passing off apply to the protection of trademarks online and for domain names. Separate to the UDRP, the New Zealand Domain Name Commission operates an optional dispute resolution process, the Dispute Resolution Service Policy (DRSP), which applies to all .nz registrants. Under the DRSP, there is no requirement for the complainant to show unfair registration and use, or to prove that the registrant is without rights or legitimate interest to the domain name.

LICENSING AND ASSIGNMENT

Licenses

May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

Trademark licenses are not recorded on the register in New Zealand. The statutory provisions for recording licensees on the register were repealed in 2011. Nonetheless, written licensing agreements between contracting parties are highly recommended and should typically include clauses covering effective quality control, trademark use guidelines, minimum working requirements, delineation of the applicable goods or services, whether the license is exclusive or non-exclusive, any geographical limitations, whether the licensee can issue proceedings against a third party, duration of the license, and termination provisions.

Assignment

What can be assigned?

A trademark application or registration can be assigned to anyone entitled to own a trademark registration. The assignment can be with or without the goodwill of the business and in respect of all or some of the goods or services. If the trademark is being assigned with the goodwill of the business and the trademark prominently features in the business name or a domain name of the business, then those names also need to be assigned. An unregistered trademark can only be assigned with the goodwill of the business.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

An application to record an assignment of a trademark application or registration can be made either by the assignor or the assignee. The recordal request must be in writing (electronic form qualifies) and must contain the names of the assignor and assignee, the trademark details, the goods or services that are assigned, and the effective date of the assignment.

An executed copy of the relevant assignment or transfer of ownership document, signed by at least the assignor, must accompany the request to record the assignment, and will form part of the public record. If the assignment was part of a wider sale and purchase or other commercial transaction, parties may prefer to submit a confirmatory assignment agreement to avoid sensitive commercial details being accessible to the public. Notarization or certification of the assignment document is not required to record the assignment.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

The assignment does not need to be recorded to be valid. The Trade Marks Act 2002 indicates that an assignee must apply to record its title regarding a trademark, although there is no time frame for this and no penalty applies for non-compliance. However, an assignee needs to be recorded as the owner to be able to enforce its rights in a trademark registration, which means that the right to bring infringement proceedings starts from the date when the application to record an assignment is filed.

Security interests

Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests over trademarks, established by way of contract, are recognized in New Zealand. Security interests are not recorded on the trademarks register. The security interest should be registered on the Personal Property Securities Register as early as possible to ensure the best priority available (with respect to other parties with interests in the trademark) is obtained and to avoid the trademark being sold for good title to a purchaser unaware of the security interest. Notarization is not required to register a security interest.

ENFORCEMENT

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Infringement of a registered trademark is actionable by way of application to the High Court. Such application can be for an injunction and (or) for a more substantive judgment on infringement. There are no specialized IP courts in New Zealand.

The Trade Marks Act 2002 states that infringement occurs where there is unauthorized use, in trade, of a sign:

identical to the registered mark in relation to any goods or services for which the mark is registered;
identical to the registered mark in relation to any goods or services that are similar to any goods or services for which the mark is registered, and use would be likely to deceive or cause confusion; or
similar to the registered mark in relation to any goods or services that are identical or similar to any goods or services for which the mark is registered, and use would likely to deceive or cause confusion.

Under the Act, it is also a criminal offence to counterfeit a registered trademark; falsely apply a registered trademark to goods or services; make or possess an object for making copies of a registered trademark (that is not a word-only mark); or to import or sell goods with a falsely applied registered trademark.

Procedural format and timing

What is the format of the infringement proceeding?

Substantive infringement proceedings are heard before a High Court judge, and will usually involve case management conferences, discovery stages, filing of evidence and legal submissions followed by a hearing. Expert witnesses can be called if required, and in some cases, witnesses may give live testimony although this is relatively uncommon. Injunctive proceedings can involve little or no pretrial conference and can even be allowed on an ex parte basis if the judge has reason to believe that relevant evidence would not be available if the infringing party was notified of imminent proceedings.

While the hearing itself may be relatively short (a few days or one or two weeks), the lead-up to the hearing and time taken for a decision to be issued means the litigation can be ongoing for at least two years. If appealed to the Court of Appeal, or further to the Supreme Court, the decision of the majority judges decides the case. Criminal enforcement usually involves remedies of fines or imprisonment and delivery-up or destruction of the infringing goods.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof lies with the plaintiff and is assessed on the basis of the balance of probabilities.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The trademark owner (and in the case of a collective mark, at least one member of a collective association acting on its behalf) can bring an action for trademark infringement and seek a remedy. A licensee may request that the owner bring proceedings to prevent infringement and seek a remedy, but if the owner fails to do so within two months, the licensee then has standing to do so. Standing to bring a criminal complaint is on the same basis.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The owner of a registered trademark can lodge a Border Protection Notice (BPN) with New Zealand Customs to intercept and seize goods that are suspected to infringe its registered trademark. The maximum term of a BPN is five years, after which it needs to be renewed.

If New Zealand Customs detain goods that they suspect to be infringing, they will issue a determination notice on the local importer or exporter, and notify the trademark owner. If the determination notice is not disputed, New Zealand Customs will organize destruction of the seized goods. If the determination notice is disputed, the trademark owner will have an initial (extendable) period of 10 working days during which it must initiate proceedings in the High Court.

If no action is taken by the trademark owner, then New Zealand Customs will release the seized goods. Evidence of foreign activities connected to the import or export of goods that are suspected of being infringing can be used to support a charge of infringement or dilution provided it qualifies as admissible evidence.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery is provided for in New Zealand and can be classified as standard or tailored. Standard discovery can be a long and expensive process whereas tailored discovery offers an alternative. Agreeing to tailored discovery can save all parties substantial time and cost if the agreed scope of discovery is restricted to what really matters.

If the rights owner has reason to believe that relevant evidence would not be available if the alleged infringing party was requested to provide evidence regarding their dealings, then an Anton Piller order can be sought from a judge to allow non-notified discovery within the scope of the order.

If the details of the parties are unable to be known in advance, then a Metallica order can be sought from a judge. If the party from which discovery is sought makes credible claims that the sought-after material involves confidential information, then a judge may allow the party’s solicitor to view and possibly even obtain copies of the material on the condition that the party itself is not given access to the confidential information.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The typical time frame for litigation of this type (from commencement of proceedings to the judgment issuing) is at least two years if there is a full substantive hearing on the issue of infringement. However, if an interlocutory injunction is sought, time is of the essence so these proceedings are usually dealt with within six months. Appeals may be heard in a shorter time frame than trial litigation depending on what grounds are being appealed (and whether witnesses are required).

Limitation period

What is the limitation period for filing an infringement action?

Infringement actions are generally limited to those infringements that occurred within six years of the infringement action commencing. However, if the rights owner can establish late knowledge of infringements occurring more than six years before the filing of the infringement action, then the limitation period is the earlier of three years from the late knowledge date or 15 years from the infringement date.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs for an infringement proceeding are heavily dependent on the circumstances of the particular case. To initiate proceedings (by preparing and filing a statement of claim), costs will start at about NZ$25,000. For a matter that sees a High Court decision issue, costs will likely be in excess of NZ$200,000. The successful party will usually be entitled to an award of costs in its favor, which is determined by a set cost scale. A Calderbank offer may be taken into account by the judge when costs are being awarded.

Appeals

What avenues of appeal are available?

The majority of trademark cases are heard in the High Court. An appeal to the Court of Appeal is available as of right. A further appeal can be made to the Supreme Court if leave to appeal has been granted by the Supreme Court.

Defenses

What defenses are available to a charge of infringement or dilution, or any related action?

The following defenses to trademark infringement are available:

the allegedly infringing use falls outside the scope of the registration;
the mark being used is registered as a trademark or geographical indication and its use is within the scope of that registration;
the mark is used in accordance with honest practices in industrial or commercial matters and the use is:
for comparative advertising purposes;
on account of being the person’s name or their predecessor’s name or the name of their or their predecessor’s place of business;
descriptive; or
reasonably necessary to indicate the intended purpose; or
the mark has been continuously used in the course of trade in relation to the objected goods or services prior to the earlier application date of the registered mark, or the first use in trade in New Zealand, in relation to the relevant goods or services;
the mark was applied to the goods by the owner (or licensee) or they consented to the use of the mark; or
the trademark rights in relation to the specific goods they are applied to have been exhausted.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Interim or permanent injunctions are available on terms that a court considers reasonable. If interim injunctive relief is refused, the rights owner may at least be able to obtain a security order from the defendant pending the outcome of the substantive trial. Damages or an account of profits is available, although the plaintiff will need to nominate one or the other. The election can be made after the plaintiff has received discovery of the defendant’s financial information. Additional punitive damages may be awarded depending on the flagrancy of the infringement and the benefits obtained by the infringer. Delivery up or destruction of the infringing goods can be ordered. Certain criminal offenses have penalties of imprisonment and (or) fines.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are available in New Zealand and are in fact encouraged by the court during litigation. The most common ADR methods used by parties are negotiation and mediation. Arbitration is also available but is less common. During litigation, the parties must indicate to the court at the first case management conference whether ADR is suitable to try and facilitate settlement prior to trial.

Negotiation is usually the first step in dispute resolution intervention. Only the parties themselves (or their representatives) are involved, and those individuals determine the entire negotiation process. Therefore, there is a large degree of flexibility on how the negotiation is conducted. In some cases, however, a more structured and facilitated approach to dispute resolution is required.

Mediation can be seen as a middle ground between negotiation and arbitration. Parties can agree to enter mediation before or during litigation and communications and documents made in connection with an attempt to mediate are privileged and protected from disclosure in court proceedings under the Evidence Act 2006. While a neutral mediator is present to assist the parties and try to resolve any disputes, the mediator cannot impose a decision on the parties. This method relies on the parties being willing to cooperate to reach an agreement. If the parties do reach an agreement and the agreement is documented and signed at the conclusion of the mediation, then the agreement is binding.

Arbitration involves the selection of a neutral independent arbitrator who has the authority to make a binding and enforceable decision after hearing and considering the representations of the parties. Therefore, this method does ensure a final resolution of the dispute will be reached, which is enforceable by the courts.

Given the delay and expense involved in pursuing litigation, and the apparent intention of the New Zealand courts to direct parties to try and resolve matters themselves before trial, ADR is an increasingly useful and effective option for parties to resolve disputes.

UPDATE AND TRENDS IN TRADEMARKS IN NEW ZEALAND

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The Intellectual Property Office of New Zealand (IPONZ) has amended the current practice guidelines to clarify that submissions and evidence can be made to the Office for prior use, under the ‘other special circumstances’ provision in section 26(b) of the Trade Marks Act 2002. The current practice for prior use being asserted in relation to a citation is:

“5.4 Prior use

The owner of an application facing a citation under section 25 may provide submissions and evidence of use of its mark in New Zealand prior to the date the cited mark was filed (or applicable convention priority date). Examiners will consider such submissions and evidence in determining whether ‘special circumstances’ exist for the purposes of section 26(b) of the Trade Marks Act 2002.

Prior use may be one of the various factors that examiners may take into consideration when determining whether special circumstances exist under section 26(b) of the Trade Marks Act 2002, but prior use on its own may not amount to a special circumstance. Each case will be considered on its merits.”

The above amendment replaced the following policy that rejected consideration of prior use in relation to a citation:

“2.1 Prior use

Examiners will not consider submissions attempting to prove that the applicant has used its mark in New Zealand prior to the priority date of a mark that has been cited against the application.

The Act is very clear that each application must be determined ‘according to its order of priority’ (see section 35(b) of the Trade Marks Act 2002). The mark with the earliest priority will proceed to acceptance and will be raised as a citation against applications with later priority. An applicant with later priority must either oppose the registration of a mark that has earlier priority, or must overcome the citation via the methods outlined in these Guidelines.”

Noteworthy cases recently in New Zealand include:

Energy Beverages LLC v Frucor Suntory NZ Limited [2020] NZHC 3296, which confirmed that the High Court would favour the wording of the trademark description over the graphical representation of the trademark when interpreting what is subject to trademark protection;
International Consolidated Business Proprietary Ltd v SC Johnson & Son Incorporated[2020] NSC 110, which culminated in a line of judicial decisions regarding the timing of filing an application for revocation based on non-use. Following the decision, IPONZ has updated its practice guidelines to note:
the applicant should specify in their pleadings the date it wishes to have the trademark registration revoked 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) of the Trade Marks Act 2002, and the relief sought, to support this earlier date;
if a party applies to revoke a mark that 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; and
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 (sections 66(1)(a) and 66(1A) of the Trade Marks Act 2002); and
Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated 2022NZIPOTM 13, where an assistant commissioner was not persuaded that Gorgonzola has become a descriptive or generic term for cheese in New Zealand. While not strictly a trademark issue, the decision foreshadows incoming changes resulting from the recent free trade agreement with the European Union that protects a number of products having EU geographic indicators.

In terms of trademark opposition practice, recent IPONZ decisions have noted that it is important for parties to focus their pleadings on only the most relevant grounds of opposition, otherwise, higher costs may be awarded against parties who pursue unnecessary or unmeritorious grounds of opposition.

* The information in this chapter was accurate as at August 2023.

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