Dialogue: Air of uncertainty on grievances

By PENNY CATLEY*

Although the new Trade Marks Bill is a good start to advance debate, it raises more questions and concerns for business generally and goes only partway to recognising indigenous rights.

The bill is intended to ensure that New Zealand trademark law better meets the needs of the business community and addresses Maori concerns regarding the registration of Maori works and symbols as trademarks. But does it?

Specifically, the bill has been designed to more clearly define trademark rights, simplify procedures for obtaining trademarks, reduce compliance costs and deter counterfeit and pirate activity.

The Government has for some time now publicly grappled with the issues of indigenous intellectual property rights protection.

Those who have registered Maori symbols and words should take note. The bill provides a mandate for culturally aggrieved persons to seek a declaration that a registered trademark is invalid because it is likely to offend a significant section of the community. Are we likely to see longstanding registered trademarks (such as Air New Zealand's koru) challenged by Maori on the grounds that the mark offends a significant number of the community?

If the registered trademark is invalidated, what happens to any actions that the trademark owner might have taken in the past to enforce its rights? Can these, too, be retrospectively invalidated?

The Government has stated that an objective of this bill is to simplify procedures and reduce compliance costs. To an extent, the bill achieves this outcome. For example, it specifies that multi-class applications may be filed simultaneously and increases the initial period of registration from 7 years to 10 years. However, the cost for filing a multi-class application is not yet known, and neither is the cost to renew a trademark for a further period of 10 years.

One of the more concerning elements of the new bill is the perceived increased role that the Intellectual Property Organisation of New Zealand (Iponz) plays in the registration process. Clause 16 provides that the commissioner must, if required by individuals, advise whether a trademark has a distinctive character. If within three months from issuing this advice a trademark application is refused registration, the application fee might be refunded.

What happens if use of the trademark begins, on the basis of the commissioner's advice, which is subsequently found to be wrong?

There is an obvious conflict of interest if Iponz is providing advice on a trademark and then assessing if it can be registered.

* Penny Catley is a partner and registered patent attorney at KPMG Legal, specialising in intellectual property.