Changes to Trade Marks Act 2002

Some significant amendments to the New Zealand Trade Marks Act 2002 are being introduced into Parliament as part of a Statutes Amendment Bill. It is anticipated that the Bill will have its first reading before Parliament adjourns in December 2004. Three of the amendments are worth mentioning; the other amendments tidy up minor aspects.

(a)  Ownership

A significant change is being made to the provisions governing ownership. The new Act contains a prohibition on registration if the application was made “in bad faith”. This was a new provision. It is clear from UK case law on the comparable provision in the UK Trade Marks Act that bad faith extends to situations where improper claims to proprietorship are made in an application. However the intention and knowledge of the applicant are key aspects in determining “bad faith”.

Under the 1953 Act ownership was determined as an objective matter. If a prior user had used the same mark for the same goods or services this was enough to prevent the trade mark being registered by another person - i.e. without having to consider intention or knowledge.

An amendment will be made to s.32 to clarify that the person applying to register a trade mark needs to be the person “claiming to be the owner” of the trade mark. This will reintroduce the objective test.

(b)  Absolute Grounds for Refusing Registration

S.17 defines the absolute grounds under which the Commissioner must not register part of a trade mark.  S.17(1)(a) provides that the Commissioner must not “register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion”.

S.17(1)(b)(i) and (ii) provide that the Commissioner must not “register a trade mark or part of a trade mark” for two further policy reasons (i.e. contrary to law and offensiveness). The amendments will remove any suggestion that the Commissioner is able to register part of a mark and will ensure consistency with s.17(1)(a);

(c)  Where an Identical or Similar Mark is already on register

S.25 contains the power to refuse registration of a trade mark where the mark is identical or similar to a trade mark already on the register. The 1953 Trade Marks Act (s.17) provided the Commissioner with a specific power to refuse to register trade mark A for any goods or services where the trade mark was identical or similar to a registered trade mark (trade mark B) in three different situations:

• Identical to trade mark B in respect of the same goods or services.
• Identical to trade mark B in respect of similar goods or services where its use was likely to deceive or confuse.
• Similar to trade mark B in respect of identical or similar goods or services and where its use was likely to deceive or confuse.

Under s.25 of the Act as it stands, the Commissioner does not have power to refuse to register a trade mark in the second of the three situations above. This section is to be amended to expressly give that power to the Commissioner under the new Act.