Organisation: Intellectual Property Office of New Zealand

Two organisations with substantial reputations recently came head to head in a trademark battle in <i>World Masters Games 2017 Limited v MasterCard International Incorporated</i>. The decision indicated that all parties to proceedings needed to “tidy up their respective acts” as poor pleading and irrelevant evidence would be dealt with rigorously.

01 December 2016

While many IP offices have made substantial progress in leveraging the latest technological breakthroughs, they could still do more to modernise their workflows

01 July 2016

A recent High Court decision serves as a warning that not just any evidence of confusion will do; evidence of confusion and deception must be carefully analysed as to the cause of it.

29 January 2016

In <I>Daimler v Sany</I>, the Court of Appeal has confirmed a decision of the High Court finding that Sany’s logo mark, which consists of a three-pronged device with the word ‘Sany’, was not confusingly similar to Daimler’s earlier three-pointed star marks. Among other things, the Court of Appeal agreed with the High Court’s findings that the marks are not similar, stating that “when we look at the Sany mark, we do not think of the Daimler marks”.

22 September 2015

In <I>J H Whittaker & Sons Limited v Empire Confectionery Limited</I>, the Intellectual Property Office has dismissed an opposition against the registration of the shape of Whittaker’s 'Santé bar'. The mark consisted of the 3D shape of a rectangular finger or bar with two tapered ends. This decision can be contrasted with the recent opinion of Advocate General Wathelet in <I>Nestlé v Cadbury</I>, which concerned the shape of Nestlé’s Kit Kat bar.

15 July 2015

In <i>Unilever PLC v McPherson's Consumer Products Pty Limited</i>, the High Court has upheld a decision of the assistant commissioner in which the latter had rejected Unilever’s opposition against the registration of the mark CATWALK. In the absence of registered rights, Unilever had to establish an awareness of its CATWALK mark in the relevant market. The decision highlights the risk that owners take when electing to forgo registered protection.

31 July 2013

Colombia, Mexico and New Zealand acceded to the Madrid system in the 12 months that have passed since last year’s INTA meeting in Washington DC. <i>WTR</i> spoke to the heads of the three countries’ IP offices to find out how the change has impacted on trademark practice.

07 May 2013

International discussions on how best to safeguard indigenous rights continue in heated fashion. This year the debate included the United Nations’ Permanent Forum on Indigenous Issues calling on WIPO to afford greater recognition of indigenous peoples in its decision-making processes and respect for their right to safeguard, preserve or promote traditional resources as they see fit. Similar tensions are being played out at jurisdiction level, with the latest developments in New Zealand providing an example of the challenges posed by trying to protect indigenous rights in existing IP frameworks.

07 September 2012

As part of the country’s preparations to implement the Madrid Protocol, the Intellectual Property Office of New Zealand has issued a discussion document inviting submissions on a number of proposed amendments to the Trademarks Regulations 2003. Among other things, IPONZ proposes to increase its official fees for most of the trademark services that it provides, but does not intend to charge a handling fee for Madrid Protocol applications.

19 June 2012

In <i>Pankhurst v Saramar LLC</i>, the Intellectual Property Office has rejected an opposition by Saramar LLC, the owner of the KIWI mark for shoe polish and shoe laces, against the registration of the trademark KIWISOLES for flip flops. Among other things, the assistant commissioner found that KIWI was non-distinctive in New Zealand because it is commonly used to describe New Zealanders.

15 March 2012