Gordon Campbell | Parliament TV | Parliament Today | News Video | Crime | Employers | Housing | Immigration | Legal | Local Govt. | Maori | Welfare | Unions | Youth | Search

 


Trade Mark Bill Puts New Onus On TM Owners

7 March, 2002

The report back of the Trade Mark Bill by the Select Committee brings some challenges for trade mark owners as well as some welcome changes, according to trade mark specialist, Bryan Thompson, partner at A J Park.

"The Bill allows trade marks to be revoked if they become a 'common name' in general public use. An example would be where people might commonly refer to inline skates as Rollerblades, even though competitors and the trade might respect the difference. Trade mark owners can sue competitors to stop misuse, but cannot sue members of the public."

"The Select Committee takes the view that owners of trade marks must take steps to prevent their trade marks becoming generic to the public, by using their trade marks as adjectives, not nouns. An example given, is the trade mark owner should use the term "Levi jeans", not just Levi's, to prevent Levi's becoming a generic product.

Bryan Thompson says while it is unfortunate that many valuable trade marks may now be removed from the Register because the public misuse them as generic terms, at least trade mark owners have a clear signal to ensure they properly brand their products to ensure their trade mark remains distinctive.

He says on a welcome note, the Bill retains the new clause prohibiting registration of trade marks likely to offend a significant section of the community. "The Committee recognises the value and flexibility of this clause to stop registration of trade marks which are offensive to Maori and other significant sections of the community. This allows for changes in New Zealand's social and demographic patterns, and shifts in the mix and significance of identifiable groups, values and beliefs to be recognised over time," he says.

"While the controversial Advisory Committee is to be retained, despite concerns about its cost, its function is less clear, with the striking out of clause 178, which previously set out its function. Its function was to advise the Commissioner of Trade Marks whether the proposed use or registration of a trade mark that is, or appears to be, derivative of Maori imagery or text is, or is likely to be, offensive to Maori".

Bryan Thompson says there is a welcome extension of infringement law to protect misuse of famous trade marks. "Protection now extends to goods or services that are not similar to those in the registration, where the trade mark is well known in New Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character of the mark. Under existing law such trade marks are infringed only if the unauthorised use is on goods or services which are similar to those in the registration. This at last brings our law into line with our obligations under Article 16 of the TRIPS Agreement, to provide protection for famous trade marks for a wide range of goods and services outside the registration. It also reduces the need for the defensive filing of trade marks."

ENDS


© Scoop Media

 
 
 
 
 
Parliament Headlines | Politics Headlines | Regional Headlines

 

Also, Loan Interest: Productivity Commission On Tertiary Education

Key recommendations include better quality control; making it easier for students to transfer between courses; abolishing University Entrance; enabling tertiary institutions to own and control their assets; making it easier for new providers to enter the system; and facilitating more and faster innovation by tertiary education providers... More>>

ALSO:

Higher Payments: Wellington Regional Council Becomes A Living Wage Employer

Councillor Sue Kedgley said she was delighted that the Wellington Regional Council unanimously adopted her motion to become a Living Wage employer, making it the first regional council in New Zealand to do so. More>>

ALSO:

Scoop Images:
Dame Patsy Reddy Sworn In As Governor-General

This morning Dame Patsy Reddy was sworn in as the New Zealand Realm’s 21st Governor-General. The ceremony began with a pōwhiri to welcome Dame Patsy and her husband Sir David Gascoigne to Parliament. More>>

ALSO:

Ruataniwha: DOC, Hawke's Bay Council Developer Take Supreme Court Appeal

The Department of Conservation and Hawke's Bay Regional Investment Company (HBRIC) are appealing to the Supreme Court over a conservation land swap which the Court of Appeal halted. More>>

ALSO:

With NZ's Marama Davidson: Women’s Flotilla Leaves Sicily – Heading For Gaza

Women representing 13 countries spanning five continents began their journey yesterday on Zaytouna-Oliva to the shores of Gaza, which has been under blockade since 2007. On board are a Nobel Peace Laureate, three parliamentarians, a decorated US diplomat, journalists, an Olympic athlete, and a physician. A list of the women with their background can be found here. More>>

Gordon Campbell: On The Key Style Of Crisis Management

At Monday’s post Cabinet press conference Key was in his finest wide- eyed “Problem? What problem?” mode. No, there wasn’t really a problem that top MPI officials had been at odds with each other over the meaning of the fisheries policy and how that policy should be pursued... More>>

ALSO:

Mt Roskill: Greens Will Not Stand In Likely Post-Goff By-Election

“The Green Party’s priority is changing the Government in 2017, and as part of that we’ve decided that we won’t stand a candidate in the probable Mt Roskill by-election... This decision shows the Memorandum of Understanding between Labour and the Green Party is working." More>>

ALSO:

Get More From Scoop

 

LATEST HEADLINES

 
 
 
 
 
 
 
 
 
Politics
Search Scoop  
 
 
Powered by Vodafone
NZ independent news