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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."


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