New Zealand has passed legislative changes affecting trade marks. The legislation adopting the changes has been given royal assent and will take effect from Monday 13 January 2020 and affect trade marks expiring on or after the commencement date.
Changes to Expiration Status
Under previous legislation, an expired trade mark in New Zealand was given the status "Expired but Restorable". The owner of the trade mark could renew and restore the trade mark by paying the appropriate fee to IPONZ within 12 months after the expiry date. This period is commonly known as a 'grace period'. (In Australia, the renewal grace period is only 6 months after the expiry date). After expiry of the grace period, the trade mark is permanently removed from the trade mark register and can no longer be revived.
With the new legislation, an expired NZ trade mark under the grace period will be given the status "Registered (Past Expiry Date)". However, significantly, the duration of the grace period has been halved - from 12 months to 6 months.
Additional changes under the new status include:
- allowing the owner to perform maintenance actions such as assignment or cancellation of the expired mark;
- allowing third parties to take action against the expired mark, such as a non-use removal action;
- the owner of the expired trade mark does not have the right to enforce the trade mark against others for infringement, unless the trade mark is reinstated.
While it is good practice to ensure that trade marks are renewed on time before their expiry date, the changes mean that NZ trade mark owners should be more attentive to the expiry date of their trade marks to avoid inadvertent expiry of their trade marks.
IPONZ has released further information regarding the above legislative update and other IP-related changes here.
Xuveo Legal can provide assistance with New Zealand trade marks, including filing, prosecution and renewal. Contact us today to see how we can assist.
Image Credit: 'Silver Fern Flag', Bamse, Wikimedia Commons (under Creative Commons Attribution-Share Alike 3.0 licence).
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