There are changes to the New Zealand Trade Marks Act 2002, which will come into force on 13 January 2020. Trade mark owners must be aware of the following changes:
1. A shortened grace period for renewing a trade mark registration from 12 months to 6 months.
From 13 January, any trade mark registration that expires on or after such date can only be renewed within six months of the expiry date. The shorter grace period for renewal is now identical to the grace period provided for Australian Trade Mark Registrations.
2. Clarification of “no discretion” for non-use revocations
The changes also clarify that there are no discretionary rules for trade mark owners to potentially rely upon during a non-use revocation action. Previously, if a trade mark owner had no use a trade mark registration during a three year non-use period, or there are no special circumstances in which the trade mark has not been used, then it was still possible to successfully overcome a revocation action if the Commissioner considered that the registration should remain on the Register.
Historically, the discretion rules has been unclear in New Zealand. However, the upcoming change now confirms that no discretionary rules apply in New Zealand, and brand owners should ensure that their trade mark is used in New Zealand.
In Australia, the discretionary rule still applies.
A summary of the position in Australia & New Zealand:
Law
Australia
New Zealand
Expiration Grace Period
Within six months of the expiry date
Within six months of the expiry date
Discretionary rule for non-use
Discretion rule applies
Discretion rule does not apply
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