Please tell us a little about your trademark and brand protection practice.
I am a New Zealand barrister and solicitor, and registered Patent Attorney. Since joining Baldwins Intellectual Property in 2010, I have been involved in litigation and dispute resolution work for a number of high profile international clients, including US-based companies Harley-Davidson Motor Corporation, Motorola, and Pepsico. Some of my work has resulted in leading New Zealand trade marks jurisprudence, including:
- Crocodile International Pte Ltd v Lacoste  NZSC 14, the leading case on “non-use” of a trade mark
- Zoggs International Limited v Sexwax Incorporated  NZHC 1494 and Sexwax Incorporated v Zoggs International Ltd  NZCA 311, leading cases on “bad faith” and “reputation” respectively
What should U.S. companies be doing to protect their valuable brand names in New Zealand?
Early clearance and registration are certainly recommended as first steps for any brand owner. New trade mark applications are published for potential opposition purposes at the end of each month, and opposition remains open for three months. Monitoring for new applications and published marks is recommended in order to ensure that potential oppositions are identified early.
Marketplace, company name registration, and/or domain name registration searches are also recommended for certain industries, in order to identify potential or proposed use. Customs notices are also recommended for those concerned about counterfeit goods, and can be a useful means of monitoring both imported and exported goods. Most disputes in New Zealand arise from the adoption of confusingly similar marks by different parties (rather than the misappropriation of marks, or adoption of identical marks). Early identification and potential challenge increase the risks of successfully preventing the use of confusingly similar marks. Early intervention also reduces the risk of dilution, damage, and/or customer confusion.
What is required for a company to be eligible to file a trademark opposition in New Zealand?
Broadly speaking, there are four types of trade mark proceedings in New Zealand:
- Opposition (before the Commissioner of Trade Marks, seeking to prevent registration of an application);
- Invalidity (before the Commissioner of Trade Marks or the High Court, seeking to invalidate an already-registered mark);
- Revocation (before the Commissioner of Trade Marks or the High Court, seeking to remove a mark for non-use); and
- Infringement (in the High Court, requiring a registered trade mark).
There is no locus standi or other standing requirement for filing a trade mark opposition in New Zealand. Potential opponents are encouraged to either oppose or seek an extension of time for opposing within the initial 3 month deadline, as it is much easier to oppose registration than to apply to invalidate an already-registered mark. Potential grounds for opposing include that the mark applied for is likely to deceive or confuse consumers (for example, on the basis of the opponent’s prior use or registration of a similar mark), that there has been a false claim to ownership (including no intention to use the mark as applied for), that the application was made in bad faith, and/or that the application is contrary to law (including copyright law, consumer law, or common law).
What are some of the risks to international companies who decide not to file a trademark opposition?
Not filing a trade mark opposition can be hugely detrimental, depending on the circumstances. It may become impossible for the potential opponent to later challenge a registered mark (or its use), particularly if the owner of the registration has used the mark in New Zealand and established a reputation in the mark for itself.
New Zealand cases will typically be decided on a priority basis, meaning first to use or register should prevail. However, it can be difficult to obtain evidence of use, which must have been genuine, within New Zealand, and may need to surpass mere “use” to establish a “reputation” or “goodwill” (depending on the type of proceeding or challenge). This can also become clouded by any subsequent use of the same or a confusingly similar mark by a different entity.
Early registration is therefore always desirable and recommended. This is especially true given that trade mark infringement proceedings require a trade mark registration, and given that use of one’s trade mark registration provides an absolute defense to infringement.
If opposition proceedings are not filed, invalidity and revocation proceedings are still available. However, as mentioned above, the burden in such cases does tend to become heavier for the challenger. In the meantime, the challenger may also be prevented from freely using its mark in New Zealand, given the potential threat of infringement. In-keeping with the general principles of priority, honest prior or concurrent use can provide a defense to infringement.
Editor’s note: U.S. or international companies interested in speaking with Thomas about New Zealand trademark protection strategies may contact him directly via email or Linkedin.