Recent legal updates from the Intellectual Property Office of New Zealand (IPONZ)
Trade mark practice guidelines and specifications
Goods and services
IPONZ has updated its guidelines around the acceptability of a range of goods and services to ensure consistency with current practices and the 11th Edition of the Nice Classification System. IPONZ has also updated the options in its pre-approved Goods and Services Classification to reflect recent World Intellectual Property Organisation (WIPO) updates.
IPONZ has updated its practice guidelines relating to IPONZ’s interpretation of the term “featuring” in specifications. To align with international best practice, IPONZ will treat the term “featuring” in specifications for goods and services as being a non-limiting term having the same meaning as the term “including”.
Maori geographical names
IPONZ has updated its practices for trade mark applications with Maori geographical names. All trade mark applications with Maori geographical names will now be forwarded to the Maori Advisory Committee to assess whether the mark is likely to be offensive to Maori.
Geographical indications (GI) for wines and spirits
IPONZ has added a new practice guideline regarding the interpretation of GIs. Trade marks that contain GIs may be registered if they contain a registered GI or a GI that is the subject of a pending application made in good faith (with priority over the trade mark), but only if that GI relates to a wine or spirit that originates from the relevant geographical region.
Similarity of goods and services classes
IPONZ has added a new practice guideline regarding the similarity of goods in classes 32 and 33.
Briefly, IPONZ now considers:
beer and wine to not be similar;
beer and fruit juice to not be similar;
non-alcoholic beer and beer to be similar; and
a broad claim for ‘wine’, which includes fortified wine, to be similar to both grape-based spirits and/or liqueurs, and non grape-based spirits and/or liqueurs.
Integration with WIPO case system
From 12 March 2018, IPONZ has been able to act as both a providing and accessing office for the WIPO CASE system for patent applications. All search and examination documentation for IPONZ’s patent cases can be uploaded to the WIPO CASE system and shared with participating IP offices.
Abstract drawings now available for National Phase Entry applications
Abstract drawings from the WIPO PATENTSCOPE system will now be downloaded with National Phase Entry applications, and IPONZ has also downloaded abstract drawings for any applications missing abstract drawings filed between November 2017 and April 2018.
Names have power, so choose yours wisely
In his book The Lightening Thief, Rick Riordan wrote that “names have power.” Never was a truer word written. You only need look at Google, Apple and Amazon to see commercial proof of this.