The number 13 is considered unlucky by some, but 13 January and 13 February 2020 mark some relatively positive changes in relation to New Zealand trade marks.

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13 JANUARY 2020:

Reduced Renewal Grace Period

From 13 January 2020 the current 12-month grace period for renewing a trade mark will be reduced to a period of six months. However, this only applies to cases falling due after 13 January 2020, and all earlier expired cases will continue with the full 12-month grace period.

For third party applicants who are effectively blocked by a cited mark with the status “Expired but restorable”, the reduced grace period provides welcome relief.

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Non-use revocation - no discretion

From 13 January 2020 there is no discretion, to uphold a trade mark registration when the grounds for revocation have been met, and there are no special circumstances.  A trade mark owner can now only defend a revocation action based on evidence of use or special circumstances that are outside the control of the trade mark owner.  This reflects and codifies the approach of the Supreme Court of New Zealand in Crocodile International Pte Ltd v Lacoste [2017] NZSC 14.  

This non-use reform provides some certainty for removal applicants, in seeking to attack unused trade marks.

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13 FEBRUARY 2020

From 13 February 2020 there are a number of fee changes at IPONZ.  The significant (and positive) trade mark fee reductions are:

• A decrease in the trade mark application fee from NZ$150 to NZ$100 (per class); and
• A decrease in the trade mark renewal fees from NZ$350 to NZ$200 (per class)

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