How will Brexit affect EU/UK trade mark registrations?

/ Irena Fizulic / Articles

Having left the European Union, the UK is now in a transition period which is scheduled to end on 31 December 2020.

What does this mean for European Union trade marks registered prior to 31 December 2020?

After the transition period ends on 31 December 2020, European Union (EU) trade mark registrations will no longer extend to the UK; however, all existing EU registrations will be automatically cloned by the Intellectual Property Office of the United Kingdom into equivalent UK registrations. The cloned UK registration will retain the same filing and registration details as the original EU registration, as well as any priority and seniority claims. This will ensure that the trade mark registrations will continue to be protected in the UK.

What does this mean for European Union trade mark applications that remain pending after 31 December 2020?

EU trade mark applications that remain pending after the transition period ends on 31 December 2020 will cease to have effect in the UK and will not be automatically cloned into an equivalent UK application.

Action will therefore need to be taken by the trade mark applicant to formally re-file a UK trade mark application. The UK application will need to be re-filed within nine months after 31 December 2020 in order to retain the same filing date as the original EU application.

If you have any questions in regards to what the “Brexit” means for your business and your EU trade marks, please do not hesitate to contact us to discuss in further detail.

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Obtaining Trade Mark Protection in New Zealand

/ Irena Fizulic / Articles

Australia and New Zealand are close trading partners and it is therefore worth considering whether to register your trade mark in both countries simultaneously. Madderns has attorneys registered in both Australia and New Zealand and can assist with filing New Zealand trade mark applications, as well as Australian trade mark applications.

New Zealand trade mark applications and registrations are overseen by the Intellectual Property Office of New Zealand (IPONZ). The process for filing a New Zealand trade mark application is similar to filing a trade mark application in Australia.

A New Zealand trade mark application can be filed directly with IPONZ or a New Zealand designation can be made through the Madrid Protocol System for international registrations (New Zealand became a member of the Madrid Protocol System in December 2012).

Like Australia, the New Zealand trade marks system follows the International NICE Classification whereby all goods and services are classified in one or more of 45 classes. Madderns can provide tailored advice on filing strategies, assist with drafting an appropriate description of goods and services for which protection is sought and then prepare and file the application with IPONZ.

Prior to formally filing a new trade mark application, it is also possible to file a request for a “Search and Preliminary Advice Report” (S&PA) from IPONZ. The S&PA report consists of two parts and provides an assessment within five working days as to whether your proposed trade mark complies with the requirements of the New Zealand Trade Marks Act 2002. The “Search Report” will involve the IPONZ Examiner searching the Register for any pre-existing conflicting trade marks and the “Preliminary Advice Report” will advise as to whether the proposed trade mark is distinctive enough within your industry to act as a trade mark. After receiving the S&PA report from IPONZ, you can decide whether you would like to proceed with formally filing your application or to abandon the process.

Once the New Zealand application is filed, it will generally be examined by IPONZ within 5-10 working days. If objections are raised during Examination (for example, based on the nature of the mark itself or pre-existing conflicting trade marks on the New Zealand Register), IPONZ will issue a Compliance Report. The Applicant will then have a period of 12 months (calculated from the filing date of the application) to file a response to the Compliance Report.

Once the application is accepted, it will be advertised in the public domain for a period of three months.  During this three month period, any third party may oppose the acceptance of the application. Assuming that there are no oppositions filed, the application will then proceed to acceptance.

In summary, the registration process in New Zealand, as well as Australia, can typically take around 8-9 months from the date the application is filed through to registration.

New Zealand trade marks are valid for a ten year period and can be renewed every ten years. There is also a 12 month “grace period” within which the renewal fees can still be paid after the registration has expired.

Finally, like Australia, it is possible to record registered New Zealand trade marks with New Zealand Customs in order to arrange border protection for your trade marks. In New Zealand, there is a requirement to file a “Customs Authorisation” and a “Security under the Trade Marks Act 2002” form, together with a security bond of NZ$5,000. In contrast, Australian trade mark registrations can still be recorded with Australian Customs by filing a “Notice of Objection” and “Deed of Undertaking”, however, there is no security bond required at the time of filing the two forms.

Madderns has experience in filing and prosecuting New Zealand trade mark applications and managing New Zealand trade mark portfolios, in addition to Australian trade marks. If you would like our assistance with New Zealand trade marks, please do not hesitate to contact us.

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Registering Foreign Word Marks in Australia

/ Irena Fizulic / Important Updates

Registering foreign word marks in Australia (the effect of the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited concerning the trade marks “ORO” and “CINQUE STELLE”)

It appears from the recent High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited that it should now be easier to obtain trade mark registration in Australia for marks containing foreign words.  This case considered the registrability of the Italian words “ORO” and “CINQUE STELLE”  which mean “gold” and “five stars” respectively in English.

The High Court has clarified that the registrability of foreign words should be assessed in the same way as English words, namely by examining whether the word will convey a “tangible” meaning to anyone in Australia and the “ordinary significance” of that word to anyone who will encounter the goods in Australia.  In applying the “ordinary signification” test, the Court noted that the Italian words “oro” and “cinque stelle” did not convey a meaning or idea “sufficiently tangible to anyone in Australia concerned with coffee goods”. Further, the Court noted that the words “oro” and “cinque stelle”  are not “directly descriptive” of coffee, but rather “allusive” and metaphorical. Accordingly, the Court held that the marks “oro” and “cinque stelle” are inherently adapted to distinguish Cantarella’s goods from the goods of other traders and are therefore registrable.

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