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Amendments to Trademark Laws

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Mrz 12, 2024 (Newsletter Issue 2/24)
New Zealand
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Trade Mark Practice Guidelines Updated

The New Zealand Intellectual Property Office (IPONZ) has recently updated its trade mark practice guidelines to reflect how its examiners will treat applications whose specifications contain geographical indications (GIs).

The updated guidelines set out a general principle that trade mark specifications should only include generic descriptions of the goods or services. These updated guidelines also explain that examiners may raise specification objections whenever a Class 32 or Class 33 specification term comprises or mentions a GI that is registered in New Zealand.

In line with this:
- Applicants should not use a GI as the name of a good in a trade mark specification. Applicants should instead use a suitable generic description of the good.
- A specification can mention one or more GIs, provided that the goods originate in the place of geographical origin to which those GIs relate, and meet the other criteria for those GIs.
- If a GI is mentioned as part of a specification term, the wording must clearly identify the GI as a GI, and include a generic description of the goods.

The updated guidelines also include recommended actions which anticipate new requirements that may come about as a result of the New Zealand - European Union Free Trade Agreement, which is not yet in force but may enter into force soon.

To view the updated Trade Mark practice guideline click here.