The NZ government is seeking feedback on the consultation draft of a Patents Amendment Bill by 1 April 2025 to require future 1953 Act divisional applications be subject to the higher standards of the Patents Act 2013.

The two most common grounds for an opposition are that the later filed trade mark is identical or similar to a prior registered trade mark for the same/similar goods/services; and that use of the later filed trade mark is likely to cause confusion due to the reputation that exists in a prior used trade mark.  

As 2024 draws to a close, we thank you, our clients, and wish you a festive holiday period and a very happy New Year.  Our office will also be closed from 25 December to 5 January (inclusive), although emails will be monitored and time sensitive matters dealt with.  Please take into account the New Zealand time zone if your matter requires attention prior to the holiday period.

Happy Christmas, Hanukkah, Kwanzaa and Holidays!

Unfortunately, it has become common for IP owners to receive unsolicited and ‘misleading invoices’ for office fees, services rendered or rights publication in various registers. More concerning fraudulent behaviour has come to light which deserves your urgent attention. 

The Trans-Tasman IP Attorneys Board (TTIPAB) has warned its members of a very concerning scam which has emerged involving the impersonation of registered IP attorneys to defraud IP rights owners. In this case, IP owners are receiving correspondence pressuring them into filing a trade mark via emails fraudulently purporting to be from a real attorney.

An opposition to the ANASTASIA MIARAY trade mark by the owner of the ANASTASIA BEVERLY HILLS trade mark was unsuccessful. Much of the decision hangs on the scope of the pleadings, and use of the single letter “a” instead of “b” in the notice of opposition.

The firm’s expertise and success, both collectively and individually, has been acknowledged throughout 2024, most recently with Henry Hughes Law named an Excellence Awardee in the New Zealand Law Awards Intellectual Property Specialist Law firm of the year.

In August the New Zealand High Court overturned the Assistant Commissioner’s decision not to revoke the trade mark FEEL ALIVE, emphasising the importance of evidence of genuine use of the trade mark and that the owner controlled and authorised the use of the trade mark. The High Court’s further decision on costs serves as a reminder that a successful appellant may not be awarded costs when the defendant does not participate in the appeal and advises that it will abide the Court’s decision.

As of October 1, 2024, substantial changes will be implemented regarding the costs awarded in patent, trade mark, and design rights proceedings. These adjustments reflect a significant increase in the amounts that can be claimed as costs following a hearing. With increasing stakes for both winning and losing parties, the dynamics of IP disputes are set to shift, influencing how parties approach their cases.