In November 2020, the Intellectual Property Office of New Zealand (IPONZ) reported a record number of national trademark filings after a 1% drop in total filings from July 2019 to June 2020.
Fast forward to November 2021, and IPONZ reported that September 2021 set a new record for the most classes filed, fueling a 10% increase in filings over the previous year. Similar to 2020, filing growth over the past year has been driven by domestic applications, with a slight increase in designations through the Madrid system.
Trending goods and services
New Zealand trademark filings reflected international trends in the protection of cannabis products for recreational and medical purposes. Cannabis brand owners have continued to seek protection for their brands, despite the rejection of the Cannabis Legalization and Control Bill in the 2020 public referendum.
In 2020, there was a 75% increase in brands containing “cannabis”, with numbers flat in 2021.
Non-fungible tokens (NFTs) burst into mainstream media with record sales in early 2021, along with the new task of classifying these goods and related services, and discussions on the web3 and metaverse. Reese Witherspoon recently tweeted“In the (near) future, everyone will have a parallel digital identity. Avatars, crypto wallets, digital assets will be the norm. Do you foresee this? It would appear that brand owners of traditional physical goods and those of the new digital type are doing just that.
In 2021, the number of New Zealand trademark applications containing the term NFT or “digital token” increased by 542%, applications containing “cryptocurrency” increased by 160% and applications mentioning “blockchain” increased by 67%.
In New Zealand, trademark applications containing Maori words (kupu) or Maori images are referred to the Māori Trademarks Advisory Committee (MTAC) for advice. MTAC’s role is to advise whether use of the trademark on the requested goods and services would be offensive.
Over the past two years, the record number of national filings has also led to an increase in national trademark applications noted as containing Maori words (kupu) or images. In the year ending September 2020, deposits increased by 21%. During the same period in 2021, this has increased by another 31%.
The year ending September 2020 saw an 88% increase in designations through the Madrid system (the Maori language often shares words with other languages such as Japanese and Hawaiian). This number decreased by 7% in the period ending September 2021, but was still up considerably from the 2019 figures.
The importance of leveraging New Zealand culture to help differentiate a brand must be finely balanced with the respectful celebration of Māori or mātauranga Māori language, imagery and culture. This principle will ensure that taonga (treasures, including objects, resources, phenomena, ideas and techniques of social or cultural value) are not misused, that tikanga (values, practices and protocols) are not diluted and that Maori culture is not exploited solely for commercial purposes. Gain.
This increase has been noted by both the MTAC and the New Zealand profession. They are keen to ensure customers understand and get specialist advice to ensure that the use of Maori (kupu) words or images is appropriate and not offensive.
The MTAC and IPONZ Trademark Review Team are working together to revise the Practice Guidelines to include more guidance for those seeking to protect marks that include or contain elements of Maori culture.
Legislative changes to watch
The pandemic has undoubtedly slowed legislative change as Parliament focuses on priorities elsewhere.
The long-awaited copyright law overhaul was scheduled for publication of the consultation paper in 2021, but was paused in early 2021 to allow for prioritization of resources and will remain so until the agreement is reached. free trade agreement with the United Kingdom is finalized and signed.
An Exposure Draft of the Intellectual Property Laws Amendment Bill was due to be released in mid-2021, but is now expected to be released in March/April 2022. Key points to watch include:
- tightening the registration criteria for series marks and capping the number of marks that can be included in a series
- allowing prior continuous use of a mark to be considered as a means of overcoming a citation, similar to that provided by Australian law
- provide partial refusal of national mark applications, allowing acceptance of non-rejected goods/services where the applicant does not respond to the opposition within the time limit
- the removal of the “aggrieved person” requirement when applying for the revocation or invalidation of a trademark registration.
Waiting for 2022
The emerging trends we saw in 2021 are likely to continue.
Trademark filings, especially domestic filings, are expected to continue to grow and possibly break new volume records. New and existing brand owners are looking to protect their brands against emerging technologies in preparation for Web3 and the Metaverse.
New Zealand brands are likely to continue to rely on New Zealand history and culture to differentiate themselves, including filing trademark applications that contain or are inspired by Maori words and images. 2022 should also provide more guidance on this use, possibly new trademark regulations to facilitate the protection of these new intellectual property rights.