Business Update

Proposed practice guideline amendment – nature of trade marks

Due to the difference in registrability requirements under section 18 of the Act, amendments to the nature of a mark could not be made from a certification mark to an ordinary trade mark or to a collective trade mark and vice-versa.

Section 4 of the Trade Marks Amendment Act 2005, the passage “unless the trade mark is a certification trade mark” has been deleted from section 18(1)(c) of the Act, in order to prevent purely descriptive certification trade marks being registered. This brings the certification mark registrability requirements under section 18 of the Act into line with the normal registrability requirements for ordinary trade marks.

As a result of the Trade Marks Amendment Act 2005, IPONZ is proposing to allow further amendments to the nature of the mark. However, as the Act requires that the draft regulations for a certification mark must be submitted within six months of the application being filed, certain amendments will not be permitted after six months.

Proposal

IPONZ proposes to amend the Practice Guidelines on Amendment to Trade Mark Applications, Certification Marks and Collective Marks as follows:

Correcting the nature of the application

Applicants may request the Commissioner correct an error or omission regarding the nature of the application.

A request to change the nature of a trade mark application, a collective trade mark application, or a certification trade mark application, is not considered a correction that materially alters the meaning or scope of the application. Such a request will therefore be allowed.

However, section 54 of the Act requires the draft regulations be submitted within six months of a certification trade mark application being filed. Therefore, an applicant will not be allowed to amend the nature of the mark from a standard trade mark or a collective trade mark to a certification trade mark after the six month period has elapsed.