Restriction of specifications

Published: 11.07.2006

This proposal is an updated version of the proposed practice released in the July 2005 Business Update. It has been amended as a result of discussions with the Patent Attorney profession.

The purpose of a specification is to provide a statement of the goods and services for which the applicant requires registration. Applicants often seek to restrict their specification to overcome a concern raised under section 18 of the Trade Marks Act 2002.

IPONZ has reviewed its practice on allowable restrictions of specifications, based on recent High Court decisions in New Zealand and on court decisions overseas. These decisions have cast real doubt on the validity of restrictions entered on national registers for many years and the extent to which they should continue to be accepted. Specifications should not contain exclusions casting real doubt on the validity of the mark itself.

In order to implement the changes in practice, IPONZ proposes to amend the Practice Guidelines on Absolute Grounds Distinctiveness. A full version of this proposal is available at www.iponz.govt.nz - select Information Library | 02 Trade Marks | 4 Proposed Practices | 6 July 2006.

Comments on this proposed practice are welcome and should be sent to theo.doucas@iponz.govt.nz by 21 July 2006.