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Amendments to Trademark Laws

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Sep 22, 2022 (Newsletter Issue 13/22)
New Zealand
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TM Practice Guidelines Updated

On 14 September 2022, the IPONZ informs that the Office has updated its practice guidelines to confirm changes on how they consider prior use and clarify the terms of “providing a website”.

Overcoming a Citation
IPONZ has amended its practice guidelines on “Overcoming a Citation” to reflect the way they currently consider prior use of a trademark. IPONZ’s examiners will currently consider submissions and evidence relating to prior use when determining whether special circumstances exist in relation to a trademark application. This supersedes an earlier practice where examiners would not consider submissions that attempt to prove prior use.

The updated Trade Mark practice guidelines can be seen under 10 Overcoming a Citation.

Annexure to Computer Services and Annexure General
IPONZ has amended the “Annexure to Computer Services” practice guidelines for trademarks. These new and amended guidelines clarify how trademark examiners will assess “providing a website” terms (or similar) in goods and services specifications. These changes were made in order to maintain consistency with current NICE classifications and the way these terms are treated internationally.

IPONZ has also made a similar update to our Annexure General practice guidelines.

The updated Trade Mark practice guidelines can be seen under 3b Annexure General and 3c Annexure to Computer Services.