Update on Regulatory Systems (Economic Development) Amendment (No 2) Bill

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Update on Regulatory Systems (Economic Development) Amendment (No 2) Bill

Royal assent has been given to the Regulatory Systems (Economic Development) Amendment (No 2) Bill affecting Intellectual Property legislation.

The Regulatory Systems (Economic Development) Amendment Bill (No 2) (“the Bill”) was recently enacted on 13 November 2019. The Bill amends a range of statutes, including the Geographical Indications (Wine and Spirts) Registration Act 2006, the Plant Variety Rights Act 1987 and the Trade Marks Act 2002.

The amendments to these Acts will come into force on 13 January 2020. These various amendments are briefly described below.

Impact on the Trade Marks Act 2002

The status “Expired but restorable” will be replaced by “Registered (past expiry date)” (Sections 59, 60 and 60A)

Currently, if a registered trade mark is not renewed by its renewal due date, the owner is given a 12-month “grace period” to restore the trade mark. During this time, the trade mark is assigned the status “Expired but restorable”.

This practice will be changed as follows:

  • The “grace period” to restore a trade mark following its expiry will be reduced to 6 months.
  • A trade mark that has expired this way will remain on the register under the new status “Registered (past expiry date)”. This will enable the trade mark to be treated as a ‘registered’ case for:
    • Allowing the trade mark owner to perform actions to maintain the mark (eg assignment or cancellation).
    • Allowing a third party to take action against the trade mark (eg revocation for non-use).
  • Some benefits relating to the enforcement of the trade mark will not apply to “Registered (past expiry date)” trade marks.

Any marks that are in “Expired but restorable” status prior to the amendments coming into force will remain at that status, and may be renewed using the current procedure.

Restriction on certification mark and standard trade mark ownership in the same goods or services (Section 13A and 14)

A new Section 13A and an amended Section 14 of the Trade Marks Act 2002 will clarify that the owner of a certification mark may not register a standard trade mark in the same goods or services, or vice-versa.

Commissioner may require security for Hearings costs (Section 167)

Currently, security for Hearings costs can only be ordered if the party is based overseas. A new Section 167 will extend the powers of the Commissioner to order security if there is reason to believe that a party will be unable to pay costs.

Revocation of trade mark registration (Sections 65, 66 and 68)

Minor amendments will be made to Section 66 to clarify that there is no discretion to maintain a mark’s registration when the grounds for revocation have been made out, and there are no special circumstances.

Declarations on behalf of certain persons (Section 191)

Section 191 of the Trade Marks Act 2002 will be repealed, as this is already covered by other statutes.

Impact on the Geographical Indications (Wine and Spirits) Registration Act 2006

The new “Registered (past expiry date)” status will replace the original “Expired but restorable” status for renewal procedures under the Geographical Indications (GI) Act.

No geographical indications are due to be renewed until 2022, so this change is expected to have minimal impact.

Impact on the Plant Variety Rights Act 1987

Applicants and owners may provide an address for service in either New Zealand or Australia

Amendments to Sections 5 and 35 will align the address for service requirements under the Designs Regulations 1954, Patents Regulations 2014 and Trade Marks Regulations 2003, where applicants and owners can choose to provide an address for service in either New Zealand or Australia.

More information on the legislation and procedural changes is expected to be available in due course.