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New Zealand - New Trademark Law

A New Trade Marks Act went into effect in New Zealand on August 20, 2003. The principal features of the new Act are summarized below.

1. The distinction between Parts A and B of the Register has been abolished and a single Register created.

2. An application may cover several classes of goods and/or services.

3. The period for cancellation of a mark based on non-use has been reduced from five years to three years from registration.

4. The term of a registration has been increased from 7 to 10 years, and will be renewable for additional 10-year periods.

5. Defensive marks will no longer be registrable.

6. Trademark licensees can be registered, and it is understood that existing Registered User entries will be maintained.

7. The procedure for the recordal of assignments has been simplified.

8. Marks which are likely to offend a significant section of the community, including the Maori community, may not be registered.

9. Use of a registered mark for comparative advertising will not constitute infringement.

10. The definition of infringement has been broadened to include the possibility of taking action against the unauthorized use of a mark in relation to dissimilar goods or services, if such mark is similar to a registered mark that is well-known in New Zealand and the interest of the registrant is likely to be adversely affected.

11. New provisions have been introduced for criminal liability for trademark infringement.


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