NEW ZEALAND

• LAW PROTECTION GEOGRAPHICAL INDICATION NEW ZEALAND

  • Requisites to be a Geographical Indication:

    For Goods to be categorised as Gis, they have to have a specific geographical origin and possess:

    • a quality
    • reputation
    • such other characteristic that is essentially due to that place of origin

    Gis in New Zealand are protected by:

    1. (i). The Fair Trading Act
    2. The Action of Passing Off
    3. Trade Marks Act 2002 as Collective or Certification marks
    4. GI (Wine & Spirits) Registration Act 2006 – (Not Yet In Force)
• ROLE PLAYED BY GEOGRAPHICAL INDICATION NEW ZEALAND:

  • Certification trade mark means a sign capable of—

    •  being represented graphically; and
    • distinguishing, in the course of trade,—
    1. goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified; or
    2. services certified by any person in respect of quality, accuracy, performance, or other characteristic from services not so certified.

    Collective trade mark means a sign capable of—

    1.  being represented graphically; and
    2. distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association
• PROTECTION ACCORDED TO GEOGRAPHICAL INDICATION IN NEW ZEALAND

  • Certification trade mark means a sign capable of—

    (a) being represented graphically; and

    (b) distinguishing, in the course of trade,—

    1. goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic from goods not so certified; or
    2. services certified by any person in respect of quality, accuracy, performance, or other characteristic from services not so certified

    Collective trade mark means a sign capable of—

    (a) being represented graphically; and

    (b) distinguishing the goods or services of members of the collective association that is the owner of the sign from those of persons who are not members of the collective association

• KIND OF GEOGRAPHICAL INDICATION NOT PROTECTABLE NEW ZEALAND
• REQUISITES TO BE GEOGRAPHICAL INDICATION NEW ZEALAND

  • Certification Trade Mark:

    • may be registered in the name, as owner, of the person who certifies the goods or services; but
    • may not be registered in the name of a person who carries on a trade in goods or in services of the kind certified

    Collective Trade Mark: may be registered in the name of a collective association-

    • as owner, in respect of goods produced by its members
    • services provided by its members, or both.
• WHO CAN FILE GEOGRAPHICAL INDICATION NEW ZEALAND

  • Considerations before registration of Certification marks:

    1. The applicant must provide the Commissioner with draft regulations that govern the use of the certification trade mark for the Commissioner’s approval.
    2. Whether or not the certification trade mark should indicate that it is such a trade mark;
    3. Whether the applicant is competent to certify the goods or services in respect of which the certification trade mark is to be registered;
    4. Whether the draft regulations are satisfactory ; and
    5. Whether in all the circumstances the registration applied for would be in the public interest
• EXAMINATION OF GEOGRAPHICAL INDICATION NEW ZEALAND

  • Once the application is filed with the IP office, it is assessed to confirm that it meets the requirements of registration as per the trademarks act such as formalities compliances, substantive requirements and as search for prior existing marks.

    If it meets all the requirements of registration, it will be accepted for registration. If not, the applicant is notified of the same with a report setting out requirements if any that need compliance.

    If the application is not accepted and it runs out of time, the application will lapse.

• PUBLICATION & REGISTRATION OF GEOGRAPHICAL INDICATION NEW ZEALAND

  • Once the application is accepted for registration, it is published for opposition. Interested parties may oppose the registration post advertisement.

    If there is no opposition to the application, or the opposition is unsuccessful, the applicant’s trademark will be registered as soon as the applicant pays the registration fee, within 6 months from the date the acceptance is advertised.

• USAGE OF GEOGRAPHICAL INDICATION NEW ZEALAND

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• Cost of Registration of Trademarks