A few years ago, there was a flurry of interest in whether Toyota had exclusive rights in the “jump” featured in its TV commercials and whether this would be infringed by Jetstar using a different “jump”. At the time, there was no clear guidance whether a movement per se could be the subject of a trade mark. Although some registrations did include an animated character, protection applied to the character in different poses rather than to the actions or gestures made by the character.

Recent amendments to the Trade Mark Examiner’s Manual now make specific reference to moving images, holograms and gestures as trade marks. Like all trade marks, the mark must be graphically represented, and this will require a clear written description of a moving image or gesture, together with representations demonstrating the movement or gesture. The representations may be in the form of video clips, or may comprise a series of “stills” showing different views of a hologram. The Manual notes that the description must use positive terms such as: “the trade mark appears in the representation”. Terms such as: “the trade mark appears as exemplified in the representation” are not acceptable.

The Trade Marks Hearings Office of the Intellectual Property Office of New Zealand has announced a change in its practice with respect to the time for filing a notice of opposition to the registration of a trade mark.  In The Muir Electrical Company Pty Limited v The Good Guys Group Limited 8/12/09, HC Auckland CIV-2009-404-4965, his Honour Lang J made it clear at [31] that the Commissioner has “no power to extend the date for filing a notice of opposition unless the extension is both requested and granted before the expiry of the three month deadline contained within Regulation 75(1)”.

Following this decision, the Trade Marks Hearing Office has issued a new Practice Note to the effect that any extension of time for filing a notice of opposition made pursuant to regulation 75(2)(a) or 75(2)(b) (including the consent when required) must be received at least five days before the expiry of the relevant deadline, so that the Hearings Office has sufficient time to consider and grant the extension of time request.

On 23 February, the Copyright (Infringing File Sharing) Amendment Bill was introduced into New Zealand Parliament.

The Bill implements the Government’s decision to put in place an effective and credible regime for the enforcement of copyright against illegal file sharers.

Internet account holders who are allegedly infringing copyright via file sharing will receive up to three notices from their internet service provider before a copyright owner may seek a compensation award at the Copyright Tribunal, or suspension of an internet account for up to six months in the District Court.  The amount of an award may be up to $15,000.

The Bill has been drafted by the Parliamentary Counsel Office in conjunction with Ministry Economic Development and the Ministry of Justice and will proceed to the Select Committee in the coming months.