Registered trade marks follow the "use it or (possibly) lose it" rule. This rule is enacted in section 66 of the Trade Marks Act 2002, which states that a revocation application may be submitted if (within one month of the application) a trade mark "was not put to genuine use in the course of trade in New Zealand ... in relation to the goods or services in respect of which it is registered".

The rule applies regardless of how long the trade mark registration has to run, or whether it has recently been renewed. However, there is an exception where the non-use is due to "special circumstances" beyond the owner's control.

It is important to note that revocation for non-use is not automatic. A person wishing to revoke the trade mark must apply via the Intellectual Property Office (IPONZ) to have the trade mark revoked. If the the owner of the trade mark wishes to oppose the revocation, they must provide proof that the mark has in fact been "put to genuine use in the course of trade in New Zealand", or raise the special circumstances justifying their non-use of the mark.

The key elements of the non-use rule are:

Genuine use in the course of trade

While there is no single definition of the phrase "genuine use in the course of trade", such use might include using the trade mark:

• in printed advertisements;
• in radio and television advertisements;
• in manuals and brochures;
• on billboards and packaging;
• on a website and in computer programs;
• attached to a product.

The "genuine" requirement means that a mark must be legitimately used for the purpose of trade, and not simply to protect the mark or "reset" the 3 year non-use rule. However, as long at the use is genuine, even small and sporadic usage within the 3 year period will likely suffice.

In New Zealand

The use of the mark must be in New Zealand, or in relation to goods or services to be exported from New Zealand.

In relation to the goods or services in respect of which it is registered

Trade marks are registered in respect of specific goods and/or services. A trade mark must be used in relation to those goods or services to survive a challenge on the grounds of non-use. The use of a trade mark in a "general sense" or in relation to other goods or services will not suffice.

Conclusion

It is important to remember that the purpose of a registering a trade mark is to protect your brand of goods and services. If you cease using the brand name in respect of those goods and services for an extended period, the need for the protection afforded by registration is deemed to diminish.

Keeping a trade mark secure is not only a matter of registering and renewing the mark. It is also a matter of using it to avoid the risk of losing it.

Disclaimer: This article by its nature cannot be comprehensive and cannot be relied on by any client as advice.

Clendons
PO Box 1305
Auckland
New Zealand
Phone: +64 9 306 8000