New Zealand Joins The Madrid System

The Madrid System for the international registration of marks (or the Madrid Protocol) is a single process for obtaining trade marks in multiple countries. Since it was launched in 1996, 87 countries have signed on to make international trade mark application processes easier and cheaper – and now New Zealand is joining them.

CreateIP is recommending that our clients consider filing marks in New Zealand before the 10th of December, not only to beat the rush of local applications, but also to reduce the risk of international competition – it’s about to become a lot easier and cheaper for foreign competitors to add New […]

September 29th, 2014|

New internet domains available soon

A new domain suffix,, has launched and we’re recommending that our New Zealand clients seriously consider reserving brand names on it.  While it is too early to predict how big the take-up of these addresses will be, it’s an inexpensive insurance policy to reserve your brand now and avoid the risk of a competitor getting there first.

We have in past newsletters cautioned our readers about domain name scams coming from registrars or “cybersquatters” overseas, which typically feature obscure suffixes such as .cc, .cn or .hk.  The new domain is different – this is in our own backyard and there is […]

September 29th, 2014|

Tobacco Packaging Legislation Tests International Treaties

In a move toward making the country “smoke-free” by 2025, the New Zealand government has proposed new legislation forcing all tobacco products into plain packaging – no logos, no defining colours, just product names in a standardised font on brown paper – and it’s causing an uproar among the big tobacco companies.

Of course, the tobacco industry has faced these kinds of challenges before.  In 1963 cigarette advertising was banned from television and radio.  Then in 1974 the first warnings appeared on packaging, with regulations stipulating that 30% of the front and 90% of the back must include graphic health warning […]

September 29th, 2014|

Strategic Thinking

IP protection is not a one-size-fits-all endeavour.  The selection of available tactics may depend on a variety of factors from product life cycle, complexity and competition to marketability, profitability and return on investment.  What works for a multi-million dollar global biotechnology firm is unlikely to work for a start-up mechanical manufacturer or a structural designer.

At one end of the spectrum is the ‘protect everything’ approach.  This is suitable when the returns are high and the invention is easy or quick to copy; there’s a lot at stake.  Claiming IP rights may give credibility to the promotion of the product and […]

September 29th, 2014|

Rugby Patents

Go All Blacks … and while on the rugby theme, there have been 7 patents published this year listing the word ‘rugby’ in the title.  Some of the more interesting ones are:

Ball with transmitter

Just what we needed, a rugby ball with a transmitter inside as described in European patent EP2367603 – a great way to add more statistics to keep the commentators occupied.

Tee device

A French inventor has decided to bring in some further trickery with another variation on the traditional pile of sand with a new tee device FR2955778 that looks like it was designed for skewering frogs legs.

Hot water bottle

And when […]

September 29th, 2014|

Trans-Tasman Cooperation

The field of Intellectual Property services in New Zealand is facing a time of great change.  The governments of Australia and New Zealand are clearly looking for the IP industry to be the “poster child” of trans-Tasman cooperation in their efforts to move toward a seamless trade and business environment between the two nations and create a Single Economic Market (SEM).

Intellectual Property Australia and New Zealand’s Ministry of Economic Development first announced the joint work programme for policy and operational co-ordination in August 2009, with the admirable goal of achieving economies of scale, reducing transaction costs, and enhancing consistency and quality […]

September 29th, 2014|

Keeping Lab Books Aids Patent Protection In The USA

The United States is a key market for many New Zealand companies and filing for patent protection there is an important component of your export strategy.  However it is critical to understand that there are two quite different systems for patent protection: “first-to-file” and “first-to-invent” – and the latter is applied in the U.S.

The implications for patent seekers are significant; being the first to file for a patent in the U.S. is not enough to prove you are the inventor, which leaves the door open to challengers who may wish to claim ownership of the ideas.

While we hope the U.S. […]

September 29th, 2014|

Prada And Farmers: “MIU MIU” Versus “MIMI”

Italian fashion powerhouse Prada recently made news as their claim of confusion between their “MIU MIU” brand and New Zealand-wide retail chain Farmers’ “MIMI” trade mark was rejected.  In September 2010 Judge Priestly J of the High Court upheld the earlier decision of the Assistant Commissioner to allow the Farmers’ mark, finding the similarities between the marks to be superficial, and unlikely to deceive or cause confusion.

He listed the similarities and differences between the words, namely:

-The MIMI mark deploys two letters of the alphabet repeated in the same order totaling four letters in the one word. The MIU MIU mark […]

September 29th, 2014|

Avoiding The Pitfalls: Europe

In this series we will explore some of the difficulties surrounding trademark and patent protection in different parts of the world.

Doing business in Europe is exciting, fascinating, complex and challenging.  The integration of 27 member states into the European Union (EU) and the creation of the Euro in 1999 has helped to standardise many policies and systems, but it is of course a fallacy to think of “Europe” as a single entity. Each nation has its own unique culture, languages and idiosyncrasies, and it is hard to change centuries-old traditions overnight.

While obtaining trademarks and registered designs on a European level […]

September 29th, 2014|

Hells Angels Sue Saks, McQueen Design Over Trademark

Oct. 26 (Bloomberg) — The Hells Angels motorcycle group sued fashion design house Alexander McQueen and retail chain Saks Inc. for trademark infringement for selling handbags, jewelry and clothing using the club’s death-head design.

Hells Angels Motorcycle Corp. said McQueen’s company, New York-based Saks and retailer Inc. have been selling infringing products in stores in California and online, according to a complaint filed yesterday in U.S. District Court in Los Angeles.

The motorcycle club said it has been using the death-head mark, a skull with wings, since at least 1948. The Hells Angels have authorized the use of the marks on […]

September 29th, 2014|