Bulletin - IP Updates

Weekly Trademark Update – Aug 2021 (2 of 3)







This notice is issued in terms of Section 188(2) (b) in conjunction with Regulation 4(b) of the Companies Act, No. 71 of 2008 as amended.


Kindly note that according to our records, Independent Review practitioners are not complying with the requirements of Regulation 29 (6-8). We are not receiving reportable irregularity reports as prescribed for the independent review process (this practise continues as initially reported in 2016).


Practitioners who send first reports, do not follow up with second reports as required in terms of the Companies Act (Regulation 29(8)(c). Practitioners also fail to adhere to the timelines provided for in Regulation 29 (6-8) to submit subsequent reports within 20 business days and no notification is given for such, in certain instances. It is requested that any delays resulting in non-compliance be communicated to the Commission through the independent review email address.


We have attached a ‘Practice Guideline’ for ease of reference, it is in support of our urgent request for compliance in this regard.


It is also requested that the contact details of the entity be provided when submitting the subsequent reports to enable the Commission to effectively deal with the reported matter.


Your continued co-operation in assisting us in successfully and optimally exercising our mandate with regards to independent reviews is greatly appreciated.”

CHANGE: NZTE on IP protection for exporters


Looking to export? Here is a useful guide on how to protect your business in the international market.


This article is provided by New Zealand Trade and Enterprise (NZTE) with some useful tips for exporters and how to protect your business when trading in international markets. We republished the article with their permission. Any mentions of ‘Intellectual Property Office of New Zealand’ or ‘IPONZ’ in the article refers to the information on our website.


Read the original article.


In this article you’ll learn:

  • Tips for choosing a company or product name
  • How to check for existing IP
  • The different types of protections, for example, patents
  • What freedom-to-operate is
  • How to find a good IP adviser
  • The cost of infringing IP rights


Protecting your intellectual property (IP) is critical for businesses selling globally because otherwise your product/service can be duplicated and sold at lower prices.


We strongly recommend you seek the advice of an IP expert to help determine what legal protections you need in your chosen export markets.


Choosing a company or product name


If you’re just starting out in business and want to get strong trade mark protection around your brand, think carefully about how you name your company and/or products.


A unique name that is in no way generic or descriptive of your product or business (e.g ‘Allbirds’ not ‘wool sneakers’) will be much easier to protect and less likely to already be in use, both locally and in overseas markets.


Keep in mind that you can’t trade mark a word that is common in your industry: you could register the name ‘Milk’ as an architecture firm, but not for a milk product.


Keep your export markets in mind when developing your brand. While your brand might work well in your local market, it may not be appropriate or effective in others. You will need to get advice to ensure your packaging has local appeal and that your trade mark does not mean something obnoxious in the local language. You may need to look at adopting a brand or packaging that is specific and appropriate to that market and language.


You can check whether your company or product name, slogan or logos are in use using the Trade Mark Check tool.


Business.govt.nz’s ONECheck tool lets you check if your business name, web domain and social media usernames are available.


Does your intellectual property involve a Māori cultural element?


To ensure that mātauranga Māori is recognised and respected, intellectual property that has Māori cultural elements may be considered by an advisory committee of the Intellectual Property Office.


Read more: Protecting IP with a Māori cultural element (PDF)


Keep your IP confidential


Without legal protections in place, your IP is vulnerable, and you will need to keep it confidential. Limit the number of people who have access to the IP, even within your own company or with collaborators. If you must share access to your IP, use confidentiality or non-disclosure agreements.


If your product or process is an original invention, confidentiality is even more critical because it could determine if you can secure a patent in the future. If you have begun selling a product or published or used an invention (including publication in print or online), this ‘prior use’ can mean that you can no longer obtain a valid patent for your invention.


What legal protections can I put in place to protect my IP?


Intellectual property is an umbrella term for the different rights you can claim over your ideas, inventions, processes, brands, designs and logos. It generally comes under two broad categories: unregistered and registered. Both offer some legal protection but it’s important to understand the difference.


IP rights


Unregistered IP


Unregistered intellectual property has not been formally protected or registered with a national agency like the Intellectual Property Office of New Zealand (IPONZ). Most unregistered IP involves confidential information – things you wouldn’t want to share with your competitors – such as your business systems, client databases or manufacturing procedures.


Unregistered trade mark


A word or logo with the ™ symbol. This offers limited protection but can be a useful option to help establish your presence in a fast-moving industry. Unregistered trade marks are complex to enforce and companies would need to produce evidence to prove their rights to the name or brand. Registering an important trade mark is generally the safer option.


Confidentiality agreements


Contracts that keep valuable information safe. These may also be called secrecy agreements or non-disclosure agreements (NDAs). When developing a new technology, a company will ask staff and contractors to sign an agreement not to steal their idea.




Copyright protection exists automatically on an author’s original work, including a company’s original documents, marketing materials, scientific models, software and designs. To help in asserting copyright, it is a good idea to stamp or watermark important documents. Depending on their value to your business, you may want to formally protect these rights.


Registered IP


Registered intellectual property is a valuable company asset. It mainly takes the form of registered trade marks, designs, patents and plant variety rights – these are the formal legal protections you can put in place to protect your IP. In New Zealand you apply to IPONZ, the Intellectual Property Office of New Zealand to secure these rights and to apply for international IP protections.


Trade marks


A brand name or logo with the ® symbol, e.g Coca-Cola®. You can register the names and/or logos of your company and products as trade marks. Registration is done in relation to particular classes of goods or services. Trade marks can be renewed indefinitely provided you continue to pay the registration fee for each country of interest. In order to ensure the necessary rights and protection as an exporter, you may need to register in each country you intend to trade in or, in some cases, filing under The Madrid Protocol may provide enough protection. New Zealand is part of The Madrid Protocol which allows trade mark owners to apply for their trade mark in over 100 participating countries by filing one application with their local trade mark office – for New Zealand that is IPONZ.




You can also protect the appearance of your products by registering the design. Copyright may offer some limited protection but, outside New Zealand, it generally does not prevent others copying your new and original design by making it in three dimensions. Registering your designs can give you much stronger rights, but this needs to be weighed up against the cost of doing so in each country you’re interested in. Registering also allows you to more easily sell or license your design in the individual countries for which it is registered. In New Zealand, registering a design gives you exclusive ownership for up to 15 years, as well as priority filing rights in other countries within a six-month period.




Patents are the most powerful form of intellectual property protection and are typically used to protect a new product, process or material. The easiest way to think of what to cover with a patent is an original invention, for example Fisher & Paykel Healthcare’s respiratory devices.


Patents were initially more widely used in industries such as engineering and pharmaceuticals, where companies invest significant resources into research and development, but are now used in most areas of commerce. In exchange for disclosing an invention or idea to the world, the owner earns a monopoly right to make, use and sell it – usually for a period of 20 years. When the patent period ends, others are free to copy the invention that is disclosed in the patent subject to any other rights that might exist.


Plant variety rights


This is a specialised area of intellectual property that protects those who breed new varieties of plants, for example a new apple variety. Plant variety rights effectively variety owners the rights to license others to commercialise their novel variety of plant. Plant variety rights are available in most countries and are also called plant patents or plant breeder rights.


Resource: A visual overview of IP protections from IPONZ (PDF)


Freedom-to-operate (FTO)


Freedom-to-operate or FTO means you have the freedom to test, market or sell a product or service in a specific market. FTO searches look at all the registered IP and patents in your intended export market that potentially overlap with your product and could result in IP infringements. This is an area of IP where you should seek advice from an IP expert, particularly if you are:

  • Looking to export complex products,
  • Operating in complex, high-tech industries,
  • Exporting to complex, litigious markets, such as the United States.


If you are selling simple products, like a t-shirt of your own original design, the chances of infringing others’ IP are low. For more complex inventions or products with multiple parts or components, the likelihood of IP infringements increases. For example, even if you hold the patent for a novel bike gear in your export market, another company may hold the patent for the bike frame. If you attempt to sell a bike in that market, you could be infringing on their IP – which means you don’t have FTO.


How do you find an expert?


3 steps to finding a good IP expert

  1. Educate yourself about the sort of information you should be getting from an IP adviser. They should ask you broad questions about your business, including your export strategy and possible markets.
  2. Ensure they understand your industry and technology – particularly if you will be filing patents and/or intend to enter the United States where your IP will be closely scrutinised.
  3. Select someone you trust and with whom you have a good rapport. And make sure they’re interested in your business.


Do your homework


To help your IP adviser make the best recommendations for your business, before you meet, ask yourself:

  • What’s important to my business?
  • What do I intend to do with my business? If your short-term plan is to sell to a US venture capitalist, you may want to build up a portfolio of patents as another business asset.
  • What markets am I likely to enter?
  • How do I plan to enter them?


The more information, background and context you can give your IP adviser, the better equipped they will be to work with you on an effective IP strategy.

  • Together, you can discuss the following:
  • What is the product, service, technology?
  • Is there anything inventive about it?
  • Could it be patentable?


Should we patent it? Would we get a broad enough patent to justify the spend? You may well decide that keeping your idea as a trade secret and not disclosing it to the world is the best course of action. But if you’re making a clever widget that could easily be copied, a patent might be the most relevant form of protection.


Getting value from your IP adviser


You will gain the most long-term benefit if you establish a good relationship and work collaboratively with your IP expert. Get them onto your premises so they can see exactly what you do. The better their understanding of your product or service and the next iteration of it, the more value they can add e.g. by keeping an eye on your competitors’ moves to protect their IP.


Be upfront about how much you have to spend. If it’s appropriate, you may look to negotiate some sort of retainer. A good adviser will highlight where you can save money and where your spend is potentially wasted.




IPONZ and Callaghan Innovation have information available on patent attorneys and IP experts.


What business practices can I put in place to protect my IP?


Maintain confidentiality


Only share critical IP on a ‘need to know’ basis within your company. Put in necessary file protections and keep a record of who has access to the information. Ask staff who are working with sensitive IP to sign confidentiality or non-disclosure agreements (NDAs). Although New Zealand law states that IP developed in the course of employment belongs to the employer, it is a good idea to specify this IP ownership in staff contracts. If you have to share your IP with a third party, for example a manufacturer, ensure you have a written confidentiality agreement or NDA with them.


Competitor and market analysis


Carry out regular competitor and market analysis to understand potential challenges to your IP. At a basic level this might include keeping an eye on competitors’ websites and looking at the sales of similar products in your export markets and via channel partners – you can do this for intended export markets too. You can also carry out regular patent and registered IP searches through the free online tools outlined in this article.


Move quickly


Developing an agile business that can innovate quickly and outpace competitors can help protect the value of your IP. Think about:

  • Capturing market share and reputation through speed to market
  • Practising continuous improvement and innovation to keep ahead of the field
  • Maintaining product design and quality ahead of likely imitators
  • Using marketing and branding which competitors need time to emulate.


Find your niche


Identifying and targeting niche markets within your broader market can help you find new product opportunities that aren’t already covered by patents or trade marks. For example, you could secure a new market by introducing novel renewable materials into the manufacture of your high-performance sneaker. Good competitor and market analysis will help identify potential niches. A different service model, for instance subscription or bespoke products, could be another way to secure your market and the value of your IP.


Avoiding IP infringements


There are two sides to intellectual property: protecting your own IP and ensuring you don’t infringe another company’s IP rights.


Cost of infringing IP rights


If you unintentionally infringe another company’s IP rights, you may have to do one or more of the following:

  • Settle to avoid litigation
  • Pay licensing fees to the other company
  • Withdraw completely from that market
  • Rebrand straight after you have launched.


Where to find trade mark and patent search tools


You can carry out your own basic trade mark and patent searches using free, publicly available search tools like ONECheck, but you should seek advice from an IP expert before entering a new market.


Keen to realise your global ambitions? New Zealand Trade and Enterprise can help – TakeOnTheWorld.nz.


Disclaimer: This article is provided by New Zealand Trade and Enterprise (NZTE). Although we intend the content (including advice, templates and other tools) we provide to be helpful, NZTE makes no warranty or representation about its accuracy, completeness or suitability for your business. It is your responsibility to decide how and whether to rely on that content and you rely on it at your own risk.The content is not, and is not intended to be, expert legal, financial, investment, tax or professional advice and in many cases it will be prudent for you to seek expert advice before making a decision. We are not responsible for any loss or damage arising from the use of this content.


Also please note that the information is only valid at the time of first publication.”

JURISDICTION: United Kingdom
CHANGE: Cracking down on criminals who target self-storage industry


A new initiative is launched to crack down on criminals using self-storage facilities fraudulently.


The Intellectual Property Office (IPO), National Trading Standards, London Trading Standards and the Self-Storage Association UK (SSAUK), have teamed up to launch a new code of practice. The initiative’s aim is to reduce the appeal of self-storage facilities to criminals who deal in counterfeit and other illicit goods.


‘The Tick Box: Keep it Real Keep it Legal’ code of practice sets out a few simple procedures. The aim is to prevent the fraudulent storage of counterfeit and other illicit or unsafe goods. It also helps self-storage facility owners be sure of who is really using their premises. Counterfeit goods are often seized in self-storage facilities, or on their way to them. This scheme helps self-storage facilities to identify the individuals behind the crimes. It also helps enforcement authorities recover the goods before they enter the marketplace.


The scheme is already yielding results. Targeted enforcement action has disrupted criminal networks. This has resulted in the seizure of thousands of counterfeit items. These are estimated to be worth millions of pounds to criminals.


Storage facilities that participate in the scheme are provided with the ‘Tick Box’ logo. Posters are displayed within the premises. These act as an assurance to legitimate customers and a deterrent to anyone attempting to store counterfeit goods.


Forty-five local and national self-storage providers have already signed up to the first phase of the code of practice. More than 1,200 self-storage facility staff have received additional training under the scheme. The next phase will see the scheme continue to be rolled out across the UK.


Trading Standards will be promoting the scheme to self-storage operators at the European Self-Storage Conference and Trade Show. It is being held in Birmingham on 20 and 21 September 2021.


IPO CEO, Tim Moss said:


Unsafe and illicit goods, such as counterfeits, create real social and environmental harms in our communities and criminals have used self-storage units as part of their activities. Self-storage providers signing up to the code of practice will now have absolute confidence they are doing everything possible to deter criminals who target them in this way, while reassuring legitimate customers that their belongings are in safe hands.


I am delighted that the new code of practice is being co-delivered through an effective partnership between self-storage providers, government and local enforcement, complementing our comprehensive approach to disrupting IP crime.


SSA UK CEO, Rennie Schafer said:


The self-storage industry welcomes the opportunity to work with Trading Standards and local enforcement agencies to identify and deter criminals looking to use the industry for storage of unsafe and illicit goods. Many of these goods can cause real damage to the local communities that the self-storage businesses are part of. As an industry we want to do all we can to eliminate such activity from our stores and the community as a whole.


Lord Toby Harris, Chair, National Trading Standards, said:


Trading Standards officers are finding counterfeit goods in, or on route to, self-storage facilities. By supporting self-storage facilities to prevent the storage of illicit goods on their premises, we can help clamp down on the sale of counterfeit goods that continue to deceive consumers and undermine legitimate businesses. We encourage all responsible self-storage providers to sign up to the Tick Box scheme – it’s free to join and easy to implement and will provide peace of mind to facility owners about what is being stored on their premises.


Notes to editors


The scheme is already yielding results; in April 2021, three self-storage units were raided and 5000+ illegal and counterfeit items were seized in a joint Trading Standards, Police Intellectual Property Crime Unit (North West) and the Anti-Counterfeiting Group, which represents brands, with participation from the self-storage store.


In April 2021, 22 self-storage units were raided in Southall by Ealing Trading Standards and the Met Police, netting fake goods valued at millions of pounds and offering valuable intelligence about their supply. In June 2021, five more containers were raided in Glasgow, housing thousands of counterfeit goods


Within the initial rollout, there are 343 UK-wide premises signed up, with approximately 1,200 staff, all of whom are receiving training to deliver against the code of practice. The second phase will see the scheme continue to be rolled out across the UK.


The IPO is the official UK government body responsible for intellectual property rights including patents, designs, trade marks and copyright. The IPO, Trading Standards and the SSA partnered to introduce the Tick Box scheme to reduce the appeal of self-storage facilities for counterfeit and illicit goods. The scheme focusses on building stronger relationships between self-storage owners and their local Trading Standards enforcement partners, and aims to combat the social economic and social harms to communities that this type of crime can cause.”

JURISDICTION: Bolivia / Colombia / Ecuador / Peru
CHANGE: Trade mark database for Andean Community


A new database has been launched to provide access to trade mark data from the Andean Community countries of Bolivia, Colombia, Ecuador and Peru.


Information on trade marks in Colombia and Peru is already available on CAN TMview, while Ecuador is in the process of joining and Bolivia is also expected to join soon.


The new tool was announced by the General Secretariat of the Andean Community and the IP Key Latin America project, which is implemented by the EUIPO. It draws inspiration from the TMview global database and is expected to be particularly useful for businesses, including  EU SMEs, interested in investing in the Andean region.


More information on IP Key Latin America

CHANGE: IPOPHL adopts EU trademark database, ensuring certainty and ease in application


The Intellectual Property Office of the Philippines’ (IPOPHL) online trademark filing tool is now using the European Union’s (EU) harmonized database of goods and services (HDB), currently the largest multilingual trademark classification  database in the world.


The HDB contains over 78,000 terms which users can choose from when indicating the nature of the goods and services for which the mark is sought. All terms in the HDB are automatically approved by all trademark offices in the EU.


Describing the goods and services associated to a trademark is a critical step in application. This will set the limits of the trademark protection sought for and help IP offices determine whether a mark has confusingly similarity with another in the same class, a conflict which is a ground for rejection.


The database also integrates the most updated version of the Nice classification — the international trademark classification system, making IPOPHL’s system more harmonized with global trademark filing standards.


“Adopting the EU’s HDB ensures a smooth and more successful trademark application for local businesses filing at intellectual property (IP) offices across the EU and foreign applicants filing at IPOPHL,” IPOPHL Director General Rowel S. Barba said.


He explained: “This will eliminate the risk of being rejected over classification or description errors, in which case would mean paying for a new application and waiting longer for a decision.”


He added that with more options of terms given to filers, businesses have a fuller list of categories to look into when doing their due diligence search.


“This will allow them to find product or service marks they may run in conflict with and in this way assess their chances for approval before proceeding with an application.”


Those with registered marks can also benefit from this database expansion as this helps them monitor whether their marks are being infringed on and anticipate risks of future cancellation, the IPOPHL chief said.


“For EU businesses, this greater harmonization between IPOPHL and EU-based IP offices can bring ease in trademark protection, possibly motivating them to set up more shops in or introduce more brands to the Philippines through export.”


IPOPHL is the 17th IP office outside the EU and 85th out of all national and regional IP offices in the world to use the HDB.


An accomplishment of IPOPHL’s Bureau of Trademarks and Management Information Service, the database integration is part of the deliverables of IPOPHL and the EU IP Office under the ARISE Plus IP Rights (ARISE+IPR)  programme.


ARISE+IPR is a five-year €5.5 million program funded by the EU to support the ASEAN IP Rights Action Plan 2016-2025 which aims to improve IP creation, protection, utilization, administration and enforcement across ASEAN member states.”

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