COVID-19 and trade marks – 5 things to consider for brand owners

Tuesday, April 21, 2020

As with other areas of law, the impacts of the fight against COVID-19 have impacted the rights of brand owners. Intellectual property offices and courts around the world have adapted their procedures to account for the restrictions enforced by the pandemic.

Here are 5 ways in which New Zealand and Australian brand owners may be affected by COVID-19.

1. Deadlines unaltered

Brand owners do not benefit from any extended deadlines automatically.

The Intellectual Property Office of New Zealand is, for the time-being, operating as normal. IPONZ has not automatically extended deadlines and so all deadlines stand unaltered. 

IP Australia’s position is the same. All existing deadlines remain unaltered.

As both registries provide services through their electronic portals, for the most part it is business as usual for filing applications, conducting oppositions procedures and related matters.

2. Extensions of time for COVID-19 reasons

If circumstances related to COVID-19 have affected or are affecting a rights holder, applicant or opponent’s ability to meet a deadline, they may request an extension of time to meet that deadline for reasons relating to the COVID-19 outbreak. Requests for waiver or extension of time will be considered on a case by case basis. We have found these are in general being granted.

This will not however apply to non-extendable deadlines. Non-extendable deadlines still need to be adhered to. This is particularly relevant in Australian matters.

When applying for an extension of time, applicants will need to specify how circumstances related to COVID-19 have affected them or are affecting their ability to meet deadlines.

IPONZ has confirmed that no additional fees for extensions will apply.

IP Australia will consider requests for extension fee waivers on a case by case basis where parties to trade mark matters may be facing extreme hardship.

3. Plan ahead for international matters

While the intellectual property office procedures in Australia and New Zealand have been able to continue in a business as usual manner for the most part, brand owners need to plan ahead when managing their documentation relevant to the their brand protection and defence matters overseas. In particular, signing and certifying documents comes with an added administrative burden at the present time.

Brand owners need to plan ahead with documents, such as evidence and declarations, especially when dealing with international matters – either incoming or outgoing. Intellectual property offices globally have been affected by COVID-19 differently and have responded differently. Some are closed while others are operating with no change.

Given the these challenges, it is recommended that brand owners engage with their local advisers on international matters as soon as possible.

4. Non-use considerations

COVID-19 will generate numerous obstacles for brand owners in putting their marks into use. As a result of government restrictions, problems may arise in the development, manufacturing, approval, supply, and marketing of products.

New Zealand and Australian trade mark registrations are vulnerable to revocation if they have not been put to genuine use in relation to the goods and/or services for which they are registered within any continuous period of 3 years (with Australia having some additional grace periods for non-use).

While it is likely that COVID-19 will come within the ambit of what counts as special circumstances for non-use outside of an owner’s control where a trade mark has not yet been used, brand owners may want to consider taking other measures, such as refiling, to manage the risk of any registrations becoming cancellable and ensure they retain protection of their marks. 

5. IP agreements

It is likely that a variety of IP-related agreements will be affected by the current pandemic. In many cases, parties will be able to reach a commercial situation to manage these risks. Where parties cannot agree, agreements will need to be reviewed to determine the impact and whether the agreement should be varied or terminated.

All agreements not yet executed should be reviewed for a potential impact from the pandemic. Frustration and force majeure clauses may come into play with existing agreements where parties are now unable to perform their obligations, especially where there are strict performance measures.

New agreements will need to be drafted carefully with COVID-19 in mind. Relying on frustration and force majeure clauses in the future is unlikely to be possible as COVID-19 is now in the contemplation of the parties to the agreement. Accordingly, specific drafting will be required.

Co-existence agreements will also need to be reviewed to determine whether undertakings such as those to withdraw particular trade mark applications or change brands can be complied with within the timescale initially envisaged.

If you have any questions on the how COVID-19 measure impact on your brand, please contact our IP team

 

Disclaimer: The content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose. While we make every effort to ensure the accuracy of the information contained in this article, this is a rapidly changing environment and the information will be subject to change.

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