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Twenty years on from the New Zealand Trade Marks Act 2002 coming into force, this article examines the important international and local factors that influenced its timing and content. The article also documents significant legislative materials in the form of departmental reports to the Parliamentary Select Committee that resulted in changes to the legislation. The New Zealand courts have referred to this material when construing the 2002 Act and in particular when ascertaining its purpose and context. The fact that the New Zealand statute is drawn from the Trade Marks Act 1994 (UK), which in turn enacted into United Kingdom law the European Union Trade Marks Directive 1988, raises questions as to whether or how far New Zealand courts should follow European law. The article observes that the New Zealand courts have, on the whole, adopted a pragmatic approach of first determining whether the 2002 Act exhibits material differences before considering whether it is appropriate to follow the reasoning in United Kingdom and European jurisprudence. Finally, the article examines six specific New Zealand provisions where the legislature enacted New Zealand specific provisions and solutions.

This article presents findings from an empirical study on the application and registration of non-traditional trade marks in New Zealand from 1995 to 2002. The study canvasses the key trends emerging from this data before and after the introduction of the Trade Marks Act 2002. The article concludes that the findings are largely consistent with those drawn from trade mark offices around the world. In total, 1,894 applications were filed in New Zealand for non-traditional trade marks between 1995 and 2002. The total represents 0.3 per cent of total applications received, with threedimensional shape and colour marks being the most applied for categories of trade marks.

The prohibition on filing a trade mark application in bad faith — now contained in s 17(2) — was a newly introduced provision in the Trade Marks Act 2002 (2002 Act). It was an (indirect) legal transplant from the European Trade Marks Directive. Following the enactment of the 2002 Act, New Zealand courts and adjudicators turned to English judicial interpretations for guidance on the meaning of bad faith. In this article, I demonstrate how other features of the statutory regime in the 2002 Act concerning the acquisition of trade marks have stunted the operation of s 17(2). I argue that bad faith has become something of a wilted transplant, which risks New Zealand's law in the area remaining complex, rigid and static. I trace developments in Europe where I suggest a more teleological or purposive view of the meaning of bad faith is emerging. In light of these developments, I advocate for New Zealand courts and adjudicators to adopt such a teleological approach. I also suggest some statutory reform to allow such an approach to reinvigorate bad faith and make New Zealand law less complex and more flexible in addressing abuses of the trade mark system.

This article discusses Australia's proposals to incorporate recognition of Indigenous Knowledge (IK) into its trade mark registration system, in particular, proposals to regulate trade marks that may offend Indigenous peoples. The article compares Australia's current regime (and proposals for reform) with New Zealand's much-lauded approach to Māori IK and trade marks. In addition, because interest in IK and racially oriented trade marks extends across multiple jurisdictions and disciplines, the article also presents a new taxonomy to organise the field.

The Māori Trade Marks Advisory Committee (MTMAC), established under the Trade Marks Act 2002, advises the Commissioner of Trade Marks on whether a trade mark application that is, or appears to be, derivative of a Māori sign is likely to be offensive to Māori. The Māori Plant Varieties Committee (MPVC), established under the Plant Variety Rights Act 2022, determines whether a plant variety right, if granted, would or could have adverse effects on kaitiaki relationships with the relevant plant variety. The MTMAC and MPVC reflect different approaches to designing advisory committees for protecting mātauranga Māori and taonga before and after the Waitangi Tribunal released its Wai 262 Report in 2011. This article illuminates how the MTMAC works in practice and reimagines the MTMAC as if it were designed after the Wai 262 Report. It proposes four changes to bring the MTMAC in line with the MPVC: recognising the Crown's Treaty obligations in the Trade Marks Act; implementing a kaitiaki relationships framework for trade marks; reconfiguring the MTMAC's administration to better serve the kaitiaki relationships framework; and bringing the appeal process under the jurisdiction of the Māori Appellate Court.

This article provides a critical analysis of a common element in the test for trade mark infringement in the laws of both New Zealand and Australia — the requirement that the defendant's use of the impugned sign be "as a trade mark". It shows how the laws in both countries on this requirement have converged, especially since the coming into force of the Trade Marks Act 2002 (NZ), arguing that this is a welcome development and that courts should strive for even further consistency where possible. It explores how Australian case law has, especially in the last decade, come to influence the New Zealand approach to trade mark use and the relationship between the primary infringement provision and the defences to infringement. It also analyses how New Zealand law has shaped, and might shape, the Australian approach to trade mark use in new technological environments involving the use of marks in keyword advertising and in metatags.

The Hearings Office of the Intellectual Property Office of New Zealand (IPONZ) determines the vast majority of non-infringement proceedings under the Trade Marks Act 2002 (2002 Act). It is a relatively formal tribunal, and, while many of its rules are set out in the 2002 Act and the Trade Marks Regulations 2003 (Regulations), it also has a significant amount of latitude. This flexibility has been a hallmark and strength of the system, although greater certainty may now be preferable and lead to fairer and more consistent outcomes. One major area for improvement is the time taken from filing to determination of a proceeding, which would require changes to the Regulations and increased resourcing to remedy. Another priority would be the streamlining of processes for undefended claims. Any review of IPONZ procedures should take into account the need for independence of the IPONZ Hearings Office from the operational parts of IPONZ, with the assistant commissioners being renamed so that their roles are better understood. One option for further exploration would be the transfer of IPONZ's adjudicative functions to a new Intellectual Property Tribunal that could also deal with other registered intellectual property rights (as the Hearings Office does at present) but also infringement proceedings.