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New flag designs may pose problems for companies with existing silver fern trademarks 05 Oct 2015

New Zealand’s proposed new flag designs – especially the single black and white silver fern – could spell problems for companies with existing, but similar designs, that are registered trade marks.

Intellectual property expert and lawyer, Theodore Doucas of Zone Law and Zone IP, an intellectual property law firm and consultancy in Auckland and Wellington, said New Zealand has specific laws limiting companies registering trade marks containing representations of flags.

“The Trade Marks Act 2002 prohibits the registration of a trade mark where the trade mark contains a representation of the flag, armorial bearing or state emblem and official sign or hallmark, without express permission.

“The Commissioner does have discretion; however, he has to be satisfied that use of that mark does not suggest a connection between the origin of the products or services and the trade mark, or is not likely to mislead the public as to the existence of a connection between the origin of the products or services and the organisation.

“This has implications for trade marks already registered because those owners of the various similar marks may find their rights trumped by national legislation. I would suggest this is a problem that relates particularly to the single black and white silver fern flag,” he said.

Some organisations with a similar silver and black fern logo include New Zealand Global Limited, Cellnet Limited, Quality New Zealand Limited, New Zealand Trade And Enterprise, and the NZ Tourism Board.

“With the exception of the New Zealand Rugby Football Union, I would be curious to know if the flag consideration panel took into account the potentially hundreds of already registered silver fern trademarks?”