As a result of New Zealand's decision to implement various international trade mark agreements, it has amended its trade mark legislation and regulations to align with the requirements of the various agreements. Last year the Trade Marks Act 2002 was amended and now, following a recent discussion document, trade mark amendment regulations have been published.
The new amendment regulations contain many changes that have been introduced to simplify trade mark procedures. In addition, the regulations will increase the fees charged by the Intellectual Property Office of New Zealand (IPONZ) in relation to certain trade mark processes.
Following the global financial crisis many businesses are, understandably, looking to obtain greater value for their commercial dollar. Avoiding fee increases is one way of doing this.
The following new official fees come into force on 10 December 2012. The table below highlights the changes:
Click here to view the table.
While some fees simply can't be managed, there are three key areas where cost savings may be achieved:
- Renewals: Trade mark registrations can be renewed up to 12 months in advance - so any marks due for renewal up to 9 December 2013 can be renewed early, in order to avoid the additional $100 per class official fee.
- Applications: Those considering filing applications or generally bolstering their portfolio in the near future should, where possible, try to do so before 10 December.
- Revocations: In the past New Zealand has had no fee for revoking unused trade marks on the grounds of non-use. So when unused marks were cited as blocking new applications, it was both quick and cheap to have them removed. While it will remain quick, the introduction of a $350 official fee per mark may significantly add to cost - particularly where there are a number of marks to remove. If such removals are likely to be needed, there are obvious advantages in getting in before December.
Other procedural changes
In addition to the new fees, there will be a number of other procedural changes - mostly created to bring New Zealand into line with its key trading partners and to ensure that the New Zealand trade mark system is consistent with the requirements for filing internationally via the Madrid Protocol. We will keep you informed of these changes over the next few weeks.
Recommendation - Save Money Now
While the amounts may be trivial for some, when filing or renewing a trade mark that covers multiple classes, the fees add up very quickly. As everyone loves a Christmas bargain, this could be an opportunity to save substantial amounts by simply addressing your trade mark portfolio "to do" list before the 'deal' being offered by the Intellectual Property Office will end on 10 December 2012.