New trade mark regulations are being drafted with the aim of being implemented by the end of the year.

Proposed Regulations include:

  • An increase in official fees for the first time in 13 years. By international comparison the fees are still reasonable. The most notable change is the introduction of a fee for filing a revocation action.
  • Making electronic communication with the Intellectual Property Office (IPONZ) through its online case management system compulsory. A consequence of this is that the definition of “address for service” will be amended to require an electronic address.
  • Prescribing regulations needed for New Zealand’s accession to:
    • The Singapore Treaty on the Law of Trademarks (Singapore Treaty);
    • The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Trade Marks (Nice Agreement); and
    • The Madrid Protocol Relating to the Madrid Agreement (Madrid Protocol).
  • Making general amendments to regulations that are described as ‘minor and technical’. The aim of these amendments are business efficiency and clarification of some regulations that have caused uncertainty (such as Regulation 32- Extensions of time) as well as clarifying the processes and requirements for proceedings in the IPONZ Hearings Office.

The regulations are expected to be in force by 10 December 2012.