Introduction
Fee increases
Reclassification of old trademark registrations
Electronic communication with IPONZ
Changes to hearings procedure
Miscellaneous amendments
Comment


Introduction

On December 10 2012 amendments to the trademark regulations entered into force. The main purpose of the amendments is to implement the Madrid Protocol in New Zealand. However, the amendments also introduce fee increases and a number of other minor procedural changes.

It was anticipated that there would be further changes to hearings office procedures; however, these changes were not included in the amendments. Information released by the Intellectual Property Office of New Zealand (IPONZ) indicates that the expected amendments to hearings office procedures were scheduled to be made in the first quarter of 2013.

Fee increases

The most important fee increases to be aware relate to:

  • application fees – increased from NZ$100 (approximately US$85) to NZ$150 per class;
  • renewal fees – increased from NZ$250 to NZ$350 per class;
  • fees for filing oppositions – increased from NZ$300 to NZ$350;
  • hearing fees – increased from NZ$750 to NZ$850;
  • declaration of invalidity applications – increased from NZ$300 to NZ$350; and
  • revocations – previously free of charge, now NZ$350.

Reclassification of old trademark registrations

The amended regulations establish a conversion process for old trademark registrations not classified under the Nice Classification system. Under this process, the commissioner can initiate conversion of these registrations to the current edition of the Nice Classification system.

The conversion process will commence with the commissioner writing to the owners of the registrations informing them of the intention to convert and the proposed form of conversion. The commissioner's letter will set a deadline for response of one month from the date of the letter. The owner of the registration will then have the option to accept the conversion or propose an alternative form of conversion. If the owner does not respond, the registration will be converted as proposed. If the owner proposes an alternative form, the commissioner will determine the form of conversion. If the owner disagrees with the form of conversion, it may request a hearing.

It is pleasing to see that trademark owners will have the opportunity to propose an alternative form of conversion before the conversion is made, and to contest the form of conversion at a hearing. It was not clear from the information available before the release of the amended regulations whether this would be the case.

Electronic communication with IPONZ

The amended regulations require that communication with IPONZ be made electronically through its online case management facility in almost all circumstances. However, the regulations also allow a mechanism for the commissioner to approve alternative filing methods in certain exceptional situations. IPONZ has indicated that it intends to publish a practice note that will give further guidance on the situations that this might cover.

This is a positive sign, as before the release of the amended regulations there were indications that electronic communication would be required with no exceptions. Such a move clearly would have disadvantaged parties that, for whatever reason, are unable to use the online case management facility. However, it remains to be seen what the practice note will contain.

Changes to hearings procedure

The majority of expected changes to the hearings procedure have not been made in the current amendments. Further amendments were expected to be made in the first quarter of 2013. However, a few minor changes to the hearings procedure that were necessary to ensure compliance with the Madrid Protocol have been made in the current amendments.

Following the amendments, grounds of opposition or invalidity must be listed in notices of opposition or applications to revoke on grounds of invalidity, along with the relevant sections of the act to which those grounds relate. If a ground of opposition relates to a prior trademark registration, the registration numbers of the earlier trademarks relied on must also be listed. Additionally, the commissioner will now set hearings procedure deadlines from the date that a document is sent by the commissioner, rather than when it is received by the party.

Miscellaneous amendments

As expected, the amended regulations make late time extensions for trademark prosecution available for a period of two months after the deadline has passed. The regulations also allow for additional classes of goods and services to be added to trademark applications until the date that the application is accepted for registration.

Comment

The amendments to the regulations introduce a number of welcome and necessary changes. It is beneficial that the amended regulations are not as inflexible regarding electronic communication and reclassification of old trademark registrations as had been feared. It is interesting that the anticipated changes to the hearings procedure have not been included in the current amendments. Due to flaws in the proposed changes to hearings proceedings, this delay may end up being positive. It is hoped that the additional time to consider the amendments will result in improvements to the final form of the regulations.

For further information on this topic please contact Corinne Blumsky or Jude Antony at AJ Park by telephone (+64 4 473 8278), fax (+64 4 472 3358) or email (corinne.blumsky@ajpark.com or jude.antony@ajpark.com).