New Zealand's trade mark legislation has been undergoing amendments to meet the requirements for the implementation of various international trade mark agreements. Some recent amendments to the Trade Mark Regulations, which will come into force on 10 December 2012, include changes required to allow implementation of the Madrid Protocol in New Zealand (see more below). There are also increases to the fee regime relating to trade mark applications and other trade mark procedures and a raft of other small changes in procedure.

Fees – Beat the Increase

New increased official fees come into force on 10 December 2012. Business owners wanting to protect trade marks in New Zealand or who have significant portfolios with renewals due in the next year may wish to file applications or arrange renewals ahead of the fee increases on 10 December.

Set out below are the main fee changes. All fees are shown in New Zealand currency.

Click here to view the table.

Madrid Protocol – A Snapshot

The new regulations provide for changes to allow the implementation of the Madrid Protocol in New Zealand from 10 December 2012. The Madrid Protocol is a system for international trade mark registration and is administered from the International Bureau of the World Intellectual Property Office (WIPO) in Geneva.

The implementation of the Madrid Protocol in New Zealand will be of potential benefit particularly to New Zealand exporters. It will enable business owners the opportunity to protect their trade marks in several countries by the filing of a single application in New Zealand designating the countries where protection is required.

From 10 December, the system may be used by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of New Zealand.

An international mark is equivalent to an application or registration of the same mark filed directly in each of the countries designated. If the trade mark office of a designated country does not refuse protection within a specified period, the mark is deemed protected in that country as if it had been registered by the Intellectual Property Office in that country.

The Madrid system simplifies the on-going management of the mark internationally as it is possible to record renewals and subsequent changes such as changes in ownership in a single step. It also allows further countries to be designated subsequently, for example when new members join the Madrid Protocol or where the owner's interest extends to new countries.

There are currently 87 countries which are members of the Madrid Protocol including many of New Zealand's main trading partners such as Australia, the United States, Japan, China, members of the European Union including the United Kingdom, and many others.

Whilst there are potential advantages in using the system, including the simplified processes and potential cost savings, determining whether the Madrid system is right for your business will depend on a number of factors. These include whether the countries of interest to your business are members of the Protocol, the number of countries in which protection is required and on whether your business has the necessary qualifying status. If protection is required in only a small number of countries or in countries which are not members of the Protocol then traditional individual filings in each country may still be the best way to proceed. We can work with you to advise on the best way forward.

An application under the Madrid system must be based on a home application or registration. It is vital for trade mark owners to undertake a review of their home applications and/or registration upon which they wish to base a Madrid Protocol filing to ensure that they will provide an adequate basis for their international filing. Any flaws in the basic application or registration may have a negative ongoing effect on the International Registration.

From 10 December, the application for International Registration will be filed at the Intellectual Property Office (IPONZ) in New Zealand. Once the application is lodged it will undergo a certification process by IPONZ to verify the content and completeness of the International Application. In particular a check will be made to ensure that the trade mark details, the owner and scope of the list and goods and services included in the International Application correlate to those of the basic mark upon which the International Application is based. Any issues with the application will be notified to the applicant by IPONZ. Otherwise the International Application is certified and forwarded electronically to the WIPO.

If WIPO is satisfied with the application, it will enter the mark on the International Register and publish it in the International Gazette. At this stage WIPO forwards the International Registration to the Intellectual Property Offices of the countries designated in the application. It is important to note that the WIPO does not examine on whether the mark qualifies for protection in each of the designated countries. This is a matter for the Intellectual Property Office in each of the designated countries. Each of those offices examines the application according to local laws and may raise objections to registration at that stage. If the application meets requirements of the local laws protection will be extended to that country. If the local office objects to the application it will be necessary to appoint a local agent in that country to deal with those objections. This does, however, have the potential to erode some of the cost savings made in using the international system in the first place.

There are also some other potential disadvantages to using the Madrid Protocol system. One of the main disadvantages is what is called "central attack". For a period of five years from the date of its registration an International Registration remains dependent on the mark registered or applied for in the office of origin. If, and to the extent that, the basic registration ceases to have effect, whether perhaps through cancellation following a third party attack, or through voluntary cancellation or non-renewal within this five year period, the International Registration will no longer be protected. Similarly, where the International Registration was based on an application, it will be cancelled if that application is refused or withdrawn within the five year period or if the registration resulting from the application ceases to have effect within that period. After the expiry of the five year period however the International Registration becomes independent of the basic registration or basic application.

If during the five year dependency period the International Registration is attacked by a third party or for some reason the basic registration ceases to have effect, it is possible for the holder to apply to transform the International Registration into a bundle of national or regional registrations. It needs to be borne in mind however that transformation could potentially eliminate any cost savings originally made by filing an International Application.

Some other changes

Communications with the Intellectual Property Office

The amendments require that communications with IPONZ must be made electronically through their on-line case management facility. There are some exceptions to this but these only relate to exceptional circumstances and such circumstances are unlikely to exist in the majority of cases. IPONZ has issued a draft guideline which proposes the extent of what might be considered to be "exceptional circumstances". Whilst this is only a draft at this stage, it seems likely that the threshold will be very high and that "exceptional circumstances" may be limited to events outside the control of a party that prevent them from doing the action when they have taken all reasonable and prudent steps to prevent or limit the risk of the event occurring. These types of events could be considered to be in the nature of force majeure situations including natural disasters such as floods or earthquakes, fires or significant electrical or widespread network failure.

The draft guidelines indicate that the type of situations which are unlikely to be considered exceptional include not having access to a computer, being out of the office or not being linked to a trade mark in the Commissioner's case management facility.

Late extensions of time for trade mark prosecutions

The amendments make provision for a single late extension of time for trade mark prosecution. This is available for a period of two months after the initial deadline has passed.

Reclassification of trade mark registrations

Any old trade mark registrations not classified under the Nice Classification System will need to be converted to the current edition of the Nice Classification System. The amended regulations provide a process for this to occur involving a notification by the Commissioner of Trade Marks to the owner of such registrations setting a deadline for reclassification. Failure to respond to such requests for reclassification will result in the mandatory reclassification of the registration in accordance with the Commissioner's determination. It is important therefore for trade mark owners to respond to any of these requests so that they may have input into the reclassification should they disagree with the proposed reclassification sought by the Commissioner.

Changes to hearings procedure

Expected changes to procedures relating to hearings have not been included in the current amendments. However, it is anticipated that such amendments will be made in the first quarter of 2013.