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Madrid Protocol and other important changes to New Zealand trade mark law from 10 December 2012

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A number of changes to New Zealand trade mark law will occur on 10 December 2012, once the Trade Marks Amendment Regulations 2012 and Trade Marks (International Registration) Regulations 2012 come into force. Many of these changes relate to New Zealand's accession to the Madrid Protocol, enabling trade mark owners to use the International Registration system from 10 December 2012.

The Regulations introduce other changes to New Zealand trade mark practice and proceedings, including:

  1. Official fees – official fees will increase in relation to a broad range of trade mark services on 10 December, including a 50% increase in the official filing fee from NZ$100 to NZ$150 per class;
  2. Case management facility – all correspondence relating to trade mark applications, oppositions and registrations can only be submitted to IPONZ using its online "Case Management Facility". This is a requirement which concerns many practitioners, due to its exclusive reliance on an external IT system. There is however some relief, as the Regulations at least provide for the Commissioner to permit parties to submit information or documents by other means if the Commissioner "is satisfied that that person is unable to access the case management facility because of any exceptional circumstances beyond the person's control" (Reg. 8(3)).
  3. Post-deadline extension – a trade mark applicant will be entitled to a single two month extension after a trade mark prosecution deadline has passed to take the action required to address the objections raised against registration of the trade mark, so long as the necessary action is taken within the "late" extension period (New Regulation 62A). Each applicant can only take this action once during the life of a trade mark application.
  4. Adding a class – An applicant will have the life of a trade mark application within which to add an additional class to the application, for applications filed after 10 December 2012. Under the current law, a trade mark applicant only has one month from the date of filing a trade mark application to add an additional class.

The regulation governing extensions of time in opposition proceedings remains unaltered. It requires that an extension of time may be granted only if there are "genuine and exceptional circumstances". This has been construed narrowly, and it has been very difficult to obtain extensions of time in New Zealand opposition proceedings.

Many practitioners expected that this regulation would be relaxed to set a more reasonable approach to extensions of time in opposition proceedings. We are pleased to note that a second set of amendments to the regulations is in the pipeline and should be gazetted in the first quarter of 2013. It seems likely that these amendments will relax the opposition extension provisions, to permit the Commissioner to extend time in opposition proceedings by up to three months if he/she is satisfied that there are genuine and reasonable reasons to do so, with a further extension permitted only under genuine and exceptional circumstances.

Davies Collison Cave has practiced directly in New Zealand for over ten years, and is in the top 10 trade mark filers in the country. Our team will be happy to answer any questions you may have on New Zealand trade mark law. Please contact your normal Davies Collison Cave representative with any questions. 


Filed under: Legal briefing Trade Marks