INTA Bulletin

December 15, 2012 Vol. 67 No. 21 Back to Bulletin Main Page

NEW ZEALAND: Madrid Protocol Now in Effect

On December 10, 2012, New Zealand legislation came into force to accommodate New Zealand’s accession to the Madrid Protocol.

The legislation amended the previous Trade Mark Regulations, and introduced Madrid Protocol-specific Regulations. The Regulations also:

  • require that all communication with the Commissioner of Trade Marks are by electronic means;
  • in cases where goods or services have been incorrectly classified, allow additional classes to be added to an application up until the application accepted;
  • increase fees.
Mandated electronic communication
In February 2012 the Commissioner of Trade Marks introduced an online case management system for communicating to examiners and the Commissioner and filing documents. Electronic correspondence with the Commissioner of Trade Marks has thus been the norm for almost a year.

Additional classes may be added up until acceptance of the trade mark application
Previously, where goods or services had been incorrectly classified, additional classes could to be added to a trade mark application within one month of the filing date. As the turnaround time for examination of an application is three weeks, this left a very short time to address a classification objection from the examiner.

The new regulations allow for additional classes to be added to an application (if goods or services were incorrectly classified to start with) up until the application is accepted. This will allow applicants significantly more time to consider their options when faced with an “incorrectly classified” objection.

Increased fees
Fees also increase from December 10, 2012. Of particular note is the introduction of a fee for an application for revocation of a trade mark registration.

New Zealand-based Madrid Protocol applications
An applicant for a New Zealand based-Madrid Protocol application must ensure that the application meets all of WIPO’s requirements within two months of the date the Madrid Protocol application was filed with IPONZ. If the applicant meets this deadline, the priority date of the application will be the date that the application was filed with IPONZ. If the applicant does not meet this deadline, the priority date of the application will be the date that WIPO actually receives the application.

The Intellectual Property Office of New Zealand (IPONZ) will not be charging a fee for certifying that a Madrid Protocol application is based on a New Zealand application.

To assist New Zealand-based businesses with meeting the crucial two months deadline, IPONZ has announced that it will examine a New Zealand-based Madrid Protocol application within five days of receiving the application. IPONZ will also make use of email, telephone calls, and the online case management system to ensure timely notification of irregularities.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association