New Zealand's accession to the Madrid Protocol: Trade Marks (International Registration) Regulations 2012

The Trade Marks (International Registration) Regulations, made pursuant to the Trade Marks Act 2002, come into force on 10 December 2012.

The purpose of the Regulations is to give effect to New Zealand’s accession to the Madrid Protocol. From 10 December 2012, it will be possible:

  • for New Zealand businesses to simply “tick a box” (and pay the appropriate fees) to apply to register their trade marks in many jurisdictions, under the Madrid Protocol administered by the International Bureau of the World Intellectual Property Organization (“WIPO”); and
  • for internationally based businesses to simply “tick a box” (and pay the appropriate fees) to apply to register their trade marks in New Zealand under the Madrid Protocol.

Major points to note are:

  • all documents filed with the Commissioner of Trade Marks (“the Commissioner”) must be filed through the online case management facility (except in exceptional circumstances);
  • the Commissioner has an obligation to take all reasonable steps to ensure that a Madrid Protocol application that forms the basis of an international registration is received by WIPO within two months from when it was filed;
  • where a Madrid Protocol application designates New Zealand, and the Intellectual Property Office of New Zealand (“IPONZ”) does not issue a refusal to extend protection of a trade mark to New Zealand within 18 months of receiving the designation, protection of the trade mark will automatically be extended to New Zealand (unless the application is, or may be, opposed by a third party);
  • where a Madrid Protocol application designates New Zealand, and IPONZ objects to registration of the trade mark for only some goods or services of the application, failure to respond to IPONZ will not result in the application being abandoned. Rather, protection of the trade mark will be extended to New Zealand in respect of the goods and services to which the objection did not relate.

Mandated electronic filing

Regulation 6 stipulates that any information or document that must or may be given to the Commissioner must be given through the “case management facility”. The “case management facility” is defined as “the case management facility that may be accessed through the Commissioner’s website or web services”. It is important to note that this definition does not include email or telephone communication.

The only exception to this requirement is where the Commissioner is satisfied that a person is unable to access the case management facility because of “any exceptional circumstances beyond the person’s control. The words “exceptional circumstances” are not defined in the legislation. (In The Muir Electrical Company v Good Guys Group Limited(CIV-2009-404-4965, High Court, Wellington, 18 December 2009), the words “exceptional circumstances” were held to mean “quite out of the ordinary”.)

The requirement to communicate via the case management facility does not apply to the Commissioner; any information or document that the Commissioner must or may give,may be given to a person through the case management facility. Thus the Commissioner may also communicate to a person using email, hard copy letters, and telephone calls, and other forms of communication.

The deemed date of receipt of any information or document that the Commissioner issues or supplies through the case management system will be the date that the information or document becomes accessible to the intended recipient on the case management facility, regardless of when the intended recipient actually accesses the information or document.

International applications originating in New Zealand: Commissioner must take reasonable steps to inform WIPO, within two months, of a Madrid Protocol application originating in New Zealand

The Commissioner must take all reasonable steps to ensure that a Madrid Protocol application originating in New Zealand will be received by WIPO within two months from the date on which the applicaation was filed in New Zealand.

This is because a Madrid Protocol application originating in New Zealand may retain the priority date of the original application, only if WIPO receives the Madrid Protocol application within two months of the date on which the application was filed in New Zealand.

Where WIPO receives a Madrid Protocol application outside of the two month period, the priority date for the application is the date on which WIPO received that application.

Madrid Protocol applications designating New Zealand: Any refusal to extend protection must be given within 18 months

IPONZ has 18 months from receipt of a Madrid Protocol application which designates New Zealand to determine whether protection in New Zealand will be refused, and to which goods or services the refusal will extend. If, after 18 months, IPONZ has not refused the Madrid Protocol application, protection of the trade mark will automatically be extended to New Zealand.

Similarly, where IPONZ has refused the Madrid Protocol application for only some goods or services in the specification, protection of the trade mark will automatically be extended to New Zealand for those remaining goods.

The 18 month automatic extension of protection rule does not apply where IPONZ has issued a notice that it intends to extend the protection of an international registration to New Zealand, but the international registration is under opposition, or has not been completed, or is part way through its three month publication for opposition period. In this scenario, the protection of the international registration will be extended to New Zealand once the opposition period expires. If an opposition to an international registration designating New Zealand is successful or partially successful, IPONZ will refuse to extend protection to the international registration in respect of the successfully opposed goods or services.

IPONZ announced on 18 October 2012 that it will specify the goods and services to which an objection relates.

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