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Amendment to the Trade Mark Regulations

The Trade Marks Regulations 2003 (“the Regulations”), made pursuant to the Trade Marks Act 2002 (“the Act”), have been amended by the Trade Marks Amendment Regulations 2012 (“the Amendment Regulations”).

The purpose[1] of amending the Regulations is fourfold:

• to prescribe regulations necessary for New Zealand’s accession to three international trade mark treaties (the Madrid Protocol, the Singapore Treaty and the Nice Agreement);
• to mandate electronic communication with the Intellectual Property Office of New Zealand (“IPONZ”);
• to make various general amendments to the Regulations, including in relation to proceedings in the IPONZ Hearings Office; and
• to introduce an updated schedule of fees.

From 10 December 2012, the date on which these amendments come into force, New Zealand trade mark applicants will be able to apply to obtain an international registration under the Madrid Protocol, and IPONZ fees will increase.

A number of the amendments required to give effect to the three international trade mark treaties are found in the separate Trade Marks (International Registration) Regulations 2012. (See the separate article on those regulations.)

The major changes contained in the Amendment Regulations can be summarised as follows:

• all correspondence and documents must be filed electronically using the IPONZ case management facility;
• additional classes may be added to an application up to its acceptance;
• the time limit for modification of certification trade mark documents has been extended;
• the Commissioner’s ability to request documentation relating to an assignment has been clarified;
• a more lenient extension of time provision has been introduced;
• a procedure for conversion of a specification by the Commissioner has been introduced;
• fuller particulars must be included in pleadings in proceedings before the Commissioner; and
• fees have been increased.

Requirement to file all information or documents electronically (regulations 8 and 9)

The Regulations are amended to stipulate that all information and documents must be filed electronically through the IPONZ case management facility. As a corollary, the Regulations will provide that the Commissioner may use the case management facility to give any information or document to a person, leaving it open to IPONZ to contact owners of marks by other means when that owner has not yet set up access through the IPONZ case management facility. This is most likely to be the case with private applicants of older registered marks.

The amended Regulations provide that the Commissioner may approve other means for giving information or documents, 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 exercise of this discretion will be essential, as not all document types are currently able to be submitted using the case management facility.

Importantly, the time at which information or a document is said to be given by the Commissioner is at the time the information or document becomes accessible through the case management facility.

A number of minor amendments have been made to the regulations in line with these changes, including removing the need to provide a description or representation of the trade mark(s) to which a proceeding relates, in addition to the application or registration number(s). All that will be required in future is the provision of the application or registration number(s).

Additional classes may now be added until acceptance (regulation 43)

The Regulations have been amended to allow the addition of further classes to an application at any time before acceptance of the application. This provision replaces the previous, highly-restrictive, provision which required that additional classes to cover goods/services wrongly classified in the original application could be added only within one month of an application’s filing date.

Time limit extended for modification of documents relating to certification trade marks (regulation 48)

Similarly, the Regulations have been amended to remove the time limit for modification of documents relating to certification trade marks. These documents include the regulations and other documents governing the certification of goods/services in respect of which the mark will be used.

This sensible amendment removes the present 12 month time limit for modification of these documents, which may now be amended up until acceptance of the application.

New extension of time provision (regulation 62A)

IPONZ has decided to utilise the “continued processing” relief measure provided for under the Singapore Treaty.

Applicants are now entitled to a single extension of time of two months after a deadline has passed, in relation to:

1. an application for registration of a trade mark that has not been accepted; and
2. a proposal by the Commissioner to revoke acceptance of a trade mark under section 71 of the Act.

However, as well as seeking the extension within the two month period, the applicant must also “do the thing” required to be done, in other words, the applicant must respond to any outstanding matters.

Procedure for conversion of specification by Commissioner (regulations 142A-D)

This procedure applies to any trade mark registered with a specification classified under Schedule 3 or 4 of the Trade Marks Regulations 1954 or any previous edition of the Nice Classification.

The procedure is interactive and can be summarised as follows:

• The Commissioner may write to the owner of each trade mark registration that does not conform to the current edition of the Nice Classification, informing them of the Commissioner’s intention to convert the classification and the proposed form of the conversion;
• The trade mark owner will have one month from the date shown on the letter to respond – by either accepting the conversion or suggesting an alternative conversion, which may include nominating additional classes (where goods or services have subsequently fallen into a different class from that originally registered);
• If the owner does not respond, the Commissioner may convert the specification as proposed in the Commissioner’s letter and record the conversion on the register.
• If the owner suggests an alternative form of conversion, the Commissioner must determine the form of the conversion and notify the owner. The owner may request a hearing if it disagrees with the Commissioner’s determination as to form.

Trade mark owners should ensure that their contact details are current, and/or appoint a local agent, to ensure they receive any communication from the Commissioner in a timely manner.

Clarification of Commissioner’s ability to request documentation relating to an assignment (regulation 146(2))

The Commissioner may request that an applicant submit with an application for assignment or transmission of a trade mark application or registration:

• a copy of, or an extract from, the contract or assignment document; or
• a certificate of transfer; or
• a transfer document.

The documents do not have to be certified. The Commissioner may request further information if the Commissioner “has reasonable grounds to doubt the veracity of any information contained in the application or in any document submitted with the application”.

If current IPONZ practice is an indication, a low threshold will be applied to these “reasonable grounds”.

Requirements for Notices of Opposition and Applications for Declarations of Invalidity

Notices of Opposition and Applications for Declarations of Invalidity must refer to the provisions of the Act to which any stated grounds of opposition or declaration of invalidity relate. Where a ground relates to section 25 of the Act, the trade mark numbers of the earlier registrations must now be provided.

These amendments accord with best practice principles for pleading, and will provide greater certainty at the commencement of any defence.

New schedule of fees (Schedule 1)

IPONZ fees increase from 10 December 2012. The Cabinet paper released by the New Zealand Government’s Cabinet Economic Growth and Infrastructure Committee in May 2012 (“the Cabinet paper”) notes these fee increases are similar to those that would have arisen from inflation adjustments over the past 13 years (when the fees were last set), and are lower than the fees charged in Australia and Singapore. Of particular note is the introduction of a fee for an application for revocation of a trade mark registration.

The full schedule of official fees for trade marks is set out below:

These fees will be reviewed in 2015/16.

Further developments

The Cabinet paper noted a number of important amendments that have not been included in either these amendments or the Trade Marks (International Registration) Regulations 2012. In particular, much-needed amendments relating to IPONZ Hearings processes, and extensions of time generally, are not included in the Amendment Regulations. These further amendments are expected to be introduced in the first quarter of 2013.

[1] As stated in the Cabinet Economic Growth and Infrastructure Committee paper: Trade Marks Regulations 2003: Amendments, May 2012. Last accessed 20 November 2012.