IPONZ invites submissions on proposed amendments to Trademarks Regulations

New Zealand

New Zealand is continuing with its preparations to implement the Madrid Protocol, which is expected to be in place before Christmas. As part of this process, the Intellectual Property Office of New Zealand (IPONZ) has issued a discussion document inviting submissions on a number of proposed amendments to the Trademarks Regulations 2003

As well as being required to implement the Madrid Protocol, the amendments will allow New Zealand to comply with the Singapore Treaty and the Nice Agreement, and will allow IPONZ to make a number of changes to fine tune the regulations, which essentially have been left untouched since they came into force in 2003.

The main issues covered by the document are outlined below.

  • Changes to official fees - IPONZ proposes to increase its official fees for most of the trademark services it provides, although the increases proposed are not significant. At this point, IPONZ is not intending to charge a handling fee for Madrid Protocol applications.
  • Singapore Treaty - currently, once the deadline for a New Zealand application passes, the application lapses irretrievably. However, Article 14(2) of the Singapore Treaty requires contracting parties to provide applicants with options to revive applications which have failed due to the applicant not complying with a specified deadline. Three options have been put forward; these allow the applicant to apply for:
    • a (late) extension of time for a “reasonable period”;
    • continued processing, which requires the “next action” (such as the filing of evidence) to be taken at the time relief is sought; and/or
    • a reinstatement of rights within six months of the missed deadline, provided that the failure to comply with the deadline was unintentional, or the failure occurred despite the applicant taking due care.

IPONZ has indicated a preference for the second option. Unfortunately, the discussions document does not explain what would constitute the “next action”, a point of interpretation that practitioners may well view differently to IPONZ.

  • Madrid Protocol - ideally the discussion document would have contained more detailed information regarding the likely changes needed to implement the New Zealand’s accession to the protocol. At this point IPONZ simply proposes:
    • to extend the timeframe within which to notify WIPO of a possible refusal to 18 months, in keeping with the practice of IP Australia;
    • to opt to retain fixed fees for international applications, which will not be higher than an application for registration in New Zealand alone;
    • not to charge a handling fee for certifying international applications originally filed in New Zealand (although this will be reviewed in 2015); and
    • to require international applications designating New Zealand to include a declaration that the applicant intends to use the mark here.  
  • Hearings Office processes - a number of significant changes to the Hearings Office process are also on the cards, including providing the commissioner with the discretion to:
    • accept evidence in earlier or contemporaneous proceedings;
    • accept evidence filed out of time;
    • grant extensions of time based on genuine reasons (rather than the current exceptional circumstances requirement); and
    • regulate the process for confidential evidence.

The amendments will also remove the need to file evidence in support of rectification, revocation or invalidity applications if the owner of the registered trademark fails to file a counterstatement.

It is understood that IPONZ will not be seeking further submissions on the amendments to the regulations, which is disappointing. 

Overall, the discussion document merely signposts upcoming changes for New Zealand trademark owners and practitioners, without providing any real detail. Many of the changes will be welcome; others will simply introduce new challenges and, no doubt, a number of unforeseen consequences. 

Sarah Tallon, James & Wells Intellectual Property, Auckland

Unlock unlimited access to all WTR content