New Zealand: NZ's new online trade marks & designs service

How is the new system faring?

On 13 February 2012 the Intellectual Property¹ Office of New Zealand (IPONZ)² released its new case management system for trade marks and designs, with the aim of introducing a similar system for patents sometime in the future. Further enhancements to the system were launched on 28 March 2012.

The case management system allows both self filers and attorneys to manage trade mark and design cases entirely through the online system, obviating the need for traditional postal correspondence. With Australian attorneys filing thousands of trade mark and design applications directly into New Zealand every year, the changes need to be understood across both jurisdictions.

Key features of the new system include:

• All correspondence is sent electronically
• Applications are managed from a personal IPONZ inbox
• Contact information can be more readily updated by the agent
• Progress of applications can be reviewed online
• Cases before the Hearings Office can be managed online

While the vast majority of the features provided by this update are a welcome improvement over the previous system, the roll out of the new system has not been without its challenges.

Changes to online trade mark searching have had a significant impact. While the new case management system has many forward thinking features, in a number of ways the searching facility is a step backwards. IPONZ's previous online searching was relatively sophisticated in that it allowed high level of searching with complex bespoke search operators. It also allowed for straight forward manipulation of search data. The new system allows searching with only the most basic of Boolean operators and the search data is more difficult to batch process.

The changes to the online search³ functions are numerous and many changes, which at first may appear inconsequential, have the potential for major repercussions. For instance, IPONZ has removed the "pseudo" search functionality from the basic trade mark search field. This change reduces the likelihood that an inexperienced user will locate marks that are similar, but not identical, to the mark being searched.

As a result of these changes, our firm's experienced searching team has reported that comprehensive trade mark searches are now taking twice as long to process as was previously the case. These delays have resulted from the reduction in search operator functionality and also the format in which the search results data is provided.

In line with its goal of a paper free office, IPONZ has also phased out the practice of providing original certificates of registration for trade marks or certified copies of applications for corresponding overseas convention applications. The writer recently secured a convention document under the new system. To our surprise the "certificate" consisted of a .pdf document with an associated online validation process. When this document was provided to a Chinese associate for the purposes of establishing a claim to convention priority we were informed that the .pdf document was not sufficient under Chinese practice. We are currently working with IPONZ to resolve this issue.

A significant problem for agents with a large number of authors and cases has been the requirement of a New Zealand iGovt login. The iGovt login is a "super-user" login which allows access to a number of New Zealand Government websites. The main issue with the iGovt login is that it was not designed exclusively for use with the IPONZ case management system. As a result, its introduction has lead to a significant administrative burden for larger firms.

Each firm user must now possess its own iGovt login and each matter initiated by that user is associated with that login. The connection between a user and a case may only be changed by an administrator from the associated agent/owner or by IPONZ itself. The importance of this issue is heightened by the fact that, as of 13 February 2012, all correspondence is only available online. Any parties dealing with a large number of New Zealand trade mark or design applications have had to allocate individual "tasks" and "discussions" for cases filed under the previous system to authors within their firms. The complexities of this system, and the absence of any physical correspondence, are likely to affect self-filers and inexperienced users who do not appreciate the importance of maintaining a direct line of communication with IPONZ.

Even though the system has been active for only a few months there have been some positive changes:

• The time frame for processing simple changes such as name and address amendments or withdrawing requests for deferment of acceptance have been greatly reduced.
• Inconsistencies in owner data, especially those owners with large portfolios, is more readily apparent.
• The user interface in the IPONZ inbox has many advantages including the ability to easily determine upcoming deadlines.
• The ease of access to historical documents for particular cases.

Given the significance of the changes made to the trade mark and design processes undertaken by IPONZ, it is not surprising that the changeover has presented challenges to practitioners, applicants and examiners alike. In this regard the larger firms within the New Zealand profession have been taking proactive steps to air their mutual concerns over many of the issues presented by the new system. To IPONZ's credit, it has been responsive to the issues raised and has been working hard to address those concerns and make or schedule upgrades on what it considers to be the most pressing issues.

Hopefully, the benefits of the new system will eventually outweigh the teething issues presented by the changeover and the limitations of the new system. However, anyone not familiar with the IPONZ practice and processes should take particular care when dealing with the new case management system. For those still preferring traditional correspondence, engaging a New Zealand based associate will ensure they navigate the ups and downs of the new system on your behalf.

Takeaway Tips from those using the system:

• The system is still undergoing changes as problems are ironed out. Don't be surprised if the system changes in small ways over the next few months.
• Trade mark compliance reports issued under the new system will provide instructions on how to respond using the online system. Reports that predate the new system don't include such instructions, but responses still need to be filed using the new online system.
• New divisional applications and amendments to good specifications need to be amended online. Our firm has found requests sent by letter will be declined.
• An authorisation of agent will need to be uploaded before applications can be processed online.
• Evidence of use for trade mark applications is filed online only. No hard copies should be sent.
• There are some navigational quirks to the system. For example, if you need to go back a step you can't use the back button on your browser, you need to close the window.

Footnotes

¹ Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

²The Intellectual Property Office of New Zealand. IPONZ (formerly called the Patent Office) is a Government agency that is part of the Ministry of Economic Development and is responsible for the examination, granting/registration and administration of registrable intellectual property rights such as patents, designs and trade marks.

³A review of patent databases to look for relevant published patent specifications. Typically the search will be performed with respect to particular jurisdictions. Patent searching can be carried out for a number of reasons. The most common reason is to determine whether a party has freedom to operate in particular countries, in which case the search will only be concerned with patent applications and granted patents which remain in force in those countries. Patent searching may also be conducted to identify relevant prior art which can be used to support a patent opposition/revocation, or by an examiner during examination of a patent application.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.