This applies to trade marks in NZ and in overseas markets

If you own trade marks in New Zealand and/or overseas, you need to be aware that new regulations, which among other things cover the adoption of the Madrid Protocol, mean the process and cost of securing ownership of your brands will change dramatically for New Zealanders from Monday 10th December.

The new regulations have four main aims, namely:

  • updating the fees payable to IPONZ;
  • enabling New Zealand to meet its commitments under international agreements, namely
    1. the MADRID PROTOCOL (which allows "international" registration of trade marks),
    2. Singapore Treaty (which attempts to align different practices in IP offices where possible) and
    3. Nice Agreement (which classifies different goods and services into different classes);
  • making it mandatory to communicate electronically with IPONZ; and
  • clarifying and streamlining miscellaneous administrative procedures.

Revision of fees

The good news is that, unlike most other IP offices, IPONZ does not propose to charge a handling fee for applications lodged using the Madrid Protocol system. The Madrid Protocol system allows New Zealanders to use IPONZ as an "office of origin" to file overseas applications and avoid certain administrative costs and procedures in each national IP office.

However, existing fees for dealing with your New Zealand trade mark will be increasing. The increases include:

  • Application fee – increase from $100 to $150 per class

In its May 2012 discussion document, IPONZ noted that this fee has not increased since 1999 and even with the increase, it still won't cover IPONZ's administrative costs. However, the Cabinet Paper in which the new fee was proposed stated that that the intention is to keep the fee as low as possible in order to encourage users to file for registration "rather than exposing them to risks of infringement and an inability to fully realise the value of their intellectual property".

  • Renewal fee – increase from $250 to $350

In contrast to the application fee, this figure has been set at a higher amount than the actual administrative costs to IPONZ in recognition of the value of extending a trade mark registration for more than 10 years. It is also designed to act as a disincentive to users renewing trade mark registrations which are not in use, in order to clutter the register with defensive registrations.

  • Hearing Office costs

The fee for lodging an opposition to registration of an application, or applying for a declaration of invalidity of a trade mark registration, will increase from $300 to $350 in order to meet the Hearings Office's rising costs. Previously there was no fee for filing an application for revocation - a common strategy for overcoming a prior registration that does not seem to be in use but which has been cited against a new trade mark application. However a new fee of $350 has been added in recognition of the costs incurred by the Hearings Office in dealing with these applications. Costs for a Hearing will also increase from $750 to $850 per party.

These fees will be reviewed again in 2015/2016 once the full effect of New Zealand's entry into the Madrid system can be assessed.

Commitments under international agreements

The main amendments to New Zealand practice under international commitments are:

the new process for converting the less than 300 registrations that were classified before 1950 under New Zealand's classification system, into the internationally recognised Nice Classification system; and

the ability to get a two months extension after a deadline expires in certain circumstances in accordance with the Singapore Treaty.

A new set of regulations has also been introduced to govern Madrid Protocol applications, entitled the Trade Marks (International Registration) Regulations 2012.

Mandatory electronic environment

From 10 December, all communication with IPONZ must be by electronic means and the website has been revised so that correspondence can be uploaded directly to each application.

Concerns have been expressed about this proposal given the frequent downtime on the website and potential for electronic gremlins. However, the Ministry notes that IPONZ has the ability to declare a "closed" day if it has any unexpected problems, enabling users to still meet a deadline if they can only file the necessary documents on the next working day.

Coincidentally, on 4 December the IPONZ website was down for much of the day forcing IPONZ to send out an email alert to its main users confirming that correspondence could be sent by email. The email also stated that if a critical date had been missed as a result of the outage, IPONZ would assess each request for an extension of time on a case by case basis. It is yet to be seen what the repercussions of this outage will be. For example, what are the assessment criteria that will be used by IPONZ, and how will those who didn't get the email notification be handled?

IPONZ was also down from 7pm on 6th December until 10th December preparing for the launch of Madrid, therefore effectively suspending all patent, design and trade mark operations and hamstringing any clearance searches during this time.

Miscellaneous Amendments

A number of further amendments which were recommended in the Cabinet Paper have not been included in the amendments. At a meeting on 15 November 2012, IPONZ representatives confirmed that it was not possible to finalise these regulations before the deadline for implementing our commitments under the Madrid Protocol and Singapore Treaty, and these regulations are therefore intended to be in force by mid 2013.

The amendments mainly relate to the administrative improvements for the IPONZ examination team and the Hearings Office, clarification of vagueness or uncertainty in the wording of certain regulations, and the reduction of compliance costs for businesses.

In summary

All New Zealand business owners of trade marks should make sure they are prepared for changes to the process and increased costs for owning and enforcing their brand / trade mark rights. If you are not sure of what steps you should be taking, contact a specialist trade mark attorney today.

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.