Thursday, November 15, 2012

New Zealand set to join Madrid Protocol

Madrid _Gran Vía-Montera
New Zealand is about to align its trade mark system with that of our major trading partners Australia, United Kingdom, China, United States, Japan and the Republic of Korea.

How it works

The Madrid Protocol system will come into force in New Zealand on 10 December 2012. We expect it will benefit New Zealand businesses with a strong export focus.

At the moment Kiwi businesses wanting to protect a trade mark internationally have to file separate national trade mark applications for each country or territory of interest. They must also comply with each country's specific requirements, which include appointing agents in each country, filing in foreign languages and dealing with local trade mark offices.

Under the Madrid Protocol system, trade mark owners will be able to file a single international trade mark application in English, through the Intellectual Property Office of New Zealand (IPONZ), and select the countries they want trade mark protection in, as long as those countries are also members of the Madrid system.

If no objections are raised by the trade mark offices of the countries in which protection is sought, there will be no need to appoint local agents. After a specific period of time, the trade mark will simply be deemed registered in these countries.

At this stage 87 countries have signed up to the Madrid Protocol. Several new countries are expected to join over the next 12-18 months, opening up even further possibilities for New Zealand exporters.

Tidying up the register

The new system will establish a conversion process for old trade mark registrations not classified under the Nice Classification system. Under this process the Commissioner will be able to initiate conversion of these registrations to the current edition of the Nice Classification system.

The conversion process will commence with the Commissioner writing to the owners of the registrations informing them of an intention to convert and the proposed form of conversion. The Commissioner's letter will set a deadline for response of one month from the date of the letter.

The owner of the registration will then have the option of accepting the conversion or proposing an alternative form of conversion. If there is no response from the owner, the registration will be converted as proposed. If the owner proposes an alternative form, the commissioner will determine the form of conversion. If the owner disagrees with the form of conversion, they will have the option of requesting a hearing.

The online angle

In almost all circumstances communication with IPONZ is going to be made electronically through their online case management facility. However, the regulations also allow a mechanism for the Commissioner to approve alternative filing methods in certain exceptional situations. IPONZ has indicated they intend to publish a practice note which will give further guidance on the situations this might cover.

It's good to see that there will be exceptions in some circumstances. Stakeholders will not always be able to use the online case management facility. There will be times when the IPONZ system is not available and so it is important to have a manual process as a fallback position.

Photo courtesy of author ferlomu under Creative Commons licence.

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