On December 10 2012 the Madrid Protocol takes effect in New Zealand and can be designated by overseas companies wishing to protect their brands in New Zealand.
New Zealand practitioners anticipate an increase in filings from overseas businesses designating New Zealand in international registrations. International businesses with an interest in the Australian market may take advantage of the streamlined application process via Madrid Protocol to now designate New Zealand. The New Zealand market is a natural extension for businesses with a presence in the Australian market.
The Intellectual Property Office of New Zealand (IPONZ) estimates that 70% to 80% of New Zealand designations will be accepted without objections being raised during the examination phase. This is based on the reduced number of classification/specification objections that are anticipated under designations via the Madrid Protocol. This may result in increased post-acceptance activity including oppositions and revocations.
Declarations made by New Zealand under the Madrid Protocol include:
- Extension to 18 months of the refusal period (Article 5(2)(b));
- Possible official notification of refusals based on an opposition after the 18-month time limit (Article 5(2)(c));
- Individual fees for New Zealand designations (Article 8(7)(a));
- Declaration of intention to use the mark (rule 7(2)) – an arguably increased opportunity for attack over national New Zealand applications/registrations; and
- Recording of licenses not provided for in the domestic law, so that the recording of licenses in the international register has no effect (rule 20bis(6)(a))
Regulations governing operation of the international registration system were gazetted in New Zealand on November 8 and key points are:
- New Zealand address for service required when responding to a provisional refusal or undertaking a proceeding. Proceedings may include opposition, revocation or enforcement proceedings; and
- New Zealand will be the first to have a 100% electronic system including the MM2 application form. If past experience with New Zealand's electronic system is indicative, there may be some difficulties, particularly for overseas practitioners.
Many of New Zealand's key trading partners are already members of the Madrid Protocol System. We are experiencing strong interest from New Zealand business looking to utilise the international advantages offered by the Madrid Protocol system to protect their trade marks in overseas markets. There are advantages and disadvantages to international registrations and while we expect to recommend the Madrid System in some cases, there will be others where national rights remain appropriate.
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| Philip Thoreau |
Alison MacKenzie |
Baldwins
Level 14, Baldwins Centre
342 Lambton Quay, Wellington
New Zealand
Tel: +64 4 472 1094
Fax: +64 4 473 6712
enquiries@baldwins.com
www.baldwins.com