Thursday, 7th June, 2012

Update on Madrid Protocol implementation in New Zealand

The Intellectual Property Office of New Zealand (IPONZ) has issued a discussion document relating to amendments to the Trade Marks Regulations 2003 that will be necessary to implement the Madrid Protocol system of International registration of trade marks.

Once this system is in place, it will be possible to file through IPONZ an international registration designating a number of overseas territories into which the registration should extend.  An applicant using the system will end up with a bundle of rights consisting of an international registration and protection in one or more other designated countries.

The three issues raised by IPONZ in this discussion document concerning the implementation of the Madrid system relate to the fees applicable, the requirement of an intention to use, and the period during which an application can be refused.

For the first two of these issues, IPONZ is seeking to replicate the requirements and costs for filing national trade marks.  For the third, IPONZ is recommending an 18 (rather than 12) month period in which to notify the World Intellectual Property Office (WIPO) of a refusal of the application.  This would then also allow a trade mark application to be refused due to an opposition even beyond the 18 month limit.

These solutions to these issues put forward by IPONZ seem straightforward and sensible.  The discussion document is available here and submissions are invited before 8 June 2012.

IPONZ has also released details of its proposed timetable between now and December, when the Madrid Protocol system should go live in New Zealand.  This includes four months of system testing, consultation on the regulations and final drafting, followed by user training in October and November.

Once the regulations are finalised, the last step will be for IPONZ to deposit an instrument of accession with the World Intellectual Property Organisation (WIPO) in Switzerland.  IPONZ hopes to be in a position to file the instrument of accession in September. Within three months of this, New Zealand should be accepted into the system, and IPONZ is preparing itself to accept Madrid Protocol filings by the end of this year.