Update on amendments to the Trade Marks Regulations

17 August 2012

Submissions on the Discussion Paper published on 11 May 2012 have been received and considered.

IPONZ intends to implement the amendments to the regulations in December 2012. The amendments to the regulations will be notified in the New Zealand Gazette. We will also be providing updates about the amended regulations via our e-newsletter and website in the lead up to them coming into force.

Madrid Protocol

IPONZ is testing an early version of the Madrid International application form (MM2), which will be integrated into our new case management system in December 2012. We have been visiting clients to preview our electronic Madrid application form, and discuss how we will be certifying Madrid applications as the Office of Origin, and examining incoming designations for protection.

Visit the WIPO website for more information on the Madrid protocol.

Read the Minister Craig Foss’s press statement about Madrid. 

3rd Schedule Registrations and Conversion to the Nice classification

When the amended trade mark regulations come into force any 3rd schedule trade marks still on the Register will be subject to a mandatory conversion process to convert them to the latest edition of the Nice classification.

IPONZ has been running a project to try and encourage owners of 3rd schedule marks to voluntarily convert their marks to latest version of the Nice classification before the amended regulations come into force.

During August, we will again be contacting owners of 3rd schedule marks to try and get them to go through the voluntary conversion process. We strongly encourage owners to respond to our letter by 9 November 2012. This will ensure that we have enough time to process your request for conversion before the amended regulations come into force.

The benefits of voluntary conversion are:

• You will have time to consider the Commissioner’s conversion proposal and reach an agreed converted specification with IPONZ.
• Your mark will have a valid classification schedule so it will come up in trade mark searches. This could reduce the potential for your mark being subject to a trade mark dispute.

Trade marks registered in the 3rd schedule can currently be searched on the IPONZ website. The results can be exported and sorted by owner. Read here on how to search trade marks by class.

If you require further assistance please contact us.

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