3.2 Claiming convention priority

Section 36(1) of the Act states:

A person who has applied for the registration of a trade mark in a convention country (whether before or after it became a convention country), or his or her legal representative or assignee, is entitled to registration of his or her trade mark in priority to other applicants, and the registration has the same date as the date of the application in the convention country if the application is made within 6 months after the date of the convention country application.

Therefore, an applicant may claim a priority date that is earlier than the date of filing in New Zealand where:

1. An application has been made in a convention country in respect of the same trade mark;
2. The applicant who files the New Zealand application is either the same applicant or the legal representative or assignee of the applicant who filed the convention country application; and
3. The New Zealand application is filed no later than six months after the date of filing of the convention country application.⁷ If the six-month period ends on a day when IPONZ is not open for business, the six-month period is extended until the next working day.⁸

Section 36(2) of the Act states:

Subsection (1) applies only in respect of the first application for the trade mark that is made in a convention country by a person and does not apply to any subsequent applications for the trade mark by that person.

The convention country application must be the first application for the trade mark made by the applicant in any convention country.⁹

Section 36(3) of the Act states:

The use of the trade mark in New Zealand during the 6-month period referred to in subsection (1) does not affect the priority of the application for the registration of the trade mark to which the convention country application relates.

Therefore, the use of the trade mark in New Zealand during the convention priority period does not affect the priority of the convention application.

Footnotes

⁷The six-month period is calculated very simply: the month moves ahead by six months while the day remains unchanged. For example, where convention priority of 1 February 2002 is claimed, the six month period commences on 2 February 2002 and concludes on 1 August 2002. See section 29 of the Interpretation Act 1999 for the definition of “month”, and section 35(2) of the Interpretation Act 1999 for the definition of “a period of time described as beginning from or after a specified day”. As explained in The Laws of New Zealand, a calendar month is “a period which begins on any day of a calendar month, and which ends on the day immediately preceding the numerically corresponding day of the next calendar month” (The Laws of New Zealand, ‘Time’ para 5, Butterworths of New Zealand, 1994).
⁸Section 35(6) of the Interpretation Act 1999
⁹Section 36(2) of the Act.