Countdown to Madrid Protocol implementation - International Law Office

In May 2012 the Intellectual Property Office of New Zealand (IPONZ) issued a discussion document relating to the amendments to New Zealand's regulations on trademarks that will be necessary to implement the Madrid Protocol system.

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 acquire a bundle of rights, consisting of an international registration and protection in one or more other designated countries.

The discussion document raised three issues in relation to the implementation of the Madrid system: the applicable fees, 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 trademarks. For the third, IPONZ is recommending an 18-month (rather than 12-month) period in which to notify the World Intellectual Property Office (WIPO) of a refusal of the application. This would also allow a trademark application to be refused due to an opposition even beyond the 18-month limit. These solutions seem straightforward and sensible.

IPONZ has also released details of its proposed timetable to December 2012, 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 WIPO. 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 2012.

For further information on this topic please contact Victoria Watts at A J Park by telephone (+64 9 356 6996), fax (+64 9 356 6990) or email (victoria.watts@ajpark.com).