International trade mark proceedings

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Intellectual Property Office of New Zealand

Trade Mark Hearings

In this guideline

International trade mark proceedings

The Madrid Protocol

New Zealand is a party to the Madrid Protocol governing the registration of International Trade Marks. The International Trade Mark System is run by the World Intellectual Property Organisation (WIPO).

See international for general information about the Madrid Protocol.

One of the foundation principles of the Madrid Protocol is that International Registrations designating New Zealand or International Registrations protected in New Zealand (hereafter together referred to as an ‘International Trade Mark’) will enjoy the same rights and privileges as a local trade mark application or registration. 1

In keeping with the above principle, proceedings against an International Trade Mark largely mirror that for a national trade mark application or registration. There are some minor modifications which give effect to New Zealand’s obligations under the Madrid Protocol.

Modifications for International Trade Mark proceedings

These modifications to proceedings are set out in the Trade Marks (International Registration) Regulations 2012.

As stipulated in regulation 4 of the Trade Marks (International Registration) Regulations 2012, the Trade Marks Act 2002 and the Trade Mark Regulations 2003 apply, to all proceedings for an International Trade Mark to the extent that:

  • the Trade Marks (international Registration) Regulations 2012 provide otherwise; or
  • any provision in the Trade Marks Act 2002 and the Trade Mark Regulations 2003 is inconsistent with the Madrid Protocol or the Common Regulations under the Protocol.

Governing legislation and Protocol

See here for links to the legislation and Protocol that together govern proceedings for International Trade Marks:

How International Trade Mark proceedings are run

Proceedings against International Trade Marks are, for all intents and purposes, run in exactly the same manner as those for national trade marks.

As such, anyone wishing to initiate a proceeding against an International Trade Mark must do so through the IPONZ Case Management facility. 2 The only difference is that a party wishing to initiate a proceeding should select the option ‘Lodge Proceeding International Trade Mark’, as shown below:

See how to file a proceeding for more information on how IPONZ runs hearing proceedings.

Appointing local counsel

In most instances, international rights holders will not have a local address for service. It is not a mandatory requirement for applications for International Trade Marks designating New Zealand for an extension of protection. However, once a proceeding has been filed against an International Trade Mark the rights holder will need to arrange a local address for service, or appoint local counsel, if they wish to defend the proceeding.

We strongly recommend that international rights holders appoint local counsel to defend International Trade Mark proceedings as they are familiar with New Zealand law and IPONZ hearing practices.

Once local counsel is appointed, IPONZ will send all official communications regarding the proceeding to the right holder’s counsel, and the initiating party, via the IPONZ case management facility.

Oppositions

Section 47, International Regulation 16 and 17, Article 5, Rule 17 (Common Regulations)

A possible opponent can request an extension of time to oppose an accepted International Registration designating New Zealand for protection (hereafter referred to as an NZD) under International Regulation 16(3) by:

(a) One month, without the applicant’s consent; and

(b) Two months, with the applicant’s consent.

The extension request must include the same information as required for an extension to oppose an accepted national trade mark application.

Here is a link to the opposition guidelines, which sets out these requirements.

Once a notice of opposition to an NZD is filed, IPONZ notifies the International Bureau (WIPO) by sending it a notice of provisional refusal to registration based on opposition.

WIPO (not IPONZ) will then inform the international rights holder of the opposition to its NZD by forwarding it a copy of IPONZ’s notice of provisional refusal. WIPO will record the provisional refusal on the International Register, which can be viewed on WIPO’s Madrid Monitor (there is a direct link to the Madrid Monitor entry on the NZD case bibliography page).

If the international rights holder wishes to defend the opposition they must file a counterstatement with IPONZ within 2 months of the ‘date of refusal’, being the date that IPONZ transmitted the provisional refusal to WIPO. 3 Failure to file a counterstatement will result in the NZD being refused for the opposed goods and/or services. 4

In order to file a counterstatement with IPONZ the rights holder will need to appoint local counsel if there is no local address for service recorded for its NZD (as discussed above under the heading ‘Appointing local counsel’). Once local counsel has been appointed, they need to link themselves to the NZD opposition case by recording themselves as the agent for the opposed NZD application case. Only then will they be able to view, and respond to, the ‘file counterstatement’ task.

From this point on, the opposition to the NZD runs in exactly the same manner as an opposition to a national trade mark application. All further documents, correspondence and evidence for the proceeding must be filed through the IPONZ case management facility. 5

Here is a link to the opposition guidelines.

IPONZ does not communicate with WIPO again until there is a final outcome in the opposition. That is, once the proceeding ends either by operation of law or a decision has been issued, and all rights of appeal have been exhausted.

Once there is a final outcome, IPONZ will:

  • update the details of the NZD on the New Zealand trade marks Register to reflect the final outcome of the opposition; and
  • notify WIPO of the final outcome, who also records this on the International Register.

Applications for revocation, invalidity, rectification, cancellation or alteration

Sections 62-64, 65-68, 73-75 and 76, International Regulation 21, Article 5(6), Rule 17 (Common Regulations)

When IPONZ receives an application for revocation, invalidity, cancellation or alteration to an International Registration protected in New Zealand (IRPNZ) IPONZ will notify the rights holder directly using the contact details they provided to WIPO for their international application. IPONZ does not notify WIPO of the proceeding at this stage.

As with oppositions to an NZD, the rights holder must appoint a local agent to defend its IRPNZ if there is no local address for service recorded. All further documents, correspondence and evidence for the proceeding must be filed through the IPONZ case management facility. 6

Once the rights holder has been notified of the proceeding filed against its IRPNZ, the proceeding runs in exactly the same manner as an equivalent proceeding for a national trade mark registration subject to the modifications set out in Trade Marks (International Registration) Regulation 21(2).

Here are links to the guidelines for these proceedings:

IPONZ only notifies WIPO of the proceeding if the final outcome results in the IRPNZ being revoked, invalidated, rectified, cancelled or altered to some extent. 7 That is, once the proceeding ends either by operation of law or a decision has been issued, and all rights of appeal have been exhausted.

Once there is a final outcome, IPONZ will:

  • update the details of the IRPNZ on the New Zealand trade marks Register to reflect the final outcome of the proceeding; and
  • if the proceeding was successful, notify WIPO of the final outcome, who also records this on the International Register.

Footnotes

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