Newsletter – January 2020

In this January Newsletter:

  • New Madrid Protocol Countries
  • New Zealand Practice Update
  • Waitangi Day
  • Zone’s Intern

New members of the Madrid System in 2019

The Madrid Protocol System allows New Zealand trade mark owners to file their trade mark in many countries around the world, in a cost effective and streamlined way. Many of our closest trading partners are members of the Madrid system including Australia, China, the EU, Japan and the United States.

In 2019, Canada, Brazil, and Malaysia became the latest countries to join Madrid, bringing the total number of members to 106 covering 122 countries.

According to the World Intellectual Property Organisation (WIPO), the 122 Madrid Protocol countries represent over 80% of world trade.

2019 also marked the 30th year of the Madrid Protocol and in November, WIPO received its 1.5 millionth Madrid Protocol registration.

If you are trading internationally or thinking about expanding overseas and would like to file your trade mark overseas, contact Zone today.

New Zealand Practice Update

Trade Mark Expiration and Grace Period

The Regulatory Systems (Economic Development) Amendment Act 2019 came into force on 13 January 2020 and has amended the Trade Marks Act 2002.

One key change to be aware of is the treatment of expired marks. The grace period for renewal of expired trade marks has reduced from twelve months to six months. When a mark reaches its renewal date and is not renewed, its status will change to “registered (past expiry date)” and the owner will have six months to renew the registration instead of the previous twelve months.

Marks that were already in the grace period prior to these changes taking effect are renewable using the current procedure. The previous grace period of twelve months will still apply to these marks.

It is now also possible to perform actions on a mark which is in the grace period (such assigning the mark to a new owner) and for third parties to perform actions on a mark (such as non-use revocation proceedings).

Zone is happy to help you with any questions you might have regarding trade mark renewal.

New Trade Mark Fees

The Intellectual Property Office of New Zealand is changing some of its trade marks fees with effect from 13 February 2020.

Renewal fees

The renewal fee of NZ$350 per class will decrease to NZ$200 per class. This applies to renewals filed on or after 13 February 2020.

Application fees

The official fee will reduce from NZ$150 to NZ$100 per class. This applies to applications filed on or after 13 February 2020.

Waitangi Day

Our offices will be closed on Thursday, 6 February 2019 for Waitangi Day.

Please note the Intellectual Property Office of New Zealand will also be closed to observe Waitangi Day, therefore any marks filed on this day will receive the date of the next open day as the official filing date.

JustineZone’s Intern

Zone again had the pleasure of hosting an International Intern from October through to the end of the year.

Justine is a law student from Brittany, France. She learnt extensively about Intellectual Property Law during her time here.