New Zealand signs up to inter­na­tion­al treaty mak­ing trade mark pro­tec­tion easier

In Brief

An impor­tant new devel­op­ment for trade mark pro­tec­tion in New Zealand comes into effect on 1 Decem­ber 2012. We look at what this means for busi­ness­es seek­ing brand pro­tec­tion in New Zealand.

In an impor­tant new devel­op­ment for Aus­tralian busi­ness­es seek­ing reg­is­tered trade mark pro­tec­tion for their brands in New Zealand, the Madrid Pro­to­col and the Sin­ga­pore Treaty will enter into force in New Zealand on 10 Decem­ber 2012. Most of Aus­trali­a’s major trad­ing part­ners are already mem­bers of this system.

This means that Aus­tralian trade mark own­ers will be able to apply for trade mark reg­is­tra­tion in New Zealand more eas­i­ly, and more cheap­ly. It means that an appli­ca­tion can be made in New Zealand (and all oth­er Madrid Pro­to­col coun­tries includ­ing Europe and the USA) using a sin­gle appli­ca­tion through the World Intel­lec­tu­al Prop­er­ty Office, with­out the need to engage trade mark lawyers or agents in New Zealand.

Com­men­tary on the change in New Zealand sug­gests that this moves New Zealand and Aus­tralia clos­er togeth­er with a view to cre­ate a sin­gle eco­nom­ic mar­ket between the two coun­tries. It also aligns with the New Zealand and Aus­tralian Gov­ern­ments’ announce­ment in 2011 for the imple­men­ta­tion of a sim­pli­fied fil­ing and exam­i­na­tion process for patent appli­ca­tions filed in both coun­tries by June 2014. These changes are already tak­ing effect in Aus­tralia with the advent of the ​‘Rais­ing the Bar’ leg­is­la­tion, which comes into effect in its entire­ty in April 2013.

Even if New Zealand is not a sig­nif­i­cant mar­ket for your goods or ser­vices, with these changes, you may want to recon­sid­er whether it is com­mer­cial­ly sen­si­ble to take steps to extend pro­tec­tion in New Zealand.

For fur­ther infor­ma­tion, please con­tact us.

Co-authored by M Hall.