Managing International Trade Marks in New Zealand

The Madrid Protocol allows brand owners to protect their trademarks in multiple jurisdictions through a single application filed with the World Intellectual Property Organization (WIPO). New Zealand is a party to this protocol, meaning international businesses can designate New Zealand for protection, and conversely, New Zealand businesses can use the system to go global.

However, securing an International Registration (often referred to as an NZD when designating New Zealand) is not always a passive process. Just like local applications, international marks can face challenges. They can be opposed by competitors or later attacked through revocation or invalidity actions.

The Legal Framework

Proceedings involving International Trade Marks are governed by a combination of domestic and international rules. The primary legislation includes the Trade Marks Act 2002 and the Trade Marks Regulations 2003, which apply to all marks in New Zealand.

However, these are overlaid by the Trade Marks (International Registration) Regulations 2012. These specific regulations tweak the standard rules to ensure New Zealand meets its obligations under the Madrid Protocol. That said, New Zealand law applies unless the International Regulations provide otherwise or if there is an inconsistency with the Madrid Protocol itself.

Initiating Proceedings

If you are looking to challenge an International Trade Mark, whether through opposition, revocation, or invalidity, the process begins online. IPONZ conducts these proceedings through its digital Case Management facility.

The Role of the Local Agent

One of the most common hurdles for international rights holders is the lack of a local presence. When you file an International Application designating New Zealand, you are not required to have a New Zealand address for service. This makes the initial filing process streamlined and cost-effective.

However, the moment a proceeding is filed against that mark, the situation changes. If a rights holder wishes to defend their mark against an opposition or revocation, they generally must arrange a local address for service.

IPONZ strongly recommends appointing local counsel. The reasons for this are practical as well as procedural. Local counsel will be familiar with the specific nuances of New Zealand law and IPONZ hearing practices, which may differ from the holder’s home jurisdiction. Furthermore, once a local agent is appointed, IPONZ directs all official communications regarding the proceeding to that agent. This prevents critical deadlines from being missed due to international mail delays or misunderstandings of local timeframes. LexGeneris can assist with that.

Opposing an International Trade Mark

An opposition occurs when a third party tries to stop a mark from being registered after it has been accepted but before it is fully granted.

Extensions of Time

Just as with national marks, a potential opponent might need more time to prepare their case or investigate the conflict. You can request an extension of time to oppose an accepted International Registration. The regulations allow for an extension of one month without needing the applicant’s consent, or up to two months if the applicant agrees.

The notification loop

The opposition process highlights the complex relationship between IPONZ and WIPO. When a Notice of Opposition is filed in New Zealand, IPONZ does not simply email the brand owner. Instead, IPONZ notifies WIPO by sending a “notice of provisional refusal” based on the opposition.

It is then WIPO’s responsibility to inform the international rights holder. WIPO forwards the copy of the provisional refusal to the holder and records it on the International Register.

The counterstatement and deadlines

This is the most dangerous phase for an unrepresented international holder. If they wish to defend the opposition, they must file a counterstatement with IPONZ.

The deadline is strict, i.e. the counterstatement must be filed within two months of the ‘date of refusal’. That said, the ‘date of refusal’ is the date IPONZ transmitted the refusal to WIPO, not necessarily the date the holder received it.

If the holder fails to file this counterstatement on time, the consequence is severe: the International Registration will be refused for the goods or services that were opposed. The opposition proceeds exactly like a national opposition, with all evidence and correspondence exchanged directly through the IPONZ portal. LexGeneris can carry out the whole process on your behalf.

Revocation, Invalidity, and Other Proceedings

Once a mark is protected, it can still be challenged. Competitors might apply for revocation (usually based on non-use), invalidity (arguing the mark should never have been registered), rectification, or cancellation.

The notification process here is starkly different from the opposition process.

When IPONZ receives an application for revocation or invalidity against an International Registration, they do not notify WIPO immediately. Instead, IPONZ contacts the rights holder directly, using the contact details provided in their original international application.

This direct line of communication places a burden on international holders to ensure their WIPO contact details are up to date. Just as with oppositions, if the holder wishes to defend the registration, they must appoint a local agent to handle the proceedings and file documents through the IPONZ system.

The proceedings then run according to the standard national processes. Whether it is a non-use argument or a dispute over distinctiveness, the evidence rounds and hearing procedures remain the same as they would for a New Zealand domestic mark.

The Final Outcome

For all types of proceedings, whether oppositions, revocations, or cancellations, IPONZ generally stops communicating with WIPO while the legal battle is ongoing. The international body is only brought back into the loop once a final outcome is reached.

A “final outcome” means the proceeding has concluded either by a decision or operation of law, and all appeal rights have been exhausted.

At that stage, IPONZ takes two actions. First, they update the New Zealand Trade Marks Register to reflect the result, i.e. whether that means the mark is registered, cancelled, or rectified. Second, they notify WIPO of the result. WIPO then records this final status on the International Register.

Why work with us?

Navigating the Madrid Protocol interface in New Zealand requires a clear understanding of when to communicate with WIPO and when to deal directly with IPONZ. While the substantive law remains consistent with national standards, the procedural pathways for notification and representation are distinct.

For international entities, the key takeaway is the necessity of local representation. The system is designed to facilitate easy application, but defense requires boots on the ground. For local businesses, understanding these mechanisms provides a roadmap for effectively challenging conflicting international rights. Working with IP experts can be crucial to navigate the process.

Contact us today for a free consultation.