The Trade Marks Amendment Act 2011 – Importance of Registering Your Trade Marks Now

The Trade Marks (International Treaties and Enforcement Amendment) Bill received royal assent on 15 September 2011 and is now called The Trade Marks Amendment Act 2011.

Upon enactment, a number of provisions came into force including allowing New Zealand to use the latest edition of the Nice Classification of Goods and Services. When making an application to register a trade mark, any applicant must specify which goods and/or services the trade mark is in respect of (with each good/service falling within a different class in line with the Nice Classification system).

The Act is important as it allows the Governor General to make regulations for the purpose of giving effect in New Zealand to the Madrid Protocol. Once these regulations are made, it will allow New Zealand trade mark owners to have their trade mark protected overseas by filing one application with the Intellectual Property Office of New Zealand and designating other countries (that are parties to the Madrid Protocol) in which they wish to gain protection. Likewise, applicants from other countries, can also designate New Zealand as a country in which they wish their trade marks to be registered.

The effect of this is that it will be a lot easier for overseas entities to achieve registration of their trade marks in New Zealand. Accordingly, we strongly suggest that if you have a trade mark, you consider applying to register it now with the Intellectual Property Office of New Zealand (before overseas entities have the ability to register their trade marks in New Zealand through the Madrid Protocol).