IPONZ – New processing timeframes for applications and correspondence

In IP, IPONZ practice, New Zealand, trade mark on July 6, 2010 at 6:38 pm

The Intellectual Property Office of New Zealand (IPONZ) has introduced new processing timeframes for some applications and correspondence effective 1 July 2010 – “While the turnaround times have increased in some areas, IPONZ will seek to maintain the efficient timeframes that clients have learnt to expect and have enjoyed from IPONZ”.
If you wish to check current processing timeframes see here

The timeframe for examining trade mark applications has been extended from 5 working days to 15 working days.

On the one hand I think that this is a good move. It was apparent that the examiners were under much pressure to meet the 5 day turnaround which did mean that objections that should have been raised in that first report were missed from time to time increasing the time and cost to prosecute an application.

On the other hand, if the first compliance report issues 15 working days after the application is examined, then the applicant will have a very short period of time to add classes to the application to cover wrongly classified goods and services. Regulation 43
of the Trade Marks Regulations 2003 provides that:

Additional classes may be added after filing
(1) An applicant for registration of a trade mark may apply to the Commissioner for a class or classes to be added after the application has been filed.
(2) The Commissioner may allow the addition of a class if—
(a) the application for addition is made within 1 month after the application for registration is filed; and
(b) the application is accompanied by the fee prescribed for an application to register in 1 class; and
(c) the goods or services to which the additional class or classes relate are within the original specification.
(3) The Commissioner must not allow an application for addition if the applicant has previously deleted the goods or services to which the additional class relates from the application for registration.
(4) The Commissioner must not extend the deadline in subclause (2)(a).

Thus, under IPONZ’s new practice, applicants will now be left with as little as 10 days in which to apply to add an extra class to an application. It is intended that the one month period allowed by Regulation 43 be amended but this will of course require amendment of the Regulations by Parliament.


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