Trade Marks (International Registration) Amendment Regulations 2025
2025/21
Trade Marks (International Registration) Amendment Regulations 2025
Cindy Kiro, Governor-General
Order in Council
At Wellington this 24th day of February 2025
Present:
Her Excellency the Governor-General in Council
These regulations are made under sections 199(1)(m) and 199A of the Trade Marks Act 2002 on the advice and with the consent of the Executive Council.
Regulations
1 Title
These regulations are the Trade Marks (International Registration) Amendment Regulations 2025.
2 Commencement
These regulations come into force on 27 March 2025.
3 Principal regulations
These regulations amend the Trade Marks (International Registration) Regulations 2012.
4 Regulation 30 amended (Effects of international registration where trade mark is also registered under Act)
(1)
In regulation 30(1)(c), after “all”
, insert “or some of”
.
(2)
Replace regulation 30(2) and (3) with:
(2)
The protected trade mark or international registration must, despite regulation 20(2), be treated as being registered under the Act as of the date of registration of the registered trade mark in relation to,—
(a)
if all the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration, all those goods or services; or
(b)
if only some of the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration, only those goods or services.
(3)
For the purposes of determining whether the protected trade mark or international registration has priority, it must be treated as having the date of application of the registered trade mark (taking account, where appropriate, of the priorities claimed in respect of the registered trade mark) in relation to,—
(a)
if all the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration, all those goods or services; or
(b)
if only some of the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration, only those goods or services.
(3)
In regulation 30(5)(a), after “in relation to”
, insert “all or some of”
.
(4)
After regulation 30(6)(d), insert:
(e)
the goods or services in relation to which the protected trade mark or international registration is to replace the registered trade mark.
Rachel Hayward,
Clerk of the Executive Council.
Explanatory note
This note is not part of the regulations but is intended to indicate their general effect.
These regulations, which come into force on 27 March 2025, amend regulation 30 of the Trade Marks (International Registration) Regulations 2012 (the principal regulations).
The principal regulations give effect in New Zealand to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol).
Regulation 30 sets out the effects of an international registration where the trade mark is also registered under the Trade Marks Act 2002 (the Act). Regulation 30 applies only if all the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration. If regulation 30 applies, the protected trade mark or international registration must be treated as being registered under the Act. The Commissioner must, on the application of the holder of the protected trade mark or international registration, note in the register that the international registration replaces the registered trade mark.
These regulations amend regulation 30 to implement changes to the Madrid Protocol. The amendments extend the application of regulation 30 to situations where some of the goods or services in respect of which the registered trade mark is registered are protected under the protected trade mark or specified in the international registration. Where only some of the goods or services are protected or specified, the protected trade mark or international registration will only be treated as being registered under the Act in relation to those goods or services. Also, the holder of the protected trade mark or international registration will be able to apply for the international registration to replace the registered trade mark in relation to only some of the goods or services.
Date of notification in Gazette: 27 February 2025.
These regulations are administered by the Ministry of Business, Innovation, and Employment.