What is the Deemed Date of Registration for International Registrations Designating New Zealand?

In this article I argue that priority is irrelevant to the deemed date of registration for international registrations under the Madrid Protocol that designate New Zealand. The Intellectual Property Office of New Zealand (IPONZ) disagrees, taking the view that international registrations that designate New Zealand and which have a right to a priority date will have that priority date as the deemed date of registration.

The deemed date of registration is important as it is the date from which a registered mark’s exclusive rights, as specified in section 10 of the Trade Marks Act 2002, commence. The deemed date of registration is always earlier than the actual date of registration, meaning that the owner of a registered trade mark can retrospectively sue back to a date before registration was achieved, although they can only do that once the mark is registered.

Prior to NZ Joining the Madrid Protocol
The Trade Marks Act 2002 (Act) was enacted before New Zealand joined the Madrid Protocol. The definition of the deemed date of registration is given in section 5 as follows:

deemed date of registration means,---
(a) in the case of a trade mark to which section 36 applies, the date of the application in the convention country (subject to any enactment relating to international arrangements):
(b) in any other case, the date of the application

In other words the deemed date of registration is either the convention filing date if convention priority applies, or the New Zealand filing date in all other cases.

After NZ Joined the Madrid Protocol
When New Zealand joined the Madrid Protocol it was enacted into our legislation by way of the Trade Marks (International Registration) Regulations 2012 (2012 Regulations) and section 199A of the Trade Marks Act 2002.

Regulation 9 of the 2012 Regulations specifies that once a New Zealand designation of an international application under the Madrid Protocol achieves ‘Protected’ status it has the same rights and remedies as a registered mark, with those rights commencing as per regulation 20(2) of the 2012 Regulations.

9 Effect of protected international trade mark (New Zealand)
(1) The holder of a protected international trade mark (New Zealand) has, subject to these regulations, the same rights and remedies conferred on an owner of a registered trade mark by the Act and the Trade Marks Regulations.
(2) For the purpose of applying section 10 of the Act, the rights conferred on the holder of the protected trade mark take effect on and from the date that the protected trade mark must be treated as being registered under regulation 20(2).
…

Although phrased differently regulations 20(2) and 20(2A) of the 2012 Regulations effectively specify the deemed date of registration for New Zealand designations under the Madrid Protocol. The effect of these provisions is that the deemed date of registration is either:

(i) the date of international registration; or
(ii) the date of subsequent designation; or
(ii) the date that the protected trade mark was corrected under regulation 20(2A).

20 Protections
(1) The protections referred to in regulations 19 and 19A are that—
(a) the trade mark must be protected as a protected international trade mark (New Zealand); and
(b) in a case where a refusal applies in respect of some of the goods or services, protection must apply only in relation to the remaining goods or services.
(2) A trade mark that is protected must be treated as being registered under the Act on and from—
(a) the date of the international registration, in the case where the request for extension of protection to New Zealand is mentioned in the international application; or
(b) the date on which a request for extension of protection to New Zealand is recorded in the international register, in the case where the request is made subsequent to the international registration.
(2A) A protected trade mark that is corrected must be treated as being registered, as corrected, under the Act—
(a) on and from the date that is 3 months after the date of publication in the Journal under regulation 20M; or
(b) if a notice of opposition is filed in relation to the correction, on and from the date on which the event described in regulation 19A(1)(b)(iii) or (iv) has occurred.
(3) Subclause (2) is subject to regulation 30.

The definition of the deemed date of registration given by regulations 20(2) and 20(2A) is only compatible with part (b) of the definition in the Act – namely the above listed 3 alternatives would each qualify as the mark’s filing date. Regulations 20(2) and 20(2A) make no mention of any right to priority affecting the deemed date of registration.

Nonetheless, IPONZ’s view is that the ‘deemed date of registration’ field on the IPONZ database for an international application that claims priority from the ‘home’ mark should be the priority date. IPONZ considers that regulation 12 of the 2012 Regulations provides the basis for using the priority date.

12 Priority
(1) Section 36 of the Act entitles the holder of an international registration designating New Zealand to the registration of his or her trade mark in priority to other applicants.
(2) The manner of claiming the priority conferred under section 36 of the Act must be determined in accordance with the Madrid Protocol and the Common Regulations.
(3) The date on which the holder is entitled to priority is—
(a) the date of the international registration, in the case where the request for extension of protection to New Zealand is mentioned in the international application; or
(b) the date on which a request for extension of protection to New Zealand is recorded in the international register, in the case where the request is made subsequent to the international registration.
Compare: Trade Marks (International Registration) Rules 2000 r 10 (Singapore)

However, regulation 12 of the Trade Marks (International Registration) Regulations 2012 only applies in respect of priority and does not stop regulations 20(2) and 20(2A) from overriding the Act’s definition of deemed date of registration.

Further, regulation 4 of the 2012 Regulations provides that those regulations override the Act and the Trade Marks Regulations 2003 where there is an incompatibility. This is in accord with the general principle in law that international law obligations override national law obligations unless there is a specific statement to the contrary.

4 Application of Trade Marks Regulations and Act to international registrations
For the purpose of these regulations, the Trade Marks Regulations and the Act apply, to the extent applicable and with all necessary modifications, to any holder of an international registration designating New Zealand and any holder of a protected international trade mark (New Zealand), unless and to the extent that—
(a) these regulations provide otherwise; or
(b) any provision of the Trade Marks Regulations or the Act is inconsistent with—
(i) the Madrid Protocol; or
(ii) the Common Regulations.

Hence, regulations 20(2) and 20(2A) override the Act’s definition of the deemed date of registration with the consequence that where an international application claims priority that priority has no relevance for the deemed date of registration. If this is the case then the ‘deemed date of registration’ field on the IPONZ database for applications that designate New Zealand via the Madrid Protocol should be determined as appropriate in accordance with either regulation 20(2) or regulation 20(2A), irrespective of whether priority applies.

Author: Quinn Miller

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