Annual Technical Report on Trademark Information Activities in 2015 submitted by New Zealand

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Where URLs are requested below, it is preferred that either URLs which are likely to remain stable over time (three years or more) are provided, or home (main) page URLs are provided with a short explanation of how to access the corresponding information.

I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE

Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realization. New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks

Since 2012 the Intellectual Property Office of New Zealand (IPONZ) has had a 100% online business model which makes it simpler and easier for businesses to apply for and maintain their intellectual property rights, including patents, trade marks, designs and plant variety rights.   

IPONZ has a programme of work to grow awareness and use of intellectual property in New Zealand. This programme is based on in depth customer research, completed in 2015, which gives IPONZ a better understanding of its customers helping maximise their experience across different channels and systems.

As part of this programme IPONZ also began a project to redevelop the IPONZ website, for implementation in 2016. The new website would have improved content and provide a quicker and easier way to access information to help customers understand and manage their intellectual property. 

IPONZ is working towards the implementation of the Geographical Indications Act in 2016, which will involve new systems and processes for applying and registering a place name or geographical indication for wines or spirits in New Zealand.

Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes

IPONZ received its highest filings on record in 2015, with:

  • 22,122 trade mark applications received, an increase from 20,390 received in 2014.
  • 45,800 trade mark classes received, an increase from 39,472 received in 2014.
  • 241,058 trade marks on the IPONZ register.
  • 18,455 trade marks registrations.
  • 376 international trade mark applications filed using the international trade mark Madrid Protocol system.

Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.

 Following are some useful links to pages from the IPONZ website.

II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs. Availability of the application dossier in electronic form

IPONZ operates a 100% online business model. One of the main features of the model is its online case management facility where customers search, apply and manage all IP cases. All New Zealand trade mark applications must be filed online via this facility.

Other features of the facility include:

    • Self-service options for customers to update and maintain their own contact details.

    • Improved access to, and control over, all of their applications and registrations including the ability to follow an online workflow system to complete applications.

    • The ability to monitor case progression through their IPONZ inbox.

    • Management of their own messages from IPONZ by creating their own subscription for notifications about specific cases or changes to processes.

    • Electronic correspondence and all transactions take place in ‘real time’.

    • Application Programming Interfaces (APIs) that allow customers to build software that connects directly to the IPONZ system.

All case management information connects seamlessly to and from the IPONZ website. All information on the section of the website that relates to trade marks is easily available to customers.

It also has our Trade Mark Practice Guidelines which contain detailed information on our practices and procedures that relate to aspects of the filing, examination and registration of trade marks. We also have detailed information to help customers with their search for existing trade marks and a guide on how to apply for a trade mark.

Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification
(ii) Use of electronic classification systems and pre-defined terms of the classification applied

New Zealand uses the Nice Classification system (currently the 10th edition, introduced on 1 January 2012) which is published by the World Intellectual Property Organization (WIPO). New Zealand also uses the Vienna Classification system as well as additional country specific descriptors set by IPONZ to cover symbols and images related to Māori culture and traditional knowledge. More information on all of these descriptors and classifications can be found on the trade marks search section of our website and in our Practice Guidelines.

New Zealand is a signatory of the Madrid Protocol so that businesses can easily file their trade mark applications in over 90 countries.

III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE

Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online - URLs). Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.

IPONZ’s website is the leading source of information about IP in New Zealand and the key channel for communicating to all our customers. IPONZ’s website is kept up to date and any information that customers need to know features in the news section. Customers can also receive our subscription-based newsletter.

The trade mark section of the IPONZ website has a search function, a step by step guide to the application process and other details to help people get started and manage their trade marks.

IPONZ’s Call Centre is another point of contact for customers to obtain information about trade marks and other intellectual property.

IPONZ is required by legislation to publish the Journal which contains information the Commissioner is required to advertise. It is a monthly publication with general information in PDF format and an online searchable section with all patents, trade marks and designs applications and registrations.

IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements. Administrative management electronic systems (register, legal status, statistics, and administrative support)

The key to IPONZ’s 100% online business model is the case management facility used by staff and external clients for all aspects of IP applications, examinations and maintenance. This facility is an easy to use web interface which seamlessly links with IPONZ’s website. The case management facility:

  • Provides tips on how to complete an application.

  • Enables external users to search, apply for, maintain and protect their IP.

  • Enables internal users to complete the processing and examination of applications.

  • Provides a mechanism to upload documents in real time via the web, to the publicly accessible intellectual property register.

  • Interfaces to other international intellectual property organisations and New Zealand Government agencies.

  • Provides the ability to accept and process payments.

IPONZ uses an automated image recognition tool to conduct trade mark similarity searches on denominations and images when examining a trade mark application. The use of this tool by IPONZ means a more comprehensive and better quality examination.

In addition IPONZ offers a range of Application Programme Interfaces (APIs) that means businesses can build software that connects directly to the IPONZ system. This government-to-business web service is offered to high volume clients, such as law firms, patent attorney firms and renewals agencies so they can submit information directly to IPONZ without needing to use the case management facility.

IPONZ is committed to continual operational improvement so regularly enhances functions in the case management facility to address feedback from internal and external users and to improve the system. These enhancements are communicated to customers regularly, via our website and email for subscribers.   

V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION

Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.

IPONZ produces a range of publications to support and promote the use of trade-marks and intellectual property.

In 2015 IPONZ produced an A4 Guide to Applying for a Trade Mark which steps out the process of applying to register a trade mark, and an infographic on the Different Types of Intellectual Property which provides a snapshot of the ways to protect a name, brand or idea using examples and images.

To help customers with how to file proceedings IPONZ produced Trade Mark Proceedings Guidelines.

IPONZ also created an infographic on how New Zealand businesses are protecting their trade marks around the world through the Madrid Protocol.

In association with IP Australia and Chartered Accountants Australia and New Zealand, IPONZ produced a downloadable guide to the business aspects of intellectual property: Business Briefing: Maximising the potential of Intellectual Property for your business.

Every year IPONZ marks World IP Day. In 2015 IPONZ and the New Zealand Institute of Patent Attorneys partnered to produce a free public seminar on music and intellectual property with an entertaining panel with some of New Zealand’s leading experts in their field.

Cooperation with universities, technology and innovation support centers, etc.  Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.

IPONZ partners with other New Zealand Government agencies, such as New Zealand Trade and Enterprise and www.business.govt.nz, an agency that supports small to medium sized businesses, ensuring there is relevant and up to date IP content on their channels.

IPONZ also works in collaboration with other Government agencies in a range of ways, including attending and supporting small business roadshows, a series of events held around the country each year where people from across different business-focused government agencies give an overview of the support available to them.

In addition IPONZ operates a Trade Mark Technical Focus Group, which is a forum for communication between client representatives and IPONZ relating to technical trade mark IP services in New Zealand. It meets regularly to discuss feedback on proposed practices and upcoming publications.

IPONZ also operates a Hearings Technical Focus Group which covers matters related to patent and trade mark proceedings and hearings.

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

International exchange of trademark information in machine-readable form (e.g., Official Gazettes). Participation in international or regional activities and projects related to trademark information

IPONZ is a member of multilateral intellectual property bodies and participates on a number of WIPO committees and working groups, including in 2015 attending the WIPO General Assemblies, meetings of the Patent Cooperation Treaty Working Group and the Madrid Working Group and Madrid Roundtable. 

On a bilateral level, IPONZ fosters international relationships with other IP offices. Under the Single Economic Market concept, the New Zealand and Australian Governments are working to remove regulatory barriers to businesses operating in both markets. As part of this the Governments are working together, via the Trans-Tasman Outcomes Implementation Group (TTOIG) to introduce a single regulatory framework for patent attorneys. 

A bilateral arrangement also exists between IPONZ and the State Intellectual Property Office of the People’s Republic of China (SIPO) to strengthen cooperation on operational intellectual property matters. The arrangement provides a platform for collaboration including sharing operational practices and IP awareness information to help businesses trading in both countries.

For more information on both of these relationships visit: www.iponz.govt.nz/about-iponz/international-cooperation/

IPONZ also participates in other regular international cooperation activities, including a hosting a delegation from Vietnam and IPONZ visits to the United Kingdom’s IP office and the Canadian IP office in 2015.

On a regional Asia-Pacific level, IPONZ also:

  • Participated in AANZFTA IPC (ASEAN Australia New Zealand Free Trade Agreements Intellectual Property Committee) meetings

  • Presented in the Philippines to ASEAN countries on New Zealand’s operation of the Singapore Treaty on the Law of Trademarks.

  • Hosted separate study visits from the Malaysian Intellectual Property Office, MyIPO, and the Directorate General of Intellectual Property, DGIP Indonesia, for advanced training on implementing the Madrid Protocol and efficient IP office operations.

Assistance to developing countries

IPONZ also uses these fora to assist developing countries in their development of IP policies and systems and as part of the ASEAN Australia New Zealand Free Trade Agreements (AANZFTA) trained other ASEAN countries on accession to the Madrid Protocol.