It has recently come to our attention that the Intellectual Property Office of New Zealand (IPONZ) has mistakenly issued misleading status notifications to WIPO regarding a number of New Zealand trade marks, by incorrectly indicating that the New Zealand designation for the affected International Registrations (“IRNZ”) has been refused or accepted.
Consequently, the status of some IRNZ’s is incorrectly displayed on both the WIPO and IPONZ databases. For example, some IRNZ’s were listed as refused, when in fact, prosecution was still ongoing. In other cases, the IRNZ was listed as accepted when it had been formally refused, and vice versa. This system error has caused confusion and uncertainty for applicants with respect to their IP right and any associated deadlines.
IPONZ has advised that these incorrect notifications were the result of a “system issue” concerning communications between IPONZ and the World Intellectual Property Organisation (WIPO) who oversee the international trade mark registration system.
IPONZ has since identified all affected IRNZs and are currently working with WIPO to correct their database. It is not expected that an incorrect status of a trade mark right on WIPO’s database will impact the status of the relevant IRNZ on the New Zealand database or the enforceability of the trade mark in New Zealand.
If you or your client have any concerns about the current status of a New Zealand trade mark (including an international trade mark designating New Zealand), we would be more than happy to assist you. Please do not hesitate to contact us.