Do You Need a Local Address for Services for International Registrations Designating New Zealand?
We are often asked, “Do I need a local representative for my International Registration Designating New Zealand?” The short answer is not really. In New Zealand, unlike Australia, it is not mandatory for a New Zealand Designation of an International Registration (IR) to appoint a local address for service. However, if the Intellectual Property Office of New Zealand (IPONZ) raises objections in a provisional refusal or proceedings are filed against a New Zealand Designation, the rights holder will need to arrange a local address for service, or appoint local counsel, if they wish to respond to the refusal or defend the proceeding (See, Regulation 14 of Trade Marks (International Registration) Regulations 2012).
Importance of local counsel for trade marks in New Zealand
We strongly recommend that international rights holders appoint local counsel when designating New Zealand for the following reasons:
1. Ensuring Timely Receipt of Critical Notices
Even if your trade mark has been registered without objections, important correspondence from IPONZ may arise later. This includes:
- non-use revocation applications, which can result in the cancellation of your trade mark if not opposed within strict deadlines;
- notification about invalidity proceedings initiated by third parties;
- notifications regarding someone recordals against the designation.
Relying solely on the WIPO-designated contact for correspondence can result in delays, especially if international mailing timelines affect your ability to respond within New Zealand deadlines.
2. Risk of Non-Use Revocation
Under New Zealand law, trade marks can be revoked from the register for non-use if the holder fails to provide evidence of use within the required timeframe. Without a local address for service, notifications about non-use applications may not reach you in time, leaving your trade mark vulnerable to cancellation.
3. Simplified Communication with IPONZ
Having a local address for service ensures streamlined communication with IPONZ. Local representatives are familiar with regulatory requirements and can act quickly, reducing the risk of missed deadlines or compliance issues.
How to Appoint a Local Address for Service for Trade Marks in New Zealand?
Appointing a local address for service is generally straightforward. This does not require powers of attorney and is typically a cost-effective solution.
Halfords IP specializes in managing International Registrations designating New Zealand and Australia. For further information or assistance, contact Aparna Watal.
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