The Process of Registering a Trademark in New Zealand

28 April, 2021 | Bret Gower

Once you recognise the commercial benefits of trade mark registration (effectively a monopoly right of use that can be sold, licensed or assigned – and enforced if necessary) – the inevitable next question will be “how do you go about registering a trade mark?”

Online application

In New Zealand, trade mark registration applications are managed by the Intellectual Property Office of New Zealand (IPONZ) through their website at www.iponz.govt.nz.

First steps

Is your trade mark or a similar one already in use?

In the first instance you need to check that the trade mark you want to register is not currently owned by somebody else. You can only register a trade mark that does not conflict with an existing trade mark registration, and this can be easily checked by searching the IPONZ database.

Is your trade mark ‘distinctive’?

Your trade mark must also be ‘distinctive’ – so that it is not easily confused with a similar sounding or looking trade mark. Trade marks that are descriptive, for example that describe where your product or service originates from, are generally not able to be protected either. There are some exceptions to this rule but they require considerable additional supporting evidence of existing use and market awareness when making your application. An experienced intellectual property lawyer can help you to determine whether your proposed trade mark is sufficiently distinctive to register.

Which classes are you applying for trade mark in?

You also need to consider the products or services your trade mark relates to, so that you can specify the class or classes you intend to seek trade protection for. For example, if you were seeking protection for a craft beer brand you might want protection under the food and drink class but you might also want to use the brand on merchandise that supports the beer brand so you might need to include a class that protects clothing. There is a full list of the classes here. You can also choose from the list of pre-specified products and services on the IPONZ database here.

Applying online

Once you have some certainty that your preferred trade mark does not conflict with an existing mark you can begin the application process. The online application process is relatively straightforward although the IPONZ website is not always intuitive when it comes to working through each of the necessary steps.

Talk to us if you are thinking about registration, and we can walk you through the process, explain how the fees work and can assist with class specifications to tailor them to your products and services, including any future plans you may have.

What happens next?

Review by IPONZ

Having filed your application online, and paid the application fee, your trade mark will initially be assessed by an assistant trade mark commissioner to see whether there are in fact any reasons why your trade mark should not be registered.

They will consider whether the trade mark can be registered against the criteria in the Trade Marks Act 2002 including, as mentioned above, whether there are any conflicts with existing registered trade marks and to determine whether it passes the distinctiveness test.

In addition to the above, your trade mark will also be assessed for the potential for it to cause confusion in the market or for the mark to cause offence to ‘a significant section of the community, including Māori’.

Objections by IPONZ

If this assessment raises issues with your trade mark you will receive an objection notice from IPONZ setting out the objections to the mark and providing some further advice about how to overcome the objections (if possible).

You will have a significant period of time to respond and there are a range of options available for overcoming objections. If there are conflicts with existing marks you can seek the consent of the owners of those marks; if there are distinctiveness objections you can provide evidence of how the mark has acquired distinctiveness through use over a period of time. We can help you put together your further response to address objections at this stage.

Preliminary acceptance as a trade mark

The initial assessment takes about three weeks and if no objections are raised, or you overcome them with an objection response, your trade mark application will be accepted and then put forward for publication. This means the mark will be published by IPONZ in its trade mark journal which is monitored by trade mark owners in New Zealand and other trade mark offices and owners internationally.

Objections by other trade mark owners

Your trade mark will be published and objections to registration can then be made by other trade mark owners or interested parties at this stage, including by overseas owners of conflicting marks. Even if the mark is not registered in New Zealand, the owner of an identical mark registered elsewhere can object and claim prior rights under the Paris Convention (an agreement between countries to enforce prior registration rights) for up to six months after their originating application.

If no objections are raised within the three month period it will be registered a minimum of six months from the date of your application.

Once registered

Congratulations! You have successfully registered your trade mark, and you now have a monopoly right to use that mark for a period of ten years from the deemed registration date (the date you originally applied).

Maintaining your trade mark

Good news – however as with all rights, they come with responsibilities. You need to be vigilant and continue to enforce, and be seen to be enforcing, your rights – otherwise you may lose them.

Enforcing your trademark

Being vigilant means ensuring others are not infringing on your trade mark by using a mark that is so similar it causes confusion for your customers. You also need to ensure others are not using your trade mark in a generic way such that your trade mark could become invalid.

Please talk to us as soon as you suspect there might be an issue with somebody  infringing your trade mark and we can clarify what rights you have, whether we consider infringement has occurred and what steps ought to be taken in the first instance. It is important not to let time run on this type of claim or you risk the other party acquiring legitimate usage rights if they can show you were aware of their using your trade mark but did nothing to prevent it.

Using your trade mark

It might seem obvious, but you also need to actually use the trade mark in relation to the goods and services you claimed in your initial application or you run the risk of losing your rights for non-use. The granting of a monopoly right for you to use the trade mark effectively prevents somebody else using it, so if you are not using it then they may have a legitimate claim to revoke your trade mark registration.

Dealing with objections

Any trade mark registration is not impervious to being challenged, either during the application in the publication period (as discussed above) or once registered. Post-registration claims can include claims of prior ownership or conflicts with existing marks and objections generally proceed on the basis that registration should be revoked or be declared invalid.

Trade mark objections are administered through the dispute tribunal function of the IPONZ Hearings Office in the first instance, through a series of submission stages akin to a formal trial in any other tribunal, with decisions of the Hearings Office being appealed to the High Court where necessary. In certain circumstances proceedings can be filed directly to the High Court.

Working closely with your lawyer in the application stage should reduce the risk of objections being raised but obviously it is not possible to foresee all eventualities.

To file a claim objecting to a conflicting trade mark or to defend against formal objections at the application stage, and particularly objections or claims raised post-registration, you really need to engage an intellectual property lawyer. We are experienced in dealing with the submission process and understand the legal basis for making or defending objections.

International trade marks

The IPONZ website allows you to apply for registration for protection in New Zealand, but you can also apply through their website for registration in a range of other countries covered by the Madrid Protocol (an international convention on trade mark registration) and administered by World Intellectual Property Office (WIPO). You can calculate the range of fees for international applications here (in Swiss Francs).

It is not generally practicable to have ‘global’ trade mark protection, mainly due to the difficulty of ensuring no existing trade mark conflicts within every territory you want to register in. On top of that complexity you have to consider how you would enforce your trade mark rights in every different jurisdiction, and the cost of doing that, PLUS the actual cost to register in every country is generally considered uneconomic.

International applications need to consider the same general issues with domestic registration, conflict with existing marks and distinctiveness issues but with the added complexity of different language considerations. International applications made through IPONZ need an originating New Zealand application as the basis for protection in another country. The application process is slightly more complicated and objections raised internationally are obviously more complex to resolve because although applications are administered initially through WIPO, objections are dealt with by each country’s intellectual property entity.

We are happy to assist in navigating the global trade mark registration process and we are continuing to grow our network of trade mark specialists to assist our clients in different jurisdictions as and when required.

If you are thinking about applying to register a trade mark in New Zealand or overseas give our intellectual property team a call to discuss what your options might be. Alternatively, if you are concerned that someone is creating confusion in the market place or infringing your trade mark rights talk to us as soon as possible to get an expert opinion.

Contact Intellectual Property specialist, Bret Gower today to set up an appointment. Email: bret.gower@smithpartners.co.nz Phone: 09 837 6893

Do you need to register a trade mark?
Protect your brand – contact our Intellectual Property Law expert, Bret Gower today to set up an appointment.

email Bret
09 837 6893

About the author

Bret is a key member of the commercial team at Smith and Partners, having joined the firm after a successful career as a design agency owner. Bret’s clients have confidence in him because of his unique combination of down-to-earth communication
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