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Requirements for Filing a Trade Mark Application in New Zealand
- particulars of the trade mark - a representation is required if the mark is a logo/device or design. If the application is to claim, or be restricted, to specified colours then we shall require a colour representation of the mark
- details of the applicant - name, address, nationality/state of incorporation
- statement of goods or services
- particulars of home application if claiming priority under the Paris Convention
- information on whether the trade mark is being used or proposed to be used in New Zealand.
We do not require any other documentation to file the application. However, if priority is claimed under the Paris Convention then we recommend that a copy of the home application (and a copy of the English translation where appropriate) is provided to support the convention claim.
The six month period for filing an application in New Zealand which claims priority under the Paris Convention is not extendible. Thus, an application filed outside the allowed six month period will not be entitled to the priority claim. However, if an application is filed within the six month period but the priority claim is not made on filing, a period of two working days after the application is filed in New Zealand is allowed for the priority claim to be made. This period is NOT extendible.
The Intellectual Property Office does not require an Authorisation of Agent if we file the application. However, if we take over responsibility for an application which has been filed by another firm, or there is a change of ownership of the mark, then we may require an Authorisation of Agent. An Authorisation does not require legalisation or notarisation.
Trade Mark Registration Procedure
When an application to register a trade mark is lodged at the Intellectual Property Office of New Zealand ("IPONZ"), with the prescribed filing fee, it is allocated a filing date and a number. When the application is registered it is deemed to have taken effect from this date.
The application is examined by IPONZ for compliance with formal requirements and for eligibility for registration, including that it does not conflict with an existing registration. IPONZ has set a target of five (5) working days in which to examine a trade mark application.
The applicant has twelve (12) months from the date the application was filed to overcome any objections and place the application in order for acceptance. If the application is not accepted within that period it will be deemed to be abandoned, unless an extension of time has been granted.
The Commissioner will permit amendments to correct minor clerical errors in an application. The statements of goods or services can be restricted or goods or services defined more explicitly during the course of prosecution. However, amendments which substantially affect the identity of the trade mark or extend the goods or services are not permitted.
Once the examiner's objections, if any, have been overcome, the application is accepted and advertised in the Intellectual Property Office Journal. Any interested party may oppose the registration of the mark during the three (3) months following publication of the advertisement. This three month period may be extended at the request of the interested third party by up to three (3) months. However, the Commissioner will not permit an extension of more than one (1) month without the consent of the other party to the proceedings.
If the application is not opposed, or if an opposition is unsuccessful, the application then proceeds to registration.
Registration is for an initial period of ten (10) years from the date of application, or priority date, and may be renewed for further successive periods of ten (10) years on payment of a renewal fee.
The trade mark need not be in use in New Zealand when the application is made. An intention to use in the foreseeable future is sufficient. However, use prior to the application date may be relevant in establishing the distinctiveness of the mark. It is not necessary to prove use of the mark in New Zealand in order to achieve registration nor is use a prerequisite to renewal of the registration.
A trade mark may be removed from the register on the application of an interested party if it has not been used by either the registered proprietor or an authorised user for a continuous period of three (3) years ending one month prior to such application for removal.
There are no marking requirements in New Zealand. We suggest that before the mark is registered the words "trade mark" or letters "TM" be placed beside the mark whenever it is used. Once the mark is registered the words "Registered Trade Mark" or some suitable abbreviation such as "Reg'd T.M." or ® can be used in conjunction with the mark. To describe a mark as "registered" before registration actually takes place constitutes a breach of the Trade Marks Act, and may also contravene Fair Trading Act prohibitions in respect of misleading and deceptive conduct.
Updated May 2010