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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, the trade mark is deemed to have been registered with effect from this filing date, or any earlier priority date to which the application is entitled.
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 fifteen (15) working days in which to examine a trade mark application.
The applicant has twelve (12) months from the filing date 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 precisely 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 accepted application is not opposed, or if an opposition is unsuccessful, the trade mark is then registered.
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 the trade mark in the foreseeable future is sufficient. However, use of the trade mark prior to the filing date may be requried to secure registration if the examiner considers that the trade mark lacks distinctiveness. It is not necessary to prove use of the mark in New Zealand in order to achieve registration nor is use of the trade mark a prerequisite to renewal of the registration.
A trade mark may be removed from the register on the application of an interested party if the trade mark 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 requirements in New Zealand for traders to state that their trade mark is registered. However, we suggest that before the mark is registered the words "trade mark" or letters TM be placed beside the trade mark whenever it is used. Once the trade 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 October 2015
