Global Trademark GO - New Zealand - Introduction to New Zealand Trademark Application

New Zealand trademark applications can be registered as commodity trademarks, service marks, certification marks, collective marks, three-dimensional marks, sound marks, color marks, letters, slogans, graphics, shapes, colors, sounds, smells, dynamic images, holograms or a combination of elements. , scent trademarks, series trademarks, etc.

New Zealand trademark applications can only contain one trademark at a time, except for series trademarks. One application can contain multiple similar trademarks that constitute a series of trademarks, but these trademarks must be generally similar and can only differ in the description of products or services, numbers, prices, quality, etc., that is, these differences must not substantially affect people's use of the trademark. identification.

1. Trademark authority

• New Zealand Intellectual Property Office, IPNOZ
• Website: Trade marks | Intellectual Property Office of New Zealand (iponz.govt.nz)
• Trademark search: Search Trade Mark case(s) (iponz.govt.nz)

2. How to apply for trademark registration

• electronic submission; paper submission

3. Trademark registration application language

• English; Maori

4. Documents required for trademark registration application

• Applicant information
• Trademark pattern
• List of goods and/or services and international categories for which protection is sought
• For priority information, it is generally not necessary to provide a copy of the priority text. If the priority is in a non-English language, a certified translation in English must be submitted when IPNOZ requests it.
• No power of attorney is required to register a trademark in New Zealand

5. New Zealand trademark registration application process

• IPONZ will generally review the application within 15 working days after receiving it. The review process includes formal review, distinctiveness review and search for similar trademarks. If there are problems, the applicant will be notified or a compliance report (Compliance Report) will be issued, and the applicant can make changes, supplements, etc. or provide responses. If IPONZ ultimately decides that the application does not meet the registration conditions, it will be rejected. If the applicant is dissatisfied with the final decision, the applicant can request a review by the Trade Mark Commissioner. If you are dissatisfied with the decision of the Trademark Commissioner, you can appeal to the High Court of New Zealand (High Court). If no objection is raised within 3 months after the application is made public or the objection is not established, IPONZ will approve the registration and issue a registration certificate to the applicant.

6. Documents required for trademark change/transfer

• Trademark registration copy
• Changed name or address
• transfer agreement
• Original trademark registration certificate

7. Trademark cancellation

• If a registered trademark is not used for three consecutive years or becomes a common name through use, it may be revoked.

8. Trademark objections

• Anyone can file an objection request within 3 months after the trademark is published. The applicant can submit the corresponding counter-statement within 2 months after receiving the objection notice forwarded by IPONZ.

9. Authorization, validity period and trademark renewal

• There is no authorization fee for trademark registration in New Zealand. The registration period is 10 years from the filing date or priority date. Applications for renewal of registered trademarks can be submitted within 12 months before the deadline for renewal for 10 years. The grace period for payment of renewal fees is 12 months after expiry. There is no additional fee for late renewal. If it is not renewed in time, the registration will become invalid. If no remedial measures are taken after one year of expiration, the registration will be permanently invalid.

10. Average time for trademark authorization

• If the trademark registration process goes smoothly, the minimum time from trademark registration application to authorization is generally 6 months.

11. Other matters needing attention

• IPONZ updated its online case management tool in June 2021 with the launch of the Trademark Specification Generator, a tool for retrieving terms for goods and services to which a pre-approved trade mark applies, providing trade mark applicants with a more comprehensive A simplified interface to help people identify goods and services.