A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in New Zealand may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Even unregistered trademark have some value under common law known as passing off and it is protected under the fair trading act. It is necessary to show that the mark has acquired certain reputation. The Trade Marks Act, 2002 provides the aspects related to the filing, examination, and registration of a trademark.
|Relevant office||Intellectual property office of New Zealand|
|Nice classification||Yes (11th edition)|
|Multi class system||Yes|
|Documents required for filing trade mark application||Applicants detail, representation of the trademark, statement of the goods and/or services|
|Prosecution process||Filing publication in the trademark journal opposition(within three months from the date of publication) registration renewal|
|Registration term||10 years from the date of application|
|Renewal term||10 years|
Trademark searches in New Zealand
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Australia can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the intellectual property office of New Zealand to check whether similar trademark to your brand is already registered in New Zealand or to find out who is the owner of the mark. The trade mark case search is used to perform general searches for the trade marks, it provides all the details whether abandoned, cancelled or expired. There are also different options available like searching by case number if you know the case number and searching by case title if you know the title of the case.
Trademark word search edition of New Zealand follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in New Zealand to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in New Zealand. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in New Zealand can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in New Zealand
A person may file multi-class or single class trademark applications in New Zealand.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in New Zealand:
Ordinary trademark applications filed in New Zealand are applications without claiming any priority. Ordinary trademark applications are requested to be filed online by the Intellectual property office of New Zealand. Multi class trademark applications may also be filed in Australia. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in New Zealand/Convention trademark applications New Zealand:
A priority trademark application may be filed in Australia. A priority trademark application should be filed in Australia within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in New Zealand within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and service
New Zealand follows the nice classification of classes. Intellectual property office of New Zealand uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
New Zealand official website provides the trade mark specification builder to easily compile your specification and to find out in which class or classes your goods and services will fall in to.
Trademark examination in New Zealand
The first examination is conducted within 15 working days after the receiving of application. In the process of examination the examiner examines the application to make it sure that it complies with all the requirements of the Trade marks act, 2002. The application is objected on the Absolute and relative grounds. The commissioner makes sure that the application meets all the legal filing requirements.
Once your application complies with all the legal requirements, the application is accepted and advertised in the journal for the observation of the third parties.
Trademark opposition in New Zealand
After the successful completion of the examination process, the application is accepted and advertised in the trade mark journal for the opposition. Any opposition must be filed within three months of the advertised acceptance. The opposition starts with the opponent filing the notice of opposition. Then the applicants file the counter statement within two months. Then, within two months opponent files evidence in support of his claims. Then, after this applicant files the evidence within two months in support of his claims. After this opponent is given one month time to file evidence in reply to the applicant’s evidence.
Once the evidence stage is complete the commissioner asks the parties how they wish to be heard and according to that hearing is conducted and the commissioner issues a formal written decision regarding the matter.
Trademark registration in New Zealand
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.