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A trade mark is a sign or a ‘badge of origin’ that you use to distinguish your business’ goods and services from others. Registering it will provide you with a number of benefits, including the exclusive right to use it in New Zealand in relation to specified goods and services. This article will set out what you need to do to register your trade mark with the Intellectual Property Office of New Zealand as well as some of its benefits. 

What is a Trade Mark? 

A trade mark is a sign capable of being represented graphically and that distinguishes the goods or services of one party from another. It could be any ‘badge of origin’ such as a: 

  • name; 
  • slogan; 
  • logo; 
  • image; 
  • colour;
  • shape; 
  • scent; 
  • sound; or
  • a combination of these things. 

Your trade mark should be strong, memorable and unique to your business and its goods or services. It should not be overly descriptive of the goods or services, as descriptive marks are generally not registrable. 

Why is Trade Mark Registration Important?

There are a number of benefits to registration. For example, it gives you exclusive rights to use that name or logo in relation to the goods or services registered under it. It allows you to take action against anyone who may infringe on those rights, for example, where someone uses the same or a similar mark in relation to similar goods or services. Further, successful trade mark registration will reduce the chance of receiving an infringement claim from someone who has subsequently started using the same or a similar one

In addition, as your business grows and your trade mark becomes established and recognised in the market, the value of your business is likely to increase. 

How to Register Your Trade Mark in NZ? 

The Intellectual Property Office of New Zealand (IPONZ) is responsible for granting and registering intellectual property rights, including trade marks. You can make an application to register your trade mark directly through IPONZ online. 

Before You Register

Before you apply to IPONZ to register, you will need to: 

  • search the trade marks register to make sure there are no competing marks that are already registered; 
  • determine which type you wish to register; 
  • decide who will be the owner. In New Zealand, a trade mark can be owned by an individual, a company or other legal entities, such as an incorporated company. Trade marks can become a valuable asset, so determining who owns it is an important decision; and
  • decide what class or classes you want to register against.  

You will need to decide what classes of goods or services you want to register against. There are 34 classes of goods and 10 classes of services to choose from. You should consider what class or classes will best protect your brand and your business. When you apply, you will need to pay a fee, which is currently around $100 per class. 

For example, if you have a clothing and jewellery business, you may wish to register your trade mark in class 14 (which includes jewellery) and class 25 (which includes clothing and footwear).

How Long Does Registration Take? 

IPONZ will generally provide a report within 15 working days. IPONZ may approve your application straight away. Otherwise, if your application does not comply with the law, IPONZ will issue you with a compliance notice. IPONZ will set out the reasons why your application does not comply with the Act in the compliance notice. For example: 

  • your mark may be non-distinctive or descriptive; 
  • there may be identical or similar ones that are already registered; or
  • your application’s classification of goods or services is not sufficient.

You can respond to IPONZ’s notice of rejection and set out reasons why they should reconsider your application. 

If IPONZ has provided you with an acceptance notice, your trade mark will be ‘advertised’. During this time, a person may oppose your application to register. If there is no opposition, then IPONZ will register your application at a minimum of six months after the filing date. 

How Long Will Your Registration Last?

Trade marks are registered for an initial term of ten years. You will need to pay renewal fees every ten years to ensure it remains on the register. You will also need to continue to use it for your registration to be valid.

Key Takeaways

Whether you are an established business or just starting up, you should consider whether you have (or should have) trade mark protection. If you need advice about registering or protecting your trade marks in New Zealand, contact LegalVision’s New Zealand trademark lawyers on 0800 005 570 or fill out the form on this page.

FAQs

What is a trade mark?

A trade mark is a graphically represented sign that distinguishes your business’s goods or services from others. It should be memorable and unique to your business’s goods or services.

How do you register a trade mark in New Zealand?

You can make an application to register your trade mark at the Intellectual Property Office of New Zealand (IPONZ). IPONZ is responsible for granting and registering intellectual property rights in New Zealand.

What should I know before registering a trade mark?

Before applying fo registration, you should ensure there are no competing marks that are already registered. You can do this by searching the register. You should also determine the type of trade mark you wish to register, decide who will be the owner and what class or classes you wish to register under.

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