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A trade mark is a sign that represents a unique aspect of your business, such as your logo or slogan. It is an easily recognisable badge of origin for your business. Consequently, it can be how your customers will both recognise and remember you. When you have a registered trade mark, you can prevent others from using that mark or selling things with it attached. However, trade mark registration does not last forever, and you need to renew yours every ten years if you want it to stay valid. This process is usually relatively simple, as you can do it through the Intellectual Property Office of New Zealand’s (IPONZ’) online portal. For some guidance, this article will go through various considerations when renewing your New Zealand trade mark.

Does Your Trade Mark Still Bring Value?

A trade mark is only useful to your business if you can identify various benefits associated with it. Otherwise, you are spending money on something that does not bring value to your business. Benefits of a registered trade mark include:

  • exclusive use throughout New Zealand;
  • a distinguishing mark for your business, making you stand out;
  • ability to use the ® symbol with your marks;
  • the value that increases over time as your trade mark becomes more well known in the market;
  • legal options and protections against those who might copy your brand; and
  • an asset to assign or license to others for royalties or income.

Trade marks like business names and slogans are used and need regularly, so they bring obvious benefits. However, if you still have a trade mark registered for an old and discontinued product, by renewing it, you may be spending money that you do not need to. As a result, if you have a trade mark that you do not want anymore, you may be able to let it expire instead of renewing it.

If you do not use your trade mark for a continuous three year period, other people can apply to revoke your trade mark registration. If their application is legitimate and you have not used your trade mark, this revocation may apply even if you have recently renewed. Therefore, you must take your actual usage of your trade mark into account as well when considering whether you should renew it.

Alterations

If you own the trade mark, or are the primary agent and case contact, you can choose not to renew your trade mark for certain classes of goods or services that are no longer of interest to you. When it comes time for renewal, you need to specify which classes of goods or services you want to renew the trade mark for. At this point, you may choose not to renew all of the classes it applies to. These will expire if you choose not to renew them. 

Getting the Right Date

When it comes time to renew your trade mark, you need to ensure you have the correct date for its renewal. Once you have registered your trade mark, its first renewal date is ten years later on the anniversary of its filing date or convention priority date (whichever of the two is earlier). After that, it is ten years again after that date. You should receive reminders from IPONZ telling you this.

You can renew your trade mark in the year before its actual renewal date, which gives you some flexibility for alterations and similar actions.

If you miss your trade mark’s renewal due date, then its status changes. Consequently, this trade mark is now ‘Registered – past expiry date’. Once your trade mark has this status, your trade mark registration will expire if you do not renew it within the six-month grace period.

While the grace period is useful, you lose some abilities attached to trade mark you own. Notably, you cannot commence legal proceedings for trade mark infringement in this period. Therefore, you must renew your trade mark before its due date to retain your powers.

Paying Renewal Fees

When you renew your trade mark, you need to pay its corresponding renewal fees. You can pay online, and it costs $200 for every class that your trade mark applies to. When you have multiple trade marks in multiple classes, this can add up in costs for your business. Therefore, you must consider the aspects that the paragraphs above cover.

Key Takeaways

Your registered trade mark is a valuable asset for your business, and you should renew it if it still brings value. You need to make sure that you have the correct date and are clear about what fees you need to pay. If you want to make any alterations, you should consider these as well. If you would like more information or help with your trade mark renewal, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is an intellectual property right that protects something that represents your business. Your business name, logo, or slogan can all be trade marks.

How long does a trade mark last?

Trade marks can last indefinitely, as long as you renew them every ten years. If you miss the renewal date and do not renew within six months, you lose your trade mark registration.

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