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Trade marks are a form of intellectual property that can protect certain identifying aspects of your business. They connect your business to the goods or services it provides. As such, you may wish to register important parts of your branding as trade marks, such as your business name or logo. However, what happens if someone else wants to register the same trade mark as you do? In these cases, IPONZ will give the application with priority preference. Therefore, this article will provide some background and explain how New Zealand prioritises trade mark applications.

Applying for a Trade Mark

If you wish to register your trade mark, you need to apply with the Intellectual Property Office of New Zealand (IPONZ). They consider the merits of your application against their specific criteria and grant you approval if they deem your application appropriate. Therefore, you must prepare your application accordingly. Part of this process includes:

  • searching the trade marks register for existing trade marks similar to yours;
  • assessing the distinctiveness of your trade mark, seeking advice where necessary;
  • identifying the exact nature of your trade mark and its type;
  • determining who will own the trade mark;
  • determining the classes and description of goods/services that your trade mark will protect;
  • registering as a user of IPONZ’s online portal; and
  • submitting your application through said portal.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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After Submission

Once you have submitted your trade mark application with IPONZ, there is a waiting period. At this time, IPONZ reviews your application to ensure that it meets the requirements for registration, which includes a search of the trade marks register. You can expect to hear from them within 15 working days in most cases. They may ask for additional information, so monitoring the IPONZ online portal for any notifications is important.

Suppose there are no issues with your application, or you can overcome any issues. In that case, you can expect the trade mark to be registered within a minimum of six months after the date you initially filed your application.

Trade Mark Application Priority

During IPONZ’s examination period, the examiner will determine whether any trade marks similar to yours have been filed and are currently pending (as well as existing registered trade marks). Suppose there is another trade mark application that is identical or similar to yours, and it covers the same goods or services. In that case, this raises issues around which application should take priority. The application filed first with IPONZ, which therefore has the earlier filing (priority) date, will be given preference by IPONZ.

So, if a third party applies for a similar trade mark a week before you, they will have the earlier priority. However, you may be able to overcome this with proper evidence in some cases. For instance, such a case may exist if you can prove honest concurrent use of the trade mark.

Notably, if IPONZ receives both applications at the same time (meaning on the same day), then they have equal priority with the same filing date. As such, they both proceed through the application process, but IPONZ notifies both of the others’ existence.

Convention Priority

Despite this, if one of the conflicting trade marks has convention priority, this can complicate matters. New Zealand is a member of various international trade mark agreements. This can affect trade mark applications within the country as well. Notably, if a trade mark applicant has filed to register its trade mark in one of the other countries that are party to  these agreements, they may have convention priority. Therefore, the original filing date of the first trade mark application becomes the filing date for their New Zealand trade mark application. This rule applies as long as they file their New Zealand application within six months of the first application.

For example, say that another party filed a trade mark application two weeks after yours, and your trade marks are similar. Normally, you would have priority as the earlier application. However, the other party filed a trade mark application in Canada three months beforehand. If the other party has included a convention priority claim, their application will be preferred over yours. 

What Happens When I Do Not Have Priority?

Even if another application is given priority over yours, that does not mean that the registration process is over for you. When this is the case, the IPONZ trade mark examiner will send you a compliance report to explain why your application was not initially accepted. This report will also detail potential options for you in overcoming the issues.

In particular, where IPONZ initially rejects your application due to its similarity to an earlier trade mark application, you may still be able to register if you can prove that this is not the case. You can respond to your compliance report with reasons why customers would not confuse your trade mark with the earlier application, and you may also need to provide evidence to support this.

Key Takeaways

When IPONZ receives two trade mark applications that are identical or similar, then the application with the earlier filing date will have priority. 

If you need help with your app content, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is an intellectual property right to protect signs that distinguish your business from others. These usually form a part of your brand, such as your business name or logo.

How can I make sure my application for trade mark registration is successful?

The more distinctive and unique your trade mark is, the greater the chances for a successful registration. You should also conduct a trade mark search to ensure no similar trade marks already exist. Be sure to be thorough with your documentation as well, and seek specialist advice where necessary.

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