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A trade mark is an intellectual property asset that acts as a unique identifier for your business. It represents your business and links the goods or services you provide to your business. When you register a trade mark with the Intellectual Property Office of New Zealand (IPONZ), you gain ownership rights over your trade mark. This means you gain better commercial power and greater potential for the growth of your brand. However, if you wish to extend or broaden your trade mark rights after registering it, this can be a rather complex process. Therefore, this article will provide some background and explain whether you can add a new class to your New Zealand trade mark.

How Does Trade Mark Registration Work?

Your trade mark is a form of intellectual property, which means you get a specific set of legal rights when you become a registered owner of one. These include:

  • using and commercialising your mark;
  • licensing your mark to others for fees/royalties;
  • restricting its usage by any third parties; and
  • legal options should a third party infringe your trade mark.

You can have rights over an unregistered trade mark if you use one, but registered trade mark rights are more robust and much easier to establish. Notably, your trade mark goes onto an official register, and may prevent others registering future trade marks identical or similar to yours.

When you apply to IPONZ to register your trade mark, you need to prepare your documentation accordingly. This process includes:

  • deciding the exact trade mark that you want to protect;
  • conducting a comprehensive trade mark search;
  • choosing the classes and goods or services your trade mark applies to;
  • paying the relevant registration fees; and
  • submitting your application to IPONZ via their web portal.

Once IPONZ receives your application, they examine it according to their criteria. If there are any issues, they will send you a compliance report detailing these. 

Registration and Classifying Your Goods and Services

Classifying the goods and/or services your trade mark applies to is a key step in the registration process. This is because once your trade mark is registered, it is protected in relation to the goods/services covered in the registration. 

For instance, if your trade mark is registered for cosmetics and another party uses an identical trade mark also for cosmetics, you have the right to pursue them for trade mark infringement. However, suppose another party uses a similar trade mark to you concerning a product or service that is not covered in your trade mark registration. In that case, you may not have that same ability.

This is one reason why you must be thorough when it comes time to choose the classes of goods/services your trade mark applies to before registration. These determine the scope of your rights, so you want to ensure you have the best protection possible. 

However, note that the more classes you register your trade mark for, the higher the fees ($100 per class at registration in most cases, and $200 per class at renewal, excluding GST).

Can I Add a Class to My Existing Trade Mark?

Once you apply for your trade mark, you generally cannot add additional classes or goods/services to your application unless you meet the relevant circumstances. However, once you have a registered trade mark, you cannot broaden its scope by adding more classes or goods/services. You can only:

  • remove classes or descriptions of goods/services;
  • enter, remove, or change a memorandum;
  • alter regulations for a certification mark; or 
  • correct an omission or mistake in your trade mark’s details on the register.

For instance, if you transfer ownership of your trade mark, you can change the owner’s details on the register.

As a result, you cannot extend the rights that you gained when you registered your trade mark.

What If I Want to Extend the Classes of My Trade Mark?

If you want to add a class or goods/services to your existing trade mark, you must file a new application covering those classes. In this case, it would be wise to seek a trade mark expert’s legal advice to ensure that the process goes smoothly. 

In any case, this highlights the importance of establishing clarity around the classes your trade mark applies to before you submit your application.

Key Takeaways

When you register a trade mark, you need to specify which classes of goods or services you wish for it to apply to. You gain trade mark rights in these areas, and these areas only. As a result, once you have registered your trade mark, you cannot expand your trade mark rights out of these classes by adding a new class. If you wish to do this, you must submit a new trade mark application.

If you need help with the classes of your trade mark, our experienced trade mark 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 can a trade mark consist of?

A trade mark is a unique identifier for your business. It can consist of words, phrases, symbols, logos, shapes, and even sounds. Common examples include business names or logos.

Can I add a new class to my existing trade mark?

If you have an already registered trade mark, you cannot add a new class. Instead, you will need to submit a new trade mark application covering the new class.

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