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A trade mark is a kind of intellectual property, which can bring value and profit to your business when you own one. It is a sign that represents a business, with common examples being a business’ name, a particular product, or its logo. When you have registered trade mark rights with the Intellectual Property Office of New Zealand (IPONZ), you gain various legal powers and controls that apply to how you handle that specific trade mark. As a trade mark’s owner, you can apply to IPONZ to merge your trade mark with another existing one, broadening the total areas that it can apply to. However, this is a complex process that you should not begin without appropriate specialist help. For some guidance, this article will go through four questions to ask your lawyer before merging your New Zealand trade marks.

How Can I Merge My Trade Marks?

Merging trade marks refers to the process where you (the merger applicant) wishes to merge two or more trade mark applications or registrations into one case. There are strict requirements for this process, and you can only merge trade marks in select ways. Importantly, only the trade mark applicant or trade mark owner of the trade marks can apply for a merger with IPONZ.

For example, you may wish to merge two trade mark cases that you had divided at an earlier point.

You can apply to merge your trade mark through IPONZ’s online portal. However, you need to ensure it is in writing and contains:

  • your name as the applicant;
  • your service address;
  • your agent’s details, if they are acting on your behalf; and
  • the numbers of all of the applications or registrations you wish to merge.

If your documentation is not in order, IPONZ will reject your application. Therefore, seeking the assistance of a trade mark specialist regarding your paperwork preparation is crucial. A lawyer can explain this process to you further and help you navigate it in a way that benefits you and your unique needs.

There is no filing fee for applying to merge trade mark applications or registrations.

Should I Merge My Trade Marks?

Merging your trade marks can be a complex process, especially if you do not have experience in the field. A lawyer can help you determine whether merging your trade marks is the most beneficial option for your business. If it is not, then they can explore other options with you to fulfil your goals. Your trade marks can bring great value to your business, so you should deal with them in the way that best benefits you. 

When Can I Merge My Trade Marks?

You can file for a trade mark merger at any time, but a lawyer can look at your unique situation and determine what point would be the most advantageous for you to do so. They can also help you determine whether you meet the qualifying requirements for an eligible trade mark merger. When you apply to merge your trade mark applications or registrations, you need to ensure that they:

  • have the same filing and convention priority date where applicable;
  • apply to the same trade mark or series of marks (that is, they must be identical);
  • have the same status (meaning you cannot apply to merge an already registered trade mark with a new trade mark application;
  • are both in your name as the applicant or owner; and
  • are classified according to the same edition of the Nice Classification.

All trade marks have classes of goods or services they apply to. New Zealand uses the Nice Classification to determine these classes, and this system is updated periodically.

Notably, IPONZ will not accept a merger application if either of your trade mark cases has been:

  • refused;
  • withdrawn;
  • abandoned; or
  • deemed no longer “active”.

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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Can I Merge My International Trade Marks?

When you register your trade marks in New Zealand, you only have applicable trade mark rights in this country. Therefore, if you want to have enforceable trade mark rights in other countries, you need to either:

  • register your trade marks in the specific countries you wish using their local system; or
  • use the Madrid System to register in multiple countries at once.

If you have not used the Madrid System, you will need to follow the rules of the relevant country’s trade mark system to merge your marks. On the other hand, if you registered trade marks using the Madrid System, you can merge your international registrations through IPONZ. However, you should certainly ask your trade mark lawyer how to complete this process, as they will have specialist knowledge around the topic that can benefit you.

Key Takeaways

Merging your trade marks can be a complex process, particularly if you wish to merge your international trade marks. Therefore, to ensure you are best preserving your interests, you should seek the guidance of a trade mark specialist. If you would like more information or help with merging your trade marks, contact LegalVision’s trade mark 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 a sign that represents your business and the goods or services it provides. Common examples of trade marks can include your business name, logo, or product names.

How can I merge two trade marks?

To merge trade marks, they need to be identical, and you need to be the owner of both marks. You can apply for a merger through IPONZ’s website.

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