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A trade mark can be a fundamental part of your branding, protecting things like your business name or logo. As a form of intellectual property, when you register a trade mark, you gain various rights as its official owner. However, these trade mark rights do not last forever, so you must carefully maintain your trade mark registration. Keep tabs on your renewal date, and try to avoid its expiry. However, you may let your trade mark registration expire regardless. Therefore, this article will provide some background and explain how you can re-register an expired trade mark in New Zealand.

Trade Mark Registration

Businesses gain various benefits from registering a trade mark. The Intellectual Property Office of New Zealand (IPONZ) oversees trade mark registrations and other related matters. As the owner of a registered trade mark, you gain various benefits, including:

  • the exclusive right to use and commercialise your trade mark;
  • legal protection if someone infringes your trade mark;
  • the right to license your trade mark to other parties in exchange for fees/royalties; and
  • an official record on the public trade marks register, notifying others of your official rights.

For instance, say you have a registered trade mark protecting your homeware products. If a third party uses a similar or identical trade mark to yours on their own homeware products, you have legal options available to you to get them to stop.

Therefore, registered trade mark rights are important assets for your business, and you should maintain and monitor them accordingly.

Trade Mark Essentials in New Zealand

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Renewing a Trade Mark

When you successfully register a trade mark with IPONZ, your trade mark is valid for ten years from the date you filed your application (or your convention priority date). Once those ten years are up, you need to renew your trade mark.

You can renew your trade mark by going through the process on IPONZ’s online trade mark management portal. Renewal involves:

  • confirming what classes of goods or services you wish for your trade mark to continue protecting; and
  • paying the relevant fees, which are $200 (excluding GST) per class that your trade mark protects.

Notably, you can renew your trade mark up to a year before its ten year anniversary.

When Does a Trade Mark Expire?

You should receive notice from IPONZ when your trade mark’s renewal date is coming up. However, if you miss your renewal date, you still have time to complete this process before your trade mark expires completely. After your renewal date passes, there is a six month grace period. In this time, your trade mark gains the status of “Registered – past expiry date”. You still have various trade mark rights when your trade mark has this status, but you cannot access some of them in some situations.

For instance, you cannot commence new legal proceedings for trade mark infringement of a trade mark with this status in its six month grace period. You would need to pay the renewal fee before you can do so.

IPONZ will send you another notice two months before the grace period finishes. If you do not renew your trade mark in this time, then it expires completely. Accordingly, IPONZ will remove it from the public trade marks register. Therefore, as the owner, you lose the corresponding trade mark rights.

Restoring a Registered Trade Mark Past Expiry Date

In this six month grace period, you still have the opportunity to renew or restore your trade mark. You can do this through IPONZ’s online portal, and you need to pay the corresponding renewal fees for every class of goods or services you want your trade mark to protect. If you do not want to renew for all classes, you may need to divide or alter your trade mark registration.

Applying For a New Trade Mark

Nevertheless, if you do not apply to renew or restore your trade mark within its six month grace period after its renewal date, IPONZ will remove it from the public register. At this point, your only option is to file a new trade mark application for your trade mark. Therefore, you can re-register your trade mark if it has expired completely. However, it still needs to meet all of the necessary criteria for registration, so you should not cut corners in this process.

Key Takeaways

If you have not renewed your trade mark by its renewal date, but six months have not passed, you can still restore your trade mark rights without too much hassle. As such, you need to pay the appropriate fees and renew your trade mark. Otherwise, if you do not meet these deadlines, you will need to make a new trade mark application. 

If you need help with your expired 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 is a trade mark?

A trade mark is an intellectual property right that protects a mark or sign that distinguishes  your business from others. This usually forms a part of your branding, such as your business name or logo.

When does a trade mark expire?

If you miss your trade mark’s renewal date, it expires after that date. But, you have a six month grace period to pay the renewal fees and restore your trade mark. If you do not renew within these six months, your trade mark is struck off the register and expires completely.

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