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Trade mark registrations are valuable assets for your business that can protect critical aspects of your branding. If you wish to register a trade mark, you can do so with the Intellectual Property Office of New Zealand (IPONZ). However, you need to prepare important documentation as part of your application.  This article will go through the six steps for registering your trade mark.

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1. Determine the Elements of Your Trade Mark

Trade marks include a range of signs in various forms, such as: 

  • words;
  • phrases;
  • labels;
  • shapes;
  • colours;
  • sounds;
  • jingles;
  • logos;
  • smells; or
  • a combination of these. 

For example, many businesses register their name or logo as a trade mark.

Whatever you decide to trade mark, ensure that it is distinctive enough to represent your business. In particular, it needs to indicate to customers that your business is the source of your goods or services. Additionally, your trade mark should not include descriptive terms that other traders may reasonably use when referring to their own goods or services. However, it may help to be prepared to change elements of your trade mark to maintain its uniqueness, based on its search results.

2. Conduct a Trade Mark Search

A trade mark search is a fundamental part of applying to register a trade mark. All registered trade marks exist on the national register that IPONZ maintains. Therefore, you can search this register to find existing trade marks that are identical or confusingly similar to your own.

Accordingly, you must complete this step to ensure that no trade marks already exist for the same goods or services you want your registration to cover. If one does, this can impact your ability to register your trade mark successfully. IPONZ will not approve your application if a similar trade mark is already on the register.

You should also take advantage of other search tools, such as ONECheck and online search engines. Additionally, an experienced trade mark specialist can help you conduct a comprehensive search using the resources available to them.

3. Clarify Who Will Own Your Trade Mark

As a part of your trade mark application, you need to confirm with IPONZ who the registered owner of your trade mark will be. A trade mark can be owned by:

  • an individual (or individuals);
  • a company;
  • company owners;
  • two partners; or
  • other legal entities, such as incorporated societies.

IPONZ puts their details on the trade mark register as being the owner of your particular trade mark. While possible to transfer ownership later on, it is much easier (and avoids potential validity issues) if you record the right owner from the beginning.

4. Outline Your Trade Mark Specification

When registering your trade mark, you must specify what goods or services you want to apply it to. These goods and services are the ‘specification’ of your trade mark application. In addition, they set out the scope of your trade mark protection, so you should note the correct ones.

You also have the option of describing your goods or services. But, if you only use IPONZ’s pre-approved terms in your application, you may have a reduced application fee.

On top of this, your specification must also identify relevant classes for goods or services. There are 45 potential classes in total, with 34 classes for goods and 11 for services.

For instance, if you sell leather travel bags, they may fall into class 18 for leather and leather goods.

5. Seek Advice

Preparing your trade mark application can be a complex and meticulous process. If you do not get certain aspects correct, this reduces the likelihood of IPONZ approving your registration and can cause validity issues later.For example, choosing the correct terms and classes for your specification can be quite complicated.

Therefore, consider seeking advice that suits your needs. For example, IPONZ provides a search and preliminary advice service where they analyse your trade mark application according to their criteria. Additionally, an experienced trade mark specialist can provide tailored advice that best suits your business.

6. Apply Online and Pay Application Fees

Once you have prepared the required documentation for your application, you are ready to submit it. You can do so via IPONZ’s online case management facility. You will also need to pay an application fee, starting from $100 per class, with discounts available. 

Following that, IPONZ will respond to your application within 15 working days of receiving it with details of their decision. If there are issues with your application, they may send you a compliance report. If not, they will send you an acceptance notice. After that, there is a waiting period while IPONZ advertises your trade mark application before it can proceed to registration.

Key Takeaways

Registering a trade mark for critical branding elements is a wise business decision. However, you need to ensure you prepare your trade mark application efficiently. The six steps in registering a New Zealand trade mark are: 

  1. Determine the elements of your trade mark;
  2. Conduct a trade mark search;
  3. Clarify who will own your trade mark; 
  4. Outline your trade mark specification; 
  5. Seek Advice; and

Apply online, and pay application fees.  If you need help with registering 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 is a trade mark registration?

A trade mark registration is a kind of intellectual property right. It can protect different parts of your brand against imitations and similar trade marks infringing on your rights. Common examples include business names or logos.

Should I register a trade mark?

Trade mark registrations protect parts of your brand from being copied or used without your permission. These acts can confuse customers or diminish the goodwill of your brand. Registering a trade mark gives you legal rights to deal with other parties that may do this.

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