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A trade mark is a valuable intellectual property asset that represents your business and the goods or services you provide. Customers identify you by your trade mark. Therefore, it is worthwhile to invest time and effort in creating an effective sign to function as your trade mark. Trade marks can be registered or unregistered. Registered trade marks gaining more efficient and robust rights and protection for your business. Before applying to register your trade mark with the Intellectual Property Office of New Zealand (IPONZ), you have the option to first request a search and preliminary advice report. Therefore, this article will provide some background and discuss whether you should get a search and preliminary advice report for your proposed trade mark.

Applying for Trade Mark Registration

If you wish to register your trade mark, you can do so through IPONZ. IPONZ manages trade mark applications and other intellectual property matters in New Zealand. You have to prepare your application appropriately and provide the necessary information about your trade mark for IPONZ to assess its registrability. This process involves:

  • searching for existing trade marks that may conflict or compete with your own;
  • determining the type of trade mark you wish to register (such as a word, logo, or combined trade mark);
  • determining the correct owner of your trade mark;
  • specifying which goods or services your trade mark relates to;
  • sorting those goods or services into their respective classes;
  • paying the relevant trade mark official fees; and
  • submitting your application through the IPONZ website.

How much your trade mark costs can vary, but the general fee is $100 per class (excluding GST). However, you can reduce this filing fee in different ways, including if you have already obtained and paid for a search and preliminary advice report.

Once filed, IPONZ then assesses your trade mark application. If it meets the legal requirements, they should accept your trade mark for registration. If it does not, they will send you a compliance report detailing any relevant issues.

What Is a Search and Preliminary Advice Report?

IPONZ offers a search and preliminary advice service for potential trade mark applications. They look over your trade mark documentation and give you an initial assessment based on whether it complies with the Trade Marks Act. In particular, they will:

  • search the trade marks register to see if your proposed trade mark is identical or confusingly similar to an existing one; and
  • give you preliminary advice based on whether your trade mark is unique enough to function as a badge of origin for your business, and distinguish your goods or services from those of other traders.

The search and preliminary advice report set out the outcome of this assessment. Notably, you can apply to IPONZ to receive this report before submitting your final application. The cost is $50 (excluding GST) per class of goods or services that you cover in your application.

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Fees Discount

If you ask for such a report, there are a few key benefits, particularly if this is your first trade mark application. One, in particular, relates to offsetting the cost of the report as a discount against your trade mark application fees. If you apply for your trade mark within three months of the issuing of your search and preliminary advice report, IPONZ will deduct its cost from your trade mark application fee.

Doing this means that instead of your trade mark costing $100 per class for registration, it costs $50 when it comes time to submit your application.

However, to take advantage of this discount, you must base your trade mark application on your search and preliminary advice request. Your details must be the same as what IPONZ initially assessed. So, if you change any of your trade mark application details after the assessment, you are likely to not be eligible for the discount.

Should I Get a Search and Preliminary Advice Report?

Outside of that, it is up to you whether you get a search and preliminary advice report. If you are unfamiliar with the legal requirements and process to register a trade mark, requesting this report would help you understand what the law mandates. However, if you conduct an extensive trade mark search using all of the appropriate channels, you may not need to incur the cost of requesting a search and preliminary advice report. A trade mark specialist can help you determine what pathways would work for you.

After conducting your own trade mark search, getting a search and preliminary advice before you apply may be a good way to check the validity of your own research process.

Key Takeaways

IPONZ offers a service where they can assess your trade mark before you apply. It costs a fee of $50 excluding GST per class. They summarise the contents of their initial assessment in a search and preliminary advice report. If you have not applied for a trade mark before, it may be wise to request such a report to confirm the validity of your own trade mark search.

If you need help with determining whether you need a search and preliminary advice report, 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 a kind of intellectual property right that protects something that identifies your business and the goods or services it provides. Common examples include your business’ name or logo.

What is a search and preliminary advice report?

A search and preliminary advice report is part of a service that IPONZ provides. They assess the registrability of your trade mark before you apply, and they set out their findings in this report. Requesting such a report costs $50 excluding GST.

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