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When starting your business, registering trade marks is an important step for setting up. However, this can be an uncertain time, and you may not want to register a trade mark straight away to represent your business. Still, trade mark protection is important, and you need to ensure that your brand is protected. Therefore, this article will explain how you may register a trade mark in a name to use in the future.

Registering a Trade Mark

To gain the strongest rights in your trade mark, you should register it with the Intellectual Property Office of New Zealand (IPONZ). As the registered owner of your trade mark, you gain the exclusive right to:

  • use and commercialise your mark;
  • license its usage to other parties for royalties/fees;
  • prohibit any third party usage or copying; and
  • pursue others for trade mark infringement as a result.

The registration process includes:

  • determining the goods or services your trade mark will cover;
  • matching those goods or services to their corresponding classes;
  • conducting a trade mark search to find any existing identical or similar trade marks;
  • choosing an official owner; 
  • paying the relevant fees for your trade mark (usually $100 per class, excluding GST);
  • becoming a registered user of IPONZ’s online trade mark management portal; and
  • sending your trade mark application through said portal.

Renewing Your Trade Mark

Once you have registered your trade mark, you can maintain this registration indefinitely if you go through the right steps. Mainly, this means renewing your trade mark every 10 years. You usually do so by a specific date, which in most cases would be the day you filed your application. This process also includes paying the relevant renewal fees for your trade mark. These are currently $200 per class that your trade mark applies to (excluding GST).

However, you can open yourself up to complications down the line if you do not utilise your trade mark appropriately. It is not ideal to have unused trade marks taking up space on the register, and if someone else wants to use your trade mark, they may have grounds to remove your trade mark from the register.

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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Revocation of Registration

As a registered trade mark owner, you gain many benefits and rights. However, you also have the responsibility to maintain your trade mark to keep your protection valid. In particular, if you do not use your trade mark within a continuous three year period, you open yourself up to potential legal action from third parties wishing to use your mark. If a third party can establish that your trade mark registration is putting them at a disadvantage in some way, they can apply to revoke your trade mark.

For instance, if someone else wishes to register a trade mark similar to yours, your trade mark registration prevents them from doing so. Therefore, they are at a disadvantage.

If you have not used your trade mark commercially in the past three years, they can do this on the grounds of non-use. If their application is successful, you may lose your registered trade mark rights. 

Notably, you can defend against such an action if you can prove that:

  • you did use your trade mark in that time; or
  • special circumstances out of your control prevented you from using it.

What qualifies as special circumstances will depend on your case, but it has to be something out of the ordinary and a strong reason why you did not use your trade mark. Simply reserving a trade mark for future use may not qualify.

Using Your Trade Mark

If you intend to register a trade mark for the future, but will still use it within the three years after you registered it, then you do not have to worry about a potential revocation. However, if you wish to save it for a future date after those three years, you need to use it enough to not leave your mark vulnerable to third parties wishing to remove it. Such usage may include using your trade mark:

  • in advertising materials;
  • in manuals or brochures;
  • attached to a product;
  • on official correspondence and packaging; or
  • on your website and social media. 

The key here for proving trade mark use is not necessarily how often you used it but how you used it. Your commercial use needs to be genuine and not just to reset the three year period.

For instance, even if you use your trade mark on infrequent and sporadic sales, you still genuinely use it in a commercial context. Therefore, you may be able to defend a third party’s application to revoke your trade mark.

Key Takeaways

If you wish to register a trade mark for a name that you do not intend to use immediately, whether you can do so properly will depend on how soon you wish to use it. If you do not use your trade mark for three years after it is registered, then your mark becomes vulnerable to revocation due to its non-use. Therefore, you must invest in your mark to avoid this process.

 If you need help with registering a trade mark for your business name, 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.

How can I use a trade mark?

You can use a trade mark to link your goods or services to your business. Therefore, you may use it on your product packaging, or as a part of your advertising.

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