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8 Steps to Register an Image as a Trade Mark in New Zealand 

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If you are a business owner, artist or creator, you may have a unique image that represents your brand or product. If you trademark this image, you can protect your intellectual property. Others cannot use your image without your express permission. This article will explore eight key steps to register a trade mark for an image in New Zealand. 

1. Determine if Your Image is Eligible for Trade Mark Registration  

To be eligible for trade mark registration, your image must meet certain requirements. For example, your mark must be distinctive and not similar to any existing trade marks. This means that your image must not be generic, descriptive or common. Your understanding of the requirements to obtain a trade mark is critical. It is important you know the requirements so you can determine whether your image meets these requirements. This is the first step to registering a trade mark for your image. 

2. Conduct a Search for Existing Trade Marks 

Before you proceed to trade mark your image, you need to search for existing trade marks. You need to perform this search to ensure your image is unique and does not infringe on the rights of others. You can search the Intellectual Property Office of New Zealand (IPONZ) website. Importantly, you must conduct a visual search because you are searching for an image trade mark. This means looking for images that are similar or identical to your proposed trade mark. An experienced trade mark lawyer can assist you with this process.

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3. Choose a Trade Mark Class  

In New Zealand, trade marks are classified according to the type of goods or services they are associated with. There are 45 different classes of trade marks in New Zealand. You must choose the class(es) that best represents your business and the goods or services you offer. 

It is essential to select the correct class, as you cannot register a trade mark for all types of goods and services. For example, if you manufacture clothing, you would need to register your trade mark in Class 25. Class 25 covers clothing, footwear, and headgear. However, if you also sell other designers’ clothes online, you would need to register your trade mark in Class 35. Class 35 covers retail and e-commerce services. It is essential that you carefully consider the scope of your business’s operations. Then it is imperative that you select the appropriate class for your trade mark application.

4. Prepare Your Application 

Before you commence preparing your application, you need to have checked your image is eligible for trade mark registration. Additionally, you need to have selected the appropriate class(es) in which you wish to register your trade mark. Now you can begin preparing your application. 

Amongst other things, your application must include: 

  • a description of the image; 
  • the class(es) of goods or services it covers; and 
  • the applicant’s details. 

You may wish to seek the assistance of an experienced trade mark lawyer to help make this process easier. 

5. Submit Your Application

Once you have prepared your application, you can submit it to IPONZ. It is important to ensure that your application is complete and accurate. If your application has any errors or omissions, it may take longer to be approved. Quite possibly, your application may even be rejected if there are significant errors or omissions. 

6. Wait for Examination

After submitting your application, it will be examined by an IPONZ examiner to ensure that it meets all the requirements for registration. The examination process typically takes about 15 business days. However, it can take longer if there are objections or issues with your application.

7. Respond to Objections or Issues  

If the IPONZ examiner identifies any objections or issues with your application, you will be notified and given the opportunity to respond. You may need to provide additional information or evidence to support your application. Alternatively, you may need to amend your application to address the examiner’s concerns.

8. Acceptance and Registration 

If your application is accepted, your image will be registered as a trade mark in New Zealand. Once registered, you will have exclusive rights to use your image in connection with the goods or services you have claimed. You will also have the right to take legal action against anyone who uses your trade mark without your permission. 

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Trade Mark Essentials in New Zealand

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Key Takeaways

Registering a trade mark for your image is an important step in protecting your intellectual property and brand identity. With a registered trade mark, you can protect your image and brand from infringement and maintain the integrity of your business. The key steps to registering a trade mark for your image include:

  • determining if your image is eligible for registration;
  • conducting a trade mark search;
  • identifying the relevant trade mark class(es);
  • preparing your application;
  • submitting your application;
  • waiting for examination;
  • responding to objections and issues; and
  • acceptance and registration.

If you need assistance registering a trade mark for your image in New Zealand, contact our experienced trade mark lawyers 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.  

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Emily Young

Emily Young

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