Intellectual property (IP) is a valuable business asset. Despite being intangible, you can own and deal with intellectual property like your physical property. Different kinds of intellectual property rights in New Zealand function differently according to the IP they protect. One kind of intellectual property right is trade mark rights. Fortunately, trademarks can last as long as you need them and maintain them appropriately. This article will provide some background and explain how long a trade mark can last in New Zealand.
How Do Trade Marks Work in New Zealand?
Trademarks protect the unique identifiers of your business that link it to any goods or services you provide. What qualifies as a trade mark is quite broad and can include the following:
- words;
- phrases;
- symbols;
- logos;
- sounds;
- smells; or
- any combination of the above.
As a result, there are various things that you could register as a trade mark as long as they represent your business. These include examples such as your:
- business logo;
- business name;
- slogan; or
- product name.
If you have a registered trademark, you are the only person or business that can use that mark. Additionally, you gain other legal rights with a registered trade mark, including the exclusive right to commercialise your mark.
Registered vs Unregistered Trade Marks
There is a distinction between registered trademarks and unregistered trademarks. For instance, you can have an unregistered trade mark right where you have yet to formally register with the Intellectual Property Office of New Zealand (IPONZ).
Moreover, you can operate your business activity with an unregistered trade mark and retain some legal rights, such as indicating your trademark with the ™ symbol. However, if someone copies your trade mark or uses it on their products, the legal process of enforcing those rights can be more limited or complex. Your ability to do so depends on various factors, such as:
- how long you have been trading with your unregistered trade mark;
- how much of a reputation it has in your relevant market; and
- the nature of any third-party copying or misleading conduct.
On the other hand, if you successfully register your trade mark with the IPONZ, there is an official record of your ownership. Furthermore, you can use the ® symbol to indicate your ownership with registration. You have more explicit legal rights against those who might copy or use your trade mark without authorisation. As such, it is essential that you carefully consider registering your trade mark.
Continue reading this article below the formHow Long Does a Trade Mark Last?
The validity and enforceability of an unregistered trade mark will last as long as you can prove that you have a good and strong enough reputation in the market concerning that trade mark. As a result, you cannot guarantee that your unregistered trade mark rights will last forever.
On the other hand, registered trademarks can last for as long as you want them to. When you first register your mark, you obtain registered trade mark rights for ten years. After that, you have to renew your trade mark registration. You can do so every ten years after that. You can do this indefinitely.
Your date of renewal is your ‘priority date’. This is either your trade mark’s filing date or convention priority date, whichever is earlier. As such, you must record this date to renew your trade mark in time.
How Can I Renew My Trade Mark?
Fortunately, you can complete the renewal process online through IPONZ’s digital management portal. However, when it comes time to renew your trade mark, you must renew it for every class of goods or services it applies to. Correspondingly, you will need to pay a renewal fee for each class, which is $200 per class and trade mark (excluding GST).
You can renew your trade mark up to a year in advance. Additionally, there is a six-month grace period afterwards if you miss your renewal date. Therefore, if you do not renew within those six months, your trade mark registration expires. If you wish to maintain your trade mark rights beyond this date, you must file a new trade mark application.
Removal for Non-Use
You must use your trade mark once it is registered. Otherwise, you run the risk of third parties opposing your trade mark for non-use. This process aims to deter businesses from hoarding trademarks they do not use.
Your trade mark becomes vulnerable to removal if you do not use it within a continuous three-year period. This three-year period may commence on any date after the trade mark is registered. For example, if you registered your mark 25 years ago but have not used it in the past three years, it will be vulnerable to removal.
Removing your mark from the register on these grounds is not automatic. Instead, a third party must apply if they want to have it removed from the register.
Key Takeaways
A trade mark protects various branding identifiers for your business. Some key things to note about trade mark registration include that:
- you must renew trademarks every ten years;
- your registration can be renewed indefinitely; and
- trademarks that are not used continuously for three years become vulnerable to removal for non-use.
If you need help with 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
Trade marks can cover a variety of identifiers for your business, including words, phrases, or symbols. For example, you may register your business name or logo as a trade mark.
A trade mark registration can last as long as you are using it. However, you must renew your registration every ten years to maintain it.
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