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A trade mark is a unique identifier for your business, which links your business to the goods or services you provide to your customers. Your business name, logo, or slogan may be eligible for a trade mark. To gain the most robust trade mark rights, you can register your trade mark with the Intellectual Property Office of New Zealand (IPONZ). However, some legal aspects may complicate your application, including whether someone else has already used your potential trade mark. Therefore, this article will explain trade mark priority and whether New Zealand trade marks follow a ‘first to use’ or ‘first to file’ system.

Unregistered Trade Marks

First, explaining how trade mark rights work in New Zealand is necessary. In some cases, you can have valid rights in a trade mark without registering them, resulting in an unregistered trade mark. 

You can indicate your unregistered trade mark with the ™ symbol.

If you are the owner of an unregistered trade mark, you can take advantage of some of the benefits of a trade mark. In this case, you improve your ownership rights through using your trade mark, and by establishing:

  • a distinctive reputation in the market with it; and
  • that your trade mark clearly represents your business.

The longer and more widely you use your unregistered trade mark, the stronger your rights in the trade mark are.  However, if you are ever involved in legal proceedings regarding your unregistered trade mark, you need to provide evidence establishing your ownership and your trade mark’s reputation. This evidence will vary according to your situation and the nature of your trade mark’s reputation.

Trade Mark Registration

On the other hand, registering your trade mark gives you clear ownership rights. This is because your trade mark is recorded on the official Trade Mark Register. As a result, you gain stronger trade mark rights, and have greater powers available to you for legal proceedings.

To gain registered trade mark rights, you need to apply to IPONZ to register your trade mark. Your application will need to meet its relevant criteria as part of the evaluation process. Additionally, there is a period where members of the public can oppose your trade mark registration, raising any objections in this opposition period. Notably, the trade mark registration process is where the first to use or first to file system becomes relevant.

Trade Marks and Ownership

When you apply to register a trade mark, IPONZ will conduct a trade mark search to determine if any trade marks exist that are identical or confusingly similar to the one you wish to register. Additionally, you have to be the trade mark owner to gain the relevant registration rights.

However, this process becomes complex where another business has already been using the trade mark you wish to register as an unregistered trade mark. They may have built up a reputation around that trade mark and used it for their business. In this case, there may be a dispute over who owns the trade mark. The other business may oppose your registration during the application process.

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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First to File Vs First to Use

The ‘first to file’ and ‘first to use’ systems determine who gains priority in these cases. In a country that uses a ‘first to file’ system, the party that officially registers the trade mark first is the one that gains its corresponding rights. Countries that use this system include:

  • China;
  • Japan;
  • Italy; and
  • Austria.

On the other hand, countries that employ the ‘first to use’ system prioritise the first business that uses the trade mark. A party that uses the trade mark first, and can establish unregistered trade mark rights, will have priority.

New Zealand uses the ‘first to use’ system, as do Australia and other countries. So, if someone can establish their commercial use of the trade mark you wish to register, they may be the owner of that trade mark. In that case, you will not have the right to register it.

Relevance For Your Trade Mark Registration

This legal area regarding trade mark ownership is very complex, so you should engage legal advice if you find yourself in this situation. 

Unregistered trade mark rights are generally not as strong or as easily enforceable as registered trade mark rights. However, if someone has unregistered rights in a trade mark before you apply for it, they may be able to oppose your trade mark application. However, they will need to provide relevant evidence of their use to oppose your registration in this way.

Key Takeaways

New Zealand follows the rule that the first party to use a trade mark is usually the party who gains priority and ownership rights. Therefore, a comprehensive trade mark search is vital for finding any unregistered trade marks identical to yours before registering your trade mark.

If you need help with your trade mark priority, 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 protection that protects something that identifies your business and the goods or services it provides. Common examples of intellectual property that you can register are business logos or slogans.

What is the difference between registered and unregistered trade marks?

You do not have to register trade marks to gain their legal protection. If you do not register, you may have an unregistered trade mark. However, your trade mark rights are stronger when you register. You can apply to register your trade mark with the Intellectual Property Office of New Zealand (IPONZ).

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