Why and how to register a trademark in New Zealand

In New Zealand registration is not mandatory to obtain trademark rights, as extensive prior use of a trademark can be recognized. However, registration is always highly recommended as it grants presumption of ownership and helps enforce the trademark. It is costlier and more difficult to enforce one’s rights over an unregistered trademark.

Trademark applications in New Zealand are filed with the Intellectual Property Office of New Zealand (IPONZ).

New Zealand is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

It is not necessary for the trademark to be in use in New Zealand in order for it to register. However, prior use of the trademark may help overcome objections raised by the trademarks office on grounds of lack of distinctiveness.

If you register a combined trademark (which includes both word elements and figurative elements) in New Zealand, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.

Once a trademark has been accepted by the trademarks office it will be published in the official journal for a period of three months during which interested third parties will be able to file opposition actions against the trademark applications.

In New Zealand, if the trademarks office does not consider that the color of your trademark is a distinctive feature, then you will be able to use it in any combination of colors. If the color is considered as a distinctive feature, then the use of the trademark will be restricted to the colors defined in the registration. 

In case the trademark includes words that have a meaning in any other language than English, or includes foreign characters or alphabets (Pinyin, Han, kanji, katakana, Cyrillic, Greek…) then a translation or transliteration will have to be provided with the application.

If the trademark includes words in Maori, or derives from a Maori word, the application will be forwarded to the Maori Trade Marks Advisory Committee in order to determine whether the trademark may be offensive to the Maori nation. Such is the case as well with any trademark that appears to be derivative of Maori text or imagery or may be deemed offensive to the Maori.

In general, names and representations of a person may be registered as a trademark. However, written consent from the person concerned or their legal representative may be required by the trademarks office, or evidence of the person having died at least ten years before the trademark application if it is the case. 

Although as stated above it is not necessary for a trademark to be in use in New Zealand in order for it to register, if it is not used periods of three consecutive years, it will become vulnerable to cancellation actions for non-use.

Once registered, trademark in New Zealand have a validity of ten (10) years counting from the application date. It can then be renewed indefinitely for successive periods of ten years. The renewal can be requested during the year preceding the expiration date, as well as during the year following it, upon payment of additional fees.

 

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