How to apply for an International Trade Mark

To file an application for international registration of a trade mark using IPONZ as the Office of Origin, you must apply by completing IPONZ’s online application form.

Entitlement to file

Each applicant must indicate their entitlement to file the International Application. Applicants must be either:

• a person who is a national of New Zealand;
• a person who is domiciled in New Zealand;
• an organisation with a real and effective industrial or commercial establishment in New Zealand.

IPONZ’s online case management facility will automatically determine the applicant’s entitlement to file based on the ‘client type’ indicated on their IPONZ client record. It is important that the applicant details are correct for example:

• An appropriate client type is selected, a person or a New Zealand company.
• The applicant’s entitlement address checkbox is selected to indicate that a physical address in New Zealand is their entitlement address.

Read more on how to check the owner details for the basic mark.

Preparation

You need to ensure that your basic mark is suitable to apply for international trade mark, read more on how to prepare for international registration.

Online application

Getting Started

You need to become a registered user of our website using an igovt logon. If you need an igovt logon you can 'Register' to create one from our website. If you already have an igovt logon you won't need to create a new one, simply Log on and enter your username and password.

Once you have logged in you will be taken to your IPONZ INBOX. On the left hand side navigation bar under the section Trade Mark select the Apply for International Registration (NZ Office of Origin) to begin an application.

Ensure you fill in all required Fields (marked with a red dot). If you need help, select and hold the cursor over a field box and a help dialogue box will appear.

Reference

Use a different reference for each application. You will be prompted if you enter a previously used Number by mistake.

Basic Mark

The New Zealand application or registration is referred to as the “basic” application or registration for the international application.  Read here on how to prepare your basic mark for international registration.

You need to specify a national trade mark application, select Search and input you chosen search criteria then choose Search. You will be able to select the correct result and the trade mark information will be prepopulated for your international registration.

Additional Marks

The international application can be based on one or more trade mark applications or registrations; however, the basic marks must have certain details in common. Select Add to search and select an additional basic mark. Please note that additional marks must be the same as the basic mark or IPONZ will refuse to certify the international application.

Convention Priority

You may claim an earlier filing date based on your first application in a convention country (including New Zealand for an NZOO) if you file your international application within 6 months of the earlier application with priority. To make the claim you will need to enter the details of the prior application on the NZOO form. Select Add and complete the convention priority fields including Priority Date and Country. Use the Claims text box to enter details such as partial convention claims. Upon completion select the Submit button, at the bottom right hand corner of the screen, to include your claim on the NZOO form.

Mark information

The basic mark information is prepopulated for you here. You may supply other information such as verbal elements, disclaimers, and translations of words in the mark in English, French or Spanish.

Designated countries

To select designated countries (contracting parties) please select Add to select countries you wish to seek protection in. You can search by code or country name or navigate from our list. You may wish to expand the number of designations displayed to 100 to view the complete list on one screen.

Depending on which designated countries you add, you may need to supply specific information, read more on specific requirements for some designations. 

Goods & services specification

Your international application must include a list of all goods and/or services for which international registration of the mark is sought. The scope of the listed goods or services must not be broader that those of the basic mark(s). The International Bureau of WIPO will determine if the goods or services are adequately classified against the most recent schedule of the Nice Classification system. Read more information on how to classify goods and/or services.

The goods and services specification is populated from the basic mark(s). Select Edit to edit the goods and services specification list to be recorded for the international registration. You may Add classes to provide a limited list of goods or services for some designations only. Once a class for a limited list has been added and edited, indicate which designation should be provided the limited list by selecting the relevant country code for that designation beside the list. Classes with “IB” selected will be recorded on the international registration for the purposes of subsequent designation.

To assist offices with the examination of the specification, any Māori terms within the specification should be accompanied by an English translation in brackets. For example, harakeke (flax).

When you are finished editing the list of goods and services select the Continue button, at the bottom right hand corner of the screen, to include the changes on the NZOO form.

Payment to WIPO

The payment is required in Swiss Francs and to be made directly to the International Bureau (IB) of WIPO. You can use the Fee Calculator to help you identify the cost of the application. Ensure you enter the required information to enable the IB to confirm receipt of the payment such as fee amount, and the basic application or registration number as the payment id in the space provided. In addition once your application has been certified, you will be able to use WIPO's Madrid Portfolio Manager (MPM) to find WIPO's reference for the international application.

WIPO payment information.

Please contact WIPO directly with all questions relating to payments.

Credit card Payment

Currently you can not make payment by credit card when filing International Trade Mark application to WIPO.

You can use WIPO’s E-Payment service once an irregularity notice including the WIPO reference and amount of fees due has been issued.

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Submitting your application

1. When you have completed the application, check your application thoroughly and make any final changes before submitting it. If you would like to save your application without submitting it press Save.
2. When you are ready to submit the application to IPONZ for review for certification, click Submit.
   (NOTE: If there is an error or omission in the form a message will display in red at the top of the screen).

Once your application has been submitted you will receive a notification to the email address that was listed in the contact details. A confirmation and summary of the submission of the application will then appear in the discussion section of your IPONZ Inbox.

If you need more help, please contact us during business hours. You may also wish to consult WIPO’s MM2 explanatory notes for detailed information on how to fill out the form.

What happens next?

Review the IR process section for more information on the application process.