International Registrations designating New Zealand (NZD)

From 10 December 2012 it is possible to designate New Zealand in an international application originating overseas.

By designating New Zealand, the applicant declares that they have an intention that the mark will be used by him or with his consent in New Zealand in connection with the goods and services identified, and can obtain protection with the same effects as a trade mark application filed through the New Zealand national system for registering trade mark rights.

What are the fees for designating New Zealand?

If New Zealand is designated on the international application, the following amounts of fees (in Swiss francs) must be paid:
 

The amounts above are the Swiss franc equivalents to the New Zealand national filing fees.

Which form may I use to designate New Zealand in an international application or in a subsequent designation?

WIPO MM2, or MM4 forms available on the WIPO website.
 

Will I need a representative?

When New Zealand is designated in an international application, it is not necessary to appoint a local representative unless IPONZ issues a provisional refusal report identifying reasons the mark cannot be protected for some or all of the listed goods or services; or a proceeding is lodged against the protected mark.

If the international holder needs to communicate directly with IPONZ (sending of documents, for example), the same representation rules as those of the New Zealand national trade mark registration system apply.

Examination process

IPONZ has the right to refuse protection of a mark within 18 months of receipt of the application from WIPO. Refusal may be made on any of the grounds (absolute and relative) for which an application for registration filed directly with IPONZ might be refused.

Immediately after receipt, the international registration designating New Zealand appears on the New Zealand national trade marks register as under examination.

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The international registration designating New Zealand is then examined for protection in exactly the same way as for New Zealand national trade mark applications.

If there are grounds for refusal, IPONZ must send a notice of provisional refusal to WIPO within 18 months. The notice is sent to the holder via WIPO. The notice of provisional refusal will confirm whether protection of the mark is refused in respect of all or just some of the goods and services, and the grounds for refusal. If the holder of the international registration wishes to respond to the notice of provisional refusal, they will need to become a registered user of the New Zealand online system for the registration of trade marks, or appoint a local agent to act on their behalf.  Read more about our services.

If protection of the mark is refused in respect of all of the goods and services, and the grounds for refusal are not withdrawn or overcome, a final notice of intention to refuse protection is sent to the holder. The holder may request a hearing on this decision, and appeal the decision of the hearings officer if they wish; following the same process as that for trade mark applications rejected under the system for registration of national trade marks.

If protection of the mark is refused in respect of some goods and services only, the mark will be accepted for the remaining goods and services on the international registration designating New Zealand after the deadline to respond to the notice of provisional refusal has passed.

Following acceptance of the international registration designating New Zealand, a notification is sent to WIPO. Then the mark will be published in the Journal, and be subject to opposition, just as trade mark applications filed directly with IPONZ are. Read more about proceedings. 

If an opposition is filed, the IPONZ Hearings Office will verify its admissibility and then notify WIPO with a provisional refusal stating the grounds of the opposition. Then the Office will process the opposition and at the end of the opposition procedure (after appeals) will inform WIPO of the final outcome: whether the protection applied for is refused or accepted for some or all of the goods and services.

If no opposition is filed, or if the mark is not successfully opposed in respect of all goods or services, after a minimum of six months (to allow for applications claiming convention priority), the mark is deemed Protected and a statement of grant of protection is sent to WIPO.