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Trade mark FAQs

What is a trade mark?

Are the words in my logo protected?

How can I search to see if my mark can be registered?

What is a Specification and Classification?

What are trade mark classes?

How do I register a trade mark?

What happens after my application is received?

When will your application be processed?

What is a Compliance Report?

How do I respond to a Compliance Report?

I have already filed my application but I want to make changes to the trade mark. Can I do this now?

I filed my application with the wrong name - can I change it?

What steps are involved in amending my trade mark?

The trade mark opposition process - an overview

Maintaining your trade mark registration

Can my trade mark be restored to the register?

Can someone else apply to register my trade mark if it has been removed from the register?

How do I sell or license my trade mark?

How can I show that my goods or services are covered by a registered trade mark?

Can IPONZ help me if my trade mark is infringed?

How long will it take to register my trade mark?

When can I use the TM and ® symbol?

Can I get a refund of my fees?

How long will my registration last?

Will registration protect my mark overseas?

Who enforces trade mark protection?

Can I transfer the ownership of my trade mark to someone else?

How do I change my name or address details?

How do I sell or license my trade mark?

What is a geographical indication?

What is the maximum file size for filing correspondence online?

What are the status descriptions?

How do I view case history that occurred in the previous IPONZ system?

What are the main changes from the trade mark law reform 2012?

 

If you haven't found your answer then send us your question and we'll get back to you.

 

What is a trade mark?

See What is a trade mark?

 

Are the words in my logo protected?

Registration of a trade mark gives rights to the mark as a whole. It does not give rights to any separate parts of the mark such as words or design elements independently. Before applying for a trade mark consider the following:

  • A word mark for plain text characters protects the words regardless of the way they are presented.
  • A device mark for words protected in special characters or a logo mark provides protection for the mark as it is presented.

 

How can I search to see if my mark can be registered?

See How to check for existing trade marks.
 

What is a Specification and Classification?

See Classifying Goods or Services.

 

What are trade mark classes?

Trade mark classes relate to categorising goods and services of a similar kind into classes for ease of identification and searching. New Zealand uses an international classification system called the International Classification of Goods and Services (currently the 10th edition of the Nice Classification, introduced on 1 January 2012), which is published by the World Intellectual Property Organisation (WIPO) website.
 

How do I register a trade mark?

See How to apply.

 

What happens after my application is received?

A trade mark application is confirmed by 2 emails and an online notification if it has been successfully filed with our Office.

  1. A tax invoice confirming payment
  2. An email notification that acknowledges the receipt of your trade mark application
  3. An online notification available from your Inbox.

If you have received all 3 notifications then your application has been filed. Your trade mark case number is on your tax invoice. If these notifications are not received you can access your application by logging on to the website and selecting Apply for a Trade Mark. Saved trade mark applications will appear at the top of the screen, select Load to complete the application.

Once your application has been filed you can go online to the IPONZ website and view your application details by selecting the application from your Inbox.

After the application has been examined you will be sent an email to advise you that either a Compliance REPORT or a Notice of Acceptance is available online in your Inbox for your review. You can find the latest processing timeframes for trade mark applications and correspondence here.

If the application is not accepted the Compliance report, available from your Inbox, will outline the reasons why.

There may be certain conditions to meet before your application can be accepted. The client has 12 months from the file date to meet the criteria and to convince the office that the trade mark is able to be registered.

If your trade mark is accepted you will be sent an email to advise you a Notice of Acceptance is available online, this will include information about when your trade mark will be advertised in the Intellectual Property Journal. Your trade mark will be advertised for 3 months, if there is no objection to the trade mark it can be registered.

The minimum period from filing to registration is six months and then you will be sent a notification that your Certificate of Registration is available.

For more information about what happens after your application is received please see The Trade Mark Process.

 

When will your application be processed?

You can find the latest processing timeframes for trade mark applications and correspondence here.

To track the progress of a particular application or correspondence you have submitted please logon to the website and view your Inbox.

Login Now

 

What is a Compliance Report?

See Replying to your Compliance Report.

 

How do I respond to a Compliance Report?

See Replying to your Compliance Report.

 

I have already filed my application but I want to make changes to the trade mark. Can I do this now?

The answer can depend on whether or not the Office has commenced work on the particular application. For example whether or not the trade mark has been searched.

If the Office has not commenced work on an application, it may be possible to make amendments to the trade mark, so long as he Office is contacted within 24 hours of filing. The office will look at the surrounding circumstances and treat each application on a case by case basis. Please note that any changes made may affect the filing date.

After the Office has commenced work on a trade mark, you cannot make any changes that will materially alter the meaning or scope of the application. Generally, only very minor changes can be made. The reason for this is that substantial changes made to a trade mark post-filing may disadvantage other applicants or users of the register. For information see our guideline on amendments to trade mark applications.

 

I filed my application with the wrong name - can I change it?

If you need to correct an obvious mistake in the applicant’s name, such as a spelling error or the omission of the legal status of the applicant, you can request a change under section 37(2)(a) of the Act. The Commissioner will usually allow such a change where the legal ownership of the application remains the same. Please note - where there is any doubt as to the validity of the request under section 37(2)(a) of the Act, the Office may require supporting documentation to be supplied.

If your change to the applicant’s name involves the ownership of the application changing from one legal entity to another you will need to complete an assignment or transmission of the mark.

For more information on amending your trade mark please see our guideline on amendments to trade mark applications.
 

What steps are involved in amending my trade mark?

You can make an online request to amend your trade mark by logging on to the website and selecting Maintain a Trade Mark from the left hand navigation menu. Your request must include details of the applicant's name, if the applicant has an agent the agent's name, a description or representation of the trade mark, the trade mark application number and the nature of the correction to be made to the application. Any request for an amendment to a trade mark is examined by a trade mark examiner. For more information on amending your trade mark please click here.
 

The trade mark opposition process - an overview

Opposition is an objection to the registration of an application in the form it was advertised. The Intellectual Property Office of New Zealand recommends that a potential opponent bring their concerns to the attention of the trade mark applicant before they formally file a notice of opposition. The three month opposition period facilitates this.

See Opposing Registration of a Trade Mark for more information.
 

Maintaining your trade mark registration

See Maintaining your trade mark.
 

Can my trade mark be restored to the register?

Yes. Your trade mark can be restored up to one year after the trade mark registration has expired by simply paying the renewal fee. This can be done online.
 

Can someone else apply to register my trade mark if it has been removed from the register?

Yes. If your trade mark has been removed from the Register, another person can apply to register that trade mark as their own. However your mark will prevent the other person’s mark from being accepted until one year after the expiry of your trade mark registration.
 

How do I sell or license my trade mark?

Trade marks are bought, sold or licensed by way of a contract that should define the terms and conditions upon which you change the ownership of the trade mark. You are advised to seek professional help in drafting your contract.

IPONZ does not assist in the drafting of contracts between parties. It is the responsibility of the new owner of the trade mark to register any change of ownership with the IPONZ.
 

How can I show that my goods or services are covered by a registered trade mark?

When your trade mark is registered you can use the ® symbol on your goods or when advertising your services. It is an offence to falsely claim that your trade mark is registered.
 

Can IPONZ help me if my trade mark is infringed?

No. IPONZ does not assist with infringement of a trade mark. If a trade mark is infringed, then IPONZ recommends that you seek legal advice from a Patent Attorney or a lawyer familiar with intellectual property issues.
 

How long will it take to register my trade mark?

The amount of time that it takes to register a trade mark can vary and depends on the outcome of the examination and acceptance. The minimum period from filing to registration is six months and then you will be sent a Certificate of Registration.

After the application has been examined you will be sent an email to advise you that either a Compliance Report or a Notice of Acceptance is available online from your Inbox for your review. You can find the latest processing timeframes for trade mark applications and correspondence here.

If the application is not accepted the Compliance report, available from your Inbox, will outline the reasons why.

There may be certain conditions to meet before your application can be accepted. The client has 12 months from the file date to meet the criteria and to convince the office that the trade mark is able to be registered.

If your trade mark is accepted you will be sent an email to advise you that a  Notice of Acceptance is available online, this will include information about when your trademark will be advertised in the Intellectual Property Journal. Your trade mark will be advertised for 3 months, if there is no objection to the trade mark it can be registered.

 

When can I use the TM and ® symbol?

A ™ symbol indicates that a trader is using a sign as a trade mark but does not indicate

whether the sign is registered. Once a trade mark is registered, the ® symbol may be legally used against the trade mark.

 

Can I get a refund of my fees?

A refund will only be considered where required or permitted by legislation. The following legislation applies:

Refunds will not be provided in the following circumstances:

  1. Where the applicant has chosen to pay GST with their application. If the fees attached to an application include GST, the Office assumes GST is payable by the applicant and will receipt that GST.
  2. Refunds will not be processed once a filing has been receipted and work has commenced on, or been completed on the filing.

 

How do I request a refund?

Refund requests must be in writing and include the following information:

  • receipt date
  • receipt number
  • amount you are requesting be refunded
  • reason for refund
  • name of person/organisation the refund is to be paid to

 

How are refunds paid?

If you have paid the fees using our direct debit system, the refund will show as an adjustment on your next direct debit statement.

If you paid the fees by any other payment method your refund will be direct credited into your bank account unless you specify you would prefer a cheque. 

 

How long will my registration last?

The registration period lasts for 10 years from the date the Office received your application or 10 years from your convention priority date (if the application claims priority from an overseas application), whichever is earlier. Once this initial period has expired, the registration can be renewed every 10 years. This can be continued indefinitely, provided you continue using the trade mark.

See How to apply for a trade mark for more information.

 

Will registration protect my mark overseas?

No. Each country has its own laws and practices regarding trade marks. You may need to apply for protection in each country where you wish to register your trade mark. However, New Zealand is a signatory to an international agreement called the Paris Convention for the Protection of Industrial Property. Article 4 of the Paris Convention provides that any person who has filed an application to register a trade mark in a signatory country, has the right to file further applications in any of the other signatory countries, and receive the priority date of the original application, provided that the further applications are filed within six months of the original application.

To learn more, consult an intellectual property expert and review the information on the World Intellectual Property Organization’s website.
 

Who enforces trade mark protection?

Registered trade marks are protected by intellectual property rights, but the trade mark owner remains responsible for taking action if competitors try to use the same or a confusingly similar mark for identical or similar goods/services.
 

Can I transfer the ownership of my trade mark to someone else?

Yes. The owner or applicant for a trade mark may assign or transmit ownership of the mark. To apply for assignment or transmission of the mark, logon to the website, select Maintain a Trade Mark from the left hand navigation menu and select Assignment from the list provided. Complete the required owner details and provide supporting documentation showing transfer of title.
 

How do I change my name or address details?

Regulation 135 of the Trade Marks Regulations 2003 sets out the necessary formalities when an owner requests an alteration of name and/or address pursuant to section 78(a) of the Act.

To alter the name and/or address of the owner of a registered trade mark logon to the website, select Maintain Client from the left hand navigation menu and search for the client you wish to update.

 

How do I sell or license my trade mark?

Trade marks are bought, sold or licensed by way of a contract that should define the terms and conditions upon which you change the ownership of the trade mark. You are advised to seek professional help in drafting your contract.

IPONZ does not assist in the drafting of contracts between parties. It is the responsibility of the new owner of the trade mark to register any change of ownership with the IPONZ.

 

What is a geographical indication?

A geographical indication (GI) is used to identify goods that have a specific geographical origin and possess a quality, reputation or other characteristic that is essentially due to that place of origin.

A famous example of a GI is "Champagne". The name Champagne can only be used for sparkling wine that comes from the Champagne region in France.

GIs do a similar job to trade marks in that they help to "brand" a product. They provide information to consumers about the source, quality or other characteristics of goods.
 

New Zealand Law on GIs

Fair Trading Act 1986

Section 9 of the Fair Trading Act 1986 provides that "no person shall, in trade, engage in conduct that is misleading or deceptive or is likely to mislead or deceive". If a GI is used in trade to create a misleading impression as to the geographical origin, quality, or some other characteristic of a product, this could be a breach of the Fair Trading Act 1986.

Passing off

The action of "passing off " can be used in cases where the goods or services of one person are wrongly represented as being those of another person. There must be loss suffered as a result of consumers being led to believe that they were buying the one trader's goods when in fact they were buying goods from another trader.

In New Zealand, French wine interests used the action of "passing off " to prevent non-French winemakers from labelling their sparkling wine "Champagne".

Trade Marks Act 2002

GIs can be protected as collective or certification trade marks, provided they meet the criteria for registration under the Trade Marks Act.

Geographical Indications (Wine and Spirits) Registration Act 2006

The Geographical Indications (Wine and Spirits) Registration Act 2006 provides for a voluntary system of registration of Aotearoa-New Zealand and foreign GIs for wine and spirits only. The Act was passed late 2006, but is not yet in force (meaning it does not yet have legal effect). The Act will be enacted by regulation. New Zealand continues to provide protection for GIs, including wine and spirit GIs, by the measures outlined above.

 

What kind of rights do geographical indications provide?

Unlike most other IP rights, GIs are collective rights, and are not owned by any one person. Any producer who produces goods from within the area in question, and meets the requirements in relation to the use of that GI, is entitled to use it.
 

Is a geographical indication the same as a place name?

A GI is more than simply a name of a place. To qualify as a GI, the term used to identify where goods are from must have acquired or developed a quality, reputation or other characteristic due to the place of origin. This tells people that goods with a particular GI are a product of a certain region, for example, and they can expect those goods to be of a particular standard, quality or reputation.

 

What is the maximum file size for filing correspondence online?

In one upload window you can upload up to three files with a total of 60MB. However each document has a maximum file size of 21MB per document. If your document is larger than 21MB, please upload the document as multiple files.


How do I view case history that occurred in the previous IPONZ system?

Details of changes to cases that occurred before the introduction of the new IPONZ case management system on 13 February 2012 can be viewed as a public document on the case.

Information about changes to interests (owners/agents), classes and title are available as a PDF document called ‘Case History Prior to 13 February 2012’. You can access the document from the Documents tab.

 

What are the main changes from the trade mark law reform 2012?


International treaties


Madrid Protocol

On 10 December 2012 New Zealand business will be able to take advantage of the worldwide trade mark system through IPONZ to protect their brands internationally. New Zealand will begin to be designated by overseas companies wishing to protect their brands in New Zealand.

Key points to note:

  • New Zealand will have a 100% electronic system including the MM2 form.
  • New Zealand will not be charging a handling fee for an international application.
  • International fee to be paid directly to WIPO.
  • An address for service in New Zealand is required when responding to a provisional refusal or undertaking a proceeding.
     

The WIPO guide about the Madrid Protocol

The WIPO FAQs about the Madrid Protocol

New Zealand’s Declarations under the Madrid Protocol

WIPO presentations given in New Zealand 23-25 October 2012
 

Singapore Treaty

A number of changes are introduced as a result of the Singapore Treaty which harmonise internationally and simplify trade mark procedures.

Some key changes are:

Relief measure

New regulation 62A allows an applicant for registration of a trade mark to apply within two months after the deadline has expired for an extension of time to complete the outstanding examination issues.

This relief measure is only available once.

Addresses

The requirements around the provision of addresses have been made simpler including:

  • No longer required to provide a business or residential address
  • Simplified requirements for address for service
  • Address for service no longer mandatory at the time of filing a trade mark

Authorisation of Agent

The Commissioner has more discretion on when to require an authorisation of agent.
  

Fees

IPONZ has undertaken a review of the operational model of its services and associated funding requirements in accordance with Treasury Guidelines and with assistance with Deloitte.

This review has resulted in an increase in fees which have not increased in 13 years. Overall IPONZ fees still remain low by international comparison and the increases are in line with inflation.

Trade Mark fees (GST exclusive)


 

Search (S)
Preliminary Advice (PA)
S&PA
Application
Renewal
Opposition
Hearing
Revocation
Declaration of Invalidity

Fee from 10 December 2012

$40

$40

$80

$150

$350

$350

$850

$350

$350


The fee for certified copies, or extracts from the register has been removed as this service is provided through IPONZ online system.

 

Mandated electronic communication through the IPONZ case management facility

The regulations will mandate electronic communication with IPONZ through the Commissioner’s online case management facility.

This follows a significant uptake by IPONZ clients of its online services where 99% of trade mark applications filed in the last six months have been filed electronically.

The regulations also allow a mechanism for the Commissioner to approve alternative filing methods in certain exceptional situations. IPONZ intends to publish a practice note which will give further guidance on the situations this might cover.

Where it is not possible for the Commissioner to communicate with owners through its case management facility, notably sending renewal reminders to owners of older trade mark registrations, the Commissioner will contact them by other means including by post.

 

Hearings 

A number of changes in relation to the regulations concerning proceedings are required to ensure compliance with the Madrid Protocol including:

  • Requiring the ground(s) of opposition together with the relevant sections of the Act those grounds relate to. In addition, if a ground of opposition relates to section 25 of the Act, the trade mark numbers of the earlier trade marks.
  • The Commissioner sets the relevant deadline from when a document is sent by the Commissioner rather than received by the party.

Further changes to the regulations concerning proceedings will be made to improve the administration of proceedings before the Commissioner in the second set of regulation changes that are anticipated to come into force in the first quarter of 2013. 

 

Other

A number of technical amendments come in to force on 10 December 2012 including:

  • It will now be possible to add further classes of goods or services up until the acceptance of a trade mark. This is not retrospective and will only apply to trade marks filed on or after 10 December 2012.
  • You will be able to divide a trade mark registration.

 



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Last updated 8 April 2014