Guide to online searching of the trade mark register

Guidelines on searching for trade mark applications and registrations in New Zealand. Please note that this information is intended to be a guide only. For legal advice, we recommend that you contact a patent attorney or lawyer familiar with intellectual property law. 

The Trade Mark Search Form contains various fields where you may enter data to conduct a search of the trade mark database.

Go to Search the Register>Trade Mark Search.

2.2.1 Which search option should I use?

For quick searches, for example where you already know the trade mark title or case number you are after, the quickest option is to use the “keyword” search. Simply enter your word or words into the Keyword field or enter the IP case number.

Please note that this search is only intended to give you a quick indication on whether a trade mark exists on the Register. If you are new to the trade mark registration system, you should consider using our Search & Preliminary Advice service to get a trade mark examiner to do the search for you, or seek the assistance of an experienced IP Professional.

Experienced users requiring more powerful search options should use the Advanced Search. This search allows you to construct complex search strings and search a wider range of parameters. When searching for a trade mark you should use the Title search and incorporate searching operators to conduct a thorough search for similar trade marks.

2.2.2 Searching for identical and similar marks

Think laterally; remember you are looking for any marks that may be too similar to your proposed mark. In the Title field use combinations of terms, common misspellings, text speak and combinations of stem words. There are a range of search operators and wild cards which will help provide a comprehensive search. The search operators (AND, OR, and AND NOT), quotation marks and wildcards (* and ?) can be used singularly or together to form complex search strings.

Examples of word searches to find similar or identical marks

Example 1: PLASTERCOTE

• plast*c* OR plast*k* OR plast*q* OR pla?st*c* OR pla?st*k* OR pla?st*q*
• (plast* pla?st*) AND (*coat* *koat* *cot* *kot*)
   

Example 2: LEARNING MEDIA

• (*l?rnin* *learn*) AND ( *m?d?a* *me?d?a* *m?ed?a*)
• “learning media”
• “*learning media*”
   

Example 3: MILLENNIUM

• m?l?n*m* OR m?ll?n*m*
• *mil?n*m* OR *mill?n*m* OR *myl?n*m* OR *myll?n*m*

Example 4: JUICY ORANGE

• (*juic* OR *j??c*) AND *orang*
• Juic*
• *rang* AND NOT (*strang* *ranger*)

Example 5: ECO KIWI

• (*eco* *ecko* *ecco* *echo* *ekko*) AND (*kiwi* *k*w*)
• “ECO” OR “KIWI”
•  Eco* AND NOT *ecologic*
   

Example 6: A

• “A”
• A* AND NOT “A?*”

2.3.1 The Vienna Classification system

The Vienna Classification system is a numbering system developed by the World Intellectual Property Organization (WIPO) to describe images and/or stylised features that make up a trade mark. The system aids in effective searching of trade marks which consist of, or contain, pictorial representations, words presented in a special form, ornamental motifs or other figurative elements.

Every trade mark on the New Zealand register that contains a stylised element has been assigned a relevant “Vienna Descriptor”.

The classification constitutes a hierarchical system that proceeds from the general to the particular. For instance:

A summary of the WIPO Vienna categories is included in Appendix One to this guide. A full list of terms classified according to the WIPO Vienna Classification system can be found online at  http://www.wipo.int/classifications/nivilo/.

IPONZ has supplemented the Vienna Descriptors by adding descriptors that are specific to New Zealand, for example native flora and fauna.

Note that New Zealand’s Vienna descriptors may be used in conjunction with other descriptors that are not specific to New Zealand. For instance, if you wanted to search for a silver fern design, you may search under New Zealand descriptor 53.2.2, but also under 5.3.7 (ferns), 5.3.13 (stylised leaves) and 5.3.14 (stylised leaf).

2.3.2 Searching for a Trade Mark Using Vienna Descriptors

To search for stylised and/or image elements of a mark, use the Vienna Classification box. Searches using Vienna descriptors can be conducted in much the same way as mark Title searches, using AND, OR and AND NOT. You can also search using Vienna descriptors by the subcategory.

A search for this application can be made by:

• Searching for each Vienna descriptor individually 3.7.11 3.7.21 3.7.24 24.17.1 53.1.20
• Searching for combinations of individual Vienna descriptors 3.7.11 AND 3.7.24 OR 3.7.24 AND 24.17.1
• Searching for all Vienna descriptors in a sub-categories 53.1 (this will return results for any mark which contains a Vienna descriptor which starts with 53.1)
• Searching for combinations of sub-categories 3.7 AND 53.1 (this will return hits of Vienna descriptors which contain a bird of any type and a Māori design)
• Searching for some Vienna descriptors but eliminating others 3.7.21 AND 3.7.24 AND NOT 3.7.1 (this will return hits of marks containing other birds and birds stylised but exclude marks which also contain the Vienna descriptor for eagles)
   

The register can be searched across a wide range of fields. In addition to the title, case number and Vienna Classification fields, the register can be searched by the owner name, application status, dates (filing, priority, acceptance and registration), case contact, Nice schedule, Nice classes, specific goods or services, or applications under proceedings. These fields can be searched in combination or singularly.

For example, you can search for marks which contain a combination of verbal and image elements, limit your verbal search to only include live applications, find particular cases by a specific owner, limit your image search to a particular Nice class, find marks filed on a specific date, or find other applications which contain the same services as yours. Further details on some of these fields are listed below.
 

2.5.1 Nice Classification of Goods and Services for Trade Marks

Each trade mark application must be made in relation to specific goods or services (known as the specification). New Zealand uses the international classification system known as the Nice Classification system to separate goods and services into different classes.

The current edition of the Nice Classification system is the Tenth edition which came into effect on 1 January 2012. All trade mark applications filed with IPONZ on or after 23 December 2011 are classified in accordance with the Tenth Edition. A full list of terms classified according to the Nice Classification system can be found online at the World Intellectual Property Organisation (WIPO) website.

Before you choose which class you want to search, you need to decide which version of the classification system you are going to search in.

IPONZ has defined what version of classification system is being used in New Zealand. Four systems currently exist:

Once you have selected your classification system, you need to select the appropriate class(es) to search.

Enter the appropriate class(es) into the “Class” field as shown below.

This section is no longer at this location, it has been renumbered from 2.5 to 2.6. Please click here to view this section.

IPONZ uses a structured database of client records which are linked to IP records on the register. To search for IP records by client, use the advance search, and click Select against either Applicant/Owner or Agent.

Applicant searching is identical to mark title searching. Spaces are recognised as ORs and you can use quotation marks, brackets, OR, AND, * and ? to find your desired result. For more information about using these search tools please refer to Section 2.2.2 of this guide. 

It is important to note that if a client name contains a comma or some other punctuation the system will recognise this as a character.

Examples of Applicant searches

Applicant 1: JOHN SMITH

• A search for “JOHN SMITH”, JOHN AND SMITH, “*JOHN SMITH*” or *JOHN* AND *SMITH* will return this client as a result. JOHN SMITH without speech marks or AND will return results where the client name contains either JOHN or SMITH
   

Applicant 2: JOHN SMITH, Inc

• The first two searches above will not return Applicant 2 as a result. This is due to the comma after SMITH being recognised as a character
• A search for “JOHN SMITH,” or JOHN AND SMITH,, “*JOHN SMITH*” or *JOHN* AND *SMITH* will return this client in the results
   

Select the client, or clients that you wish to search the register for. Note that there may be multiple records for the same organisation in some cases. Over time IPONZ will reduce these down to single records.

Those clients will now become a search criterion on the advanced search page.

Your search results will display beneath the search criteria once you press Search.

You can use the Show/Hide column control to change what information is shown in your search results:

You can use the Send Result List to email yourself a copy of your search results. Enter your email address and the select either the Excel of PDF report.

The PDF report will give you a full summary of each IP in your search results.