Search and preliminary advice service

If you are unfamiliar with the trade mark registration process, we recommend that you apply for a search and preliminary advice report before applying to register your trade mark.

A search and preliminary advice report will provide you with an assessment of whether your desired trade mark is likely to comply with two important areas that are examined under the Trade Marks Act 2002 (the Act).

What is the search for?

The search of the trade marks register will identify any identical or confusingly similar trade marks for the same or similar goods or services to yours that have already been applied for, or registered, at the date of the search.

Trade mark registrations, and pending trade mark applications, may prevent the registration of later applications. This is because the Act prohibits the registration of identical or similar marks that belong to different people for the same or similar goods or services if they are likely to deceive or confuse. This protects the rights of people with registered or pending trade marks, and prevents the public being confused or deceived as to whose goods or services they are buying.

What is preliminary advice?

Preliminary advice will inform you whether your proposed trade mark is eligible for registration under section 18 of the Trade Marks Act. This section relates to whether or not your trade mark is descriptive and/or distinctive of your goods or services.

If a trade mark is distinctive, it must be sufficiently unusual or fanciful enough that consumers would be able to identify it with only one trader. If a trade mark is not distinctive it means that the public would not identify the trade mark as a “brand” or “logo” and would not associate it with any one trader.

For example, the term BUDGET SUPERMARKET for retail services in relation to food and household items is unlikely to distinguish one particular trader from any other in that trade channel. The term could be used by many traders in describing the nature of their business and as a consequence the ordinary shopper would not associate the term with any one trader.

Marks that simply describe the goods or services, or characteristics of goods or services, to which they relate will also often not be distinctive. For example, the word APPLE cannot be registered as a trade mark for fruit. This is because APPLE is not capable of distinguishing the goods of one trader from another as it is a generic name for a particular type of fruit. However, APPLE® is distinctive in relation to computers.

Marks that are commonly used in relation to the goods or services for which the mark is being applied for may also not be distinctive under section 18. For example, a colloquial or generic term that has been commonly used to describe a characteristic of the goods or services may not be registrable. The term EXTRA SUPREME is commonly used to describe a pizza with many toppings, and would not be registrable as a trade mark in relation to pizza.

Things to remember

A search and preliminary advice will provide you with advice for the trade mark as represented, and only for the specified goods and services as listed and paid for. Please note that the following information must be supplied in order to ensure you receive an accurate assessment in your search and preliminary advice report.

Applying for a search and preliminary advice report

You can apply for search and preliminary advice by completing our online application form and paying the prescribed fee.

Preparation

You need to prepare a clear description of your trade mark. The list below can help you identify the nature of the mark and a suitable method of representation.

• Word - e.g. any combination of words, letters or numbers in normal type script
• Image - e.g. a picture or images only
• Combined - e.g. a combination of words and pictures
• 3D - please supply images showing the different angles of the mark, labelled with the perspective from which they are taken (i.e. top, side etc)
• Animation - please supply a graphic representation and a written description
• Colour - e.g. the colour “red” not an image which is in colour - you must supply a specific description by reference to a recognised colour system, for example, “the trade mark consists of the colour yellow (Pantone® 111C)”
• Sound - please supply a score for a tune, a piece of music or a description of the sound
• Smell - please supply a written description of the smell and how it will be applied

If your mark has a special font, layout, image or colour (for example, a business logo), then ensure you have a suitable image to accompany your application. You can attach a representation of your mark saved as a JPEG or GIF. (Ensure you can locate the file on your computer for insertion.)

You will also need:

• A list of the goods and/or services you market, or intend to market, under the desired trade mark. It is important that you include a list of all goods and/or services for which you want to use the mark. This is called a specification of goods or services. In addition to listing all of the goods or services for which you want to use the mark you will also need to list the class or classes that the goods or services fall in. This is referred to as the classification of your goods or services.
  
  Correct classification is important because a single application for a search and preliminary advice can only cover one class of goods or services. If you wish to apply for search and preliminary advice in more than one goods or services class, you will need to pay a fee for each class.
  IPONZ provide an online tool to help you compose your goods and services description and classify your mark. Click here to view the Goods and Services Manager.
  
  Please refer to the Classification & Specification Guide for more information on classifying and specifying your goods or services.
   

• The applicant’s name and address information. If you are the applicant, then supply your details. If you are applying for a business or someone else, then have these details ready.
• Foreign words or characters - If your mark contains foreign words or characters, you should enter a translation and/or transliteration of the words or characters. A transliteration is a transcription indicating how the characters are pronounced in the language they originate from. A translation is the meaning of the word in English. The following is an example of a transliteration and translation of the mark
  “a transliteration of the Japanese characters in the mark is NIHONGO which translates to `Japanese’”.

The Cost

You can apply for either a search or preliminary advice, or both. The fees are as below:

• Search advice (per class): NZ$40.00 exclusive GST
• Preliminary advice (per class): NZ$40.00 exclusive GST
• Search and preliminary advice (per class): NZ$80.00 exclusive GST

What happens next?

IPONZ will provide you with a report.

Important note: A search and preliminary advice report will only provide you with an assessment of whether your trade mark is likely to comply under two key areas of the Trade Marks Act 2002.

The Search and Preliminary Advice service provides initial advice in relation to sections 18 and 25 of the Trade Marks Act 2002 only. A request for a Search and Preliminary Advice is not the same as, and does not replace, an Application for Registration of a Trade Mark. Accordingly, IPONZ does not engage in correspondence in relation to the advice provided as part of the Search and Preliminary Advice service. If you receive advice that your proposed trade mark is not eligible for registration under the Act, and you wish to pursue arguments in relation to the eligibility of the mark for registration, you will need to make an Application for Registration of a Trade Mark. You will be given an opportunity to present your arguments as part of the application process.

If you make an application to register a trade mark, this will undergo a complete examination to determine whether it complies with all of the requirements of the Trade Marks Act 2002. Further issues may be identified during such examination.

Please note: 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.

Please contact us if you have further questions about applying for search and preliminary advice.