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2. Examination
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2.1 Prescribed fees
Before an application to register a trade mark can be accepted, all prescribed fees must have been paid in respect of the application. Where additional classes are requested after application, each additional class is subject to an additional class fee.4
Although the fee for additional classes is not essential for filing date purposes, payment must be made at the time the application for additional classes is made.5
Footnotes
4Regulation 43(2)(b) of the Regulations
5Regulation 43(2)(a) of the Regulations
2.2 Absolute or relative grounds preventing registration
As well as ensuring that an application has been made in accordance with the Act and that all fees have been paid, the Commissioner must be satisfied that there are no absolute or relative grounds that would prevent the registration of the trade mark.
Sections 17 to 21 of the Act set out the absolute grounds for not registering a trade mark. Sections 22 to 30 of the Act set out the relative grounds for not registering a trade mark.6
The absolute grounds for not registering a trade mark concern the nature of the mark itself, its ability to distinguish the applicant’s goods and/or services from those of other traders, and other public policy considerations. The relative grounds, by contrast, are concerned with conflict between the trade mark applied for and rights held by other persons, entities or traders.
For more information on absolute or relative grounds that would prevent the registration of the trade mark, see the following Practice Guidelines:
Absolute groundsAbsolute grounds: Distinctiveness
Absolute grounds: Chemical names
Relative grounds
Relative grounds: Prescribed words and abbreviations
Relative grounds: Names and representatives of persons
Relative Grounds: Representations of the Royal family
Relative Grounds: Identical and similar MarksRelative Grounds: Flags, Armorial Bearings, State Emblems and similar
Footnotes
6Section 13(2) of the Act; the absolute and relative grounds are set out in Part 2 of the Act.
2.3 Series trade marks
For more information on how to determine whether a series mark application fits the definition of a series trade mark, see the Practice Guidelines on Series Marks.
Footnote
7Section 32(1) of the Act specifically allows for series trade marks.
2.4 Maori trade marks
All trade mark applications will be assessed by IPONZ to determine whether they contain, or are derived from, a Māori sign including text or imagery.
Where a Māori sign is identified, IPONZ will add the trade mark type descriptor “Maori”. If the sign contains Māori imagery, appropriate New Zealand specific descriptors will be assigned.9
All applications identified as being Māori signs will initially be forwarded to the Māori Trade Marks Advisory Committee and then examined taking into account any additional issues that may arise under the Act.
For more information on the Māori Trade Marks Advisory Committee and the examination of Māori trade marks, see the Practice Guidelines to the Māori Trade Marks Advisory Committee and Māori Trade Marks.
Footnotes
8Practice Guideline Amendment 2003/2, Information For Clients, Issue 28: 30 September 2003.
9For more information on the New Zealand descriptors, see the Guidelines to the Maori Advisory Committee and Maori Trade Marks.
2.5 Collective trade marks
Where an application is made for the registration of a collective trade mark10, the application must also comply with the additional requirements in section 15 of the Act. The examination of the collective trade mark must take into account the additional requirements provided for under regulations 44 and 59 of the Trade Marks Regulations 2003.
For more information on the additional requirements for collective trade marks, see the Practice Guidelines on Collective Trade Marks.
Footnote
10Practice Guideline Amendment 2004/07, Information For Clients, Issue 33: 30 September 2004
2.6 Certification trade marks
Where an application is made for the registration of a certification trade mark11, the application must also comply with the additional requirements in section 14 of the Act. The examination of the certification trade mark must take into account the additional requirements provided for under sections 54 to 56 of the Trade Marks Act 2002 and regulations 57 and 58 of the Trade Marks Regulations 2003.
For more information on the additional requirements for certification trade marks, see the Practice Guidelines on Certification Trade Marks.
Footnote
11Practice Guideline Amendment 2004/07, Information For Clients, Issue 33: 30 September 2004
