The information below is a general introduction. For more detailed information please see Examination of Trade Mark Applications.
All applications must be examined by IPONZ to ensure they comply with all requirements of the Trade Marks Act 2002. As well as ensuring that an application meets the legal filing requirements, the Commissioner must be satisfied that there are no other grounds that would prevent registration of the trade mark.
On what grounds can my mark be refused registration?
Your application may be refused on a number of grounds including:
These grounds for objection concern the nature of the mark itself, and its ability to distinguish the applicant’s goods or services from those of other traders. A mark may be rejected for a number of reasons. For example:
- it is likely to mislead or confuse
- it is offensive to a significant section of the community, including Māori - where the trade mark is, or appears to be, derivative of a Māori sign, the trade mark application will be forwarded to the Māori Advisory Committee for advice. See Practice guideline 16: Maori advisory committee and Maori trade marks for more information.
- it is a superlative e.g. BEST, SUPER etc
- it is a descriptive term e.g. SWEET for ice cream
- it is a geographical location associated with the goods or services e.g. BLUFF for oysters
For more information about absolute grounds please see Practice guidelines 4 to 9.
These grounds are concerned with conflict between the trade mark application and the rights of other persons, entities or traders. A mark may therefore be rejected if:
- it is the same or similar to a another trader’s current application or registration filed before your own, so that use of your mark is likely to cause deception or confusion
- it is the same or similar to a well known mark in New Zealand
For more information about relative grounds please see Practice guidelines 7 to 11.
If you need help finding out if there are any grounds that may prevent your mark from being eligible for registration we recommend that you use our ‘search and preliminary advice service’ before you file your trade mark application. Please note, that once you file your application the filing fee is non-refundable.
Using our search and preliminary advice service you can request:
- preliminary advice to see if there are any ‘absolute grounds’ that may prevent your mark from being accepted for registration ; and/or
- a search to see if there are any confusingly similar marks that may prevent your mark being registered on ‘relative grounds’. See our Forms and Fees section for more information.
Classification and specification of goods and/or services
When you apply to register a trade mark you must 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 please also list the class or classes that the goods or services fall in. This is referred to as the classification of your goods or services
For more information please see Practice Guidelines 03: Classification and Specification.
If the IPONZ considers the mark is not registrable under the Act then it will issue a Compliance Report setting out the issues to be resolved.
When will the Maori Trade Mark Advisory Committee consider my application?
The Maori Trade Marks Advisory Committee makes their determinations on a continual basis through the Intellectual Property Office online system. The aim is to get the determination from the five Maori Trade Marks Advisory Committee members within the 15 day examination turnaround time. The Committee when making their determination must consider whether the proposed use or registration of a trade mark that is, or appears to be, derivative of a Māori sign, including text and imagery, is, or is likely to be, offensive to Māori. As some trade marks may take longer than the 15 day turnaround, the Office will advise clients through a discussion that the mark has been sent to the Advisory Committee for a determination.
What can I do if I receive a Compliance Report?
If you do not agree with any of the issues raised in the Report, or you are aware of any circumstances that IPONZ is unaware of that may help overcome any issue raised, you are encouraged to respond with reasons why the mark should be reconsidered. If your submissions do not overcome IPONZ's concerns you may either abandon the application at no additional cost, or request a Notice of Rejection so that the matter may be considered by the Assistant Commissioner at a Hearing.
For more information please see Responding to your compliance report.
- Note: The rights associated with the registration of a stylised mark relate to the mark in its entirety and do not extend to each of the individual elements of the trade mark.