How to apply for a trade mark

You can apply for a trade mark by completing the online application form and paying the prescribed fee.

Once submitted, your application to register a trade mark will be examined to ensure it complies with all requirements of the Trade Marks Act 2002.
 

Preparation

You need to prepare a clear description of the trade mark. If your trade mark has a special shape, colour or font (for example, a business logo), then ensure you have a suitable image to accompany your application. You can attach an image of the trade mark saved as a JPG, GIF or a TIF file (ensure you can locate the file on your computer for insertion).

You will also need:

• To use our online services for trade marks you need to have a logon with igovt logon service.If you already have an igovt logon and password with other Ministry of Business, Innovation and Employment websites such as New Zealand Companies Office you will be able to use this to access our site. Register as a user or see How do I manage my login? for more information.
• A list of the goods and/or services you market, or intend to market, under the desired trade mark.

The cost

An application to register a trade mark in one class costs NZ$150.00 exclusive GST. Since the fee is non-refundable, it is important to complete your research first, particularly these two steps:
 

1. Review the How to check for existing trade marks section to ensure your desired trade mark is not already registered or is not ‘confusingly similar’ to an existing trade mark. Note: you can request IPONZ to conduct a search for you at a cost of NZ$40.00 exclusive GST per class.
2. Review some reasons for trade mark rejection to reduce the chance of your application being rejected. Note: you can request preliminary advice from IPONZ on the suitability of the trade mark at a cost of NZ$40.00 exclusive GST per class before you submit your application.

Choosing your goods and services

The list of the goods and/or services that you supply with your application is called a goods and services specification. This determines the range of the protection that you may be given by registration of the mark. It is important to carefully consider the goods and services that you want covered by your mark as you will not be able to broaden the range once the application is filed.

Goods and services are divided into 45 classes under the Nice international system of classification. In addition to listing all of the goods and/or services for which you want to use the mark, state the class or classes. This is referred to as the classification of your goods or services.

Save time by researching the appropriate classification for your trade mark registration here.

Note that each class application costs NZ$150.00 exclusive GST. If necessary get advice from an intellectual property expert on the value of registering your trade mark in more than one class.

For more information see our guide about classifying goods and/or services.

Online application

Getting Started

FIRST let us know who would like to file the application:

Select the Online Services tab from the top right hand corner of IPONZ website.

Then choose TM & Design Login and logon using your igovt logon and password if you're not already logged on. If you are already logged in select or TM & Design System.

(Tip: record your igovt logon details in a safe place as these will save you time on subsequent visits.)

If you need an igovt logon you can 'Register' to create one from our website. If you already have an igovt logon you won't need to create a new one, simply Log on and enter your username and password.

Once you have logged in you will be taken to your IPONZ INBOX for trade marks and designs.

On the left hand side navigation bar under the section Trade Mark select Apply for a Trade Mark. 

Note | You are able to save your incomplete application at any stage by selecting Save on the bottom right corner of the page. To retrieve a saved application choose Apply for a trade mark and in the section Your saved Trade Mark requests you will be able to Select and complete your previously saved application.

Saved applications that have not been completed will be kept for a 90 days, after which they will be deleted automatically from the system.

Ensure you fill in all required Fields (marked with a red dot). If you need help, select and hold the cursor over the chosed field box and a help dialogue box will appear.

Reference: Use a different reference for each application. You will be prompted if you enter a previously used Number by mistake.

Base Search and/ or Preliminary Advice:
If you have previously completed a Search and/or Preliminary Advice for your proposed trade mark you are able to upload that information to your application. Select SEARCH input you chosen search criteria then choose SEARCH you will be able to select the correct result and the trademark information will be uploaded to your trade mark application. 

Contact Details

When completing the Name field, if you are acting ‘in your own right’ your IPONZ user account details will be shown as the Applicant details. You are able to change these details by selecting EDIT on the right side of the address.

If you are acting ‘As an agent’ then your Agent details will be uploaded from your IPONZ user account and the Applicant can be searched and selected from your listed clients.

Convention Priority

If you are claiming an earlier filing date based on an overseas application you will need to enter the details of the overseas application. Select ADD and complete the convention priority fields including Priority Date and, Country. The Additional Application Information text box in the main application page can be used to enter details such as partial or multiple convention claims or any other information required to complete your application.

Goods and Services Description 

Your trade mark application must include a list of all goods and/or services for which you use or intend to use the mark. Please carefully consider the goods and services that you want covered by your mark as you will not be able to broaden the list once the application is filed.

To provide class and specification information for your application, select the EDIT button to search for goods and services.

For more information see our guide about classifying goods and/or services

Search for Goods and Services terms

You can search through a database of goods and services terms that are considered correct by IPONZ for the purposes of classification by the Commissioner under the Trade Marks Act 2002 (for applications filed after 1 January 2007). Pursuant to section 31(2) of the Act, IPONZ will accept the terms shown in this database as descriptions in specifications when making your trade mark application.

New Zealand follows 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). This classification system comprises 45 classes. Of those 45 classes, classes 1 to 34 pertain to goods, while classes 35 to 45 pertain to services. Each trade mark application fee is calculated on the number of classes being applied for. If you require protection for goods or services in more than one class, the total number of classes will determine the fee for the application.

If you prefer to provide a customised goods and/or services description for your trade mark application, select the EDIT CLASSIFICATION MANUALLY button.

Note: the provision of a customised specification may result in a delay in the immediate acceptance of your application. To reduce the likelihood of receiving a Compliance Report from the Office, we recommend selecting from the list of pre-approved descriptions.

To use the Pre-Approved description:

1. Enter words describing your goods or services in Keyword field.
2. A list of results will be displayed below the Keyword field. To add tick the required goods and service description check box and select ADD to include selected descriptions in your selection
3. To remove a term from a good or service description, select REMOVE from the right side of the Goods and class description for either class heading or description.
4. To accept your selection of goods and/or services, select the SUBMIT button to confirm the information to your application. 

Edit Classification Manually

This is where you can make additions to the Goods and Services Descriptions of pre-selected Class’s or select another class by choosing a Class Number from the drop down box and selecting ADD. Subsequently you will be able to enter details in the Goods and Service Description field. To confirm your additions select SUBMIT button to confirm the information to your application.

A standard application fee covers an application in one class. If you apply in more than one class, an application fee will be charged for each class, i.e. the total fee will be calculated by using the following formula:

Total Fee = Application fee x Number of Classes.

Select OK to proceed to complete your application.

(NOTE: When you submit your application IPONZ will apply standardised formatting to your trade mark specification of goods and services in line with current international best practice. You retain the ability to file specifications in the format you choose, however, IPONZ may reformat specifications so that they comply with the formatting standards of IPONZ. The reformatting of specifications will not change the scope or nature of the specification. See formatting standards.)

Mark Information

MARK NAME: Many trade mark applications are for Word Mark Types, such as Acme Harmonicas. If this applies to your trade mark, you need to provide a mark name for your word or combined trade mark.

TYPE: Enter the type of mark application you are making.

FILE: If you are filing an image, colour, sound, shape or animation mark select ADD FILE or ADD IMAGE to find and upload the file containing your mark.

TYPE: Select the entry from the drop-down list that best describes the trade mark, e.g. Text Only, Image, Colour, etc. The table below will help you determine if a file or written description of your mark is required.

*any relevant information regarding the mark can be included in “additional application details”.

Explanation of mark types

Word

A word mark for plain text characters protects the words regardless of the way they are presented

Combined

A Combined Mark Type indicates that the mark is a combination of signs. The most common type of combined marks is marks which are a graphic image containing words or words presented in a stylised form. The term also describes other combinations of signs such as 3D shapes containing words and/or images.

The examination and subsequent protection afforded a registered Combined mark relates to the combination of the signs that make up the mark, not each individual sign in the mark.

You will need to enter all of the words in the mark in the “mark name” field. This will ensure that the words are searchable on the register upon filing. If the combined mark does not contain any words, you should enter “representation only” in the “mark name” field instead.

Example of combined marks

Image

An image mark is a mark which contains only graphic elements. An image mark does not contain other signs such as words. If your representation contains words, it will need to be filed as a “combined mark”. If it is filed as an image mark the words will not be searchable on the register.

Example of an image mark


 

ADDITIONAL APPLICATION DETAILS: You can supply additional details about your mark, for example, 'The letter e in the mark has an etude above if'.

FOREIGN WORDS OR CHARACTERS: If your mark contains foreign words or characters then provide an English translation or transliteration (i.e. the closest letters in English corresponding to those of a different language or alphabet).
 

Submitting your application

1. When you have completed the application form click SUBMIT.
   (NOTE: If there is an error or omission in the form a message will display in red at the top of the screen).
2. Check your application throughly and make any final changes before submitting it. If you would like to save your application without submitting it press SAVE.
3. Select SUBMIT when you wish to proceed to payment. Your fee description will be displayed at the bottom of the main application page and on the payment page.
4. Payment: If you have a direct debit facility loaded to your IPONZ user account you can choose the Direct Debit option for payment. Otherwise click Credit Card and fill in the credit card form.
   
   Once your application has been submitted you will receive a notification to the email address that was listed in the contact details. A confirmation and summary of the submission of the trademark application will then appear in the discussion section of your IPONZ Inbox

If you need more help, please contact us during business hours.

What happens next?

Review the Trade mark process section for more information on the application process.