Once your trade mark application is assessed, the examination fee is non-refundable. We recommend preparing thoroughly before submitting your application.
1. Consider an initial assessment
If you're unfamiliar with the trade mark register process, we recommend an application for a search and preliminary advice report before making an application to register your trade mark.
A search and preliminary advice report will provide you with an assessment of whether your trade mark is likely to comply with two important areas that are examined under the Trade Marks Act 2002 (the Act) when an application to register a trade mark is made.
This service costs $40 per class (excluding GST) for either a search report or a preliminary advice report, or $80 per class (excluding GST) for both.
After receiving our report you can decide whether you’d like to stop, change or proceed with your application.
The most common types of trade mark are:
- Word trade marks
Such as a business name like ‘Dove’.
- Image trade marks
These do not contain any words, such as:
- Combined trade marks
These are a combination of a word and image (or words in a stylised form), for example:
A trade mark can become a valuable asset, and you need to manage it like any other property right. Make sure you have a plan in your business or company for who will look after it (for example, pay 10-yearly renewal fees).
A trade mark can be owned by:
- a company
- two partners
- one or more of the company owners
- other legal entities, such as an incorporated society.
Determining who owns a trade mark is an important decision and, while you can always transfer ownership later, it’s a lot easier if you get it right from the start.
If you’re unsure about who should own the trade mark you’re applying for, it’s not a bad idea to stop now and get legal advice.
When you apply to register a trade mark, you must include a list of all goods and/or services that you want to use the mark for. This is called a specification of goods or services.
You also need to list the class(es) that the goods or services fall into. This is referred to as the classification of your goods or services.
To work out your class:
- Go to the online classification tool.
- Enter one or more words that describe your business into the search field. You can choose your own words, or use an existing specification you know of or have used previously.
- Select the appropriate goods or services descriptions, and the classes to which they relate.
- Enter the appropriate information into the worksheet.
Depending on your business, you may have multiple descriptions and classes. Think carefully about this, as your application fee is based on how many classes you specify.
Let’s suppose you have an outdoor clothing label. Go to the IPONZ online classification tool and enter the word ‘clothing’ into the search function. A list appears that matches a goods and services description to a specific class - in this case, you’ll see that the description ‘clothing’ matches the class number ‘25’.
Note: A search for 'clothing" brings up 23 classes that contain the word. If you want protection for something more specific, such as motorcycle clothing, but enter only ‘clothing’ and select number 25, you will not get protection for 'motorcyclists' clothing for protection against accident or injury', which is covered by class 9.
Hints and advice:
- Check what your competitors or peers are using. You can do this by having a look at how they have registered their own trade mark.
- Print from the pre-approved specification tool for reference.
For more information about trade mark classes, see Classifying your goods and/or services.
Your application to register a trade mark is likely to be objected to if your intended mark is already applied for, registered, in use or is ‘confusingly similar’ to an existing trade mark.
This makes it important to check that the same or a similar trade mark is not already on the register or in use. You can search our register to see if other traders are using the same or similar mark for their goods or services:
Before you begin a new application, you should check that your trade mark is available.
Also check who has the rights to a trade mark before lodging an online application by:
- Using ONECheck. Type in the trade mark you’re interested in and view the results of availability for company names, domains and registered trade marks.
- Searching the internet with a search engine such as Google.
- Checking the international trade mark register to see if anyone has already applied for your trade mark in New Zealand, but it hasn’t been notified on the New Zealand register yet.
For more information, see practice guideline 3 - Classification and specification.
6. Become a registered user
For trade mark applications, it’s mandatory to apply and communicate with us via our case management facility. Communications received outside this will not be considered valid unless exceptional circumstances exist.
You’ll need a RealMe login and an IPONZ account to become a registered user of our services.
Follow the steps below if you're applying for one trade mark. If you're applying for more than one trade mark, and you don’t have experience applying for trade marks, you should probably seek advice from an intellectual property attorney (lawyer) before continuing.
- Log in to our case management facility (buttons at top right of screen).
- Select Manage IP, then under Trade Marks select Apply for.
- If you applied for a search and preliminary advice report there will be pre-populated information in this screen. Check this is correct against your search and preliminary advice application.
- If you are applying for just one trade mark, leave the Series default selection as No.
- If you are applying for a standard trade mark, leave the Nature default selection as Trade Mark. Collective trade marks are only used for groups, such as farmer co-ops.
- If you are applying for:
- a word trade mark, enter the words in the Mark Name field
- a combined trade mark, enter the words appearing in the image in the Mark Name field, and upload the GIF or JPG file of the image (this option is for images or words that are in a special font).
- an image trade mark, upload the GIF or JPG file of the image/logo.
Note: You can Save your application at any time and return to it at a later point.
Submitting your online application
- Do a final check before paying your trade mark application fee - make sure you have entered all your details correctly.
- Select Submit (or Save if you want to return later).
- Pay your application fees ($150 per class, excluding GST).
The next step is to login using RealMe to our case management tool.
examine your application and produce a report within 15 working days. You’ll receive an email inviting you to login to see the outcome.
Your trade mark application might be approved right away. However, sometimes we decide the trade mark can't be registered, in which case you'll be advised of the rationale behind our decision.
The most common objection you is that your application needs better classification of its goods or services. In these cases you'll be told the steps you need to take to amend this.
For any objections we raise against your trade mark you can respond to us explaining why you disagree.
If we need additional information, you'll be informed of this by letter through the case management facility. Please respond to this promptly, being sure to follow the instructions detailed inside it.
Wait for the registration period
After you receive your acceptance notice, your trade mark application is advertised. If there is no opposition to your trade mark within three months, then your application should be registered at a minimum of six months after the filing date.
Protecting your trade mark rights
Once you've successfully received your full trade mark registration, you should protect your trade mark rights by:
- using the ® symbol (a ™ symbol doesn’t mean you have a legally-registered trade mark)
- fulfilling your responsibility to IPONZ by maintaining up-to-date ownership and address details
- monitoring your trade mark against infringements.
When you apply for a trade mark with us (the New Zealand Intellectual Property Office), that application is only for a right in New Zealand. If you decide at any point after making your application that you need to protect your trade mark in other countries, you can use an international trade mark filing system called the Madrid Protocol.
Alternatively you can apply directly for your trade mark in each country you want your brand protected in. Note that the process involved in different jurisdictions could be very different to applying in New Zealand as each countries national laws and practices will apply.
If you decide to file a trade mark overseas, you can claim convention priority on applications that are based on your New Zealand trade mark application filing date, if you do it within six months. This only applies in countries that have joined the Paris Convention.