Once your trade mark application is assessed, the examination fee is non-refundable. We recommend preparing thoroughly before submitting your application.
1. Search for competing trade marks
Your application to register a trade mark may run into problems 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 whether or not the same or a similar trade mark is already on the register or in use. The best trade marks are unique and distinctive, or used in relation to different goods or services so they won't be confused with similar trade marks.
Is your trade mark already on the register?
Before applying, use Trade Mark Check to see if a trade mark like yours already exists on the New Zealand trade marks register. You can search by word, logo or image.
If you want to search for trade mark cases by case number, owner, or date, use our Trade Mark Case Search.
You can also check if others may be using a word or slogan by:
- Using ONECheck. Enter the word you’re interested in and view the results of availability for company names, domains and social media usernames.
- 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, even if it hasn’t been notified on the New Zealand register yet.
For more information on the use of a trade mark in relation to specific goods or services, see Classifying your goods and/or services.
2. Consider an initial assessment
If you're not sure if your trade mark is unique enough, or are otherwise unfamiliar with the trade mark registration process, we recommend applying for a search and preliminary advice (S&PA) report before applying to register your trade mark.
An S&PA report will provide you with an assessment of whether your trade mark is likely to comply with two important areas under the Trade Marks Act 2002 (The Act).
After you receive the S&PA report you can decide if you’d like to stop, change, or proceed with your application. If you file a trade mark application within three months of the date your S&PA report was issued, your fee will be reduced. In order for the discount to apply, your application must be based on your S&PA request and the details must be exactly the same as what we have assessed.
More information about S&PA and application fees can be found on our Trade Mark Fees page.
Note that trade marks containing some words may not be able to be registered - or only with permission of a third party. See what words are protected.
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 for who will look after it. For example, you should update your contact details with us as needed, and trade mark registration can be renewed every 10 years.
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 a good idea to seek legal advice from a business advisor or attorney specialising in trade marks.
Your trade mark application must include a list of the goods and services that you want to use your trade mark for. This list is called your specification of goods and services. A reduced application fee is available if your specification uses only pre-approved goods and services terms. There are over 60,000 pre-approved terms to choose from.
Your specification must include which classes your goods or services fall into. There are 34 classes for goods and 11 for services. Your trade mark application fee is based on how many classes are included in your specification.
If you've used Trade Mark Specification Builder we would love your feedback
Your feedback will be used to make the tool even better.
Let’s suppose you want to register a trade mark for a business that makes outdoor clothing. To find goods and services terms to include in your specification go to our Trade Mark Specification Builder and search for ‘clothing’. You’ll see matches for ‘clothing’ in ‘Class 25 – Clothing, footwear, headgear’.
Look over the results in other classes to see if they are also appropriate for what your business offers. If you also make protective clothing you may want to add terms from class 9 which includes safety equipment.
Do more searches with other keywords relevant to your business. If your business provides services like retail where you are selling goods from other suppliers, or tailoring or customisation, you may want to add terms in the relevant services classes too.
Hints and advice:
- Check what goods and services terms your competitors have in their trade mark specifications. You can easily find their registered trade marks using Trade Mark Check, or Trade Mark Case Search.
- You can save a copy of your results from Trade Mark Specification Builder for future reference. For example, you can save these as a .pdf file to share with a business advisor, or you can save these as an .xml file to import into a trade mark application form.
- Include IP in your business plan and strategy. You may want to seek advice from a business advisor or trade mark attorney.
For more information about trade mark classes, see Classifying your goods and/or services.
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.
Find out how to become a registered user.
If you don’t have experience applying for trade marks, or if you’re applying for more than one trade mark, you should consider seeking advice from a business advisor or attorney specialising in trade marks.
- Log in to our case management facility by selecting the Login button at the top right of this page.
- Under the Trade Mark section, select Apply for a Trade Mark. This will open the trade mark application form.
- Reference section: Enter a reference for this request that you will recognise, such as ‘MyBrandName S&PA’.
- If you want to base your application on a previous S&PA report click the Search button in the Search and Preliminary Advice section. This will allow you to associate your S&PA report with your application.
- Identity section: select “In my own right” if this request is for you or your organisation. If you are applying on behalf of someone else select “As an Agent”.
- Enter your Goods and services specification (see Classifying your goods and/or services).
- Mark type:
- If you are applying for a word trade mark, choose Mark Type ‘Word’, and enter the words in the Mark Name field.
- If you are applying for a combined trade mark (an image and words, or stylised words), choose Mark Type ‘Combined’, and enter the words featured in the image in the Mark Name field. Choose ‘Add Image’ in the Picture section to upload your image.
- If you are applying for an image trade mark, choose Mark Type ‘Image’. Choose ‘Add Image’ in the Picture section to upload the image.
- Note: You can Save your request and return to it later. Do a final check before submitting your request – make sure you have entered all your details correctly.
- Select Submit.
- Pay your trade mark application fees.
We will examine your application and provide a response within a given timeframe. You’ll receive an email inviting you to login to our case management facility to see the examination outcome.
Sometimes we may need additional information to process your application. If so, we will notify you through the case management facility. You should respond to these requests promptly, being sure to follow any instructions.
If your application doesn't comply fully with the Act our trade mark examiners will send you a compliance report. The compliance report will state the issues that have been identified with your application and provide some options to resolve these issues if available.
Wait for the registration period
If your trade mark application is accepted we will issue you an acceptance notice.
There is a waiting period between your application's acceptance and registration. This is to ensure there are no complications to the registration of your trade mark. For example someone may oppose your application, or a similar trade mark may claim an earlier priority date.
If no complications arise your application will become registered a minimum of six months after its filing date.
Protecting your trade mark rights
Once you've successfully received your trade mark registration, you should protect your trade mark rights by:
- using the registered trade mark ® symbol (a ™ symbol doesn’t necessarily mean you have a registered trade mark)
- fulfilling your responsibility to us by maintaining up-to-date ownership and address details
- monitoring your trade mark against infringements.
When you apply for a trade mark with us, your application is for a trade mark registration in New Zealand. If you want to register your trade mark in other countries you can apply in over 100 participating countries with a single application using the Madrid Protocol.
Alternatively you can apply directly in each country you want your brand protected in. The process in each jurisdiction will be different to New Zealand, as the local laws and practices will apply.
If you apply to register the same trade mark in another country, you can claim convention priority to receive the same “priority” filing date if:
- Your application is made within six months of your New Zealand application’s filing date; and
- That country is a member of the Paris Convention.