Maintain an international trade mark

Caution:

IPONZ online services will be under system maintenance from 9:00pm to 11:00pm NZT tonight. You may experience interruptions to services within this period. We apologise for the inconvenience.

Close

Maintain an international trade mark

Maintenance of an international registration designating New Zealand (NZD), such as changes of name and ownership, and renewals and cancellations, is primarily done directly with the World Intellectual Property Organization (WIPO).

Changes to an international trade mark registration at the WIPO level may result in corresponding changes to the NZD case. Whenever this occurs, IPONZ will send a notification to the agent or local representative on file for that case.

IPONZ is only able to manage a limited scope of changes to NZDs. These involve the following:

Change agent

You can make a request for an agent or local representative to be appointed or changed for an International Registration designating New Zealand (NZD). There is no charge for this service. 

For steps on how to add a local agent to your NZD, please see our International registrations designating New Zealand page.

International registrations designating New Zealand: Local agents

Respond to a provisional refusal

If we find any issues with your NZD during its examination, we will release a provisional refusal report for your attention. Your report will involve a partial or total refusal of protection for your NZD.

  • We may issue a partial provisional refusal report where protection of the mark is refused for just some of its goods or services. In this case, you can make a Change Goods and Services request to remove the refused goods or services, and have your mark accepted in a timely manner. If we receive no response to the report by the deadline, we will accept the mark for the list of goods and services which were not refused.
  • We may issue a total provisional refusal report where protection of the mark is refused for all of its goods or services. If we receive no response to the report by the deadline, we will refuse protection for the NZD.

You can respond directly to us to address the issues raised in your report. Your response must be submitted via our case management facility, by a local agent on your NZD. The local agent must provide an address for service in New Zealand or Australia.

For more information on local agents, please see our International registrations designating New Zealand page:

International registrations designating New Zealand: Local agents

Responding to a Provisional Refusal Report

To respond to a provisional refusal report as a local agent:

  1. Log on as a registered user of the website.
  2. In your Inbox, under the Tasks section, look for the Respond to Provisional Refusal IR (NZD) Report or Respond to Subsequent IR (NZD) Report task for your trade mark application.
  3. Select the Respond to Provisional Refusal IR (NZD) Report or Respond to Subsequent IR (NZD) Report link to open this. The International Registration - Respond to IR (NZD) Report screen displays.
  4. Under the Defects Report section, you may review your current provisional refusal report by selecting its file here.
  5. Under Objection Response Documents, select Add to upload your response to your provisional refusal report. Once your response documents have been loaded, select Continue to return to the International Registration - Respond to IR (NZD) Report
  6. Select Submit to submit your response.

Requesting an extension of time

If you need additional time to respond to a refusal report, you may request an extension of time. If your extension of time is accepted by the examiner, this will extend the deadline by which you must provide a response.

You must provide clear and precise reasons to justify the request and the length of time requested.

To request an extension of time to respond to a provisional refusal report:

  1. Log on as a registered user of the website.
  2. In your Inbox, under the Tasks section, look for the Respond to Provisional Refusal IR (NZD) Report or Respond to Subsequent IR (NZD) Report task for your trade mark application.
  3. Select the Respond to Provisional Refusal IR (NZD) Report or Respond to Subsequent IR (NZD) Report link to open this. The International Registration - Respond to IR (NZD) Report screen displays.
  4. Under the options at the bottom of the International Registration - Respond to IR (NZD) Report screen, click the Request an Extension of Time The Request Extension of Time for NZ Designation screen displays.
  5. In the Request Extension of Time for NZ Designation screen:
  • Under Reference, enter a name or short description for this request that you can recognise.
  • Under Case(s), confirm that the displayed trade mark application is the one for which you are requesting an extension of time.
  • Under New Deadline Requested, enter the new deadline by which you wish to respond to your refusal report. The new deadline can’t be earlier than your current deadline.
  • Under Justification, click the Add button to upload your document containing your substantive reasons and supporting information for the extension of time.
  • Select Submit to complete your request.

Once your request for an extension of time has been submitted, it will be reviewed by our office within 15 working days. Your task to respond to your provisional refusal report will remain active during this time, and you may provide a response to this task while it is still active.

If your request is validated, your task to your provisional refusal report will be updated to reflect the new deadline.

If your request is refused, your task to your provisional refusal report will retain its original deadline. If the deadline has passed by this time, this may cause your task to expire.

Amend a goods and services specification

If your International Registration designating New Zealand (NZD) is currently under examination with us at IPONZ, you can request for an amendment to its goods and services specification. Your amendment request must be filed by your agent or local representative through our online case management facility.

When requesting an amendment in this way, please note that you will not be able to add a new class of goods and services to your application, or change the class of an existing good or service. Any such requests must be filed via WIPO.

Your amendment request will be reviewed by a trade mark examiner and validated only if this meets all requirements. If your NZD is accepted, we will notify WIPO of any amendments made to your goods and services specification in a statement of partial grant of protection following a provisional refusal.

Please note that New Zealand uses the International Classification of Goods and Services (Nice Classification), and the goods and services in your specification will need to be classified according to this standard.

Request abeyance

When an international registration designating New Zealand (NZD) is waiting for the outcome of opposition proceedings for a prior application, or cancellation, revocation or invalidity proceedings in respect of a prior registration, the holder or owner can request that it be placed in abeyance. The holder must notify us before the expiry of the deadline to respond to the Provisional Refusal.

Once the facts have been verified, we'll place the NZD in abeyance pending the outcome of the proceedings. 

See request abeyance.

Divide an International Registration

A holder can request to divide out any classes (or goods and/or services) of an International Registration designating New Zealand (NZD) which have been objected to in a provisional refusal, into a new application.

This will allow the acceptable classes (or goods and/or services) to proceed to acceptance. Further submissions can then be made in relation to the objectionable goods and/or services in the divisional registration.

To request to divide a NZD please fill in a WIPO MM22 form [PDF, 173 KB] and email the form as an attachment to mail@iponz.govt.nz.

If IPONZ consider the division is acceptable, we will complete the form and send it to WIPO.

The divisional registration will be given the same International Registration number as the original registration, together with a capital letter. When the divisional registration is recorded in the IPONZ database, a new NZD number will be issued, which will have the international registration number with capital letter.

Please note: WIPO will charge a processing fee of 177 Swiss francs to divide the NZD. This fee will need to be paid directly to WIPO.

Merge a New Zealand Designation

If an International Registration designating New Zealand (NZD) has been partially assigned or divided it is possible to merge the divided registrations back into a single NZD.

A divisional NZD may only be merged with the NZD from which it was divided.

To request to merge a NZD please fill in a WIPO MM23 form [PDF, 152 KB] (for an NZD which has been partially assigned), or a WIPO MM24 form [PDF, 151 KB](for an NZD which has been divided) and email the form as an attachment to mail@iponz.govt.nz.

Request to take note of the replacement of a national mark with international registration

Once we’ve been notified of the international registration designating New Zealand, and the owner is an owner of an earlier national mark, you can request replacement of the national mark.

The national registration must:

  • cover the same or narrower specification than the international registration
  • be owned by the same owner and be the same mark
  • be registered at the time that the international registration designated New Zealand.

Email us with the following information:

  • the number of the international registration
  • the New Zealand trade mark registration number
  • the full name of the holder
  • the name and address of the agent (if any).

Transform an international registration

If we have been notified by WIPO that an international registration designating NZ (NZD) has been cancelled in part or full at the request of the office of origin, the owner may make a request to transform the NZD details into a national application or registration.

To make a request, email us within 3 months of the date of recording of the international registration's cancellation with the following information:

  • the international registration number
  • the date of cancellation of the international registration
  • an address for service in New Zealand or Australia, if the international registration didn't have one
  • whether the transformation request relates to all the goods and services in the international registration and, if not, a list of goods and services to which the transformation request relates, and their respective class numbers.

The list of goods or services may not be broader than those cancelled on the NZD.

Continued processing (Singapore relief measure)

If your NZD has been issued with a report that refuses protection for its goods and/or services, and the deadline to respond to this report has passed, you can make a request for Continued Processing of that NZD. This applies whether a total or partial refusal report was issued. There is no charge for this service.

You can enter a request for continued processing via our case management system. A request for continued processing must be made in the two months following the expiry of the deadline to respond. The request must include a substantive response to all outstanding objections as set out in the most recent refusal report.

In cases where a partial refusal was issued and a request for continued processing is not received, the NZD will be accepted for the list of goods or services which were not refused.

You will need the following information to make a request for Continued Processing of an NZD:

  • The New Zealand trade mark number of the NZD and
  • The documentation addressing all outstanding objections.

Note: Extensions to the two-month deadline for requesting continued processing are not possible. Continued processing can only be requested once for each application, and does not apply once an application has been accepted. If the acceptance of a trade mark after continued processing results in two similar marks co-existing on the register, we will not revoke the later mark's acceptance.

Regenerate a certificate of registration

If you are the owner or the agent for an international registration designating New Zealand, you can make a request to regenerate its New Zealand certificate of registration.

This will produce a new copy of your certificate of registration, reflecting your trade mark as it is currently recorded in the register. There is no charge for this service.

For more information, see regenerate a certificate of registration.