Maintain an international trade mark

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 done directly with the World Intellectual Property Organization (WIPO).

IPONZ manages 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. There is no charge for this service. See change an agent.

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.