International Agreements |
Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on 28 September 1979).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Singapore Treaty on the Law of Trademarks (2006).
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on 12 November 2007).
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. |
Trade Mark Authority |
Intellectual Property Office of New Zealand (IPONZ) |
Types of Trade Marks Available |
- Standard.
- Certification.
- Collective.
- Series.
- Madrid Designation.
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Non-Traditional Trade Marks Available |
- Colour.
- Scent.
- Shape.
- Sound.
- Animation or moving images.
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Paris Convention Deadline: |
Six (6) months from the earliest claimed priority date. |
Provisions for Filing of Multi-Class Applications |
Yes. |
Excess Goods/Services Fee |
No. |
Registrable Trade Marks |
- Must be capable of being represented graphically.
- Must be of distinctive character.
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Non-Registrable Trade Marks |
- Trade Marks that are likely to mislead or confuse;
- Trade Marks that are offensive to a significant section of the community, including Māori (where a Trade Mark is, or appears to be, derivative of a Māori sign, the Application will be forwarded to the Māori Advisory Committee for review);
- Trade Marks that are descriptive, superlative or laudatory;
- Trade Marks that are geographical locations associated with the goods or services;
- Trade Marks that are the same or similar to another trader’s current Trade Mark Application or Registration with an earlier filing date, so that use of the Mark is likely to cause deception or confusion; and
- Trade Marks that are the same as, or similar to, well-known Marks in New Zealand.
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Filing Requirements |
- Applicant’s Name and Address, State and Country of Incorporation (if applicable);
- Specification of the goods and/or services in relevant Nice classes;
- A statement that the Trade Mark is being used or proposed to be used;
- A clear representation of the Trade Mark;
- If Convention Priority is claimed, the Number, Date, Country and details of the Basic Application; and
- Government filing fee.
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Initial Trade Mark Term |
A Trade Mark is protected for ten (10) years from the date of filing, and is renewable every ten (10) years thereafter. |
Search and Examination |
- Examination of a Trade Mark Application is automatic.
- A Trade Mark Application will be examined within fifteen (15) working days of the date of filing, and a Compliance Report will issue shortly thereafter.
- If a Compliance Report issues, an Applicant has twelve (12) months from the filing date of the Application to file a response.
- If the response does not address the issue(s) raised in the Compliance Report, a further Compliance Report will issue. Normally, up to three (3) Compliance Reports are issued before a Rejection Notice is issued, which may take up to twelve (12) months.
- If a Rejection Notice issues, a Hearing before IPONZ may be requested.
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Amendment of Goods and Services |
- Before the Trade Mark is registered, limited amendments may be made to the Trade Mark Application in response to a Compliance Report, or to divide the Trade Mark Application.
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Third Party Oppositions and Applications |
- Opposition of Trade Mark Application.
- Declaration of Invalidity of Registration.
- Revocation of Registered Trade Mark.
- Cancellation or Alteration of Trade Mark.
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Restoration Provisions |
- The owner of the Trade Mark may apply to late renew (restore) the Trade Mark Registration within twelve (12) months of the expiry of the Registration.
- Where the Application for the late renewal of a Trade Mark Registration is outside the twelve (12) month period, IPONZ will decline the Application.
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Renewals |
- Renewal fees fall due from the tenth (10th) anniversary of the filing date.
- Renewal fees are then due each tenth (10th) anniversary thereafter.
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General |
There is no need for a Power of Attorney or Authorisation of Agent to support the filing of an Application, but an Authorisation of Agent may be needed to assume responsibility for an existing Application/Registration. |