New Zealand Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.
Joint applicants are permitted in this jurisdiction.
Either actual use or intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
state or country of incorporation;
description of trademark;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
statement of intention to use (This requirement may be satisfied by checking a box during the application process stating that the applicant is either using, or proposes to use, the mark in New Zealand. No evidence or other documentation of use or intention to use is required.);
official filing fee.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
representation of trademark (a depiction of the mark an applicant seeks to register);
list of goods/services;
official filing fee.
The list of goods and services in this jurisdiction may specify:
the relevant Class heading;
the relevant entire (long) alphabetic class listing.
The following number of specimens of the trademark must be submitted: Not applicable.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
if there is a change of attorney.
In this jurisdiction, the following type of registration is available:
national;
international.
This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
An international application is subject to the same registrability requirements as a locally-filed application.However, the applicant's options for overcoming objections are more limited. Examination procedures are largely the same, but applicants are not able to file divisional applications from an international application, or add classes. (See the entry for the Madrid Agreement and Protocol).
Applications can be filed online at the following URL: www.iponz.govt.nz. Applications must be filed online except in genuinely exceptional circumstances.
The official file can be accessed online but only by the current address for service.
Applications are officially searched as to prior trademarks. This takes approximately the following length of time: a few weeks.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its first application in a country that is a member of the Paris Convention (not necessarily its home country) can be claimed as the filing date in this jurisdiction, provided that its first application was filed within the fixed period of six months preceding the application in this jurisdiction. New Zealand also has bilateral agreements with some non-Convention countries such as Singapore and Taiwan, allowing applicants from such countries to claim their home filing date.
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted.
For a multi-class application, the applicant must pay class fees on a per-class basis.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, but only if a citizen of or domiciled in the jurisdiction;
a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.
APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available:
online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
state or country of incorporation of applicant;
citizenship of applicant;
application number;
application date;
goods/services;
priority claim information;
representation of trademark;
local address for service.
B. Examination
Applications are examined in respect of:
formalities: i.e., for compliance with the filing requirements;
classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity: i.e., that descriptions are clear, and are understandable;
descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
conflict with prior an earlier registration, prior filed application or earlier unregistered rights resulting from an official search.
A consideration of whether the use or registration of a mark would be likely to offend a significant section of the community, such as the Maori people, is now required. Also, the application cannot be made in bad faith, though the Office is unlikely to look at this during the examination procedure.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and cited registrant will be accepted as evidence permitting registration of the application; the trademark authority must register the application if consent is granted by the owner of the cited registration(s).
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may not be requested.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application.
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
proprietary rights, such as an earlier conflicting registration;
the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;
the mark is not distinctive;
the mark is misleading, deceptive or disparaging;
breach of copyright;
rights under Article 6 bis of the Paris Convention (notorious or well-known mark);
rights under Article 6 septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
registered design rights;
rights in a personal name;
the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
unauthorized use of specially protected emblems or national insignia;
prior reputation in New Zealand for the trademark or business/company name.
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: the date the acceptance is advertised in the official journal.
The opposition period ends on the following date: three months from the date the acceptance is advertised in the official journal.
Anyone may oppose an application.
Oppositions can be filed online.
