Trade mark registration takes place on a country-by-country basis. Although there are some similarities in approach, each country adopts differing requirements for achieving registration. Therefore, it is important to be aware of the peculiarities and idiosyncrasies of individual trade mark offices before you file, to give your application the best possible chance of success.
The Process in New Zealand
The Intellectual Property Office of New Zealand (‘IPONZ’) is the government agency responsible for examining trade mark applications in New Zealand. When filing an application in New Zealand, you can file directly with IPONZ or a Madrid Protocol application through the World Intellectual Property Organization (‘WIPO’). Suppose your business goals and strategic brand plans include expansion in many countries. In that case, it can be more cost-effective to include New Zealand as one of your nominated countries in a Madrid Protocol application.
Either way, an IPONZ examiner will eventually review your application. The examiner may issue correspondence or an initial refusal of your application if they require further clarification about your application or have other questions. If you file directly with IPONZ, this will take the form of a Compliance Report. You will have a period of time to respond to any formal notices or reports like these.
Upon acceptance, your application will be published in the New Zealand Trade Marks Journal online for three months. This allows any third parties to oppose your application if they have a valid reason. For example, suppose a third party has been using your trade mark unregistered for an extensive period. They have built their own reputation under the trade mark. Accordingly, they would suffer undue hardship if your application extinguished the right to continue using their trade mark.
How Long Does it Take?
The examination of trade mark applications in New Zealand is relatively efficient. IPONZ estimates that an examiner will review applications within three weeks from the filing date. However, keep in mind that if you file via the Madrid Protocol, your application must proceed to WIPO for processing before being sent to IPONZ. Accordingly, this increases the length of time before the application examination. Usually, this will add two or three months to the examination process.
Continue reading this article below the formRequirements of IPONZ
Like IP Australia, IPONZ usually accepts a relatively broad classification of goods and services in your application. However, there are certain circumstances where IPONZ will require you to provide specificity and precision around the function, type or purpose of your goods and services. One such exception is software goods and services. Usually, you will need to specify the nature and purpose of your software. For example, “downloadable computer software for matching potential investors with business owners”.
Unique Examination Considerations
If your trade mark incorporates Māori text or imagery, your application will be sent as a matter of course to the Māori Trade Marks Advisory Committee (Committee’). The committee will advise on whether your trade mark may be offensive to Māori. Committee members have a deeper understanding than examiners of the Māori worldview, culture and protocols. Accordingly, they can provide advice about any particular signs that may offend Māori culture. An assessment will be made by the Committee and sent back to IPONZ to complete the examination.
New Zealand Agent
If you choose to apply directly with IPONZ and you are, or your business is, not located in New Zealand, you will need to appoint a local New Zealand attorney to file your application on your behalf. This can also be a local agent or attorney registered as a trans-Tasman Patent Attorney in Australia or New Zealand.
It is also important to have a New Zealand representative on record should any issues arise with your application. Correspondence will be sent to your nominated representative in the first instance. They can then help you formulate a response to IPONZ. Any communication to IPONZ must be through your nominated agent.
Alternatively, if you choose to file via the Madrid Protocol pathway, you do not need to appoint a local attorney to file your application in New Zealand. Instead, WIPO will send your application to IPONZ after conducting its preliminary examination. However, should your application receive any objections, refusals or oppositions, you must engage a local attorney to represent you and submit a response to IPONZ.
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Key Takeaways
It is highly recommended to speak to a trade mark lawyer to help you navigate international filing. This is especially important when filing a trade mark in New Zealand, as you may be unaware of local procedures.
If you need help filing a trade mark in New Zealand, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
IPONZ is the Intellectual Property Office of New Zealand and is responsible for examining trade mark applications.
The entire process, from filing to registration, is a minimum of 6 months. However, this can be longer if anyone objects to or opposes your application.
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