Trade Mark Protection in New Zealand

/ Irena Fizulic / Articles

Australia and New Zealand are close trading partners and it is therefore worth considering whether to register your trade mark in both countries simultaneously. Madderns has attorneys registered in both Australia and New Zealand and can assist with filing New Zealand trade mark applications, as well as Australian trade mark applications.

New Zealand trade mark applications and registrations are overseen by the Intellectual Property Office of New Zealand (IPONZ). The process for filing a New Zealand trade mark application is similar to filing a trade mark application in Australia.

A New Zealand trade mark application can be filed directly with IPONZ or a New Zealand designation can be made through the Madrid Protocol System for international registrations (New Zealand became a member of the Madrid Protocol System in December 2012).

Like Australia, the New Zealand trade marks system follows the International NICE Classification whereby all goods and services are classified in one or more of 45 classes. Madderns can provide tailored advice on filing strategies, assist with drafting an appropriate description of goods and services for which protection is sought and then prepare and file the application with IPONZ.

Prior to formally filing a new trade mark application, it is also possible to file a request for a “Search and Preliminary Advice Report” (S&PA) from IPONZ. The S&PA report consists of two parts and provides an assessment within five working days as to whether your proposed trade mark complies with the requirements of the New Zealand Trade Marks Act 2002. The “Search Report” will involve the IPONZ Examiner searching the Register for any pre-existing conflicting trade marks and the “Preliminary Advice Report” will advise as to whether the proposed trade mark is distinctive enough within your industry to act as a trade mark. After receiving the S&PA report from IPONZ, you can decide whether you would like to proceed with formally filing your application or to abandon the process.

Once the New Zealand application is filed, it will generally be examined by IPONZ within 5-10 working days. If objections are raised during Examination (for example, based on the nature of the mark itself or pre-existing conflicting trade marks on the New Zealand Register), IPONZ will issue a Compliance Report. The Applicant will then have a period of 12 months (calculated from the filing date of the application) to file a response to the Compliance Report.

Once the application is accepted, it will be advertised in the public domain for a period of three months.  During this three month period, any third party may oppose the acceptance of the application. Assuming that there are no oppositions filed, the application will then proceed to acceptance.

In summary, the registration process in New Zealand, as well as Australia, can typically take around 8-9 months from the date the application is filed through to registration.

New Zealand trade marks are valid for a ten year period and can be renewed every ten years. There is also a 12 month “grace period” within which the renewal fees can still be paid after the registration has expired.

Finally, like Australia, it is possible to record registered New Zealand trade marks with New Zealand Customs in order to arrange border protection for your trade marks. In New Zealand, there is a requirement to file a “Customs Authorisation” and a “Security under the Trade Marks Act 2002” form, together with a security bond of NZ$5,000. In contrast, Australian trade mark registrations can still be recorded with Australian Customs by filing a “Notice of Objection” and “Deed of Undertaking”, however, there is no security bond required at the time of filing the two forms.

Madderns has experience in filing and prosecuting New Zealand trade mark applications and managing New Zealand trade mark portfolios, in addition to Australian trade marks. If you would like our assistance with New Zealand trade marks, please do not hesitate to contact us.