What is a trade mark?
In New Zealand a trade mark can be any of the following:
- A brand
- any combination of these things
However, while a trade mark can be any of the above, not all trade marks are able to be protected. See the section “Creating a New Trade Mark” in our article Introduction to Trade Marks in New Zealand.
Why register a trade mark?
There are many reasons to register a trade mark, but the most important is that a trade mark is an asset which represents the goodwill of your business and like other assets it should be protected. Please read our article Why Register My Trade Mark? for further reasons.
Can I register a trade mark myself?
Although you may register a trade mark yourself we would not advise this. Registering a trade mark is a legal process which has many pitfalls and potential costs for someone who gets it wrong. Each situation is different and you should have a professional evaluate your trade mark prior to registration and manage the process. It is possible to register a trade mark and then find that you do not have the protection you thought you had when you really need it.
How much will this cost to register my trade mark?
The cost to register your trade mark will depend upon the following factors:
- What countries / jurisdictions you would like to register your trade mark in.
- How many classes your products and services fall under
- Whether you need a word mark, device mark or both
- The complexity of your specification
- Whether you receive any oppositions from other interested parties
- Whether you receive any objections/compliance issues from the trademark office
The process of applying for a trade mark and then achieving registration can take time and should you get it wrong can become expensive. NZMarks gan guide you through this process to help you make informed decisions to help you achieve the goals for your business and brands. We are happy to give you a quote for applying for your trade mark and we also have AI software that will help you to assess the likelihood of other parties disputing your trade mark which can increase the cost dramatically. The best way for us to help you minimise costs is to get us involved at the outset when you are developing or deciding on your trade mark.
When looking at cost you should ask yourself what could the costs be for not registering my trade mark. Having to defend an unregistered trade mark would typically cost between 20-50 times the cost of registering a trade mark and even with these costs successfully defending an unregistered trade mark from an opposing party is not always achievable.
Do I need to file a trade mark in every country?
You should register your trade mark in all countries where you are using the trade mark and also any potential counties where you would like to trade in the future to secure your right to use the trade mark in that country. In some countries trade marks are granted on a “first to file” basis. While you can sometimes overturn a trade mark that has been filed this will be many times more expensive than registering the trade mark and will involve an expensive legal process and sometimes litigation.
Which countries can you register trade marks in?
Trade mark registration is generally done country by country. NZMarks can apply to register trade marks in nearly every country of the world. We have an international network of trade mark professionals whom we regularly instruct to act for us and we are members of IPSANZ (Intellectual Property Society of Australia and New Zealand). We can also assist you tolso register a regional trade mark which covers multiple countries.
Regional Trade mark Offices
- African Regional Industrial Property Organisation
- Benelux Office for Intellectual Property
- European Union Intellectual Property Office
- African Intellectual Property Office (OAPI)
- Supreme Council of the Gulf Cooperation Council
There are two routes to register an international trade mark, directly via the countries trade mark office or if the country has signed up by using the Madrid system where we file an international trade mark directly via IPONZ.
NZMarks can assist you with either method and help you to ensure your trade mark is secure in your chosen markets.
What is the Madrid System?
New Zealand is one of 123 countries who belong to the Madrid system. This is a cost effective system that allows you to file an international trade mark directly from New Zealand via the world intellectual property office (WIPO) to other countries who adhere to the system. You must first have a New Zealand trade mark and then there is a process by which this trade mark can be registered in the countries you choose.
Madrid International Trademark registration process
- Stage 1 – Apply for your New Zealand Trade mark
- Stage 2 – Ensure your specification is suitable for international registration
- Stage 3 – The trade mark then needs to be certified by IPONZ for international registration
- Stage 4 – The Trade mark goes through a formal examination by WIPO (The world intellectual property office) and is then published in the WIPO Gazette of international Marks
- Stage 5 – Once approved by WIPO the trade mark application is then forwarded to the national trade mark offices which will examine the mark
- Stage 6 – The national offices will then either register your trade mark or issue a notice of refusal according to its national legislation
NZMarks can help you navigate the process and assist you to deal with any roadblocks that can happen during the process. We also have a vast network of trusted international trade mark attorneys that we can call on to assist with any legal issues.
What is IPONZ?
IPONZ stands for the Intellectual Property Office of New Zealand. This is the government agency which administers the trade mark registration in New Zealand. NZMarks has extensive experience in assisting clients interacting with IPONZ with all trade mark matters including trade mark registration, trade mark renewals, trade mark oppositions & revocations
What are classes and how do I choose the right ones?
When you file a trade mark you need to choose which classes to file under. Classes are groups of goods or services and your trade mark rights are only specific to the classes you file under. You can file under multiple classes but you must be using the trade mark for those goods or services or have the intention of using the trade mark in the future.
New Zealand uses the Nice classification, published by the World Intellectual Property Organisation system which has 45 different classes of goods & services.
NZMarks can advise on the different classes you should file under.
What are the Current Trade mark Classes?
These are the current classes published by the World Intellectual Property Organisation (WIPO) which are in use by New Zealand. These are only the class headings. Each class has an explanatory note and will have hundreds of predefined products, for example in class 1 is the product “acetate of cellulose, unprocessed”
|Class||Trade Mark Class Headings (Nice 11th Edition)|
|1||Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Fire extinguishing and fire prevention compositions; Tempering and soldering preparations; Substances for tanning animal skins and hides; Adhesives for use in industry; Putties and other paste fillers; Compost, manures, fertilizers; Biological preparations for use in industry and science|
|2||Paints, varnishes, lacquers; Preservatives against rust and against deterioration of wood; Colorants, dyes; Inks for printing, marking and engraving; Raw natural resins; Metals in foil and powder form for use in painting, decorating, printing and art|
|3||Non-medicated cosmetics and toiletry preparations; Non-medicated dentifrices; Perfumery, essential oils; Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations|
|4||Industrial oils and greases, wax; Lubricants; Dust absorbing, wetting and binding compositions; Fuels and illuminants; Candles and wicks for lighting|
|5||Pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides|
|6||Common metals and their alloys, ores; Metal materials for building and construction; Transportable buildings of metal; Non-electric cables and wires of common metal; Small items of metal hardware; Metal containers for storage or transport; Safes|
|7||Machines, machine tools, power-operated tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, other than hand-operated hand tools; Incubators for eggs; Automatic vending machines|
|8||Hand tools and implements, hand-operated; Cutlery; Side arms, except firearms; Razors|
|9||Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Mechanisms for coin-operated apparatus; Cash registers, calculating devices; Computers and computer peripheral devices; Diving suits, divers’ masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; Fire-extinguishing apparatus|
|10||Surgical, medical, dental and veterinary apparatus and instruments; Artificial limbs, eyes and teeth; Orthopaedic articles; Suture materials; Therapeutic and assistive devices adapted for persons with disabilities; Massage apparatus; Apparatus, devices and articles for nursing infants; Sexual activity apparatus, devices and articles|
|11||Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes|
|12||Vehicles; Apparatus for locomotion by land, air or water|
|13||Firearms; Ammunition and projectiles; Explosives; Fireworks|
|14||Precious metals and their alloys; Jewellery, precious and semi-precious stones; Horological and chronometric instruments|
|15||Musical instruments; Music stands and stands for musical instruments; Conductors’ batons|
|16||Paper and cardboard; Printed matter; Bookbinding material; Photographs; Stationery and office requisites, except furniture; Adhesives for stationery or household purposes; Drawing materials and materials for artists; Paintbrushes; Instructional and teaching materials; Plastic sheets, films and bags for wrapping and packaging; Printers’ type, printing blocks|
|17||Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; Plastics and resins in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, tubes and hoses, not of metal|
|18||Leather and imitations of leather; Animal skins and hides; Luggage and carrying bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Collars, leashes and clothing for animals|
|19||Materials, not of metal, for building and construction; Rigid pipes, not of metal, for building; Asphalt, pitch, tar and bitumen; Transportable buildings, not of metal; Monuments, not of metal|
|20||Furniture, mirrors, picture frames; Containers, not of metal, for storage or transport; Unworked or semi-worked bone, horn, whalebone or mother-of-pearl; Shells; Meerschaum; Yellow amber|
|21||Household or kitchen utensils and containers; Cookware and tableware, except forks, knives and spoons; Combs and sponges; Brushes, except paintbrushes; Brush-making materials; Articles for cleaning purposes; Unworked or semi-worked glass, except building glass; Glassware, porcelain and earthenware|
|22||Ropes and string; Nets; Tents and tarpaulins; Awnings of textile or synthetic materials; Sails; Sacks for the transport and storage of materials in bulk; Padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; Raw fibrous textile materials and substitutes therefor|
|23||Yarns and threads, for textile use|
|24||Textiles and substitutes for textiles; Household linen; Curtains of textile or plastic|
|25||Clothing, footwear, headwear|
|26||Lace, braid and embroidery, and haberdashery ribbons and bows; Buttons, hooks and eyes, pins and needles; Artificial flowers; Hair decorations; False hair|
|27||Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings, not of textile|
|28||Games, toys and playthings; Video game apparatus; Gymnastic and sporting articles; Decorations for Christmas trees|
|29||Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk, cheese, butter, yogurt and other milk products; Oils and fats for food|
|30||Coffee, tea, cocoa and artificial coffee; Rice, pasta and noodles; Tapioca and sago; Flour and preparations made from cereals; Bread, pastries and confectionery; Chocolate; Ice cream, sorbets and other edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt, seasonings, spices, preserved herbs; Vinegar, sauces and other condiments; Ice [frozen water]|
|31||Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; Raw and unprocessed grains and seeds; Fresh fruits and vegetables, fresh herbs; Natural plants and flowers; Bulbs, seedlings and seeds for planting; Live animals; Foodstuffs and beverages for animals; Malt|
|32||Beers; Non-alcoholic beverages; Mineral and aerated waters; Fruit beverages and fruit juices; Syrups and other non-alcoholic preparations for making beverages|
|33||Alcoholic beverages, except beers; Alcoholic preparations for making beverages|
|34||Tobacco and tobacco substitutes; Cigarettes and cigars; Electronic cigarettes and oral vaporizers for smokers; Smokers’ articles; Matches|
|35||Advertising; Business management, organization and administration; Office functions|
|36||Financial, monetary and banking services; Insurance services; Real estate affairs|
|37||Construction services; Installation and repair services; Mining extraction, oil and gas drilling|
|39||Transport; Packaging and storage of goods; Travel arrangement|
|40||Treatment of materials; Recycling of waste and trash; Air purification and treatement of water; Printing services; Food and drink preservation|
|41||Education; Providing of training; Entertainment; Sporting and cultural activities|
|42||Scientific and technological services and research and design relating thereto; Industrial analysis, industrial research and industrial design services; Quality control and authentication services; Design and development of computer hardware and software|
|43||Services for providing food and drink; Temporary accommodation|
|44||Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, aquaculture, horticulture and forestry services|
|45||Legal services; Security services for the physical protection of tangible property and individuals; Personal and social services rendered by others to meet the needs of individuals|
What terms or symbols am I not permitted to trade mark
There are many terms and symbols that you are not allowed to trademark such as the Royal standard. There are emblems and names where the commissioner has discretion to allow them to be included in a trade mark depending whether some conditions are met. Please see our our article for a more in depth discussion.
What is a specification and how do I prepare one?
When you register a trade mark you need to prepare a document called a specification which lists the goods and services you are protecting.
Many countries use the same classification system but some countries & regional blocs have different variations and approved wording so if you are planning on trading overseas it is important to ensure we are aware of this so we can prepare a harmonised specification to avoid objections from foreign trade mark offices
NZMarks can assist you to prepare a robust specification and if necessary ensure this is suitable for international registration of your trade mark.
What is an opposition and what can I do about it?
Once a trade mark application has been filed and accepted by the trade mark office it is publicised and then anyone has 3 months in which to lodge an opposition to oppose it. There are various grounds that an interested party can lodge an opposition. Should you receive an opposition NZMarks can assist you to respond to the proceeding and, should it be necessary, negotiate with the other party to form a coexistence agreement. Ultimately an opposition may be heard at a specialist tribunal called the IPONZ Hearings Office which is responsible for administering proceedings under the Trade Marks Act 2002.
What is a revocation?
A revocation is an application by an aggrieved party to revoke (cancel) your registered trademark..
Another party can apply to have your registered trade mark revoked if you have not used the trade mark for a continuous period of 3 years. They can also apply for revocation if the trade mark is likely to deceive or confuse the public.
Who enforces my trade mark protection?
A trade mark gives the trade mark holder legal rights within the country and class it is registered. It is then up to the trade mark holder to identify issues and file appropriate paperwork in order to enforce those legal rights.
As a trade mark owner you also have the option of registering your trade mark with the New Zealand customs service to help them identify counterfeit goods arriving at the boarder. If counterfeit goods matching your trade mark are found they will then contact you and impound those goods until the matter is resolved. NZMarks can assist you to liaise with the NZ Customs service.
NZMarks recommends regular monitoring of your trade marks in order to identify any potential issues as early as possible and file oppositions on any competing trade mark prior to it’s registration. We offer a monitoring service to advise of any potential threats.
Here is a useful page on enforcement options from the New Zealand ministry of business, innovation & employment Trademark Enforcement
Why do I need a trade mark when I have a registered company name?
Registering a company at the companies office does not give you ownership of the company name. When applying for a company name at the companies office the only thing that they look at is whether there is another company with the same or similar name and it does not breach any laws. For example the name cannot be offensive, obscene or likely to cause offence to any particular religious group or section of the community, it cannot be a restricted word, include symbols and numbers or use macrons (Unless used within a Maori name). It is possible for someone to register a trade mark that is the same or similar to your company name. The same applies to a Domain Name or Web address that you may own.
Do I need to register a trademark if I own a Domain Name (Web address)?
Yes to ensure you are the registered owner of the brand you should register a trade mark. If you are the registered owner of a trade mark there are avenues available to arbitrate certain claims before a dispute resolution provider.
Will you initiate legal proceedings on our behalf?
We see it as our job to keep you out of court! Should you face a trademark issue that cannot be resolved between the parties there are avenues to address these through hearings at the intellectual property office of new zealand (IPONZ). Should you not get the outcome you were hoping for, a decision made by the assistant commissioner of IPONZ can be appealed to the high court of New Zealand. We have a good working relationship with the top New Zealand Intellectual property QCs and can assist you to organise litigation should this be the path you choose. If you are planning on litigation then we feel you should always use the very best representation to ensure you get the best outcome.
What International Agreements relating to Trade marks has New Zealand signed up to?
- The Paris Convention –
- This gives the right for a NZ trade mark applicant to file a trade mark in another signatory country within 6 months and receive the same application date in that country as they do for the initial application made in New Zealand.
- The TRIPS agreement
- This ensures all signatory countries allow certain elements be allowed as trade marks.
- The Nice Classification
- This is a classification system that New Zealand uses in trade mark specifications for all new trade marks.
- The Vienna Classification
- This is a classification system used in New Zealand that assists with organising and searching trade marks that contain stylisation and/or images.
- The Madrid Protocol
- This is a protocol administered by the world intellectual property organisation (WIPO) that allows New Zealand trade mark owners to apply for trade marks in over 100 other countries simultaneously via the Patent office of New Zealand (IPONZ).
What is a Trade mark coexistence agreement?
This is an agreement made between two parties which allows the use of similar trade marks under certain conditions, for example only with certain goods or services or in certain geographical locations. This can often be a good practical option which can avoid litigation in trade mark disputes..
What happens to my European Union Trade Mark (EUTM) in the UK after Brexit?
Your EUTM trade mark will be recorded on the UK trade mark register on 1 January 2021 and become a fully independent UK national trade mark. It will keep the original EUTM filing & priority dates. You will need to use the trade mark in the UK within 5 years to ensure it is not vulnerable to a challenge to remove for non-use.
Can NZMarks file trade mark applications in Australia?
Yes we can file directly in Australia via the Australian Patent office and we can also file an international trade mark under the madrid system.
Can NZMarks file trade mark applications in the USA?
We can file trade marks in the USA via the madrid system based off a New Zealand trade mark. Should you want to file a national trade mark in the USA we have many trusted associates that we can engage to file this on your behalf.
Can NZMarks file a trade mark applications in Canada?
Yes we can file directly in Canada and can also file an international trade mark in Canada via the Madrid system.
Still got questions? Book a FREE Initial Consultation with our friendly team.