The personnel at NZMarks are dedicated to handling instructions with the same professional care they expect when giving their own instructions to an associate. We represent our clients at the New Zealand Patent Office by acting promptly and intelligently on instructions given and aim to provide the best practical outcome at a reasonable cost. We do not strive to provide the cheapest service, but a combination of good service and helpful, practical advice, at a fair charge.

We set out below the filing requirements for New Zealand trade marks.  This information is intended for our international trade mark associates. If you require a basic introduction to filing trade marks in New Zealand click here.

Examination, opposition And registration

Registration of a trade mark will not take place less than 6 months from filing, although, if everything is in order, the application may be accepted prior to that six month date.  Twelve months are allowed from the date of filing to have the application in order for acceptance.  Extensions are possible under some circumstances.  Oppositions are possible during a three month period once the trade mark has been advertised in the Patent Office Journal.  Once registered, the trade mark is valid for 10 years.

Mandatory filing requirements

To lodge an application at the New Zealand Patent Office we require:

  • The full name, street address and nationality of the applicant.
  • A statement as to whether the trade mark is either:
    • already in use in New Zealand on some or all of the goods/services to be covered by the application
    • proposed to be used in New Zealand.
  • In the case of a device/logo mark, we require a good quality image for filing at the Patent Office. A suitable representation can be e-mailed to us as a jpeg file.
  • The date and country of any convention application from which priority is being claimed.  It is possible to file an application for which the New Zealand specification is broader than the convention application, however, in this situation we would need to know the goods/services for which priority is being claimed.
  • The goods/services which the application is to cover.  Please note that the11th Edition of the Nice Classification is used and the class headings are not considered by the New Zealand Patent Office to embrace “all goods in the class”.  Care should be taken to specifically state any particular goods or services required in the New Zealand specification possibly in addition to the class heading, especially in Class 9 where “computer software” is not considered encompassed by the Class 9 heading – even though it is listed in the actual class listing.

Requirements before acceptance

Before the application is accepted at the Patent Office the following information is required and will be asked for in a compliance report (official action) if not supplied with the application:

  • A translation of the trade mark if the mark is in a language other than English.
  • A transliteration of any foreign characters in the trade mark.
  • If the trade mark itself is a colour, a description of the colour in a well-known colour system, e.g. PANTONE.
  • If the rendition of the trade mark is, in whole or part, limited to a colour or colours a colour limitation will need to be added to the application.

NOTE: Other trade marks may include non-conventional trade marks such as sound marks or three dimensional shape marks. If relevant, a suitable explanation of the non-conventional mark will be required as part of the application.

Other requirements

The following documents may be required by the Patent Office – they can be supplied with the application or late filed. If filed late they will incur our late filing charge: Please do not hesitate to contact us should you require any further information about any aspect of trade mark filing and prosecution in New Zealand.

  • A certified copy of the convention document (if relevant).
  • An English translation of the convention document (if relevant).
  • An authorisation of agent signed by the applicant or a suitable officer of the applicant company is a requirement our office makes.  Our preference is for a general authorisation of agent which, once received, is recorded at the Patent Office and given a general authorisation of agent number. This number then suffices for all future matters concerning the applicant’s trade marks. Our fee for receiving and filing such an authorisation of agent is charged at the rate of the late filing fee if it is received after the application has been filed. Click here to download the authorisation of agent form.

Click here to download a suggested instruction letter which used as a checklist when sending us your instructions.

Expect any instructions sent to be acknowledged.