New Zealand Trademark Protection System

According to the New Zealand Trademark Act, letters, graphics, slogans, shapes, colors, sounds, odors, or combinations thereof can be registered as trademarks. In addition, New Zealand also has a collective trademark and certification trademark system. The owner of a registered trademark has the exclusive right to use, license others to use or transfer the registered trademark in New Zealand and receive remuneration.

The Intellectual Property Office of New Zealand (IPONZ) is responsible for registering and managing trademarks in New Zealand.

IPONZ New Zealand Intellectual Property Office

New Zealand Intellectual Property Office

The Intellectual Property Office of New Zealand (IPONZ) is under the Ministry of Business, Innovation and Employment (MBIE) and is responsible for reviewing patent, trademark, design and plant variety rights applications, helping New Zealand and other countries’ businesses maintain their intellectual property rights in New Zealand.

website：www.iponz.govt.nz

IPONZ的企业服务中心（Business Service Centre）Responsible for providing consulting services, free of charge except in special circumstances.

Telephone：+64 3 962 2607 （Time: Monday to Thursday8:30－17:00，Friday9:00－17:00，Excluding public holidays）

mailbox：info@iponz.govt.nz

Introduction to Trademark Registration in New Zealand

3.1 Registration conditions

According to the New Zealand Trademark Act, letters, graphics, slogans, shapes, colors, sounds, odors, or their combinations can be registered as trademarks, but they must have distinctiveness. Significance refers to the fact that the features of the trademark applied for registration must be sufficient to distinguish it from other operators’ trademarks by consumers. In addition, the trademark applied for registration shall not infringe on the rights enjoyed by others before the application date, such as the copyright of the design work.

3.2 Reasons for not being able to register

In New Zealand, the reasons why logos cannot be registered as trademarks are:

May deceive or cause confusion;

Violating the law;

Offending some communities;

Malicious application;

Using protected geographical indications on specific products but the products are not from the relevant region.

A logo cannot be registered as a trademark under the following circumstances, but it can still be registered if there are legal and reasonable reasons:

Purely descriptive or praising names;

Common name;

Include personal or place names;

Being identical or similar to a trademark previously applied for or already registered by others may lead to deception or confusion;

Similar or identical to well-known trademarks in New Zealand.

3.3 Application principles

A single application can only contain one trademark, except for series trademarks. A single application can include multiple similar trademarks that make up a series of trademarks, but these trademarks must be generally similar and can only differ in their descriptions of products or services, numbers, prices, quality, etc. These differences must not substantially affect people’s recognition of the trademark.

3.4 Registration principle

Priority will be given to registration if the application date is earlier. According to New Zealand law, those who first apply for trademark registration in China and then apply in New Zealand within 6 months can enjoy the application date in China.

New Zealand Trademark Registration Procedure

New Zealand is a member of the Madrid Agreement on the International Registration of Marks, so Chinese applicants can apply for international registration of trademarks in Madrid after obtaining trademark registration or submitting a registration application at the Trademark Office of the State Administration for Industry and Commerce. The process of filing an international trademark registration with New Zealand can be found in the IPONZ official website guide.

4.1 technological process

1. Submit an application

Applying for trademark registration in New Zealand can be done directly by submitting an electronic application to IPONZ, or by designating New Zealand as the effective country through Madrid International Trademark Registration. (Articles 32, 33, 35-37 of the Trademark Law)

2. Review

IPONZ usually conducts a review within 15 working days after receiving the application. If there are any issues, the applicant will be notified or a compliance report will be issued. The applicant can make changes, supplements, or provide feedback. If IPONZ ultimately decides that the application does not meet the registration requirements, it will be rejected. If the applicant disagrees with the final decision, they may request a review by the Trade Mark Commissioner. Those who are dissatisfied with the decision of the Trademark Commissioner may appeal to the High Court of New Zealand. (Articles 39, 41, and 43 of the Trademark Law)

Responding to compliance reports

Trademark hearing

3. Consent and Disclosure

If the IPONZ review finds that the applicant meets the statutory registration requirements, an Acceptance Notice will be issued to the applicant and published in the official journal at the same time. (Articles 40 and 46 of the Trademark Law)

IPONZ Official Journal

4. Objection, revocation, and invalidity

Anyone can submit a notice of objection to the Trademark Commissioner within 3 months after applying for publication. The applicant may submit a corresponding counter statement within 2 months after receiving the objection notice forwarded by IPONZ. The trademark commissioner can organize both parties to review and make a decision. Those who are dissatisfied with the decision of the Trademark Commissioner may appeal to the High Court of New Zealand within 20 days after the decision is made. (Articles 47-49 of the Trademark Law).

A registered trademark that has not been used for three consecutive years or has become a generic name after use may be revoked. In addition, if a registered trademark does not meet the registration requirements, anyone can apply to declare the trademark invalid.

5. Registration

If no objection is raised or the objection is not established within 3 months after the application is made public, IPONZ will grant registration and issue a registration certificate to the applicant. The shortest time from application to authorization is generally 6 months. (Article 50 of the Trademark Law)

6. Renewal

Registered trademarks should be renewed every 10 years and can be renewed indefinitely. If the registration is not renewed in a timely manner, it will become invalid. If no remedial measures are taken after one year of expiration, the registration will become permanently invalid.

For more information, please refer to the trademark practice guide on the IPONZ official website.

Introduction to New Zealand Trademark Office Fees