New Zealand is a ‘first-to-use’ jurisdiction. This means that the first person to use a trade mark will generally have superior rights over an earlier filer of the same trade mark.
The following signs can be registered as a trade mark in New Zealand:
The following information is required to file a trade mark in New Zealand:
A power of attorney is not required.
Multi-class filings are permitted.
The New Zealand IP Office has ‘standard’ descriptions for goods and services based on the Nice Classification 11th Edition. It is not necessary to use these standard descriptions, however a higher official fee applies where an application claims ‘non-standard’ goods and services.
The timeframe from filing to examination can range from 3 weeks to 3 months. The usual timeframe from filing to registration, where no objections or oppositions are made, is 6 months.
Trade mark applications are examined on absolute and relative grounds. If grounds for refusal are raised on examination (office action), an applicant is usually given 6 months to respond to the refusal.
Opposition to registration of a trade mark can be filed by any person. The opposition period is 3 months from the publication date of a trade mark.
Some common grounds of opposition are:
Trade marks are registered for 10 year terms. Trade marks are available for renewal 12 months before expiry. There is renewal grace period of 6 months.
Proof of use is not required for a trade mark to be registered. Marking is not compulsory however the ® symbol is legally recognised and can only be used with registered trade marks. Once a trade mark is registered, there are no requirements to file statements of use or take any other maintenance actions. However, an application can be made to remove a trade mark from the Register if it has not been used in the preceding 3 years.
New Zealand is party to: