Notes when registering a trademark in New Zealand

New Zealand, with its beautiful nature, high quality of life and developed economy, can be an attractive place to invest in business and develop a brand. The country is not only famous for its stunning natural landscapes, but it is also one of the world’s largest centers for organic food production. Besides, the interest of New Zealand consumers in sustainable and eco-friendly products creates a huge opportunity for fashion and cosmetics brands. With a stable economy and supportive policies, New Zealand promises to be a potential market for businesses to expand their operations. However, in the process of registering a trademark in New Zealand to develop your brand, customers need to note a few points as follows.

Notes on the “First to use” principle when registering a trademark in New Zealand

The “first to use” principle is a notable difference in New Zealand’s intellectual property system compared to many other countries, especially those that apply the first registration principle. According to this principle, the ownership of a trademark does not depend entirely on who files the application first, but also on who is the first person to actually use the trademark in the market.

Implications and implications of using this principle in trademark registration

• Preference to actual users: Instead of preference to the first person to apply, New Zealand gives preference to individuals or organizations who have been using the trademark in a practical way.
• Business flexibility: Businesses can start using the trademark even before it is officially registered. This facilitates startups and small businesses.
• Fair Competition: This principle encourages healthy competition, fostering creative and innovative businesses.

Ways to Prove Prior Use Rights

To assert the right of prior use, you need clear evidence of having used the trademark in the market, including:

• Invoices: Sales invoices, shipping invoices…
• Advertising: Advertising in the media, online advertising…
• Signboards: Store signs, product signs…
• Product Packaging: Product packaging bearing your brand…

Notes when registering a trademark in New Zealand

The applicant can register a trademark in several ways. The applicant can file the application directly using one of the two registration forms below or through an agent such as an intellectual property attorney or trademark attorney. Both registration forms require the applicant to log in with RealMe®.

Registration of Business Connect’s Guiding Trademark

Business Connect is a very useful business support service suitable for applicants who have never used administrative procedures. Before contacting the unit about trademark registration procedures, the applicant needs to prepare the following information:

• Trademark type: Do you want to register a word, image, or combination trademark?
• Goods and services: What products or services do you want to trademark protect?
• Personal information: Name, address, phone number, email…
• Relevant documents: May include business licenses, business registration certificates, etc.

The Business Connect trademark registration form is a simpler option for those who have never filed before.

• The sign-up form is simpler.
• Only common trademark types are supported: words, images, and images containing words.
• Applies only to the applicant himself or the applicant’s business, not to others.
• Only pre-approved terms of goods and services are supported. An easy search function is built into the registration form.
• There is no additional cost to use this form.

Customers can access the following link:

https://services.businessconnect.govt.nz/prweb/PRAuth/app/default/MGk5tbWLYm-M0W35dAY7RlfcmnHrgvQq82PyV7OJmhI*/! STANDARD

Trademark registration form in IPONZ’s case management system

IPONZ (Intellectual Property Office of New Zealand) is New Zealand’s intellectual property office, responsible for managing intellectual property rights, including trademarks. To register a trademark in New Zealand, you will need to use IPONZ’s case management system. The trademark registration form in IPONZ’s service management system is for those who have used the service and advanced users who need more options.

• Traditional, more complex trademark registration forms.
• There is an option to have a representative file on behalf of the applicant.
• There is the option to use custom goods and service terms, and upload a saved list of terms from the Trademark Feature Generator.
• There is an option based on the Preliminary Consultation and Inspection Report for the applicant’s application.

Customers can access the following link:

https://app.iponz.govt.nz/app/Extra/Default.aspx?op=EXTRA_tm_keyin&fcoOp=EXTRA__Default

Steps to register a trademark on the IPONZ system

• Create an account:
  • Go to the IPONZ website at the above link and create an account on behalf of your company or create an account.
  • Provide complete personal or company information as requested.
• Preparation of registration documents:
  • Trademark Template: Prepare a detailed image or description of your brand.
  • Categories of goods and services: Specify the products or services that you want to protect with a trademark.
  • Contact Information: Provide your address, phone number, email, and other contact information.

If you wish to file a trademark application, please contact Viet An Law for the most effective support.