Trademark registration in New Zealand

New Zealand is considered a country with a stable and dynamic economy with many advantages to attract investment and business. New Zealand pursues a free market economic model, encourages private enterprise, and is open to international trade. The Government implements stable macroeconomic policies, controls inflation well, creates a favorable business environment for investment and business activities. New Zealand ranks highly on indicators of ease of doing business, transparency and simple administrative procedures. New Zealand possesses abundant natural resources, including fertile land, clean water, minerals and natural gas. The mining, agri-food processing, forestry and energy industries play an important role in the economy. New Zealand is located in the South Pacific, close to major markets such as Australia, Asia and the US. The transport system is developed, conveniently connected with countries in the region and the world. New Zealand participates in many free trade agreements, facilitating product exports and attracting foreign investment. Therefore, more and more businesses are expanding their business scope in New Zealand, in order to be able to distinguish their brand from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law would like to guide customers through the preliminary procedures for trademark registration in New Zealand through the article below.

Legal basis

• Trademark Act 2002;
• Other relevant legal documents

General overview of trademarks

Definition of “trademark”

A trademark that distinguishes the applicant’s product or service from other products or services on the market. For example, the term “Supermarket BUDGET” for retail services related to food and household appliances cannot distinguish a particular trader from any other trader in that sector.

Benefits of trademark registration

• The exclusive right to use a trademark throughout New Zealand to promote the goods and/or services it includes.
• Use of symbols ® with branding
• Legal protection to prevent others from attempting to imitate the applicant’s trademark.
• A good way to differentiate an applicant’s business from other businesses.
• Adding value to the applicant’s business, this value can increase over time as the brand is established in the market.
• The ability to sell or transfer the trademark to another person or business, or license the use of the trademark to other parties.

Filing a trademark application

Applicants can register trademarks in several ways. Applicants can apply directly using either of the two registration forms below or through an agent such as an intellectual property representative or trademark attorney. Both registration forms require applicants to log in with RealMe®.

Business Connect Manual Trademark Registration Form

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

• The registration form is guided more simply.
• Only common types of trademarks are supported: words, images, and images containing words.
• Applicable only to the applicant himself or the applicant’s business, not to others.
• Only pre-approved terms of goods and services are supported. The search function is easily built into the registration form.
• There is no additional cost for using 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 service management system

The trademark registration form in IPONZ’s service management system is for those who already use the service and advanced users who need more options.

• The more traditional, complex trademark registration form.
• There is the option of filing on behalf of the applicant.
• There is the option to use custom terms of goods and services, and upload a saved list of terms from the Brand Features Generator.
• There is an option based on the Preliminary Examination and Advisory 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

Trademark application processing process in New Zealand

IPONZ (Intellectual Property Office of New Zealand) will check the applicant’s trademark application to ensure it complies with all requirements of the Trademark Act 2002 and the Trademark Regulations 2003.

If the applicant’s trademark contains Māori elements

If the applicant’s trademark contains Māori elements, IPONZ will refer the applicant’s application to  the Māori Trademark Advisory Committee (MTAC). The MTAC will assess the applicant’s proposed trademark for registration and provide advice on whether the applicant’s use or registration of the trademark may infringe on Māori. IPONZ will then consider MTAC’s advice, as part of the process of examining the applicant’s application.

Note:

Māori elements are those related to Māori culture and language, used in trademarks. These factors may include:

• Māori words: Include names, words, phrases, or sentences in Māori.
• Māori imagery: Includes traditional Māori designs, symbols, or patterns.
• Māori sounds: Include songs, chants, or other sounds that have Māori cultural significance.

The use of Māori elements in the trademark should be done in a manner that is respectful and consistent with Māori culture. To ensure this, IPONZ (Intellectual Property Office of New Zealand) has a special review process for trademark applications containing Māori elements. The process involves consultation with  the Māori Trade Marks Advisory Committee (MTAC) to assess whether the use or registration of a trademark may infringe on Māori.

If there is a problem with the application of the applicant

If IPONZ finds any problems with the applicant’s application, it will proceed to send the applicant a compliance report detailing these objections and giving the applicant time to respond within a certain timeframe. The deadline to respond will be specified in the report.

Respond to a Compliance Report

If the applicant responds within the stipulated timeframe, IPONZ will consider the applicant’s response and double-check the applicant’s application. Conversely, the applicant’s application will be canceled. If the applicant needs more time to respond, the applicant may request an extension of time before the period ends.

Application approval

Once the applicant’s trademark application meets all legal requirements, IPONZ will accept the application. If subsequent responses by the applicant cannot resolve IPONZ’s objections, and IPONZ considers that these objections cannot be resolved, IPONZ may dismiss the applicant’s application

Publication of the official gazette and registration

After the applicant’s trademark application meets all requirements and is accepted, a notice of acceptance will be posted in the Official Gazette. Within a period of three months from the date on which the notice of acceptance is posted, any party shall have the right to object to the registration of a trademark in the form in which it has been published in the official gazette. If no one objects to the registration of the trademark within three months, then the applicant’s trademark shall be officially registered. The official application period will take at least six months from the date of application.

Trademark registration in New Zealand through the Madrid System

If the enterprise owns the trademark and wants international protection, then the Madrid Agreement and Protocol on the International Registration of Trademarks allows for the protection of this trademark in all member states simply by filing a single application in a single office,  one language and pay only a series of fees in a single currency (Swiss franc). International registration has the same effect as the national procedure carried out in each individual country. To file an international trademark application, the owner must already own the trademark or at least have filed a similar national trademark application.

The Madrid System is a convenient and cost-effective New Zealand league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Protocol:

• New Zealand accessed the Madrid Protocol on 10 December 2012.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Singles consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with New Zealand designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or New Zealand;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of classes of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in New Zealand of Viet An Law Firm

• Perform the search and notify customers in writing of the results of the trademark search in New Zealand;
• Drafting documents and directly submitting and monitoring the status of trademark filings in New Zealand on behalf of trademark owners;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in New Zealand;
• Assist in monitoring, representing and resolving objections and responding to intellectual property representatives carrying out procedures in New Zealand.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to file a trademark application in New Zealand, please contact Viet An Law Firm for the most effective support.