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Overview of Trade Mark Law in New Zealand

This article is presented by the New Zealand firm of Baldwin Son and Carey, patent and trade-marks attorneys and solicitors. Balwin, Son and Carey has offices in Auckland, Christchurch and Wellington. The WWLIA wishes to thank Baldwin Son and Carey for the use of this material on their site. Please note that this information is not legal advice but, rather, is a general statement of the law; legal information. If you have a real legal situation to resolve, you should seek the assistance of legal professionals. Baldwin Son and Carey maintains a web site at http://www.baldwins.co.nz/index.html.

New Zealand trade mark law is based on the Trade Marks Act 1953, as amended by the Trade Marks Amendment Act 1994. These Acts provide for the registration, in respect of particular goods or services, of a sign or combination of signs, capable of being represented graphically and capable of distinguishing the goods or services of one person from those of another. A "sign" includes, but is not limited to, a device, brand, heading, label, ticket, name, signature, word, letter, numeral, colour or any combination of these. Thus, a registrable trade mark may potentially include the shape of goods themselves, the shape of packaging, smells and sounds, if capable of graphical representation. The appropriate classification of goods and services is determined according to the Nice Agreement on the International Classification of Goods and Services, although New Zealand is not yet a party to that agreement.

The registration of trade marks is not essential but without a registration a proprietor must rely on common law rights and remedies to protect their mark. Definite statutory rights are granted to registered proprietors, and since the value of a trade mark may be high, its registration is desirable.

As with patents and designs, there is a register of trade marks which is publicly available for searching. The register should be searched before a new trade mark is launched to ensure that there will be no infringement of any existing trade mark registration.

Registration may be permanent, subject to payment of renewal fees. To obtain registration of a trade mark a formal application must be filed at the New Zealand Patent Office. The mark must have been used or be proposed to be used. A trade mark may be removed from the register if it is not used for a continuous period of 5 years or more.

A trade mark registration is infringed by the unauthorised use of the identical sign on any goods or services for which the sign is registered, or the unauthorised use of the identical or a similar sign on those goods or services, or similar goods or services, if such use would be likely to deceive or cause confusion.

The Geographical Indications Act 1994 has established a registration system for the protection of descriptions or presentations used to indicate a geographical origin for specified goods. Initially the only specified goods covered by the Act will be wines.

No forms are required to be signed before filing.

For a trade mark application the following details are required:

  • The name of the applicant;
  • The mark including a representation of any logo or device mark;
  • The goods and/or services to be covered;
  • If a convention application, the date of any basic application from which priority is to be claimed;
  • If the user is to be other than the applicant, particulars of the proposed user.

To complete formalities,a law firm needs an authorisation from the applicant. If registered users are involved, the law firm will need completed forms for signature, including an authorisation from the user. The nationality and address of the applicant (and any users) can also be completed after filing.

 

TYPICAL PROCEDURES FOR FILING, PROSECUTING

 

AND REGISTERING TRADE MARKS

 

(As at January 1996)

This does not take into account any possible third party opposition, or continued and protracted objections raised by the New Zealand Trade Marks Office.

Procedures and Dates Approximate likely cost in $US
1. Trade Mark Search is conducted and advice is given as to availability for use and registration $180-$240
2. Trade Mark Application filed at the New Zealand Trade Marks Office $385 with reductions for multiple filings
3. 6 Months from filing date. During the 6 month period it is possible at any time to file corresponding applications overseas while still retaining the New Zealand filing date. Applications may still be filed overseas outside the 6 month period but cannot be back-dated to the New Zealand filing date.  
4. 20-24 months from filing date. Substantive examination takes place by the New Zealand Trade Marks Office.  
5. Submissions filed at the New Zealand Trade Marks Office. If successful, a Notice of Acceptance issues. The cost depends upon the extent of the objections raised by the New Zealand Trade Marks Office and the number of similar marks involved. Any opposition may be lodged by an interested party at the publication of the mark in the Patent Office Journal. $335-$535
6. Deadline for Reply to examination is 12 months from the date of the examination report.  
7. Publication/Advertisement in the Patent Office Journal.  
8. 3 month opposition period from date of Patent Office Journal.  
9. Certificate of Registration issues, provided no formal opposition is lodged by third parties. If opposition is threatened or lodged, additional work will be involved. The registration will date from the date the application was filed.  
10. Renewal. The first renewal period is 7 years from the application/registration date. The registration then remains in force for 14 years, and may be renewed for further 14 year periods as desired. $375

Note: These estimated charges are only indicative. They will vary from case to case.


*Baldwin Son and Carey's Web Site
*The New Zealand Legal Information Centre
*The WWLIA Home Page

 We welcome comments, words of encouragement, constructive criticism, advice, suggestions or just to point out a grammar or spelling mistake which you have found. Click here to send an e-mail to the World Wide Legal Information Association.

© Baldwin Son and Carey 1996.

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