Introduction:
A wave of entrepreneurship has hit the peak worldwide. Every day we come across number of startups trying to make through the market. Almost all the goods and services available to public have no single manufacturer or service provider and this is where the trademark comes into play. The trademark distinguishes the goods and services of a person/company with others. A trademark can be a word, symbol, logo, numerical or even combination of all of these. It is important to get one’s trademark registered as registration provides a lot of benefits such as it stops the third party from imitating the mark and in case of trademark infringement allows to sue the infringer. Assignment and licensing are yet other benefits of getting a trademark registered. Trademark also adds value to your brand and keeps enhancing the values as the mark becomes established in the market. The trademark laws in New Zealand are guided by the Trade Marks Act 2002. They follow NICE Classification which consists of 34 classes of goods and 11 classes of services.
How to get a mark registered in New Zealand:
- First and foremost visit the website of New Zealand Intellectual Property Office and thereon one can begin the process of registration. You can directly visit the IPONZ using the link https://www.iponz.govt.nz/about-ip/trade-marks/#getting-started.
- In order to get the mark registered without hindrance, one must select the mark to be registered with caution and make sure that their mark is distinct and not descriptive of the goods or services it provides. Also one must ensure that the proposed mark to be registered is not similar to an already existing mark or else the registrar will raise an objection in getting the mark registered, so it becomes pertinent that before applying for a mark, one must search for any existing similar marks. IPONZ provides two ways of doing so:
- Trade Mark Check: you can simply upload your logo or mark here to find similar marks. It provides option for image recognition feature in the form of logo or image check and other options in the form of word or slogan check.
- Trade Mark Case Search: Trade Mark Case Search allows for targeted searching of intellectual property cases by case number, owner, date, and more.
- Apply for a Search and Preliminary Advise:
In the trademark section you will find this option. Submit the details like identity, goods and services classification and submit it along with the fees that $ 50 + 15% Tax. The report generated will be mailed to the applicant by the examiner. This allows you to decide whether you want to apply the same mark or make some amends. Further if you apply for the mark within three months of getting S&PA report then the fees for filing the application will be reduced from $100 to $ 50.
- Apply for the trademark:
Go to the trademark section and choose ‘Apply for a Trade Mark’ following which the trademark application form will open. Fill the reference section post which if one wants can base the application on a previous S&PA report followed by filling the identity section (whether you are owner or agent) as well as specification of goods and services. As a conclusive part save and submit the application followed by payment of fees OF $ 100 + 15% TAX.
- Priority applications can be filed in New Zealand within six months of which application was made in a convention country as being a signatory to Paris Convention for the protection of Industrial Property, it offers national treatment to the applicant residing in member countries of the union.
- Examination of the mark:
Within a specified date, the examiner will examine your application and respond. You’ll get an email inviting you to view the results of the examination. To process the application, the examiner may occasionally request more details. You must react to these requests right away, and any directions must be followed. If you are not satisfied with the examination you may opt for ‘Request to Review Option’ wherein a senior examiner will review the application.
Our trademark examiners will issue a compliance report if the application is not entirely in compliance with the Act. The compliance report will list the problems that have been found with the application and, the solutions to fix the issues.
- Opposition:
There is a gap of months between the acceptances made by registrar and the date of registration. The time gap in between is to provide an opportunity to third party to oppose the application if the mark of third party will infringed if the applied mark is registered. Right after the acceptance by the registrar, the mark is advertised in journal, the third party has three months from the date of advertisement in the Journal to file opposition. If no opposition is raised then the mark will be registered in less than six months from the date of filing. The matter will then be decided by the Assistant Commissioner based on written or oral submissions by the parties. The party aggrieved by the decision may file appeal in New Zealand High Court.
- Registration:
In case the mark is registered, the applicant will be provided with Certificate of Registration. The trademark is registered for a period of 10 years and post which you can get the mark renewed for another ten years by paying fees of $200 + 15%GST.
*The currency of New Zealand is New Zealand Dollar $ which is equal to around Rupees 50.
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