Registration and useOwnership of marks
Who may apply for registration?
Any person or legal entity claiming to be the owner of a trademark may apply to register a trademark. Certification trademarks can be owned by any person or organisation who will authorise traders and/or certify that goods or services comply with the certification criteria. However, the owner cannot be someone who is using or will use the trademark. Collective trademarks must be owned by a collective association (defined as a body constituted for the joint benefit of its members and in a way that its membership can be ascertained at any time). Joint ownership of trademarks is possible provided one of the applicants is entitled to use the trademark on behalf of all applicants, or in relation to goods or services with which all applicants are connected in trade.Scope of trademark
What may and may not be protected and registered as a trademark?
To be protected or registered, a trademark must be composed of a sign (or any combination of signs) that can be represented graphically and is capable of distinguishing one trader’s goods or services from those of another. A sign is defined non-exhaustively as including a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word. Series trademarks (where the applicant applies to register more than one mark in a single application) are allowable under certain conditions.Unregistered trademarks
Can trademark rights be established without registration?
Yes, the common law right of passing off is recognised in New Zealand and can be used to protect unregistered trademarks. In addition, the Fair Trading Act 1986 provides protection for unregistered trademarks where another trader uses the same or similar mark in a way that is likely to mislead or deceive consumers. Both of these legal avenues for protection of unregistered trademarks require that the owner of the trademark has established a reputation through use of the trademark in New Zealand (or in some cases use in other countries if there is sufficient evidence that the trademark is well-known in New Zealand).Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Famous trademarks that are not used in New Zealand may be afforded protection under the tort of passing off or the Fair Trading Act 1986 if it is possible to prove that the mark has a reputation in New Zealand, and use of a conflicting mark is likely to mislead or deceive consumers, and in the case of passing off, cause damage.
The Trade Marks Act 2002 also provides protection for famous or well-known trademarks not used (in trade) in New Zealand by enabling the famous trademark owner to oppose the application of an identical or similar mark by another trader in relation to the same or similar goods or services, or unrelated goods or services. The owner of the allegedly famous or well-known trademark must establish that the use of the trademark would be taken as indicating a connection in the course of trade, and registration would be likely to prejudice the interests of the owner. Significant evidence needs to be provided to establish that the trademark is famous or well-known in New Zealand.The benefits of registration
What are the benefits of registration?
Registration of a trademark provides the following benefits:
- exclusive rights to use the mark throughout New Zealand in relation to the goods and services for which it has been registered;
- the ability to enforce the registration against others who are using an identical or confusingly similar trademark in relation to the same or similar goods and services;
- prevents other parties from subsequently registering any identical or confusingly similar trademarks;
- creates an asset that can be transferred or licensed with or without the goodwill of the business in which it is used;
- removes the need to establish reputation in the trademark when alleging infringement (whereas reputation is required under passing off and Fair Trading Act 1986 actions);
- increases the strength of any Uniform Domain Name Dispute Resolution Policy (UDRP) complaint;
- if opposing or seeking a declaration of invalidity against another third-party application or registration, certain grounds are only available for marks that are registered (or have priority), and are generally easier to satisfy than other available grounds;
- forms part of a searchable public database of trademark rights (on the Intellectual Property Office of New Zealand (IPONZ) register);
- the ability to use the ® symbol to indicate the registered status;
- enables a Border Protection Notice to be lodged with New Zealand Customs;
- can be used as collateral for lending (and security interests can be recorded against it on the Personal Property Securities Register); and
- is presumed to be valid seven years after the filing date which protects the registration from certain third-party challenges.
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Electronic filing is mandatory and the following information is required when filing a standard trademark application:
- a clear representation of the mark, being one that is capable of graphical representation. For some non-traditional marks, a description of the mark is generally also required (the clearer the better);
- a list of the goods or services (specified within a particular class or classes);
- the applicant’s name and address;
- an address for service in Australia or New Zealand;
- the name and address of any agent (if applicable); and
- details of any convention priority being claimed (if applicable).
Depending on the type of trademark, there is provision to provide additional information such as a mark description (eg, for shape marks), a limitation (eg, to certain colours) or a translation (eg, if the mark contains non-English words or characters). If a certification mark is filed, the draft regulations that govern the use of the certification mark need to be provided within six months of the filing date.
Trademark searches are not required before filing, but are recommended to ensure the mark is available for use and registration.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
A trademark application cannot be registered earlier than six months from the filing date, so as to accommodate incoming convention filings that may have priority. In a straightforward case, registration may be achieved between seven and nine months from filing. If any objections are raised during examination, the applicant is given 12 months to overcome the issues. Extensions of time are possible in some circumstances. Once accepted, the application is published for a three-month opposition period.
Any opposition filed against the application will increase the estimated time and cost of obtaining a registration. Other circumstances that can increase the time and cost of obtaining registration include additional time and cost associated with obtaining letters of consent from third parties (if needed), filing of non-use actions against cited marks (if needed) and awaiting the outcome, and preparing and filing evidence of use (if available) to address objections raised during examination.
Rights may not be enforced until the mark is registered, although rights will commence from the filing date, or an earlier priority date if one is claimed.
The costs to register a trademark will vary depending on the number of classes. The official fees for registering a mark are NZ$100 per class. Generally, the costs to register a trademark in a single class in a straightforward case, using an authorised agent, will range between NZ$800 and NZ$1,200.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
New Zealand is a party to the Nice Agreement and the Nice Classification System has been used in New Zealand since the early 1940s. Multi-class applications have been allowed since the commencement of the Trade Marks Act 2002, although these do not provide cost savings in terms of the official fees payable. Most attorneys offer a discount of their services fees if an application is filed in more than one class.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
Once filed, an application will be assigned to an examiner who will initially check that all filing formalities have been complied with and subsequently carry out substantive examination. An objection will be raised if the mark or use of the mark:
- is likely to deceive or cause confusion;
- is contrary to New Zealand law;
- would be likely to offend a significant section of the community;
- is not a sign that can be represented graphically;
- is descriptive and/or lacks distinctiveness, and is therefore not capable of distinguishing the relevant goods or services;
- contains a protected geographical indication, a person’s name or commonly used chemical names;
- contains certain prescribed or prohibited signs;
- is identical to an earlier trademark application or registration in respect of the same or similar goods and services, and its use is likely to deceive or cause confusion;
- is similar to an earlier trademark application or registration in respect of the same or similar goods and services, and use is likely to deceive or cause confusion;
- is, or an essential element of it is, identical or similar to a trademark that is well known in New Zealand in respect of the same or similar goods and services (or any other goods or services) if use would be taken as indicating a connection in the course of trade and would be likely to prejudice the earlier trademark owner’s interests.
Applicants have 12 months to respond to any objections raised and may make multiple sets of submissions to the examiner. Extensions of time are available in certain circumstances. Evidence of use can be submitted in order to overcome some of the above objections and written letters of consent will overcome citation objections.
An applicant must have an address for service in either New Zealand or Australia in order to correspond with IPONZ. Therefore, the use of an agent to respond to rejections is compulsory for foreign applicants who do not have a suitable address for service.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Use of a trademark in New Zealand (or elsewhere) is not a requirement of registration. Foreign registrations are not granted any rights of priority, unless priority is claimed from a first application filed in a convention country within six months of the filing date of the New Zealand application.
If a trademark is not used genuinely in the course of trade in New Zealand for a continuous period of three or more years following the date of registration, it is vulnerable to removal from the register if it is challenged by a third party. To defeat a third-party challenge on the grounds of non-use, the trademark owner must prove genuine use of the mark within the preceding three-year period ending one month before the date of the non-use revocation application, unless the applicant for removal specifically seeks revocation from an earlier date. Alternatively, the trademark owner may be able to prove special circumstances that may excuse the non-use but this is only possible in certain limited circumstances.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
The ® symbol can only be used in association with a registered trademark. If a trademark is not registered in New Zealand, but is registered in a foreign jurisdiction, then the ® symbol can still be used in relation to goods imported into New Zealand if the trademark was legitimately applied in that foreign jurisdiction. The TM symbol can be used in respect of both registered and unregistered trademarks to assert that a sign is being used as a trademark. Neither type of marking is mandatory and the relief available does not depend upon whether marking was used. However, the use of markings can reduce the likelihood of the mark being infringed or of the same or similar mark being applied for by other parties.Appealing a denied application
Is there an appeal process if the application is denied?
If IPONZ declines to register a trademark, the applicant can request a hearing before an Assistant Commissioner. If the applicant is not satisfied with the decision of the Assistant Commissioner, it can file an appeal to the High Court. The applicant can appeal the High Court decision as of right to the Court of Appeal. The applicant can seek leave from the Supreme Court to appeal the Court of Appeal decision.
In addition to an appeal, there is also the option of judicial review of a decision by the Assistant Commissioner or High Court Judge, if it is alleged that the decision maker incorrectly exercised or failed to exercise a statutory power.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Following acceptance, applications are published for opposition purposes. Oppositions must be filed within three months of the publication date, although this deadline is extendible by one or two months in certain circumstances.
The grounds of opposition include:
- the applicant is not entitled to claim to be the owner of the mark;
- use of the mark is likely to deceive or cause confusion;
- use of the mark is contrary to New Zealand law;
- use of the mark will likely offend a significant section of the community;
- the application was made in bad faith;
- the mark is not a sign or a trademark;
- the mark has no distinctive character;
- the mark is descriptive or is commonly used in trade;
- the mark is identical or similar to a trademark registration or application that has priority, for the same or similar goods and/or services, and its use is likely to deceive or confuse; and
- the mark is identical or similar to a well-known mark.
To prevent abandonment of the opposed application, the applicant must file a counterstatement within two months from the date the opposition was filed. The opponent then has two months from when the counterstatement is filed to file evidence in support of the opposition. The applicant then has two months to file their evidence, and the opponent then has an optional one month to file evidence strictly in reply. All of these time frames are extendible provided certain requirements are met. Once the evidence is filed, the parties can elect to attend an in-person hearing, or for the case to be decided on the basis of written submissions only or on the papers as filed.
Registrations can be cancelled by an ‘aggrieved person’ (to be given a liberal or wide interpretation) on the following grounds:
- a condition of registration has not been complied with;
- for certification trademarks – the owner is no longer competent to certify any goods or services, the owner has not complied with deposited regulations, it is not in the public interest for the mark to be registered; and
- for collective trademarks – the collective association is an unlawful association, the collective association no longer exist, it is not in the public interest for the mark to be registered.
The owner can oppose cancellation within two months of the cancellation application being filed, in which case the same process and procedural time frames described above for opposition will apply.
Registrations can be revoked by an ‘aggrieved person’ on the following grounds:
- that at no time during a continuous period of three years or more was the trademark put to genuine use in the course of trade in New Zealand, by the owner, in relation to goods or services in respect of which it is registered;
- that, in consequence of acts or inactivity of the owner, the trademark has become a common name in general public use for a product or service in respect of which it is registered;
- that (1) the article or substance was formerly manufactured under a patent or the service was formerly a patented process; and (2) a period of two years or more has elapsed since the expiry of the patent; and (3) the word is or the words are the only practicable name or description of the article, substance, or service; and
- that, in consequence of the trademark’s use by the owner or with the owner’s consent in relation to the goods or services in respect of which the trademark is registered, the trademark is likely to deceive or confuse the public, for instance as to the nature, quality, or geographical origin of those goods or services.
The owner can oppose revocation within two months of the revocation application being filed, in which case the same process and procedural time frames described above for opposition will apply. However, if the revocation ground is non-use, the owner’s counterstatement must be accompanied by evidence of use (or evidence of special circumstances explaining the non-use).
Registrations can be invalidated on the same grounds as for opposition with the procedural time frames for the counterstatement onwards being the same. However, with invalidation, the owner can rely on distinctiveness acquired through use up until the date of the invalidation application. A registered trademark cannot be found invalid after seven years from the filing date unless it is made out that:
- registration was obtained by fraud;
- use of the mark is likely to deceive or cause confusion;
- use of the mark is contrary to New Zealand law;
- use of the mark will likely offend a significant section of the community; or
- the application was made in bad faith.
An invalidated trademark is treated as if it never existed, whereas a cancelled trademark only loses effect from the date of cancellation.
There are official fees for commencing opposition, cancellation, revocation or invalidity proceedings, which average out to NZ$350. Attorney fees will be incurred and depend on the number of grounds raised and the amount of evidence submitted. The successful party is entitled to recover some of its costs from the unsuccessful party on a fixed-scale basis.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark registration initially remains in effect for 10 years from the filing date. Thereafter, it can be indefinitely renewed for subsequent 10-year periods. Each renewal application can be made 12 months in advance of the renewal due date and may be made up to six months after the renewal due date. IPONZ does not require proof of use when renewing a trademark, however evidence of use will need to be submitted to maintain a registration if a revocation application based on non-use grounds is filed by a third party.Surrender
What is the procedure for surrendering a trademark registration?
A trademark registration can be cancelled voluntarily (partially or in full) by the trademark owner or their authorised agent via the online IPONZ case management system.Related IP rights
Can trademarks be protected under other IP rights?
Figurative, shape and sound marks can potentially qualify for copyright protection under the Copyright Act 1994 provided they are original artistic or musical works. Registered design protection under the Designs Act 1953 is possible for shape marks, although the novelty criteria for a design registration makes this uncommon (the design would have to be unused and inherently distinctive if simultaneous trademark and design protection is sought).Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The Trade Marks Act 2002, the Fair Trading Act 1986 and the tort of passing off apply to the protection of trademarks online and for domain names. Separate to the UDRP, the New Zealand Domain Name Commission operates an optional dispute resolution process, the Dispute Resolution Service Policy (DRSP) which applies to all .nz registrants. Under the DRSP, there is no requirement for the complainant to show unfair registration and use, or to prove that the registrant is without rights or legitimate interest to the domain name.