Types of Trademarks in New Zealand
- We recommend choosing a wordmark as your first mark. It gives the broadest scope of protection and wordmarks are rarely changed, unlike logos.
- Logo is recommended if the mark you are trying to register is considered weak (descriptive, for example).
- A combined mark is a solid choice in many countries. But you must use your mark as it was registered at least sometimes. Therefore, a wordmark is still preferred as it remains the best value for money.
1. Trademark classification
A mark must be associated with products and/or services. These products/services are divided into 45 classes. The names of the products and services are determined either by the The Intellectual Property Office of New Zealand (IPONZ) or by the WIPO (World Intellectual Property Organization). The main list of acceptable terms is the Nice classification, but each country might have its variations.
Actual classification: Nice classification, 11th edition
If you already have a trademark anywhere, you can send us the details and we might be able to use the same list of goods. In any case we will check if the products are acceptable and help you create a description according to the local standards.
2. Our fees structure and country details
1. Our fees include an official fee for filing a trademark with any description of goods and services. We don't charge extra if your description is non-standard.
2. We recommend that you keep the list of goods/services below 40 items, that's an optimal number.
3. We will respond to minor objections free of charge in New Zealand.
4. Our success (registration) rate in New Zealand is 90/100 for all the trademarks we filed and 100/100 for the marks with an ordered Study (Extensive Search).
5. No additional documents required, the process is completely online.
How to get a trademark? The registration process explained in one minute: https://bonamark.com/content/registration-process-nutshell-explained-2-minutes
3. What can be registered in New Zealand?
Some trademarks can't be registered. In short, those are descriptive, misleading, offensive or generic marks (this is not the full list). Descriptive marks describe your products or services, generic are the names of your product, etc. Some cases are not straightforward and it's hard to determine if a mark is descriptive right away.
Some marks are weaker than others, even if the marks can be registered. There are suggestive marks like Microsoft, dictionary words with no direct association with the products or services such as Apple and made-up words or fanciful marks, i.e. Xerox.
The strongest marks are fanciful or made-up words, but from the marketing point of view, a suggestive mark might be preferable.
If there are similar marks in New Zealand your mark might be refused or might receive an opposition. Similar doesn't mean identical. They can sound similar, mean similar things or look similar. There is no 100% algorithm to determine similar marks, each case is different and we rely on the experience of our attorneys.
4. Free Trademark Search in New Zealand
We offer a free trademark search online in New Zealand, you can request it on this page. It's free and we'll check the register within a day. Our search is carried out by professional trademark consultants and as any manual searches this will increase its value.
We may spot that your mark is descriptive or generic and inform you beforehand. Some marks can't be registered in New Zealand and we will notify you if this is the case.
How to use our free search:
5. Trademark Study
During our study we check if your mark is registrable and search for similar marks. Once you get the results and our recommendations any uncertainty is removed and the process outcome becomes clearer.
Our Study helps to determine the probability of registration of your brand. There might be similar marks you are not aware of and by completing the Study we can give our estimated probability of successful registration. There are a lot of rules regarding what marks can and can't be registered and our attorneys will make sure that your mark does not contradict those rules.
If you want to have peace of mind that your brand will be registered within this timeframe and you won't have to pay extra for solving any problems you might order our trademark study.
6. Application Process
Your Registration Plan
Step 1. Start with a Free TM Search. We will check if there are any obvious conflicts. You will know if it's worth moving forward with the mark.
Step 2. Learning more about your brand. To file a trademark, we will need to know the owner address and name, the trademark and if it has a logo and what services/products it covers. Are you ready to move to the next step?
Step 3. Attorney's opinion (a.k.a. Study) In some cases we may recommend asking our attorney to review the case and prepare a detailed registration report. That's an optional non-obligatory service.
Step 4. Request registration and submit your payment. The process is completely online and we'll request your mark within 3-5 days and you will get a filing confirmation.
7. Trademark Registration Process in The Intellectual Property Office of New Zealand (IPONZ)
Applying for your mark (we pay all the government fees and submit the application) - > Formal examination (if the list of goods/services is correct, if other details are correct) -> Substantial examination (if the mark is unique and registrable) -> Publication (allowing the public and other business to object against the mark registration) - > Registration
In New Zealand we will require no additional documents to file a mark.
8. How long does the process take in New Zealand?
The entire process in New Zealand takes 5-7 months provided that there are no problems during the examination and publication stages.
The mark is protected for 10 years from the moment of registration/application. The mark can be renewed for periods of 10 years.
You must use the mark in this country as you registered it. If you don't use your mark for 3-5 years, the mark will become vulnerable to cancellations and others will be able to cancel it if they decide to start this legal procedure.
9. What can you do with a mark?
You have an ownership confirmation and the mark becomes a point of value collection, meaning that whatever you invest into your brand or into its reputation will not disappear, but will "stick" to your trademark. Getting a registration will seal your ownership over this value. That's similar to buying a land lot to buy a house. Would you like to build a house on a land lot that's not even yours? Of course not. Ownership matters
When you register your trademark in New Zealand, you’ll be able to:
1. Take legal action against anyone who uses your brand without your permission, including counterfeiters
2. Put the ® symbol next to your brand - to show that it’s yours and warn others against using it
3. Sell and license your brand
Benefits of getting a mark. https://bonamark.com/content/benefits-trademarks-explained-1-minute
10. Why Us?
Bonamark takes care of more parts of the process than any other company out there. We are not here to just file anything we receive from you. We are here to check everything, prepare the document to avoid the common objections, enhance your product list for the optimal scope of protection and make sure that you don't have to pay extra and spend more time than you wish.
In New Zealand we file marks since 2016 and work with the most experienced attorneys in this country. We take full responsibility for your success and make sure that everything is done according to your instructions.
Bonamark is one of the most valued trademark registration companies with 4.9/5 rating.
11. After Registration
A trademark is registered for 10 years and a digital copy certificate is issued. An example is attached below.
Once registered your mark will be valid for 10 years and can be renewed for periods of 10 years. You are allowed to use ® with your mark to show others that it is registered. Bonamark can renew your mark in the country. You can find more details regarding the renewal here: https://bonamark.com/content/trademark-renewals-new-zealand
The Trademark Office might refuse any similar mark for similar products, but we recommend getting a Trademark Watch in order to track any similar marks independently. This way you will be able to spot any similar marks and submit an opposition during their publication stage in order to prevent those marks from registering.
You have an obligation to use the mark in commerce. If you stop using the mark for 3-5 consecutive years your mark might be cancelled by anyone who starts the cancellation process
You must keep your details up to date, if the name of your company was changed you should submit the change at the Trademark Office, the same applies to the address. Otherwise, there might be difficulties when you have to enforce your mark and if you decide to sell it.
We offer Change of Address and Change of Name services and will help you to keep your details up to date.
Any questions? Contact us at [email protected]
We offer the following services in New Zealand:
- Trademark Search
- Trademark Registration
- Trademark renewal
- Trademark oppositions
- Defenses in case of oppositions or objections/office actions in New Zealand
- Trademark assignment
- Change of name/Change of Address
If you are interested in any of these services, please do not hesitate to contact us.
These prices include everything for a straightforward process of registration. The prices do not include any legal defenses in case of oppositions or objections.