Trademark Registration in New Zealand
A trademark is a unique symbol, logo, letter or alphabet that is designed by individual or a
company for their branding in the market and worldwide. It can be a product or services, as
per the international classification system there are 45 classes of trademark which are
divided into good and services. In New Zealand trademark registration system there are
exclusive rights to use the trademark throughout the New Zealand to advertise goods and
services and uses ® symbol with the trade mark. This is legal protection for all the brand
who want to register their trademarks.
Requirements for trademark registration in New Zealand:
The name and address of the applicant. The applicant can be individual or a legal
person such as a company but not a trust.
Copy of a representation of the trademark.
List of the goods and or services associated with the trademark.
A trademark can be registered in respect of goods or services in one or more classes. From
the given information firstly an exact mark conduction will be proceeded to know whether the
same trademark is the subject of a pending application or a registered trademark in respect
of the same goods or services on the trademark database.
If an exact trademark is situated there will be a report to the search results and not
continue with the trademark application. If the exact trademark is not found a copy of the
application for your approval will be forward and also report the search results.
Trademarkcart will conduct a trademark search for free the applicants. The purpose of the
trademark search is to avoid the unnecessary expense in applying for trademark registration
where the exact trademark already exists on the trademark register. After the approval it
will go for examination and it will take time. During the examination process there are
chances that the authority may issue a report raising their objections to the registration
of trademark. Typical objections are that the trademark lacks uniqueness or that the
registrability of the mark is blocked by the existence of contradictory prior registration
A trademark applicant has a period of 15 months from the date of the first report within
which to overcome objections and get the permission of the application. A further 6 months
can be taken on the payment of monthly extension fees. Therefore, its recommend that
trademark applications be continued by acceptance as soon as possible after the first report
The trademark is registered for a term of 10 years from the filing date. The term can be
renewed every 10 years to secure registration with the payment of renewal fees. After 5
years from the date of filing, a registered trademark is unsafe for a removal for non-use if
the trademark has not been used during a constant period of 3 years. If a removal action is
started by a third party, the trademark owner must explain that there has been using of the
trademark during this period to keep the trademark on the register.
What Can Be Trademarked?
A name including personal or surname of the applicant or predecessor in business or
the signature of the person e.g, the name Dhirubai Ambani can be trademarked.
A word which is not being directly descriptive of the character or quality of
the goods / service. For example Google is a word which has been
Alphanumeric or Letters or numerals or any combination thereof. For example 555
Image, symbol, monograms, 3-dimensional shapes, letters etc. For example the tick in
Sound marks in audio format. For ex the sound in the ad jingle.
Who Can Apply For Trademarked ?
Any person or business claiming to be owner can apply for a trademark including
It is preferable that you apply for the trademark as an individual. In a case of a proprietor
or company, if you close or change the name of the business, your trademark will become
invalid. However, in a case of an individual, this problem won’t arise.
Trademark Law in New Zealand
New Zealand is a part of the Paris Convention, the World Intellectual Property Organization
(WIPO). According to the New Zealand trademark law, there is a Trade-Related Aspects of
Intellectual Property (TRIPs) Agreement, Hague Convention Abolishing the Requirement of
Legalization for Foreign Documents, Madrid Agreement for the Repression of False or
Deceptive Indications of Source on Goods, and Madrid Protocol. In New Zealand law there
should be a clear illustration of the mark and the goods/services and Id and address proof
of applicant is a must. New Zealand follows 3 types of trademark i reference to their laws
and regulations i.e. collective trademarks, certification trademarks, and series trademarks
are registrable in New Zealand. There are 12 months for responding to the first examination
report, with further time allowed for succeeding examination reports. The Commissioner must
neglect prior marks cited against an application if the approval of the prior mark’s
proprietor has been received. Once a trademark application has been accepted it is published
for opposition purposes in the Official Journal. An opposition can be filed within 3 months
of the publication date (extendable by 1 month if the extension is filed within three
months). Trademarks can be removed on the ground of non-use if genuine use of the mark has
not been made in trade in New Zealand for a constant period of 3 years after the date of
Once registered trademarks are in power for an initial period of 10 years, and can be
renewed for subsequent periods of 10 years at a time.
As with many other countries, New Zealand’s trademark legislation has undergone progressive
transformation since the latter part of the 20th Century. Notable changes under the
now-repealed Trade Marks Act 1953 include: allowing registration of service marks (1987);
replacing the definition of mark with sign and amending the definition of sign to include
colours (1994), amending the definition of sign to include sounds, smells, or tastes and
allowing the registration of collective trademarks (1999).
The Trade Marks Act 2002 made the following notable changes: it added shape to the
definition of sign, introduced multi-class applications, allowed for the division or merger
of applications, allowed trademark applications to be assigned; it established a Maori
Advisory Committee to advise the Commissioner on whether any applications or registrations
are likely to be offensive to Maori; it removed the ability to register defensive trademarks
and reduced the removal for non-use period from 5 years to 3 years. The registration term
became 10-years from the filing date, and the subsequent renewal term for any renewals
became 10 years.
The Trade Marks Amendment Act 2011 revoked all registered licenses and provisions relating
thereto. It also introduced provisions relating to the appointment, functions, and powers of
enforcement officers, including the powers of entry, search, and seizure as part of measures
to combat counterfeiting.
In December 2012 several international treaties came into force in New Zealand. In
particular: the Madrid Protocol; the Singapore Treaty (one 2-month extension of the time
limit possible); and the Nice Classification – although New Zealand has classified according
to the Nice Classification since 1941. Applicants can apply to convert to the current
Trade Marks Act 2002 (reprint as at 27 July 2017) (2017)- The main reason for the
commencement of this act was Trademarks, Geographical Indications, Trade Names,
Enforcement of IP and Related laws and IP Regulatory Body.
Trade Marks Amendment Act 2011 (reprint as at 29 April 2013) (2013)- The main purpose
for the commencement of this act was Trademarks, Enforcement of IP and Related Laws
Trade Marks Amendment Act 1999 (1999)- The reason for commencing this act was The
Amendment Act inserted sections 46A – 46M into the Trade Marks Act 1953 to provide
for the registration of collective trademarks.
Procedure For Trademark Registration
Complete our trademark Form
You need to fill our simple online trademark application form & submit documents.
Conduct your trademark search
To make sure that unique logo name filed is available or not, Trademark Search is
executed by experts.
Select Appropriate Class
Depending on nature of your products, we shall suggest the appropriate class of the
Trademark Application filed
We create your Trademark application in 3 days and get your TM number.
Trademark registration completed
Your trademark is registered in 1.5 2 years if no competitor objects to your
Steps to Register Trademark in New Zealand
- Step 1: New Zealand Trademark Search
Trademark search is a very important step before registering for trademarks.
Trademarkcart gives the availability of searching for similar, pending or registered
earlier trademarks. The report involves an assessment from a lawyer trained in
trademark law about the registrability of a trademark and the risk of a dispute with
trademarks earlier registered.
- Step 2: Trademark Status Search
Maintaining the status of your registration is a strong act to have an update on the
process. We can provide you a status report for your trademark or you may apply our
website to search for yourself. Also, put your trademark into the sorts of Trademark
class that i.e. out 45 categories pick the suited category for you.
- Step 3: Trademark Application
We prepare the trademark registration application in mainland New Zealand. The
all-inclusive cost includes our attorney fees and the government fee, thinking no
refusal or opposition.
- Step 4: Application Approval
When the documents are filled, completed and submitted we will further transfer your
application to the trademark authority. They will approve it or reject it this will
take a few months.
- Class 01 Chemicals substances products
- Class 02 Paints, Coatings & Pigments
- Class 03 Cleaning Products, Bleaching & Abrasives,
- Class 04 Fuels, Industrial Oils, and Greases
- Class 05 Pharmaceutical, Veterinary Products, Dietetic
- Class 06 Metals, metal castings, Locks, Safes, Hardware
- Class 07 Machines and Machine Tools and Parts
- Class 08 Hand Tools and implements, Cutlery products
- Class 09 Computers, Software, Electronic instruments, &
- Class 10 Medical, Dental Instruments, and Apparatus
- Class 11 Appliances, Lighting, Heating, Sanitary
- Class 12 Vehicles
- Class 13 Firearms, Explosives and Projectiles
- Class 14 Precious Metal ware, Jewellery,
- Class 15 Musical Instruments and supplies products
- Class 16 Paper, Items made of Paper, Stationery items
- Class 17 Rubber, Asbestos, Plastic Items
- Class 18 Leather and Substitute products
- Class 19 Construction Materials (non-metallic)
- Class 20 Furniture, Mirrors products
- Class 21 Crockery, Containers, Utensils, Brushes, Cleaning
- Class 22 Cordage, Ropes, Nets, Awnings, Sacks,
- Class 23 Yarns, Threads products
- Class 24 Fabrics, Blankets, Covers, Textile products
- Class 25 Clothing, Footwear, and Headgear products
- Class 26 Sewing Notions, Fancy Goods, Lace and Embroidery
- Class 27 Carpets, Linoleum, Wall and Floor Coverings
- Class 28 Games, Toys, Sports Equipment
- Class 29 Foods – Dairy, Meat, Fish, Processed &
- Class 30 Foods – Spices, Bakery Goods, Ice, Confectionery
- Class 31 Fresh Fruit & Vegetables, Live Animals,
- Class 32 Beer, Ales, Soft Drinks, Carbonated Waters
- Class 33 Wines, Spirits, Liqueurs products
- Class 34 Tobacco, Smokers Requisites products
- Class 35 Advertising, Business Consulting
- Class 36 Insurance, Financial
- Class 37 Construction, Repair, Cleaning
- Class 38 Communications
- Class 39 Transport, Utilities, Storage &
- Class 40 Materials Treatment, Working
- Class 41 Education, Amusement, Entertainment,
- Class 42 Scientific and technological services and research
and design relating thereto
- Class 43 Services for providing food and drink; temporary
- Class 44 Medical services; veterinary services; hygienic and
beauty care for human beings or animals
- Class 45 Medical services; veterinary services; hygienic and
beauty care for human beings or animals
Copy of Applicant’s Id and address proof
Copy of the business/company certificate
Letter of power of attorney
Print and digital version of proposed trademark
Copy of the passport of applicant
What Is Included In Our Package?
Name search & approval
Same day Filing
|Trademark Consultancy on Class and Availability
|TM Application Filing + Drafting (Our Fees)
||$ 699 + Govt. Fees
Trademark Search in New Zealand
Trade Mark search permits for targeted searching of intellectual property cases by case
number, owner, date, and more. Trademark search must be satisfied before filing a trademark
application to find likely disputes with existing trademark applications or registered
trademarks. You can do a trademark search by providing the wordmark and the class under
which the search is to be done. Trademark application is organized under 45 different
classes as per the NICE classification for trademark. All of the trademark class serves a
different set of goods and services. In case you need to get the trademark class for a good
or service, you can use our trademark class finder tool. We provide an easy way to perform a
trademark search through this online tool.
The Trade Mark Case Search is used to:
Perform general searches for trademarks that are on the register including
rejected, canceled, or expired trademarks based on targeted search
Logged-in users can also seek for particular cases for which they wish to
Search your trademark in 3 simple steps
Complete our trademark form.
We will generate your Trademark application
Final Wrap-Up of your Trademark Order.
Period of Validity and Renewal
In New Zealand, a registered trademark will be lawfully protected for 10 years from the date
of its certified registration. After 10 years, if the owner wishes for additional expansion
for it to be kept operational, further official charges are to be paid to the New Zealand
Ministry of Economy.
When the renewal is not done as soon as possible, there will still be a grace period of 6
months. It must also be seen that a registered trademark can be asked to be cancelled by any
interested party if the said trademark is not used for 5 consecutive years in the New
Zealand from the date of its filing.
Trademark registration is valid for up to 10 years from the filing date of the application
and is renewable for similar periods in New Zealand. The renewal fees of a trademark
registration can be given in the final year of the registered period. Also, a grace period
of three months is acceptable for the late renewal of a trademark with a fine. The renewal
of a trademark is also printed in the Trademark Journal and also in 2 local daily
Once your New Zealand trademark renewal is finished, your trademark registration is
maintained. Your trademark registration gets an expansion for a decade. You can now securely
use your trademark for advertising your company and brand in the international market.
Requirements for Renewal Process:
The application form or the renewal form is required. This form assists you to apply
officially for your trademark renewal.
An agent who would look and keep you updated on all the paperwork and renewal
processes. You should make sure that your mark is well protected. If you are seeking
the help of an agent, you must provide them with an owner’s signature on the
The original registration certificate is also important. You should provide the
authority with the original or photocopy whatever seems necessary.
Deposit the requisite amount of fees so that you do not face any delay.
You also need a power of attorney and an ID or address proof.
You would not be permitted to file a report upon any duplicity if you do not renew your
trademark. A registered trademark gives you the legal benefit of having the trademark owner.
You should file for trademark renewal before the time has passed.
A trademark can be registered in countries overseas. A search may be carried before filing
overseas as a trademark may be available for registration in one country but not in another.
It is not unusual for businesses to trade in one country only and hence all markets must be
viewed necessarily separately when picking brands. This trend has been fluctuating in recent
years, and regional and international trademark registrations are now viable and favored by
Ensuring that the mark is open for registration overseas is advised given considerable
resources will be invested in branding, marketing, and if a dispute exists in an overseas
market, sizable costs may be acquired to resolve a dispute, apart from the costs of
rebranding. We handle trademark clearance searches, freedom to complete reports, and can
advise your business before you commit resources with originating a new brand overseas.
If a New Zealand trademark has been filed, an overseas application can be filed within six
months to claim the earlier filing date of the New Zealand application. Even when the six
month period has passed, an overseas application may still be filed. However, the earlier NZ
filing date cannot be relied on and the actual date of filing the application is used.
Regional trademark applications are becoming popular, and the Community Trade Mark covering
all EU countries is a very popular option for NZ businesses exporting to Europe.
An international trademark registration regime, known as the Madrid Protocol, is now
available to New Zealand businesses, and one registration can cover over 80 countries. For
businesses wanting to protect a trademark in more than about 15 countries at the same time
may face cost savings by considering this option. However, if you are only interested in
securing your brand in a handful of countries, and with a restricted budget, developing an
IP strategy to seek protection in only those countries of interest may be extra
cost-effective and suitable in the circumstances. Some disadvantages include the high cost,
and all eggs in one basket risk if a basic or main registration is attacked in one country,
it can affect the whole registration. Moreover, any assignments of rights may be hard to
register, mainly if the purchaser is a business in a non-member country of the Madrid
We are also IP experts at managing trademark conflicts in New Zealand and Australia for
overseas applicants and can be contacted to assist parties with IP strategies for overcoming
notifications of provisional refusal and trademark objections, and other proceedings with
international registrations designating New Zealand.
Protecting your trademark rights
Once you have successfully received your full trademark registration, you must secure
your trademark rights by:
Using the ® symbol (a ™ symbol doesn’t mean you have a legally-registered trademark)
Fulfilling your responsibility to IPONZ by keeping up-to-date ownership and address
Monitoring your trademark against infringements.
FAQs on Trademark Registration
A trademark means a connection between certain goods and services and the
trademark owner. As such, a trademark functions as a symbol of origin,
identifying the source of branded goods or services.
You can contact our team for comprehending the cost of the trademark
registration in New Zealand. Even you can call us on +1-646-980-2377.
The process to get trademark registration in is Feasibility Check, Client
Signup, Trademark Filing, Application Monitoring and Trademark Certificate.
The documents required to get trademark registration in New Zealand Name and
address proof, copy of trademark and Letter of power of attorney.
The trademark registration process, in New Zealand from the application filing
until the time the certificate is given, takes approximately 12 months.