Applying for a Trade Mark
Once you have chosen a trade mark (a brand that belongs to your business) or formed a short list of potential trade marks, you now need to obtain registered trade mark protection.
The first stage in obtaining registered trade mark protection is usually to perform a search to find out whether you are free to use and register the trade mark without risk of infringing third party rights.
A trade mark which is the same or similar to an existing trade mark registration cannot be registered for the same or similar goods or services. Further, if you use a trade mark that is likely to conflict with an existing reputation for an unregistered trade mark already in use, the owner of that unregistered trade mark could prevent your use and registration and may seek to take action for breaches of fair trading legislation and/or passing off.
Searches should cover all markets of interest before you commit to a trade mark to avoid the expense of investing in a trade mark which is not available for use in your key countries. We can conduct searches in a number of English language trade mark registers and can assist with searches in countries which do not have English as a first language through our network of overseas agents.
Filing for Trade Mark Protection
In order to be registrable, a trade mark must be a sign capable of being represented graphically. This means a trade mark could be a word, combination of words, logo, label, image, shape, sound, colour, or even smell.
An application for registration should be filed as soon as possible after any initial searching has been conducted and found to be clear. This minimises the risk that new applications will be filed in the meantime that could prevent your application progressing.
The application must be filed by the true owner of the trade mark. The owner must either be using or intend to use the trade mark on the goods and services described. The owner can be a limited liability company, an individual, a collection of individuals, a corporate body, trustees on behalf of a trust, or registered charitable organisation or society.
The Nice Classification groups together similar goods and acts of service into 45 different class areas. A trade mark application must then be filed in one or more of these 45 classes. Careful analysis into the nature of your business, or proposed business, is required to make sure the application covers goods and/or services you wish to sell or provide now and in the future.
A typical business may find that an application in two or more classes is necessary to fully cover its operations. We can help identify the best classes to nominate and prepare a description of goods and/or services to provide you with robust coverage.
Examination after Application
Once the application is filed at the Intellectual Property Office, it is examined by a Trade Mark Examiner. A report will issue either confirming that the application is acceptable for registration or raising any objections. If objections are raised, the Examiner will identify points which must be addressed before the application can be deemed acceptable.
Some objections that are commonly raised include:
- That the trade mark simply describes the goods or services and is therefore non-distinctive
- That that trade mark is too similar to an earlier trade mark on the Register
- That the goods and services description does not meet Office standards
If we have conducted a search, we may already have discussed ways to manage potential objections with you.
The Office will set a time frame to address the objections. This is usually done by filing written submissions arguing why the objections should not apply. Successful submissions mean the application will be accepted for registration. If the Examiner is not convinced, objections can be maintained, or new objections can be raised. There are several opportunities to file submissions against objections, including at a formal Hearing and through the High Court of New Zealand.
Acceptance for Registration, Registration and Renewal
Once a trade mark has been deemed acceptable for registration, it is officially accepted and advertised in the on-line Journal. The application is then open to opposition by third parties for a 3-month period from the date of publication. If no opposition or extension to oppose is filed, the trade mark will mature to registration. The shortest time-frame to registration in New Zealand is 6 months from the date of application.
Trade mark registrations remain in force for an initial period of ten years and can be renewed indefinitely for periods of ten years each time on payment of the renewal fee.
Maintaining a Trade Mark Registration
In New Zealand, if a trade mark registration is not used in the form registered on the goods and services described for a continuous period of three or more years, it can be removed from the Register on application by a third party.
The same system operates for most trade mark Registers internationally.
It is important therefore to ensure that you use the trade mark correctly so that the registration is not successfully attacked on the basis of non-use.
Trade Mark Protection Outside of New Zealand
Trade mark rights are jurisdiction-specific. This means any trade mark should be registered in each country where registered rights are desirable (the exception to this is the European Union trade mark application which covers all Member States).
Trade mark applications can be filed at any time, but applications filed within 6 months of the first filed New Zealand application can take advantage of the Paris Convention for the Protection of Industrial Property to which New Zealand is a party, and the New Zealand filing date will be the first date of priority. This can be a valuable stepping stone to spread the costs for applications out over some months while retaining the earliest priority date.
The process towards trade mark registration overseas is in most cases very similar to the New Zealand Office and involves examination for local standards, issuance of an adverse report or acceptance, and an opportunity for third parties to oppose before registration issues.
We can file applications on your behalf directly into New Zealand and Australia and can assist in applications further afield via our network of tried and trusted agents.
We can also help you cost-effectively cover a number of countries through a single application filed under the Madrid Protocol.
While the application process can appear simple, it is important to seek expert advice and assistance to make sure you secure the trade mark protection you need for your business now and in the future.
We can help you prepare and implement a filing strategy to secure cost-effective, efficient and robust registered trade mark protection internationally.