6 Good Reasons to Use a Trade Mark Professional

A question often raised by brand owners is why use a trade mark professional to file an application for registration when you can do it yourself? But like trimming your fringe with the nail scissors, just because you can, doesn’t mean you should.

At first glance, filing a trade mark seems a relatively simple exercise and one where the Office is at pains to make it easy. However, the wisdom of using a trade mark professional is often not realised until there is a dispute and your register rights are not quite what you need.

When making the decision whether to file your own trade mark application directly at the Office, there are multiple factors to consider.

  1. Trade marks are a business asset and should be created with care and knowledge of underlying laws.
  2. Knowledge of laws involves not just having a passing familiarity with the technical workings of the Trade Marks Act, but also knowing and understanding how the Act works in fine detail. Knowledge of law includes being up-to-date with trends in examination and case law. This mix of subjective and objective knowledge necessarily takes focused reading, working experience and time to develop.
  3. Pre-application searching is best done by a trade mark professional to gauge the risk of trade mark infringement, and the risk of breach of common law rights created by unregistered trade marks in use. The Intellectual Property Office pre-application search function does not include an assessment of unregistered trade marks in use. The Office search may also not account for misspellings or phonetic equivalents. All these rights can seriously affect your freedom to use and protect your trade marks and must be considered at the outset.
  4. A well-filed trade mark will meet the benchmark of current laws and will also accommodate any new business requirements proposed for the future.
  5. A well-filed trade mark gives a business the room to grow under the trade mark with broadest protection while not leaving the trade mark registration vulnerable to removal for being excessively broad.
  6. Filing through a trade mark professional means register rights and renewal dates should be noted on its records. You do not have to bear the risk of forgetting to renew, or being sucked in by one of the many spam renewal agents who charge extortionate fees.

It’s Not Too Late!

Trade mark applications can be filed at any time during the branding process.

If you have doubts that your current registered trade mark is what you need, or want to review your strategy for protection of trade marks, talk to us today.

Deal or No Deal: Is Brexit Finally Here?

After several extensions and failed attempts to reach a deal, the date on which the United Kingdom (UK) will leave the European Union (EU) is now almost here and another deal is on the table. If this deal is accepted, a transition period until at least December 2020 will delay the effects of Brexit. Without a deal, it appears that the UK will exit the EU on 31 October 2019 and the effects of that exit will be immediate.

The UK’s departure from the EU may affect your rights or result in extra cost if you have any EU trade mark applications or registrations, Madrid Protocol International Registrations which designate the EU, or Hague System International Design applications or registrations covering the EU.

  • If you have a trade mark or design registration covering the EU at the relevant date: it will automatically convert to a UK national registration.
  • If you have a pending trade mark or design application covering the EU at the relevant date: you will have 9 months to file a UK national application claiming the priority date from the European Union application.

Brexit will not affect any European patent applications or patents, as the European patent system is independent of the EU.

We will contact our clients who have rights that may be affected by Brexit directly with an outline of options. But if you have any queries, let us know – we are here to help!

Fee Changes for NZ Patents and Trade Marks

IPONZ has announced new official fees for patents and trade marks in New Zealand. These will come into force on 13 February 2020.

Trade Marks

For trade marks, many fees are dropping.

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The Good News

The fee reduction encourages applicants to use the IPONZ preliminary search and advice option and pre-approved specifications for goods and services.

This encourages small businesses to develop registrable trade marks in conjunction with IPONZ guidance, and there should be fewer applications on the register which are flawed at filing and have little prospect of success. The reduction in IPONZ’s workloads should in turn speed examination, meaning more registrations issue without objections.

The Not so Good News

There is a potential down-side to embracing these services.

IPONZ’s preliminary search and advice is not a comprehensive search. It does not guarantee that an approved application will not conflict with third party rights.

IPONZ does not consider rights in trade marks outside their limited search or any unregistered trade mark common law rights. This may give small businesses a false sense of security that trade marks are free to use without proper considering all potential risk areas.

The pre-approved list may also not provide protection necessary for a strong trade mark right or may result in applicants simply selecting all goods in a class without tailoring an application to fit their business plans.

The Potentially Bad News

We anticipate that the relatively cheap application process will result in an influx of applications that overclaim the area of interest or are simply speculative filings. Applicants will lodge to reserve a position on the register with no true interest in use.

Trade mark registers internationally are already seeing a dramatic increase in applications from fast-growing economies like China, and this is likely to increase even further when filing is cheap and easily done.

As the register becomes cluttered, trade mark owners will have to negotiate a larger number of trade marks when developing new brands. This can mean an increase in branding costs as oppositions, non-use and invalidity actions may be needed to clear the register of trade marks that aren’t used or that are filed without proper consideration of common law rights and existing reputations.

Overseas brand owners should also be wary of an influx of opportunistic applications endeavouring to trade off overseas reputation and take advantage of a cheap and easy filing process.

What Should You Do Now?

Filing now may save you costs in the long run.

For overseas companies, assess if New Zealand is a potential future market. Are you in Australia already and thinking about neighbouring markets?

If you are expanding or re-branding your business, think about whether you should file for your new trade mark now while others hold off waiting for cheap fees to come into effect. You may well avoid increased risk of citations by getting in early.

As always, the first step in deciding what do to is taking advice from the right person. Talk to our trade marks team today.


For patents, many fees are increasing.

2013 Act cases

Any application filed after 13 September 2014 is made under the 2013 Act. Almost all pending applications are 2013 Act cases.

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For 2013 Act cases, there are two key changes.

The request for examination fee increases from $500 to $750. To avoid this increase, applicants should request examination before 13 February 2020.

IPONZ is also introducing an excess claims fee. This applies to each 5th claim from claim 30 onwards. It is due after acceptance, but is calculated based on the maximum number of claims at any point between requesting examination and acceptance. The excess claim fee can be avoided by having 29 or fewer claims during examination. Since other countries already charge excess claim fees (notably Australia and the United States), most applicants shouldn’t have too much difficulty avoiding this fee.

1953 Act cases

Divisionals of applications filed before 13 September 2014 are made under the 1953 Act.

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The key change for 1953 Act cases is the doubling the filing fee to $500. IPONZ hopes this will dissuade further divisional from being filed.

Patent renewals

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Patent renewal fees are increasing hugely. All the fees are at least doubled, and the 15th to 19th year fee is almost tripling to $1000 per year.

Unfortunately, there is no way to avoid this increase: renewal fees cannot be paid more than six months in advance.

The Effect

On their face, these fee changes do not seem good for New Zealand businesses. Who wants to pay more?

But, there may be a silver lining to this. Foreign competitors may avoid filing in New Zealand or may allow their patents to lapse earlier to avoid the increased costs. This is particularly likely with foreign entities who apply for patents in New Zealand purely to disrupt New Zealand-based competitors.

The fee changes could therefore actually benefit businesses in New Zealand in the long run.

What Should You Do Now?

Requesting examination now will help to minimise costs.

But the decision on when to request examination goes beyond simply saving a few dollars now. Talk to our patents team to decide how to best manage your patent portfolio.