How to Register a Trademark for a Brand or Product in New Zealand

How to Register a Trademark for a Brand or Product in New Zealand

How to Register a Trademark for a Brand or Product in New Zealand

Trademarks provide legal protection for the names, logos, and other distinctive marks that represent your business. 

But if you’re new to the world of trademarks, the registration process can seem overwhelming. Luckily for you, we can help.

Our goal is to guide you through every step of the process so you can confidently protect your intellectual property. Let’s dive in and get started on your path to trademark success!  

How to register a trademark for a brand or product in New Zealand?

How to register a trademark for a brand or product in New Zealand
DifficultyModerately difficult ●●●○○
Number of steps6
Time to performApproximately 6 to 12 months to get your trademark fully registered.
Things you need• Computer and internet connection

• Digital copy of the trademark (if it is a combined or image mark)

• Credit card (or other cards for payment)

To register a trademark for your brand or product in New Zealand, you need to go through the Intellectual Property Office of New Zealand (IPONZ), as they are the government agency responsible for that.

The good news is that you can conveniently make an application to register your trademark.

Here’s a breakdown of all the steps.

STEP 1. Conduct a trademark search.

Before you dive into the world of trademark registration, let’s make sure your brand name or logo is up for grabs. 

By conducting a trademark search, you’ll be able to avoid any nasty surprises in the future and ensure that your trademark is as unique as you are. 

Plus, it’s always better to be safe than sorry when it comes to legal matters, right?

1. How do I find out if my trademark is already taken?

To find out if your trademark is already taken, you can use the Trade Mark Check tool provided by the IPONZ.
This online search engine allows you to search for trademarks by word, logo, or image. 
You can also use the Trade Mark Case Search tool if you want to search for specific cases by case number, owner, or date.
In addition, it’s a good idea to check if others may be using a similar word or slogan to yours by using tools such as ONECheck. This shows the availability of company names, domains, and social media usernames.
Finally, it’s worth checking the international trademark register to see if anyone has already applied for your trademark in New Zealand, even if it hasn’t been notified on the New Zealand register yet.

STEP 2. Determine the type of trademark.

STEP 2. Determine the type of trademark.

Choosing the appropriate type of trademark is a critical step in successfully registering your brand or product in New Zealand. 

They vary depending on the elements you want to protect, such as your brand name, logo, or a combination of both. Here are the types:

Generic Mark• This is like calling your coffee shop “Coffee Shop.” 

• It’s simple, but not very unique, and actually can’t be registered in New Zealand because it’s too general.
Descriptive Mark• This is a bit more specific than a generic mark, but still describes the product or service in a straightforward way. 

• For example, “Sunny Day Beachwear” or “Fast and Fresh Pizza.”
Suggestive Mark• A suggestive mark hints at the product or service being offered without being too descriptive. 

• Think of “Netflix” – it suggests streaming movies and TV shows without explicitly stating it.
Fanciful Mark• This type of mark is made up of a word or phrase that has no existing meaning, like “Google” or “Kodak.” 

• It’s a unique and memorable way to stand out from the crowd.
Arbitrary Mark• This is a common word that has nothing to do with the product or service being offered. 

• For example, “Apple” for computers and electronic devices or “Amazon” for online shopping. 

It’s essential to specify the right type of trademark because this will affect the level of protection you receive and the likelihood of your application being approved.

When determining the type of trademark you want to register, consider the following:

  • The nature of your brand or product
  • The level of protection you want for your trademark
  • Your budget for the registration fees

To help you decide which type of trademark is suitable for your business, you can explore registered trademarks in New Zealand through IPONZ’s database, which provides a wide range of examples.

STEP 3. Determine trademark ownership.

STEP 3. Determine trademark ownership.

Your trademark is like a precious little baby – it needs someone to care for it! So before you apply, you need to figure out who the owner is going to be.

So, who can own a trademark? A trademark can be owned by:

  • A company
  • Individual(s)
  • Two partners
  • One or more of the company owners
  • Other legal entities, such as an incorporated society.

Just a heads up: transferring ownership later can be a bumpy ride, so it’s best to buckle up and get it right from the start. 

To avoid any legal roadblocks down the line, it’s wise to seek advice from a trademark specialist who can guide you through the twists and turns of ownership options.

So, consider your company’s size, structure, and long-term goals when deciding who gets to hold the pen. Don’t sign on the dotted line until you’re sure, or you might end up with a scribbled mess.

STEP 4. Define your trademark’s playground.

STEP 4. Define your trademark's playground.

Before you apply, you need to work out where your trademark is going to play.

The playground, in trademark terms, is called your specification of goods and services. This is the list of goods and services that you want to use your trademark for. 

You can use IPONZ’s Trade Mark Specification Builder to find pre-approved terms for your specification. Simply search for the goods or services you want to use your trademark for, and the tool will provide a list of relevant pre-approved terms.

We’ve noted some important details to keep in mind:

  • There are over 60,000 pre-approved terms available to choose from.
  • The pre-approved terms have been standardized and classified into 34 classes for goods and 11 for services.
  • Using only pre-approved terms in your specification can help you qualify for a reduced application fee.

About that last part, the fee is based on how many classes are included in your specification. So, it’s important to think carefully about which classes your goods or services fall into. 

STEP 5. File your application.

STEP 5. File your application.

Now, it’s time to apply for your trademark, and the good news is, it’s easier than ever thanks to IPONZ‘s online case management facility. 

In just a few simple steps, you’ll be on your way to protecting your brand and standing out in the marketplace.

Here’s a step-by-step guide on how to apply for your trademark through IPONZ:
1: Log in to IPONZ’s case management facility.
2: Select “Apply for a Trade Mark” under the Trade Mark section to open the application form.
3: Enter a reference for your request.
4: Choose to base your application on a previous S&PA report, if desired.
5: Select “In my own right” or “As an Agent” depending on who is applying.
6: Enter your goods and service specifications.
7: Choose the appropriate mark type: “Word,” “Combined,” or “Image.”
8: Upload your image if applying for a combined image mark.
9: Save your request and do a final check before submitting.
10: Pay your trademark application fees (determined per class).

STEP 6. Wait for the registration period.

STEP 6. Wait for the registration period.

Congratulations on submitting your trademark application! Now comes the moment of truth – the waiting game.

After your application is examined by IPONZ to ensure that it meets the requirements, you’ll receive an acceptance notice if everything checks out. But don’t pop the champagne just yet – there’s a waiting period before your trademark is registered.

This waiting period is to ensure that there are no hiccups in the registration of your trademark. It’s possible that someone may oppose your application or that a similar trademark may claim an earlier priority date.

If no complications arise, your trademark will be registered a minimum of six months after its filing date. 

What should I do to protect my trademark after it is registered? 

What should I do to protect my trademark after it is registered

To protect your trademark after it is registered, you need to take proactive steps to safeguard it from potential infringement. 

Take note of these specifics:

  • Use the ® symbol: Once your trademark is registered, show it off proudly with the registered trademark symbol (®). Not only does it signal that your trademark is protected, but it also sends a clear message to potential infringers to back off.
  • Maintain up-to-date details: Keep your ownership and address details fresh and up-to-date with IPONZ. Don’t let outdated information create unnecessary roadblocks or jeopardize your trademark protection.
  • Monitor for infringements: Protecting your trademark is an ongoing process. Keep a watchful eye out for potential infringers or confusingly similar trademarks. If you spot any, take swift action to safeguard your trademark rights.

Why do I need to register my brand’s trademark in New Zealand?

Why do I need to register my brand’s trademark in New Zealand

You need to register your brand’s trademark simply to protect your investment. 

Think of it like a superhero suit –  it’s your armor against copycats, knockoffs, and other nefarious villains who might try to steal your hard-earned brand recognition. 

But why exactly is trademark registration so important in the land of the Kiwis?

First off, New Zealand operates on a “first-to-use” system for trademarks, which means whoever uses a mark in connection with goods or services first generally has priority rights to it. 

But while that might sound reassuring, the reality is that without a registered trademark, you’re essentially playing the superhero game without your trusty gadgets.

By registering your trademark, you’ll gain additional legal protections and advantages that can be crucial for defending your brand such as:

  • Exclusive rights to use your mark in connection with your goods or services throughout New Zealand so that you can put the kibosh on any would-be imitators.
  • A legal presumption of ownership and validity for your mark, which makes it easier to prove your rights in court if someone tries to infringe on them.
  • Legal remedies and damages in the event of infringement, like injunctions, damages, and orders for the destruction of infringing goods.
  • The ability to expand your brand internationally by registering your mark in other countries under international treaties. 

Well, if you’re ready to take the superhero leap and register your trademark in New Zealand, it’s important to also understand the different types of marks you can choose from.