In this article, we summarise the whys and wherefores of registering a trademark in New Zealand.
What Is A Trademark?
A trademark is an item of intellectual property that identifies a unique product or service, such as a symbol, a word, a colour, a logo or a sound. The most common forms of trademarks are word trademarks, image trademarks that do not contain words, and combinations of the two.
Why Register A Trademark?
Registering a trademark confers on its owner the exclusive right to use that trademark in one or more jurisdictions to promote goods or services. This legal protection ensures that a trademark cannot be used or imitated by others to promote similar goods and services.
A registered trademark is a good way to distinguish products and/or services from competitors and, as the trademark becomes more recognizable over time, add value to a business. Further, trademarks can be sold or assigned to other businesses, or licensed for use by other parties.
Step One – Trademark Search
Trademarks are registered in New Zealand with the Intellectual Property Office (IPONZ). However, before applying, one must ensure that a proposed trademark doesn’t already exist, hasn’t been applied for, or isn’t “confusingly similar” to an existing trademark.
The IPONZ website has two tools for searching the New Zealand trademarks register: the Trademark Check and the Trademark Case Search.
The Trademark Check searches for any registered trademarks that resemble a word or slogan. It also enables applicants to upload an image from a computer or mobile device. It is also capable of searching for registered image or logo trademarks based on images uploaded by the applicant.
The Trademark Case Search is a general search for trademarks that are on the register, including those that are abandoned, cancelled, or expired.
Consider An Initial Assessment
Those unsure whether their trademark is unique enough (or unfamiliar with the trademark registration process) can apply for a search and preliminary advice (S&PA) report before beginning the application process. This report assesses whether a trademark is likely to comply with the Trade Marks Act 2002.
An important decision to make in the application process is who will own the trademark. In New Zealand, trademarks can be owned by companies, individuals, two partners, one or more of a company’s owners, and other legal entities, such as an incorporated society. Trademark ownership can be transferred at a later date.
A trademark application must include a “specification of goods and services” which is a list of the goods and services that the trademark is intended for. A reduced application fee is available for specifications using only pre-approved goods and services terms, of which there are over 60,000.
To register a trademark, one must create an online account with IPONZ. Registered users can then access the trademark application form and the case management facility for trademarks and other intellectual property applications.
Applications can be saved and returned to later. However, once a trademark application is assessed, the examination fee is non-refundable, so it is important to prepare thoroughly before applying. Those making a first-time application or who are registering multiple trademarks should consider seeking the services of a professional specialising in trademarks to ensure the application process is completed properly.