Trade Mark Protection in New Zealand
[ Last Updated 18 February 2008 ]
Contents
Please read the Ministry's disclaimer notice.
What Is a Trade Mark?
In New Zealand, protection is provided to registered trade marks through the Trade Marks Act 2002 ("the Act"). The term "trade mark" is defined in section 5 of the Act as meaning "any sign capable of being represented graphically and distinguishing the goods or services of one person from those of another person".
A "sign" is defined in section 5 of the Act as including "a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word; and any combination of signs". A trade mark is often referred to as a "logo", "brand" or "brand name".
Please note that the Act entered into force in August 2003 and replaced the Trade Marks Act 1953. The new Act includes transitional provisions that are designed to manage the ongoing protection for trade marks registered under the Trade Marks Act 1953.
The New Zealand register of trade mark is administered by IPONZ. Read more about Trade Mark on the IPONZ website.
International Trade Mark Law
New Zealand is a signatory to the Paris Convention for the Protection of Industrial Property 1883. The Paris Convention contains a number of important procedural provisions in relation to trade marks.
As a member of the World Trade Organisation (WTO), New Zealand is a party to the Agreement on the Trade-Related Aspects of Intellectual Property Rights 1994 (the TRIPS Agreement).
Article 15 (1) of TRIPS states that "signs, in particular words including names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks".
What Qualifies for Trade Mark Protection?
Almost any sign that is capable of being represented graphically, and is capable of distinguishing the goods or services of one person from those of another, can be registered as a trade mark.
What Does Not Qualify for Trade Mark Protection?
A trade mark cannot be registered if it is not considered capable of distinguishing the goods or services of one person from those of another.
The Act provides that the following cannot be registered as trade marks:
- Surnames, business or company names cannot usually be registered unless they are presented in a unique or unusual way, or incorporated into a trade mark as one of its elements;
- Trade marks that are the same as or are similar to trade marks already on the Register of Trade Marks;
- Trade marks that are likely to mislead, confuse or are offensive;
- Terms that are generic, e.g. soap for soap products;
- Superlatives, e.g. best, super, etc;
- Descriptive terms, e.g. sweet for icecream;
- A geographical location associated with the good or service, e.g. Bluff for oysters.
Rights Conferred by a Trade Mark
Once a trade mark is registered, the owner has the exclusive right to use that trade mark. This means that other persons are not permitted to use the trade mark, a trade mark identical with it or a trade mark so nearly resembling it as to be likely to deceive or cause confusion in the course of trade. Trade mark owners may assign or licence their registered trade mark to another person.
How Long Does Trade Mark Protection Last?
Once your trade mark is registered the initial registration lasts for a period of ten years from the date the Intellectual Property Office of New Zealand (IPONZ) received your application. The registration is thereafter renewable for further periods of ten years, for an indefinite period.
How Do You Protect Your Trade Mark?
Searching for Trade Marks
Before applying to register a trade mark, it is advisable to check if your trade mark is already registered or in use. This could alert you to the possibility of infringing someone else's trade mark. If a similar or identical trade mark is registered, it may still be possible to use that mark provided the goods or services it covers are so different that people are unlikely to be misled or confused.
It is possible to search for trade marks in the following ways:
Making an Application
In New Zealand, IPONZ is the government agency responsible for the registration of trade marks.
An application for registration of a trade mark may be made by using the online application facility on the IPONZ website.
How Much Does It Cost?
The fees for obtaining trade mark protection are subject to change. The current fees can be viewed on the IPONZ website.
Trade Mark Protection Overseas
A New Zealand registered trade mark will only receive protection in New Zealand. To obtain protection for your trade mark overseas, you will need to file an application with intellectual property offices in overseas countries of interest.
Further Information
Contact Details
Latest Developments
→ Latest Developments in Intellectual Property in New Zealand
Useful Websites
→ Useful Intellectual Property-Related Websites
Applying for Trade Mark Protection
More Detailed Information
IPONZ have also prepared more information about trade mark protection.
Legal Advice
The Ministry of Economic Development is not able to provide legal advice. If you have concerns about your legal position, please contact a legal professional familiar with the law relating to intellectual property. You can search for an intellectual property lawyer in the following places:
- in the Yellow Pages;
- on the website of the New Zealand Law Society where you can find the district law society nearest you. The district law society may be able to assist you in finding a legal professional; or
- you can view the list of New Zealand registered patent attorneys on the IPONZ website
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