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Trade Marks FAQs
Your trade mark is more than just a company name- it's your whole brand. Learn about how trade marks can affect and help your business.
What does a trade mark require?
A trade mark must be capable of being represented graphically and may comprise a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, word or combination thereof.
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The mark must distinguish the goods of the owner from other goods, and must be distinctive in nature.
Check if a trade mark like yours is already registered in NZ
Resources
What do I need in order to register my trade mark?
Firstly, you need to ensure your mark is not already being used in the marketplace. To do this, you can search the trade mark register here, or engage an IP firm to do a comprehensive search. You also need to ensure that your mark distinguishes your goods/services from others in the market, and is not merely descriptive or a common term.
You will then need to figure out the class and specification of your goods/services.
A guide to the steps involved in applying for a trade mark in NZ
Check if you can use a name for a business or brand
How much does all of this cost?
The cost of applying to register for a trade mark depends on how many classes you have included in your application. The usual official fee to register a trade mark is $100 (+ GST) per class. The fees are set out on the IPONZ website here.
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​Getting a lawyer to help you do the application may seem financially daunting and applying yourself may seem tempting. However, applications don’t always get approved, and when they don’t you could end up having to do more paperwork to argue your application so that it gets through. An IP lawyer has the experience and expertise to efficiently get your trade mark approved, saving you and your business the time and headache. Consider them as your short cut to an easier road to trade mark registration.
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​Not registering a trade mark and finding yourself in a dispute with someone can cost thousands of dollars or worse losing your trade mark.
A tool to help you determine the classification of your goods/services from IPONZ's preapproved database
Someone else has registered/is using my trade mark. What can I do?
If you are the registered owner of that trade mark, you have the right to issue infringement proceedings.
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If someone is attempting to register your trade mark, you can file an opposition to it's registration, even if you are not the registered owner. IPONZ recommends contacting the party trying to register your trade mark to resolve the issue before commencing opposition proceedings.
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If you have any further questions about someone else using your trade mark, or want to commence proceedings, get in contact with our specialist trade mark team here.
What is trade mark infringement?
Trade mark infringement occurs when someone else's mark is used in the course of trade in a manner that deceives consumers.
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Section 95 of the Trade Marks Act 2002 sets out when use of a trade mark is not infringement.
I don't want to issue proceedings. What are my other options?
If you don't want to engage in litigation, you can initiate a dispute resolution process. As dispute resolution often involves negotiations and drafting of a settlement agreement, you should contact an IP law firm to act on your behalf.
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If you want to talk to us about resolving a dispute around your trade mark, get in contact with our team here.
What if my trade mark is unregistered?
If your mark is not registered, you can still generate goodwill and reputation through use of your mark. You can assert your common law rights through the Fair Trading Act and the tort of passing off.
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In order to be successful in these actions, you need to prove there is a reputation associated with your mark. If you register your mark, this does not need to be proven if you take action to stop infringement.
Is my mark protected overseas?
Your mark is only protected by the registration in the country in which it is registered.
​If you plan to use your trade mark overseas you should consider whether to register the trade mark in that country. You can file an overseas application at any time. However, you can claim rights (priority) from the filing date in New Zealand if you file your overseas application within 6 months.
