Latest News: Apr 12, 2024New Trademark Practice Guidelines for Using Maori ElementsIn 2002, New Zealand became the first country in the world to incorporate cultural awareness and considerations into our intellectual property (IP) laws, by establishing the Māori Trade Marks Advisory Committee in our Trade Marks legislation.
In the last 20 years, the use of Māori elements by New Zealand businesses and those in the creative and innovation sectors has become increasingly popular. The Māori Trade Marks Advisory Committee has seen an average 10% annual increase in the number of referred cases since its establishment. There is also a growing understanding of the appropriate use of Māori cultural elements in trade marks.
To continue to improve the rate of appropriate use of Māori cultural elements in trade marks, IPONZ in conjunction with the Māori Trade Marks Advisory Committee have developed new guidelines. They help explain specific Māori concepts, and discuss why using certain Māori elements in combination with some products or services may be considered offensive. IPONZ has also developed checklist that helps applicants think through potential issues if their trade mark contains Māori elements. Completing this checklist is optional, and is not required as part of a trade mark application.
View these resources here:
- Trade Mark practice guideline 16: Māori advisory committee and Māori trade marks.
- Aratohu Mātauranga checklist.Source: www.iponz.govt.nz Latest News: Mar 12, 2024 (Newsletter Issue 2/24)Trade Mark Practice Guidelines UpdatedThe New Zealand Intellectual Property Office (IPONZ) has recently updated its trade mark practice guidelines to reflect how its examiners will treat applications whose specifications contain geographical indications (GIs).
The updated guidelines set out a general principle that trade mark specifications should only include generic descriptions of the goods or services. These updated guidelines also explain that examiners may raise specification objections whenever a Class 32 or Class 33 specification term comprises or mentions a GI that is registered in New Zealand.
In line with this:
- Applicants should not use a GI as the name of a good in a trade mark specification. Applicants should instead use a suitable generic description of the good.
- A specification can mention one or more GIs, provided that the goods originate in the place of geographical origin to which those GIs relate, and meet the other criteria for those GIs.
- If a GI is mentioned as part of a specification term, the wording must clearly identify the GI as a GI, and include a generic description of the goods.
The updated guidelines also include recommended actions which anticipate new requirements that may come about as a result of the New Zealand - European Union Free Trade Agreement, which is not yet in force but may enter into force soon.
To view the updated Trade Mark practice guideline click here.
Source: www.iponz.govt.nz Nov 23, 2023 (Newsletter Issue 10/23)Improvements to Online Case ManagementAs of November 23, 2023, the Intellectual Property Office of New Zealand (IPONZ) has implemented some improvements of its online case management facility.
- Plant Variety Rights (PVR) renewal notifications will be provided three months before the variety’s renewal due date and, if the renewal fee is not yet paid by that time, again one month before the variety’s renewal due date.
- New options to include renewal or maintenance due dates when conducting searches for intellectual property (IP) cases
- Case management facility allows to file requests to remove or add agents more easily.
- New look and feel for for patent renewal and publication notices.
For more details click here.Source: www.iponz.govt.nz Oct 18, 2023 (Newsletter Issue 8/23)Update to Trade Mark Practice GuidelinesIPONZ has updated its practice guidelines to clarify its practices on trade mark applications that involve non-fungible tokens, virtual goods and services, and manufacturing services.
For more details click here.Source: www.iponz.govt.nz Aug 01, 2023 (Newsletter Issue 7/23)Update to Trade Mark Practice GuidelinesOn July 11, the Intellectual Property Office of New Zealand (IPONZ) has updated its practice guidelines to clarify the requirements for colour trade mark applications, particularly the requirement for written descriptions of colour marks.
For more information click here.
Source: www.iponz.govt.nz Dec 15, 2022 (Newsletter Issue 18/22)IPONZ Online Case Management Facility ImprovedThe Intellectual Property Office of New Zealand (IPONZ) informs about a number of improvements to the case management facility.
- IPONZ client records will align with changes to New Zealand Business Number (NZBN) records.
- Trademark application form changes regarding editing the specification of goods and services on a trademark application.
For more information, please click hereSource: www.iponz.govt.nz Sep 22, 2022 (Newsletter Issue 13/22)TM Practice Guidelines Updated On 14 September 2022, the IPONZ informs that the Office has updated its practice guidelines to confirm changes on how they consider prior use and clarify the terms of “providing a website”.
Overcoming a Citation
IPONZ has amended its practice guidelines on “Overcoming a Citation” to reflect the way they currently consider prior use of a trademark. IPONZ’s examiners will currently consider submissions and evidence relating to prior use when determining whether special circumstances exist in relation to a trademark application. This supersedes an earlier practice where examiners would not consider submissions that attempt to prove prior use.
The updated Trade Mark practice guidelines can be seen under 10 Overcoming a Citation.
Annexure to Computer Services and Annexure General
IPONZ has amended the “Annexure to Computer Services” practice guidelines for trademarks. These new and amended guidelines clarify how trademark examiners will assess “providing a website” terms (or similar) in goods and services specifications. These changes were made in order to maintain consistency with current NICE classifications and the way these terms are treated internationally.
IPONZ has also made a similar update to our Annexure General practice guidelines.
The updated Trade Mark practice guidelines can be seen under 3b Annexure General and 3c Annexure to Computer Services.Source: www.iponz.govt.nz Jul 01, 2021 (Newsletter Issue 13/21)Search Tool for Pre-Approved TM Goods and Services TermsOn June 18, 2021, the Intellectual Property Office of New Zealand (IPONZ) announced a new tool called 'Trade Mark Specification Builder' for searching pre-approved trademark goods and services terms.
The tool provides a more streamlined interface to help identify pre-approved goods and services terms. These terms can then be included in the specification section of trademark applications. The search uses artificial intelligence to provide better results and related terms.
The access the 'Trade Mark Specification Builder', please click hereSource: www.app.iponz.govt.nz Jul 01, 2021 (Newsletter Issue 13/21)
3-Month Period before Restriction or Cancellation of Intl. Registrations Are Actioned
Notifications of the restriction or cancellation of international trademark registrations designating New Zealand (NZDs) from their office of origin are no longer immediately actioned in the New Zealand trademark register.
Instead, a 3-month delay is automatically imposed before implementing the change. This delay is to provide an opportunity to request for the NZD to be transformed into a national application or registration. Applicants must still email at mail@iponz.govt.nz to request for this transformation.
Source: www.app.iponz.govt.nz
Feb 20, 2020 (Newsletter Issue 2/20)Changes to Grace Period / Official Fees ReducedThe New Zealand Trade Marks Act 2002 was amended by the Regulatory Systems (Economic Development) Amendment Act 2019, which has commenced as of 13 January 2020. The amendments bring changes to the grace period for trademark renewals and official fees.
For trademarks due for renewal on or after 13 February 2020, the grace period for renewal is now 6 months from the expiry date.
For trademarks due for renewal before 13 February 2020, the grace period for renewal will continue to be one year from the expiry date.
Further, the status for trademark registrations that are not renewed by their renewal due date has been changed to ‘Registered - past expiry date’. This will replace the old ‘Expired but restorable’ status.
Additional to that, the official fees for filing a trademark application have been reduced. It is now NZD 100 per class instead of NZD 150. The renewal fee of a trademark registration has also been reduced from NZD 350 to NZD 200 per class.
For more information, please check hereSource: www.iponz.govt.nz Dec 05, 2019 (Newsletter Issue 17/19)Hearings Guidelines UpdatedOn November 8, 2019, the IPONZ Hearings Office has recently updated the following guidelines on proceedings under the Trade Marks Act 2002 with regard to the costs awards for uncontested cases and to how parties may be heard.
The Hearings Office will no longer award costs in any case where a proceeding applicant contacted the applicant/owner prior to lodging its case. The default position in uncontested cases will be one of not awarding costs, save for where there are circumstances that justify costs being awarded, or where the initiating party would almost certainly have succeeded.
Further, the Hearings Office has added new guidelines on the incorporation of Māori tikanga as part of the hearing process. This is an option for one or both of the parties involved in the hearing and must be notified in advance so that the necessary preparations can be made.
The Hearings Office has also clarified its practices on hearing venues, notably on the ability to attend these by means of video-conferencing.
For more information on the costs award, please click here and on the how you can be heard guidelines, please click hereSource: www.iponz.govt.nz Dec 05, 2019 (Newsletter Issue 17/19)IP Legislation and Procedural Changes SoonIPONZ informs that Royal Assent has been given to the Regulatory Systems (Economic Development) Amendment (No 2) Bill (“the Bill”) affecting Intellectual Property legislation.
The Bill amends a range of statutes, including the Trade Marks Act 2002, the Geographical Indications (Wine and Spirits) Registration Act 2006 and the Plant Variety Rights Act 1987. The amendments to these Acts will come into force on January 13, 2020. Most important changes are the following:
Impact on the Trade Marks Act 2002
The status “Expired but restorable” will be replaced by “Registered (past expiry date)” (Sections 59, 60 and 60A)
- The “grace period” to restore a trademark following its expiry will be reduced to 6 months.
- A trademark that has expired this way will remain on the register under the new status “Registered (past expiry date)”. This will enable the trademark to be treated as a ‘registered’ case for:
i. Allowing the trademark owner to perform actions to maintain the mark (e.g. assignment or cancellation).
ii. Allowing a third party to take action against the trademark (e.g. revocation for non-use).
- Some benefits relating to the enforcement of the trademark will not apply to “Registered (past expiry date)” trademarks.
Any marks that are in “Expired but restorable” status prior to the amendments coming into force will remain at that status and may be renewed using the current procedure.
Restriction on certification mark and standard trademark ownership in the same goods or services (Section 13A and 14):
A new Section 13A and an amended Section 14 of the Trade Marks Act 2002 will clarify that the owner of a certification mark may not register a standard trade mark in the same goods or services, or vice-versa.
Commissioner may require security for Hearings costs (Section 167):
Currently, security for Hearings costs can only be ordered if the party is based overseas. A new Section 167 will extend the powers of the Commissioner to order security if there is reason to believe that a party will be unable to pay costs.
Revocation of trade mark registration (Sections 65, 66 and 68):
Minor amendments will be made to Section 66 to clarify that there is no discretion to maintain a mark’s registration when the grounds for revocation have been made out, and there are no special circumstances.
Declarations on behalf of certain persons (Section 191):
Section 191 of the Trade Marks Act 2002 will be repealed, as this is already covered by other statutes.
Impact on the Geographical Indications (Wine and Spirits) Registration Act 2006
The new “Registered (past expiry date)” status will replace the original “Expired but restorable” status for renewal procedures under the Geographical Indications (GI) Act.
No geographical indications are due to be renewed until 2022, so this change is expected to have minimal impact.
Impact on the Plant Variety Rights Act 1987
Applicants and owners may provide an address for service in either New Zealand or Australia.
For further information, please check hereSource: www.iponz.govt.nz Oct 10, 2019 (Newsletter Issue 14/19)Official Fees Will Be Changed in 2020IPONZ informs that the Trade Marks Amendment Regulations 2019 will come into force on February 13, 2020, and will amend the Trade Marks Regulations 2003 (the principal regulations) by altering fees payable to the Commissioner of Trade Marks.
Fees for requests for preliminary advice as to whether a trademark has a distinctive character, or for search advice as to whether an identical or a similar mark is already on the trademarks register, will be altered. The request for preliminary advice only, per class, will increase from NZD 40 to NZD 50. The request for search advice only, per class, will increase from NZD 40 to NZD 50. The request for preliminary advice and search advice, per class, will decrease from NZD 80 to NZD 50.
Fees for applications to register trademarks or renew trademark registrations are decreased. The new official fee for filing a trademark application will decrease from NZD 150 to NZD 50 per class, if the relevant preliminary advice and relevant search advice were both provided and the application is not for the addition of a class of goods or services to an existing application..
For more Information, please check the Trade Marks Amendment Regulations 2019 hereSource: www.iponz.govt.nz Aug 07, 2019 (Newsletter Issue 10/19)New Trade Mark Check LaunchedIPONZ announced the launch of the new software "Trade Mark Check" for searches of words and logos of the New Zealand register. The software has been developed for members of the general public who have limited awareness of intellectual property. They can check if a trademark, or another like it, is already registered in New Zealand.
The existing trademark search will continue to be available for more advanced searches and specialised use.Source: www.iponz.govt.nz Jul 11, 2019 (Newsletter Issue 9/19)IP Office Accepts Division or Merger Requests of Intl. RegistrationsThe Office of New Zealand has withdrawn the notification made under Rule 40(6) of the Common Regulations, with effect as from March 21, 2019.
Consequently, as from that date, the Office of New Zealand can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Common Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Common Regulations.
This means that international trade mark owners are able to divide goods and/or services out of their International Registration into a divisional registration. In cases where the application is undergoing examination, this will allow acceptable goods and/or services to proceed to acceptance. This also allows trade mark owners to merge records that have previously been partially assigned or divided, back into a single International Registration.
For more details on New Zealand's current process for the division or merger of international trade mark registrations, please click here.Source: www.wipo.int Apr 04, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationThe Office of New Zealand has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of New Zealand and do not apply in respect of the Contracting Party. As a result, New Zealand will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Mar 21, 2019 (Newsletter Issue 4/19)Update of Practice Guidelines & Introduction of Request for Review ProcessOn February 28, 2019, IPONZ informed that it has updated its practice guidelines relating to Section 32(1) of the Trade Marks Act 2002, which concerns how a trademark application is made, and refers to the ownership of the trademark.
The update clarifies that if an application is made by a person who cannot claim ownership of that trademark (for example, a nominee company), then that trademark may be left vulnerable to opposition or invalidity proceedings.
While opposition or invalidity proceedings may be possible, IPONZ will not investigate an applicant’s right to ownership at examination, except in situations where it is apparent that the ownership of the trademark is at issue.
For more information, please check '2. Filing a trade mark application'
Further, IPONZ has introduced a request for review process for trademark applications. By this applicants or agents can now request for a more senior member of the examination team of the Office to review the examination of an application. The request can be made under certain circumstances which can be seen hereSource: www.iponz.govt.nz Jan 31, 2019 (Newsletter Issue 1/19)Trademark Practice Guidelines UpdatedOn February 1, 2019, IPONZ informs that they have updated the trademark practice guidelines to reflect the following:
Interpretation of “featuring” term in trade mark specifications
IPONZ will now treat the term “featuring” in specifications for goods and services as being a non-limiting term having the same meaning as the term “including”.
The updated interpretation appears under the Annexure General and Relative Grounds guidelines and confirms IPONZ’s interpretation of the term “featuring” for classification and citation purposes.
The practice will come into effect for National Trade Marks filed on or after February 1, 2019, and international registrations with a designation date on or after February 1, 2019. This will not retroactively affect applications filed before this date.
Change to division process for national trademark cases
IPONZ divides a trademark application for the purposes of overcoming an objection:
- The original (parent) application should be amended to include only the goods and/or services that are unencumbered by objections. This will allow this application to be re-examined prior to acceptance.
- The divided (child) application should only include the goods and/or services to which objections apply.
For more information, please check hereSource: www.iponz.govt.nz Jul 24, 2018 (Newsletter Issue 13/18)Trademark Practice Guidelines UpdatedThe Intellectual Property Office of New Zealand (IPONZ) has recently updated its trademark practice guidelines to reflect the following items:
1. Introduction of new practice guideline on absolute grounds – geographical indications
A new practice guideline has been added relating to the office’s interpretation of Section 20 of the Trade Marks Act 2002, which specifies that trademarks that contain geographical indications must not be registered in certain circumstances.
For more information, please check the new Trade Mark practice guideline here
2. Similarity of goods and services classes
IPONZ has added a new guideline regarding the similarity of goods in classes 32 and 33 which can be seen here
Further, a new Conflicting Class Goods and Services List has been released to supplement the existing Conflicting Class Table.Source: www.iponz.govt.nz Mar 15, 2018 (Newsletter Issue 5/18)IP Regulations Amended The Intellectual Property Office of New Zealand (IPONZ) informs that Amendments to the Patents Regulations 2014, the Trade Mark Regulations 2003, the Trade Marks (International Registration) Regulations 2012, and the Design Regulations 1954 have been notified in the New Zealand Gazette as of March 8, 2018.
These amendments will effect a number of changes to the patents, trademark and design regulations, including:
- Permitting an address for service to be in either New Zealand or Australia;
- Amendments to micro-organism deposit requirements for patent applications;
- Amendments to divisional patent applications;
- Changes to the extension of time provisions for filing a counterstatement in patent revocation proceedings.
The changes to the address for service requirements give effect to the Single Economic Market agenda announced by New Zealand and Australia in 2009.
For more information, please click hereSource: www.iponz.govt.nz Jan 16, 2018 (Newsletter Issue 1/18)
Updates to Trade Mark Practice Guidelines and Specifications
IPONZ is going to update the Trade Mark practice guidelines in early January 2018 by updating its practices for trademark applications with Māori geographical names. This follows recent treaty claim settlements as well as comments from ‘iwi’, the largest social units/tribes of the New Zealand Māori society. All trademark applications with Māori geographical names will now be forwarded to the Māori Advisory Committee for advice whether the mark is likely to be offensive to Māori.
As of January 1, 2018, IPONZ updated its practices around the acceptability of a range of goods and services descriptions. This includes updating the guidelines ensuring their consistency with the 11th Edition of the Nice Classification System as well as updating the options in the Goods and Services Classification selector.
Source: www.iponz.govt.nz
Jul 25, 2017 (Newsletter Issue 14/17)Geographical Indications Regulations Soon EffectiveThe Intellectual Property Office of New Zealand (IPONZ) informs that the Government has approved the Geographical Indications (Wine and Spirits) Registration Regulations 2017.
The Regulations set out the procedure for examining and registering a geographical indication under the Geographical Indications (Wine and Spirits) Registration Act 2006. The Act and Regulations will come into force on July 27, 2017.
After this date it will be possible to apply to register a geographical indication in New Zealand. The registration process, and the Register of Geographical Indications, will be administered by IPONZ.
For more information, please click here
Source: www.iponz.govt.nz
Mar 14, 2017 (Newsletter Issue 5/17)Single Patent Attorney Regulatory Regime in AU and NZIP Australia informs that the single patent attorney regulatory regime between Australia and New Zealand came into force on February 24, 2017.
The key features of the new regime are:
- A single register for patent attorneys, a single set of requirements for registration, a single code of conduct and a single disciplinary process for Australian and New Zealand attorneys.
- The Professional Standards Board has been renamed as the Trans-Tasman IP Attorneys Board, with an expanded membership.
- The knowledge requirements for registration as a patent attorney have been amended to require candidates to have sufficient knowledge of both AU and NZ intellectual property law and practice.
- Similarly the work experience requirements for registration as a patent attorney includes prosecution of Australian and New Zealand patent cases.
- The Disciplinary Tribunal has been expanded to provide for a three-person panel comprising a senior legal practitioner and two patent attorneys of which at least one will be resident in the country of residence of the patent attorney subject of the hearing, or two Australian registered trademarks attorneys to deal with trade mark attorney disciplinary matters. The disciplinary process is otherwise unchanged from the previous Australian regime.
- The code of conduct, continuing professional education requirements and the fees for registration and renewal are all unchanged from the previous Australian regime.
- Applications made to IP Australia for all IP rights (patents, trademarks, designs and plant breeder’s rights) can supply a single address for legal service in either Australia or New Zealand.
- A single address for service will not be available on February 24, 2017, for IP rights applications made to the IP Office of New Zealand (IPONZ), but will be coming in the near future.
The new patent attorney regime is possible following the passage of legislation in both countries. In late 2016, the New Zealand Parliament passed the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 allowing for the regulatory regime to have effect in New Zealand. The Act along with the corresponding Australian legislation, Schedule 4 of the Intellectual Property Laws Amendment Act 2015, came into force on February 24, 2017.
Existing patent attorneys in both Australia and New Zealand were automatically registered as trans-Tasman patent attorneys on the commencement date.
Transitional arrangements will apply to those candidates who have started studying for knowledge requirements to become a patent attorney under the current New Zealand regime. The transitional arrangements can be found on the Trans-Tasman IP Attorneys Board's website.
Source: www.ipaustralia.gov.au Jan 11, 2017 (Newsletter Issue 1/17)New GIs Law AdoptedOn November 17, 2016, the Geographical Indications (Wine and Spirits) Registration Amendment Bill was adopted by the New Zealand Parliament. It amended the Geographical Indications (Wines and Spirits) Registration Act which passed in 2006, but never entered into force.
The Amendment Bill introduces a 'sui generis' system for the protection of Geographical Indications (GIs) for wines and spirits in New Zealand, opened also to foreign GIs.
The full text of the Geographical Indications Amendment Bill is available here
Source: www.iponz.govt.nz and www.origin-gi.com Nov 09, 2016 (Newsletter Issue 20/16)
Accession to WIPO Convention by the Cook Islands in Force
The Cook Islands has become a party to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).
The accession to WIPO is separate from the Cook Islands being party to these agreements. It is an encouraging step towards establishing a regulatory framework in line with international standards.
Source: www.wipo.int
Sep 13, 2016 (Newsletter Issue 16/16)
Accession to WIPO Convention by the Cook Islands
WIPO notifies the deposit by the Government of the Cook Islands, on July 27, 2016, of its instrument of accession to the Convention Establishing the Word Intellectual Property Organization (WIPO), signed at Stockholm in 1967.
The said Convention will enter into force, with respect to the Cook Islands, on October 27, 2016.
Source: www.wipo.int
Apr 05, 2016 (Newsletter Issue 6/16)Trademark Practice Guidelines UpdatedIPONZ has updated the trademark practice guidelines with regard to amendments to trade mark applications and authorisation of agency requirements for mergers.
The Amendments to trade mark applications section now clarifies the requirements for requesting an amendment on a trademark application on the same day that the application is filed.
The Agents section now clarifies that an agent may only request for the merger of two or more trademark applications if they are the agent for all of the trademarks on the merger request.
For more information, please check here
Source: www.iponz.govt.nz Mar 16, 2016 (Newsletter Issue 5/16)
Practice Change to IPONZ Returned Mail Process
IPONZ informed on March 8, 2016, that the office has updated its process in relation to notifications about renewals and the expiry / lapse of intellectual property rights.
The address for service on the IPONZ register is used by IPONZ to send notifications to IP rights holders. This includes any situations where IPONZ needs to send notification via standard mail.
As of March 8, 2016, IPONZ will no longer re-send any standard mail that is returned due to an invalid physical address for service. IPONZ will also cease its practice of subsequently attempting to locate these IP owners.
The IP rights holder is responsible for keeping their address for service and other contact details up to date with IPONZ. In the event of a change in address, it is very important that a notice of this change is filed with IPONZ to avoid any missed notifications.
Source: www.iponz.govt.nz
Oct 28, 2014 (Newsletter Issue 16/14)Trade Mark Practice Guidelines ChangedIPONZ has made minor updates to the trade marks practice guidelines. The updates, relating to assignments, bring the practice more in line with international counterparts.
- Read the practice guideline 20. Assignments and transmissions here
- View the superseded practice guidelines section here
Source: www.iponz.govt.nz Jul 22, 2014 (Newsletter Issue 12/14)
IPONZ Is Moving
The Intellectual Property Office of New Zealand is moving to the new Ministry of Business, Innovation and Employment building.
From 11 August 2014 the Intellectual Property Office of New Zealand will be situated at:
15 Stout Street
Wellington 6011
New Zealand
There will be no interruption or change to our current services.
Source: www.iponz.govt.nz.
Nov 15, 2013 (Newsletter Issue 16/13)Madrid Protocol Application Form Updated IPONZ has made some changes to its international application form for the Madrid Protocol in order to facilitate the submission. For more information please click here.
Source: www.iponz.govt.nz Oct 01, 2013 (Newsletter Issue 14/13)TM Practice Guideline UpdatedIPONZ has updated the trade mark practice guidelines and maintain a trade mark explaining how a trade mark registration can be partially renewed.
Trade mark owners wanting to partially renew their trade marks will have two options: either alter their registered or expired but restorable trade mark by striking out classes of goods and services, or dividing their registered trade mark.
Alteration:
If the owner of the trade mark is certain they only wish to renew in a certain class or classes they should strike out the class or classes they do not wish to renew. The struck out class or classes will immediately cancel.
Divisional:
If the owner of the trade mark is uncertain which class they wish to renew they should divide the registration. The classes which they are uncertain if they wish to renew should be divided out into a separate trade mark registration. This would allow these classes to remain at expired but restorable status until the end of the one year period.
The request to alter or divide a trade mark can take up to 15 working days to be processed. Therefore, requests to alter or divide a trade mark should be made in advance of the renewal date of the trade mark registration.
For further information on the practice guidelines, please check here
Source: www.iponz.govt.nz Sep 17, 2013 (Newsletter Issue 13/13)
Accession to Nice Agreement
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify him of the deposit by the Government of New Zealand, on July 16, 2013, of its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.
The accession will not be extended to Tokelau unless a separate declaration to that effect is deposited with the WIPO.
The Nice Agreement will enter into force with respect to New Zealand on October 16, 2013.
Source: www.wipo.int
Jul 16, 2013 (Newsletter Issue 11/13)
TM Specifications and Duplicated Terms
IPONZ will no longer raise objections where the specification of goods and/or services contains duplication. The onus will be on the applicant to file correctly and ensure that specifications of goods and/or services do not include any duplicated terms.
An objection will only be made by the Office where the duplicated term(s) causes the specification or goods and/or services to be unclear.
Source: www.iponz.govt.nz
May 17, 2013 (Newsletter Issue 7/13)Trade Mark Practice Guidelines UpdatedThe Intellectual Property Office of New Zealand (IPONZ) has updated the Historic Trade Mark practice guidelines page to display any superseded practice guidelines from 3 May 2013 in PDF. The PDF will include any updates with changes tracked to make it easier to read about the updates. The Historic Trade Mark practice guidelines can be accessed here.
The current practice guidelines can be seen here.
Source: www.iponz.govt.nz
Apr 02, 2013 (Newsletter Issue 4/13)TM Law Reform/TM Amendment RegulationsThe Intellectual Property Office of New Zealand (IPONZ) announced that the amendments that are being made to the Trade Marks Regulations 2003 were notified in the New Zealand Gazette on 28 March 2013.
The Trade Marks Amendment Regulations 2013 come into force on 29 April 2013. These are the second part of the update to the Trade Mark Regulations 2003, following the implementation of the first part in December 2012.
The primary purposes of these Regulations are to update the Hearings procedures to improve the administration of proceedings before the Commissioner. Changes include:
- Allowing the Commissioner to grant an extension of time up to 3 months if the request is considered reasonable in the circumstances
- Introducing procedures relating to undertakings regarding confidential evidence
- Allowing the Commissioner to consolidate proceedings
- Amending regulation 75 allowing the Commissioner to grant an extension of time after the deadline has passed (request must still be filed prior to the deadline)
- Introducing procedures if a party repeatedly fails to - follow the directions of the Commissioner from a case management conference/ - provide documentation as directed by the Commissioner/ - agree to a Hearing date or attend a Hearing
In addition there are some other miscellaneous amendments to improve the operation of the regulations, including:
- Allowing an agent to remove themselves as agent from a trade mark
- Mandating that a class number must be provided when filing a Search and Preliminary Advice application
- Clarifying when a request for an extension of time in certain circumstances applies (continued processing)
For more information see the Trade Marks Amendment Regulations 2013 here
Source: www.iponz.govt.nz
Jan 18, 2013 (Newsletter Issue 1/13)7th Edition of Vienna Classifications UpdatedAs of the 1st January 2013, IPONZ has changed from using the 6th edition to the 7th edition of the Vienna classification system. The 7th edition of the Vienna classification system makes useful additions and amendments to the Vienna codes currently being used by IPONZ.
A summary of addition is available on the IPONZ website here
The 7th edition of the Vienna classification system is available on the WIPO website here
Source: www.iponz.govt.nz Dec 04, 2012 (Newsletter Issue 18/12)Official Fees Soon IncreasedNew Zealand will increase the official fees for filing a trademark to NZ$150 per class on December 10, 2012.
Source: A J Park, New Zealand Nov 19, 2012 (Newsletter Issue 17/12)Amended Trade Mark Regulations PublishedThe amendments that are being made to the Trade Mark Regulations have been notified in the New Zealand Gazette on 8 November 2012.
The Trade Marks Amendment Regulations 2012 and the Trade Marks (International Registration) Regulations 2012 will bring a number of changes to the trade mark system into force on 10 December 2012.
These changes represent the first set of changes that will be made to the regulations and cover the following areas:
- Regulations to give effect to the Madrid Protocol
- Regulation amendments required to comply with the Singapore Treaty
- Amendments to enable New Zealand to accede to the Nice Agreement
- Fees
- Mandatory electronic communications through the Commissioner’s case management facility
- Miscellaneous amendments to improve the operation of the regulations
The second set of changes are anticipated to come into force in the first quarter of 2013 and will cover:
- Amendments to proceedings regulations to improve the administration of proceedings before the Commissioner
- Further miscellaneous amendments to improve the operation of the regulations
The reason for the regulations being done in two parts is to allow New Zealand to implement the international treaties elements, including the Madrid Protocol in 2012.
For more information please check the the following publications:
- Trade Marks (International Registration) Regulations 2012 here
- Trade Marks Amendment Regulations 2012 here
- Main changes from the trade mark law reform 2012 here
Source: www.iponz.govt.nz Oct 16, 2012 (Newsletter Issue 15/12)
Accession to Singapore Treaty
The Government of New Zealand has now deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks. The said instrument contained the following declaration:
Consistent with the constitutional status of Tokelau and taking into account the commitment of the Government of New Zealand to the development of self-government for Tokelau through an act of self-determination under the Charter of the United Nations, this ratification shall not extend to Tokelau unless and until a Declaration to this effect is lodged by the Government of New Zealand with the Depositary on the basis of appropriate consultation with that territory.
The Treaty will enter into force with respect to New Zealand on December 10, 2012.
Source: www.wipo.int
Sep 27, 2012 (Newsletter Issue 14/12)
Accession to Madrid Protocol
New Zealand became a member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks on September 10, 2012. The said instrument contained the following declarations:
- In accordance with Article 5(2)(d) of the Madrid Protocol (1989), under Article 5(2)(b) of the Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months and under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit;
- In accordance with Article 8(7)(a) of the Madrid Protocol (1989), New Zealand, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee; and
- Consistent with the constitutional status of Tokelau and taking into account the commitment of the Government of New Zealand to the development of self-government for Tokelau through an act of self-determination under the Charter of the United Nations, this accession shall not extend to Tokelau unless and until a Declaration to this effect is lodged by the Government of New Zealand with the Depositary on the basis of appropriate consultation with that territory.
The Madrid Protocol enters into force on December 10, 2012.
Source: www.wipo.int
Jul 30, 2012 (Newsletter Issue 12/12)Deposition of Accession to Madrid Protocol Soon ExpectedThe Intellectual Property Office of New Zealand (IPONZ) has issued a discussion document relating to amendments to the Trade Marks Regulations 2003 that will be necessary to implement the Madrid Protocol system of International registration of trade marks.
Details of its proposed timetable has been released by the IPONZ when the Madrid Protocol system should go live. This includes four months of system testing, consultation on the regulations and final drafting, followed by user training in October and November 2012.
Once the regulations are finalised, the IPONZ is expected to deposit an instrument of accession with the WIPO. IPONZ hopes to be in a position to file the instrument of accession in September. Within three months of this, New Zealand should be accepted into the system, and IPONZ is preparing itself to accept Madrid Protocol filings by the end of this year.
Source: A J Park, New Zealand Jul 17, 2012 (Newsletter Issue 11/12)
Credit Card Payments to IPONZ
From 1 July 2012 all clients who wish to make payments for services by credit card are required to provide their CSV number as well as their credit card number and expiry date in order to complete the transaction.
Source: www.iponz.govt.nz
May 02, 2012 (Newsletter Issue 7/12)
Enhancement to Case Management System
The Intellectual Property Office of New Zealand (IPONZ) has enhanced its case management system:
1) Renewal reminder
The renewal reminder discussions for trade marks and designs will now include the renewal due date.
The due date can be seen without needing to open the attached pdf document.
2) Ability to delegate cases by case contact
It is possible to search by case contact (external user in charge) on the delegate case contact screen.
This will make it easier for an administrator to determine which cases its users are handling and which cases are still assigned to the administrator (super user).
Note for agents: new cases taken on by your firm will always default to the administrator as the case contact therefore the administrator needs to delegate them to a member user via the delegate case contact screen.
3) Search for Proceedings case screen
The label ‘IP Number’ has been updated to ‘Related Trade mark or Design Case’ to make it clearer that you can search by entering a trade mark or design case number that the proceeding relates to as well as by the proceedings case number.
Source: www.iponz.govt.nz
Apr 17, 2012 (Newsletter Issue 6/12)Practice Guidelines ChangedThe Intellectual Property Office of New Zealand (IPONZ) announced that its practice guidelines have been updated to reflect changes introduced by section 4 of the Trade Marks Amendment Act 2012.
The changes concerns
- Practice Guideline 02a Examination of trade mark applications - 4.3 Abandonment
- Practice Guideline 10a Overcoming a citation – 7.4 Abandonment of the cited mark
For further information, please click here
Source: www.iponz.govt.nz Feb 21, 2012 (Newsletter Issue 3/12)New Case Management System OnlineThe Intellectual Property Office of New Zealand (IPONZ) announced that its new case management system for trade marks and designs is now online.
Key features of the new system are:
- Receive all correspondence electronically - no more paper.
- Manage your IP applications from your personal IPONZ inbox – a central point.
- Update and maintain your own contact details.
- View progress of your case/s online.
- Create your own subscription to receive notifications of changes about specifies cases or class and specification.
- Manage and view your proceeding cases online.
For more information, please click here
Source: www.iponz.govt.nz Jan 23, 2012 (Newsletter Issue 1/12)New Case Management SystemThe Intellectual Property Office of New Zealand (IPONZ) is going to introduce its new case management system for trade marks and designs on February 13, 2012. The new system makes it easy to search, apply for, and maintain the firm’s IP and proceedings cases in a single place, through a simple user interface.
IPONZ has established a pre-registration period for current users which provides an opportunity to create a logon and link to existing records that have been migrated to the new system. Pre-registration will reduce any administrative delays in processing transactions and ensure a smooth transition.
The pre-registration period ends on 31 January 2012. IPONZ strongly encourages to pre-register.
Furthermore, the office offers a series of free workshop style training sessions on how to use the new case management system for trade marks and designs. To access the session schedule, please click hereSource: www.iponz.govt.nz Oct 01, 2011 (Newsletter Issue 11/11)Trade Marks Amendment Act 2011The Trade Marks Amendment Bill received its royal assent on 15 September 2011 and will be known as the Trade Marks Amendment Act 2011.
On assent the following notable provisions enter into force:
The removal of licensees from the Trade Mark Register
The ability to amend and remove memorandums
Allowing New Zealand to use the latest edition of the Nice Classification for goods and services
Any provisions that require updates to the IPONZ system, practice guidelines and website will be made accordingly.
For more information please click here Mar 28, 2011 (Newsletter Issue 5/11)
Online Correspondence Service Enhanced
The Intellectual Property Office of New Zealand (IPONZ) has enhanced the submission of the Online Correspondence service to include the ability to preview the uploaded document before submitting.
Source: www.iponz.govt.nz
Mar 08, 2011 (Newsletter Issue 4/11)Availability of Online ServicesThe Intellectual Property Office of New Zealand (IPONZ) is informing that from March 7th, 2011, IPONZ will only provide the online search and/or preliminary advice application form via the IPONZ online facilities.
For further information please click here Sep 09, 2010 (Newsletter Issue 14/10)
Goods and Services Tax Increased
The Intellectual Property Office of New Zealand (IPONZ) has introduced the new changes to New Zealand's Goods & Services Tax (GST) rate.
New Zealand’s GST rate will rise from 12.5% to 15% effective by October 1st, 2010. GST is required on fees paid by New Zealand residents or New Zealand based companies for requesting search and preliminary advice, filing a trade mark application and filing a renewal.
Source: www.iponz.govt.nz
Sep 01, 2010 (Newsletter Issue 14/10)New Processing Timeframes IntroducedThe Intellectual Property Office of New Zealand (IPONZ) has introduced new processing timeframes for some applications and correspondence effective July 1st, 2010.
For more information about the new timeframes please click here Jun 02, 2010 (Newsletter Issue 11/10)Design Act AmendedNew Zealand has amended the Designs Act 1953 to allow:
1.restoration of lapsed registered designs;
2.restoration of lapsed registered design applications; and
3.publication of registered design application details.
The Design Amendment Act 2010 received its royal assent on 19th April 2010 and comes into force on 19th April 2011 (or an earlier date if appointed by the Governor-General).
For more information please click hereSource: www.baldwins.com May 03, 2010 (Newsletter Issue 10/10)Practice and Online Services ChangedThe Intellectual Property Office of New Zealand (IPONZ) will change its practice on filing receipts and confirmation copies effective on May 17th, 2010.
Filing receipts will only be issued for documents filed through their online correspondence service.
Paper confirmation copies of documents sent to follow up a document filed online, by email or fax will be returned to the sender.
Furthermore, the IPONZ changed the online services to enhance the searching, application and correspondence services. There will be an extra navigation to related patents, trade marks or designs and a check to make sure you have uploaded the right type of file for your application.
For more information please click hereSource: www.iponz.govt.nz The current trademark legislation in New Zealand are the:
- Trade Marks Act 2002 (all sections brought into force on 20 August 2003);
- Trade Marks Amendment Act 2011 (all sections brought into force by 29 April 2013);
- Trade Marks Regulations 2003 (all sections brought into force on 20 August 2003);
- Trade Marks Amendment Regulations 2012 (all sections brought into force on 10 December 2012);
- Trade Marks Amendment Regulations 2019 (all sections brought into force on 13 February 2020); and
- Regulatory Systems (Economic Development) Amendment Act 2019 (all sections brought into force on 13 February 2020).
The principles of “common law” apply.
New Zealand is a member of the Madrid Protocol with effect of 10 December 2012.
Trademark protection is obtained by registration. Protection can also be acquired by sufficient public recognition or reputation.
Nice classification, 12th edition
Any sign (including words, names, acronyms, letters, number, devices, colours and colour combinations, three-dimensional shapes, sound marks, animation or moving images, olfactory marks and any combination of these) is registrable provided that it:
- is distinctive;
- is capable of being graphically represented;
- is not likely to deceive or cause confusion if used (including misleading use of a geographical indication);
- is not contrary to New Zealand law/otherwise disentitled to protection in any court;
- is not likely to offend a significant section of the community, including Māori;
- is not a commonly used and accepted name of any chemical element or chemical compound;
- is not a representation of any member of the British Royal Family, (unless consent from the individual is obtained);
- does not include a representation of the flag, armorial bearing, insignia, orders of chivalry or decorations of any entity (unless consent from that entity is obtained);
- does not include the flag, State emblem or official sign or hallmark of any Paris Convention country.
The following trademark types are registrable: trademarks, series marks, service marks, collective marks and certification marks.
Geographical indications for wine and spirits are registrable under the Geographical Indications (Wine and Spirits) Registration Act 2006, which came into force on 27 July 2017.
The application is filed at the New Zealand Intellectual Property Office (IPONZ).
Multiple-class applications are possible.
Foreign applicants do not require a local agent – it is sufficient to have a New Zealand or Australian postal address.
A power of attorney is not necessary.
Foreign applicants do not require a domestic registration.
Examination of national applications occurs within 15 working days. Examination of International Registrations designating New Zealand occurs within 70 working days of IPONZ receiving the designation from WIPO. Examination includes a formal examination, an examination of distinctiveness, and a search for identical or confusingly similar trademarks with priority.
If a sign is not considered distinctive by the examiner, the sign may still be registered by providing evidence that it has acquired distinctiveness through use in New Zealand.
If a mark is, or appears to be, derived from a Māori word or sign, the application will be forwarded to the Māori Trade Marks Advisory Committee. The Committee will advise IPONZ whether the mark is likely to be offensive to Māori.
If an identical or confusingly similar trademark with priority is raised as a citation objection, this may be overcome with arguments; restricting the coverage of the application to remove any overlapping goods or services; a letter of consent from the owner of the cited mark; evidence of honest concurrent use; opposing the application or revoking the registration; or a combination of the foregoing. It is not possible to overcome a cited mark through filing a revocation action, if the cited mark was not already vulnerable to removal before the trademark application was filed.
Applicants have 12 months from the filing date to address any examination issues raised by IPONZ. Extensions of time are possible but are discretionary.
If examination objections are overcome within the timeframe, or no examination objections are raised, the trademark application will be published for the purposes of opposition in the monthly “New Zealand Intellectual Property Office Journal”.
Any party can oppose registration of the trademark application within 3 months of the application being published.
If no opposition is filed, or any opposition is resolved, the application will become registered (after a minimum of 6 months from the application filing date).
The complete process, from filing an application to completing registration, is approximately 6.5 months, if no objections are raised against the application.
Once a trademark is registered, the ® symbol can be used.
National:The opposition period is 3 months from the date of publication of the trademark application.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the filing date or, if applicable, the convention priority date (referred to as the 'deemed date of registration').
The registration can be renewed for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is NZD 100 per class and NZD 100 for each additional class. There is no official publication or registration fee.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Further practical details are available in our publication on this topic
here
Jan 20, 2023
AJ Park, Auckland, New Zealand
