The following articles shall comprehensively guide to register trademark in New Zealand which the trademark applicant should note prior to officially filing New Zealand trademark.
| QUESTIONS | ANSWERS |
| What is trademark rights in NEW ZEALAND: first to file or first to use? | The rule “first to use” establishes ultimate rights for the owner who uses unregistered trademark. In New Zealand, ownership of trademark is not set up from registering, it is made by using mark, even if there is anyone who subsequently registers it.
Besides, use of the trademark will provide several benefits such as opposing available infringement for trademark which is used substantially or more. However, the person who use prior trademark shall prove exclusive rights to others by providing evidences. This spends higher cost than registering trademark. This explains the reason why right of trademark is formed by owner’s using, but the holder still would like to register their trademark to prove this earlier.
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| What is advantage of trademark registration in NEW ZEALAND? | In New Zealand, Trademark registration is not compulsory, and the use of an unregistered trademark is legal. Although the registration is not mandatory, it brings many benefits for register: providing prima facie evidence of ownership and validity, providing national, regional and local protection, providing defense to infringement deterring others from using the trademark illegally, encouraging licensees and having a chance to generate royalties through licensing. This help the holder save much cost to prove their ownership.
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| Definition of trademark in NEW ZEALAND (i.e. What can be a trademark in NEW ZEALAND)? | Trademark is used to distinguish goods/services of different organizations/ individuals and a trademark can be known as a sign which can be seen.
From that, it is seen that Trademark can contains factors: such as words, names, devices, colors, slogans, holograms, state. Especially, following trademark Act, signs forming trademark may be other factors such as sounds, certain three dimensional shapes, trade dress/getup, which are capable of being reproduced graphically and sufficiently distinctive. Therefore, a trademark in New Zealand must satisfy following conditions: It must be visible; It has capability of distinguishing goods/services of different organizations and individuals. |
| Do we need to conduct trademark search in NEW ZEALAND before officially filing trademark in NEW ZEALAND? and Why? | It is not mandatory. However, it is very useful for applicant to determine the chance of success when filing a trademark application in New Zealand.
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| What international treaties NEW ZEALAND is a member? | New Zealand has taken part in some international agreements and treaties relating to intellectual property such as Paris Convention, Singapore Treaty, Madrid Protocol and Nice agreement.
Besides, New Zealand also has participated in bilateral treaties with countries such as Singapore and Taiwan in order to generate more convenient conditions for protecting the trademark among these countries. Moreover, with being a member of Paris Convention, Madrid Protocol and Madrid Agreement, the holder can register their trademark in other countries through WIPO and enjoy the priority for the first application filed in the host country with 6 months priority.
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| When is opposition to trademark application in NEW ZEALAND? | Any parties have the right to file the opposition against an applied trademark before it has been granted the protection. |
| What rights do owners of trademark have after getting trademark registration in NEW ZEALAND? | If the trademark is registered successfully, the owner will have following rights:
+ exclusive right to use registered trademark + right to oppose subsequent conflicting applications + right to request cancellation against subsequent conflicting applications + right to license the third – party use the trademark + right to claim customs authority for seizure of counterfeit goods and right to register Trademark in other countries which are members of Paris Convention through WIPO easily.
It can be seen that the rights above bring total protection for the trademark. The owner does not hardly prove for ownership when an infringement occurs because the trademark is registered in this jurisdiction. |
| What is term of trademark in NEW ZEALAND? | A trademark should be protected in New Zealand for ten years starting from the registration date. |
| What is use requirement after trademark registration in NEW ZEALAND?
What actions could be considered as use of trademark in NEW ZEALAND?
Could we stop validity of trademark registration certificate based on non-use for a period of time?
How many years of non-use? |
Although New Zealand does not force the owner to prove the use of their trademark, they need to use their trademark in practice to protect their trademark. The reason is because their trademark can be attacked on the ground of non-use in case of not utilizing their trademark within the following 3 years from one month before the application date. In this case, if others give requirement of cancelation to the Trademark Office, the holder is able to loss rights for their trademark if they do not prove the use of trademark by commercial actions such as advertising, establishing business locations or at least providing a single sale. |
| What is required documents for renewal trademark in NEW ZEALAND?
Is grace period after renewal date allowed? |
The holder can renew the protection certificate of their trademark with unlimited times, and they need to pay fees of the renewable within one year before the expired date. However, the owner can pay fees late without a fine within the grace period-12 months. |