Summary of Trade Mark Law and Practice
New Zealand is a member of the Paris Convention (Stockholm text), World Intellectual Property Organization (WIPO), Trade-Related Aspects of Intellectual Property (TRIPs) Agreement, Hague Convention Abolishing the Requirement of Legalization for Foreign Documents, Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Madrid Protocol, Singapore Treaty and Nice Classification.
Minimum Filing Requirements:
A clear representation of the mark (in colour if that is claimed)
The goods and/or services covered by the trade mark
Name and address of the applicant
If Convention priority is claimed, then the date, number, goods and/or services and country of the application(s) from which convention priority is claimed.
Types of Trade Marks:
Collective trade marks, Certification trade marks, and Series trade marks are registrable in New Zealand.
There is a period of 12 months for responding to the initial examination report, with further time allowed for subsequent examination reports. The Commissioner must ignore prior marks cited against an application if the consent of the prior mark’s proprietor has been obtained.
Publication and Opposition:
Once a trade mark application has been accepted it is published for opposition purposes in the Official Journal. An opposition can be filed within three months of the publication date (extendable by one month if the extension is filed within the three month period). Trade marks can be revoked on the ground of non-use if genuine use of the mark has not been made in trade in New Zealand for a continuous period of three years after the date of application.
Trade Mark Term:
Once registered trade marks are in force for an initial period of ten years, and are able to be renewed for subsequent periods of ten years at a time.
Amendments to Legislation over the years:
As with many other countries, New Zealand’s trade mark legislation has undergone progressive transformation since the latter part of the 20th Century. Notable changes under the now repealed Trade Marks Act 1953 include: allowing registration of service marks (1987); replacing the definition of mark with sign and amending the definition of sign to include colors (1994); amending the definition of sign to include sounds, smells, or tastes and allowing the registration of collective trade marks (1999).
The Trade Marks Act 2002 made the following notable changes: it added shape to the definition of sign, introduced multi-class applications, allowed for the division or merger of applications, allowed trade mark applications to be assigned; it established a Maori Advisory Committee to advise the Commissioner on whether any applications or registrations are likely to be offensive to Maori; it removed the ability to register defensive trade marks and reduced the removal for non-use period from 5 years to 3 years. The registration term became 10-years from the filing date, and the subsequent renewal term for any renewals became 10 years.
The Trade Marks Amendment Act 2011 revoked all registered licences and provisions relating thereto. It also introduced provisions relating to the appointment, functions and powers of enforcement officers, including the powers of entry, search and seizure as part of measures to combat counterfeiting.
In December 2012 several international treaties came into force in New Zealand. In particular: the Madrid Protocol; the Singapore Treaty (one 2-month extension of the time limit possible); and the Nice Classification - although New Zealand has classified according to the Nice Classification since 1941. Applicants can apply to convert to the current version.