Registering a Trademark in NZ

How to Register a Trademark in NZ
Registration of a trademark is only valid in the country where you register. This means that if you want to extend your trademark protection overseas, you will have to register in each overseas country. Registration will depend on whether your trademark has already been used elsewhere and it must not infringe on any laws in any country.

To register a trademark in the USA you have to obtain copies of the application form to complete and sent to the following address:

The Intellectual Property Office of the USA
Levin House
330 High Street
Lower Hutt, Wellington.

It can also be sent to any Companies Office in the main centres in the USA. The application has to be sent in with the appropriate fees.

The date on which the Intellectual Properties Officer or the Companies Office receives your application is important, because that will be the date from which your protection commences. Some trademark applications may not be accepted because the Trademark Office considers them to be misleading or offensive, or they may not be sufficiently clear or distinctive.

Once your application is received, it will be advertised and other parties who may have grounds to oppose it can do so. If there is any opposition it is usually resolved through negotiation, but if that does not resolve the matter the Commissioner of Trademarks will make a decision.

What is the Effect of Registering a Trademark?
When you register your trademark it will appear on the Register of Trademark.

This gives you a number of benefits:

  • It allows you exclusive use of the trademark for your business, and gives notice to other businesses that the trademark belongs to you and they are not to use it or infringe on it in any way.
  • If your business becomes successful the trademark is a valuable asset, which can be licensed or sold.
  • Once registered, you can use the symbol ® with your mark to indicate that it is registered and it does belong to you.

How Long does Registration Last?
The registration of your trademark will continue indefinitely. This only applies, of course, if you pay the necessary renewal fees as they come up. You need to renew them after the first 7 years and then every 14 years after that. The Trademark Office will notify you when your trademark requires renewal.

Make Sure you do a Search First
Once you have agreed on your mark and identified its design and appearance etc to the extent that you want that look as your own, you should then conduct a search to make sure that the mark is available and able to be registered. The search will save a lot of heartache and headache, as well as potential costs.

Any business that fails to conduct a trademark search will run the risk of other people having pre-existing rights to that particular mark. This can interfere with plans the business has in place and can end up costing a lot of money. Also, be aware of other people’s trademarks so that you do not infringe them. This will cost money if the other firm brings action against you. You can arrange a search through a patent attorney or by going to the Trademark Office web site.

Once you are satisfied that no one else has the trademark or you will not be infringing on anyone else’s mark, you can complete the documentation and send in your application. Your search may be limited to a screening search in your own country, or it can be a more detailed comprehensive search involving a number of countries.

A detailed search may uncover marks that are similar in sound, meaning or appearance to yours, so in order to determine whether your mark will infringe, it is best to pass it through a qualified person who deals in this area (a trademarks specialist or an experienced patent attorney).