English
New Zealand follows the "first to use" rule. Registration is not necessary to secure ownership to a trademark. Prior use is enough to establish rights.
The national office is accessible online at the following URL: www.iponz.govt.nz.
Applicants are required to have actual use of the mark or at least have an intention to use the mark prior to filing the application.
The following can be grounds for opposition:
- proprietary rights
- breach of copyright
- notorious or well-known mark
- the mark is descriptive
- the mark is misleading, deceptive or disparaging
- registered design rights
- the mark is not distinctive
- registration in the name of the agent or other representative of the proprietor of the mark
- the mark is generic
- rights in a personal name
- unauthorized use of protected emblems or national insignia
- prior reputation in New Zealand for the trademark or business/company name
- the use or registration of the mark is offensive to a significant section of the community including Māori people
Anyone may oppose an application.
The following can be grounds for cancellation:
- the mark is descriptive
- the mark is misleading, deceptive or disparaging
- the mark is not distinctive
- the mark is generic
- the mark is functional
- protection of armorial bearings, flags and other State emblems
- the mark is against public policy or principles of morality
- the mark consists of a geographical indication
- the mark is used in a misleading manner
- the mark includes a badge or emblem of particular public interest
- the application for or registration of the mark was made in bad faith
- the mark is prohibited in this jurisdiction
- Section VIII.A. Use Requirements
Note: There are other grounds for cancellation. Please contact Marcaria or consult a local trademark attorney.
The following rights are established by registration:
- the exclusive right to use the registered trademark
- the right to license other third parties to use the trademark
- the right to object to later conflicting applications
- the right to request for a cancellation action against a later conflicting registration
- the right to sue for infringement against confusingly similar third-party trademark use
- the right to obtain damages for infringement
- the right to apply for seizure by customs authorities for importation of counterfeit goods
The opposition period begins on the date the acceptance is advertised in the official journal.
The opposition period ends three months from the date the acceptance is advertised in the official journal.
New Zealand is a party to the Madrid Protocol. However, it is not a signatory of the Madrid Agreement and an international registration cannot be designated in this jurisdiction.
Periodic statements of use are not required.