Trademark Search in New Zealand

The average time frame for the registration approval is 6 months, if no objections or oppositions arise.

The territorial limit of registration is New Zealand and Tokelau. The law does not specify whether protection is also extended to Niue and/or the Cook Islands. Consult a trademark attorney for clarifications.

A power of attorney is not required when filing an application. However, it will be necessary in case of change of attorney.

• pre-filing use may demonstrate acquired distinctiveness
• pre-filing use may help overcome an objection to a trademark application on the grounds of non-distinctiveness
• the first person to use a mark has the ultimate right to such mark, even if another subsequently registers it

Attack on the ground of non-use is available.

• words
• names
• devices
• certain three-dimensional shapes
• colours
• slogans
• sounds
• smells
• trade dress/get-up
• holograms
• motion
• taste
• touch
• collective marks
• certification marks
• well-known marks
• service marks
• series marks

Note: Trademarks can include many things; the list above is not exhaustive.

The order of the application process is as follows:

1. Examination of the trademark application according to the following:
   • formalities
   • classification
   • clarity
   • descriptiveness
   • distinctiveness
   • deceptiveness
   • conflict with prior registration
   • a consideration if the mark or use of the mark is offensive to a major section of the community such as the Maori people
   • bad faith
2. Publication of the following application particulars:
   • application date
   • mark
   • application number
   • name of applicant
   • citizenship of applicant
   • state or country of incorporation of applicant
   • address of applicant
   • priority claim information
   • goods/services
   • representation of trademark
   • local address for service
3. Registration

• marks that are against moral standards or public order
• generic terms
• flags, names or symbols of nations, states, regions, or of international organizations
• non-distinctive trademarks
• marks that function primarily as surnames
• marks that function primarily as geographic location names
• other prohibited names including:
  • various chemical and pharmaceutical names
  • plant variety names
  • the word "police"
  • etcetera

Nice Classification System is effective in New Zealand.

The European Union Trade Mark, formerly known as the Community Trade Mark, registration is not effective in New Zealand.

Applicants may claim priority if:

• if the applicant's home country is a member of the Paris Convention
• if the first application was filed in a country that is a party to the Paris Convention (not necessarily the applicant’s home country)
• if the first application was filed within six months prior to the application in new Zealand
• if New Zealand has a bilateral agreement with the country where the first application was filed such as Singapore and Taiwan

A trademark must be used within three years from the registration date.

The amount of use must be genuine and not merely token. Use of the trademark must occur in New Zealand.

The initial term of a registration is 10 years calculated from the application date or the priority date.

The first renewal date must be filed 10 years from the application filing date or from the priority date, whichever is earlier.

Using an unregistered mark for any goods or services is legal.