1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in New Zealand. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Any 搒ign?that can graphically be reproduced and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
The system has been deregulated and there are now a number of different .nz registrars that compete for business. Domain names and trademarks may be registered for reciprocal rights. A local trademark attorney should be consulted on this issue.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but the official search may not disclose all potentially conflicting marks. The official search includes only prior registered marks. It does not usually cover prior unregistered rights, such as those gained under the common law action of passing off or the provisions of the Fair Trading Act (misleading or deceptive conduct in trade). A search conducted by a private attorney should include a common law search to see whether any other traders have built up reputation in a conflicting unregistered mark, which might prevent the use or registration of the new trade mark.If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else. As noted above, official searches sometimes do not disclose relevant conflicting marks. It is possible to oppose an application or attack the validity of a registration on the basis that there was or is an earlier conflicting mark on the register regardless of whether the conflicting mark was disclosed by the Official search when the application was examined. It is therefore prudent to have a trademark attorney conduct a full clearance search prior to filing or adopting a new mark.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a New Zealand trademark attorney.
8. What information must be provided before filing?
The minimum filing requirements are: prescribed fee; applicant's name and address for service; a clear representation of the trademark; a list of the goods and/or services for which registration is sought.
9. Is local registration the only option, or are there international alternatives?
A New Zealand application only has effect in New Zealand. There is some uncertainty as to whether New Zealand trademark registrations extend to Niue, Tokelau or the Cook Islands. The New Zealand government is considering acceding to the Madrid Agreement or Protocol.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. The new Trade Marks Act of 2002 provides for multi-class applications, though the official fees are now calculated on a per class basis rather than a per application basis.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a New Zealand application, the filing date of the home application can be claimed as the filing date in New Zealand. New Zealand has bilateral agreements with some non-Convention countries such as Singapore and Taiwan, allowing applicants from such countries to claim their home filing date. Consult a New Zealand trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
Trade marks can be removed from the Register if they have not been used for three or more continuous years. However, the transitional provisions of the new Trade Marks Act 2002 state that marks registered before August 20, 2003 cannot be challanged until they have been on the Register for five years; once that period has expired the relevent non use period is still three years. Trade marks that became registered on or after August 20, 2003 can be challanged as soon as they have been on the Register and unused for three or more continuous years. It should be noted there is some debate as to whether the phrase "was registered" (the term used in the Act) means the deemed date of registration (i.e., the filing/priority date) or the date on which the mark is actually put on the Register (i.e. the date on which the certificate issues). The New Zealand Intellectual Property Office believes it is the date the mark actually becomes registered and this does appear to be accurate on a strict interpretation of the Act.
13. Is using a variation of the trademark allowable?
It is no longer possible to amend registered marks.
14. Is there any advantage to using a trademark before filing an application?
Yes. Use of the mark is always advantageous and the first person to use a mark should have the ultimate right to such mark, even if another subsequently registers it. Prior use of the mark is, however, not a requirement for filing, although it can help achieve registration of a mark, that might otherwise be nondistinctive and, therefore, unregistrable. Where prior use of an unregistered mark is extensive, it is even possible to sue another party using the same or a similar mark by bringing an action for passing off. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, either directly, or through a licensee, may apply.
16. What information is first published about an application/ registration and when is it published?
Full details of the application are published in the online trademarks database as soon as the application is filed. Further, the trademark, the application number, application date, convention priority date (if any), class or classes, goods and/or services, applicant's name and address, and applicant's address for service in New Zealand are published for opposition purposes shortly after acceptance.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. An official search is also conducted for prior conflicting marks that can be cited against the application. A consideration of whether the use or registration of a mark would be likely to offend a significant section of the community, such as the Maori people, is now required. Also, the application cannot be made in bad faith, though the Office is unlikely to look at this during the examination proceedure. Although the Office has the power to conduct common law searches, in practice, it will search for only prior conflicting marks that are registered or that are the subject of a trade mark application.
18. What response to official objections is required?
The applicant is entitled to submit any number of replies reply within a given period that may be extendible. The prescribed time may be extended by request or if the Office is considering the applicant's most recent reply. If objections are confirmed, the applicant is entitled to appeal. The goods/services of the application may need to be amended and consent from the proprietors of cited registrations, or evidence of prior use of the mark, may be required.
19. How long is the registration process?
The registration process takes approximately 6 to 12 months. While the applicant may expect to receive the first compliance report or the notice of acceptance within two to three weeks, the mark cannot be registered until a minimum of six months have elapsed.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
Registration entitles the registrant to file infringement suits against unauthorized third-party users, opposition to subsequent applications, and cancellation of other subsequent registrations. It also enables the registrant to obtain an injunction to prevent unauthorized use.
22. Can an application be opposed or cancelled by third parties?
Yes. Any person may, within three months from the date of advertisement, lodge notice of opposition to the registration of a trademark.
23. Can an application or registration be assigned?
Yes. A registered trademark is assignable. It is now possible to assign pending trademarks regardless of whether the assignment was with goodwill or it was done with other, registered marks.
24. Must an assignment include goodwill?
No. The assignment of a registered trademark may be either with or without goodwill.
25. Does an assignment have to be recorded?
No, but is highly advisable to record assignments as soon as they occur. Only use by or under the authority and control of the registered owner can be relied upon (e.g. to defend against attacks for non-use).
26. Can an application or registration be licensed?
Yes. A registered or unregistered trademark may be licensed by the registrant to a third party. The registrant should, however, exercise control over the quality of the goods or services made and sold, or provided by the licensee. The license may be for some of the goods/services only, exclusive or nonexclusive, and limited as to territory or duration.
27. Does a license have to be recorded?
Recordation of any licensee is neither mandatory nor compulsory, provided that the use of the trademark is authorized and controlled by the owner. Otherwise, it is desirable to record the licensee so that use by the registered user or licensee would be legally considered use by the owner of the mark. Consult a New Zealand trademark attorney.
28. What is the territorial limit of a registration?
The territorial jurisdiction is New Zealand. It is uncertain whether the Trade Marks Act of 2002 applies in Niue, Tokelau and the Cook Islands.
29. How long does a registration last?
The term of registration is ten years from the date of application (or any priority date), and is renewable for periods of ten years each.
30. What is required to renew a registration?
Authorization of a New Zealand trademark attorney and payment of the required fee are required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is not mandatory; the use of 揜egistered Trademark?or 揘ew Zealand (or N.Z.) Registered Trademark No. . . .?is optional. It is an offense to indicate that a mark is registered before registration has been obtained.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, at www.iponz.govt.nz. |
