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Benelux trademark protects Belgium, Netherlands and Luxemburg. In order to obtain trademark protection in Benelux you can register your trademark in two ways: First option is that you request registration in the entire European Union with one single application; this can be done via the European Union Trademark which grants trademark protection in the 28 country members of the EU (more info here). Second option is that you register directly your trademark in Benelux. If you want to proceed this way please follow the steps described below.
Step 1 - Trademark Comprehensive Study
Before filing your trademark in New Zealand it is important that you evaluate possible obstacles that may arise during registration process. Our Trademark Comprehensive Study will not only list similar trademarks (graphic & phonetic) that may conflict with yours, but also give you an Attorney's opinion about registration probabilities and the class(es) that belong your product/services.
Trademark Class Recommendation
Graphic & Phonetic Similarity Trademark Search
Trademark Attorneys Analysis & Advice
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Step 2 - Trademark Registration Request
Your Trademark Application will be filed by specialized attorneys in New Zealand, who will carry out all needed tasks before the Trademark Office in New Zealand in order to obtain registration approval. As soon as your trademark is filed we will send you a filing report which will include application number and date, plus a scanned copy of filed trademark application in New Zealand.
Process Handled by Experienced Trademark Attorneys
Filing Report & Scanned Copy of Application
Online Tracking of the Registration Process
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Step 3 - Trademark Registration Certificate
Once your trademark application is approved, our attorneys will complete all necessary requirements in order to obtain the registration certificate in New Zealand. After the certificate is issued, it will be forwarded to your address along wit h a registration report specifying registration number, registration date and any special consideration that should be taken into account in New Zealand.
Process Handled by Experienced Trademark Attorneys
Delivery of the Registration Certificate & Report
Monitor & Reminder of important dates
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 Frequently Asked Questions
Trademark Registration
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Is there a time frame for the trademark registration approval?

The average time frame for the registration approval is 12 months, if no objections or oppositions arise.

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If I register my trademark in New Zealand, do I have protection in other territories?

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.

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Do I need to sign a Power of Attorney?

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

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Are there any benefits from a pre-filing use of the trademark?
  • 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
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Will there be problems in case I don’t use my trademark after registration?

Attack on the ground of non-use is available.

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What are the types of trademark that can be registered in New Zealand?
  • 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
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What are the phases of application after a trademark has been filed in New Zealand?

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
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What type of trademark is not registrable?
  • 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
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Does New Zealand use the "Nice Classification" system?

Nice Classification System is effective in New Zealand.

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Does the Community Trademark apply for New Zealand?

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

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Is there any possibility to claim priority 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
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What do I need to do to satisfy the use requirement?

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.

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Once my trademark has been registered, for how many years will be valid?

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

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What will be the renewal date of my trademark?

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

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Is it legal to use my trademark even if it is not yet registered?

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

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Does having a registered trademark in New Zealand give me any right?

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.

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What is the web address of the trademark national office?

The national office is accessible online at the following URL: www.iponz.govt.nz.

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Is there any need to use my trademark before I apply for registration?

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.

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Can a Trademark Application be opposed?

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
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Who can contest my trademark application?

Anyone may oppose an application.

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Is it possible to cancel a registration?

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
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Are there any rights established by having a registered trademark?

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
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How long is the opposition period?

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.

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Is New Zealand a member of the Madrid System?

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.

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Do I need to present periodic statement of use?

Periodic statements of use are not required.

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When should I renew my trademark?

Subsequent renewals last for a period of 10 years from the renewal date of the registration.

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What will be the renewal date of my trademark?

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

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Is there any documentation that should be presented when renewing a trademark?

None. No document is required when renewing a trademark registration.

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If my trademark expires, do I have a grace period?

The grace period after the renewal date has expired is 12 months.

Basic Questions
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What is a trademark?

A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.

 With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.

 Some symbols to consider:

® Means the trademark is registered.

TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.

SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.

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What is the difference between a trademark, patent and copyright ?

There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.

patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.

You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.

Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:

  1. a) artwork (2 or 3 dimensional),
  2. b) photographs, graphic drawings, and designs as well as other forms of creativity;
  3. c) songs, music, and sound recordings of all kinds;
  4. d) books, manuscripts, publications, and another written work; and
  5. e) plays, movies, shows, and other performance arts.

 

A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.

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What is the difference between TM, SM, ® and other symbols?

You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.

  • TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
  • SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
  • ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
  • ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
  • Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
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What are trademark classes?

Trademark Offices around the world use classes to divide commercial products and services into defined categories.  When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity. 

There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the 'Nice International Classification'.

These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics. 

Trademark protection only extends to commercial use within your specified classes.  It is possible, then for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.

You can perform a search of your class with the following tool Trademark Class Search

Trademark Search
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Why do I need to perform a trademark search?

Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? 

Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation. 

It is a good idea to conduct a Study before you start doing business with a trademark.  It may not be in your best interest to use a mark if another company is already actively conducting business in the same class.  That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.

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Do I need an Attorney to perform a Trademark Search?

No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find professional help. Our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.

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Where can I perform a trademark search?

If you have some knowledge about trademark registration, you can search using any online trademark search tool. If not, we recommend hiring a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.

Notice that if you do not complete the application process carefully, the registration process could be extended for many months and cost far more than you intended to pay. The trademark search is a critical part of the process.

A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.

You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.

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