Do I Need To Register My Trade Mark?

No, you are not legally required to register your trade mark to use it. 

So Why Register?

Where a trade mark is unregistered, the owner must rely on the common law action of "passing off" or take proceedings under the Fair Trading Act to protect the mark. Such actions can involve long and costly litigation.

Registration of a trade mark, however, gives the owner of the registered trade mark legal protection. You can sue for infringement if someone else uses a similar mark to your registered trade mark for similar goods and/or services.

What Is A Trade Mark Search?

A trade mark search is a search of the New Zealand Trade Marks Register to see if anyone else has already applied for the same mark or a similar mark.

Where another same or similar mark exists, the Intellectual Property Office of New Zealand (IPONZ) will refuse registration of your mark. It is therefore essential that a comprehensive search is carried out before you apply.

TRADEMARKZONE can provide a search of the New Zealand Trade Marks Register for conflicting marks before you apply.

Why Use An Agent To Conduct A Search?

Searching the New Zealand Trade Marks Register can be time consuming and confusing. Your mark does not have to be identical to one that is already registered. It may be enough that the marks are similar and the goods or services are related.

When you apply for a trade mark search with TRADEMARKZONE, we provide a comprehensive search of the New Zealand Trade Marks Register for other marks that may be in direct conflict with your mark. We also provide a comprehensive search of the Companies Register, New Zealand telephone directories, domain names and the Internet to see whether a similar name exists.

Who Can Apply For A Trade Mark?

Only the trade mark owner or their agent can apply for the registration of a trade mark.  An application made by a person who is not the owner of the mark can be challenged.

How Long Does It Take To Register A Trade Mark?

Many factors can affect the process.

A trade mark must be examined and accepted by IPONZ before it can proceed to registration. The examination process itself can take from 5 days to a year depending on any examination issues that arise.

Even when a mark is accepted by IPONZ, it cannot be registered until 6 months have passed and may still face objection from another party. 

How Long Does Registration Last?

The registration period lasts for 10 years. The trade mark can be renewed at every 10 year anniversary.

TRADEMARKZONE can remind you to renew your trade mark and then renew your trade mark for you.

Will Registration Protect My Mark Overseas?

. Each country has its own laws and practices regarding trade marks.  You will need to apply for protection in each country where you wish to register your trade mark.

TRADEMARKZONE can provide assistance with overseas trade mark applications. Please contact us directly for a free quote.

Who Enforces Trade Mark Protection?

A trade mark is personal property. The trade mark owner is responsible for monitoring other people using their trade mark or a similar mark and taking any necessary enforcement action against them.

TRADEMARKZONE can monitor your trade mark and alert you if other traders have applied for a similar trade mark with IPONZ.