NEW ZEALAND TRADE MARK APPLICATIONS

New Zealand Non-Convention Trade Mark Application

Filing Requirements

No deadline to file.
To file the Application we will require:
- A representation of the trade mark.
- A list of the goods and services to be covered.
- Full name and address of the Owner.
No formal documents are required

Examination

The Application is generally examined within one to three months from filing. If objections are raised, a Compliance Report will issue.
Deadline – the Office will set a deadline of no less than 12 months from the filing date to respond to the Compliance Report.
The response deadline can be easily extended by up to 4 months.

Acceptance

Upon Acceptance the Application is advertised for a three-month period, during which a third party may oppose the Application.

Registration

If no opposition is filed, the Application will proceed to Registration and the Certificate of Registration will issue (in electronic form only).
The initial term of registration is 10 years from the filing date. The Registration can be renewed every 10 years, indefinitely.
The Registration may be vulnerable to removal for non-use, upon application by a third party, if the mark has not been used for a continuous period of 3 years following the date the mark was entered in the Register.

Filing Requirements

Deadline to file – 6 months from the filing date of the first filing in a Convention country.
To file the Application we will require:
A representation of the trade mark.
A list of the goods and services to be covered.
Full name and address of the Owner.
The country, trade mark number and filing date of the first filing.
No formal documents are required.

Examination

The Application is generally examined within one to three month from filing. If objections are raised, a Compliance Report will issue.
Deadline – the Office will set a deadline of no less than 12 months from the filing date to respond to the Compliance Report.
The response deadline can be easily extended by up to 4 months.

Acceptance

Upon Acceptance the Application is advertised for a three-month period, during which a third party may oppose the Application.

Registration

If no opposition is filed, the Application will proceed to Registration and the Certificate of Registration will issue (in electronic form only).
The initial term of registration is 10 years from the filing date. The Registration can be renewed every 10 years, indefinitely.
The Registration may be vulnerable to removal for non-use, upon application by a third party, if the mark has not been used for a continuous period of 3 years following the date the mark was entered in the Register.

Filing Opposition

Deadline - Notice of Opposition must be filed within three months of advertisement date (extendable by 4 months).
Within two months, the Applicant must file a Counterstatement. If this document is not filed, the opposition is considered successful.

Evidence

If a Counterstatement is filed, the Opponent has two months to file evidence in support of their position, in the form of a Statutory Declaration.
The Applicant then has two months to lodge evidence in support of their position, in the form of a Statutory Declaration.
The Opponent is then given one month to file evidence strictly in reply to the Applicant’s evidence, in the form of a Statutory Declaration.

Hearing

Once the evidence phase is complete, the parties are invited to request a Hearing. The Hearing Options are:
- To be heard in person, or via video conference.
- To be heard via written submissions only (and not appear at the Hearing).
- On the papers already filed.

Decision

Following the Hearing, the Commissioner issues a formal written decision. This generally issues within 30 working days from the Hearing. This decision can be appealed to the High Court.
Costs are generally awarded against the unsuccessful party. These are determined by a set scale.