Trade Marks Registration Procedure

Procedure:

Preliminary searching is recommended to assess whether your desired trade mark can be used, and secondly to assess its ultimate registrability.

For New Zealand residents and citizens an application for trade mark registration is often first filed in NZ. If it includes graphics the application is accompanied by a good quality representation.

Provisional Interim protection is provided by most countries overseas for 6 months, insofar that any overseas application filed in those countries within the 6 month deadline will be effectively entitled to the NZ filing date. As trade marks need not be filed before use or disclosure, applications can still freely be filed after the 6 month deadline, though will not be able to take advantage of the NZ filing date.

 Overseas applications need to be filed in each country where protection is required, though Europe provides for a single European application to be filed.
The application will be examined, and objections made if the mark is not considered registrable – see what is protectable or not, above.

Once any objections have been addressed the application is accepted and advertised. Other parties, having valid reasons, can oppose the registration of the trade mark though this is not common.

At the end of the advertisement (for opposition) period, the design will generally be registered. There is no maximum term, and a mark may remain on the register providing renewal fees are paid (generally every 10 years for most countries) and the mark is not used in a way resulting in its removal.

Conditions of Use:

It is a requirement that a trade mark is used. If a certain period elapses without use of a trade mark (currently 3 years in NZ) the mark can be removed from the register – the owner losing significant associated rights.

Similarly, if used in a non-trade mark manner so that it becomes generic, a trade mark can also be removed from the Register.