Page 43 - English-DBINZ brochure-2019
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Section 9
INTELLECTUAL PROPERTY
TRADE MARKS
Registered and unregistered trade marks are protected in New Zealand. Priority is given to the first
person to use or register the mark, whichever is the earlier.
Registration is strongly recommended for the certainty it brings and related cost advantages, especially
in enforcement.
Trade marks can be registered pursuant to the Trade Marks Act 2002. Registration provides the owner
with the exclusive statutory right to use that trade mark in New Zealand in relation to the goods or
services for which it is registered. The initial registration period is 10 years and a registration can be
renewed for subsequent 10 year periods upon payment of renewal fees.
Use is not a pre-requisite for filing a trade mark application. However, registered trade marks can be
cancelled if they are not used for a continuous period of three years.
To be registrable, a trade mark must be distinctive. Examples of marks that typically may not be
registered include descriptive words and names with geographical significance associated with the
relevant goods or services. Trade marks that contain Māori text or imagery may not be registered if they
are considered offensive to Māori.
Trade mark registration is administered by the Intellectual Property Office of New Zealand (IPONZ). Trade
marks can be registered in as little as six months from the filing date.
New Zealand is a member of the Paris Convention and therefore trade marks can be filed in New Zealand
six months after they were first filed in another Convention country, and claim the original overseas filing
date.
New Zealand is also a member of the Madrid Protocol. International applications based on New Zealand
national trade mark applications and registrations can be filed with IPONZ. Also, IPONZ is able to receive
international registrations filed with the World Intellectual Property Organisation designating New
Zealand as a country in which protection is sought.
Unregistered trade marks are protected by the tort of Passing Off and the consumer protection provisions
of the Fair Trading Act.