The Polynesian Maori reached New Zealand in about 800 A.D. In 1840, their chieftains entered into a compact with Britain, the Treaty of Waitangi, in which they ceded sovereignty to Queen Victoria while retaining territorial rights. In that same year, the British began the first organized colonial settlement. A series of land wars between 1843 and 1872 ended with the defeat of the native peoples. The British colony of New Zealand became an independent dominion in 1907 and supported the UK militarily in both World Wars. New Zealand's full participation in a number of defense alliances lapsed by the 1980s. In recent years, the government has sought to address long-standing Maori grievances.
Who May Apply?
Any person using or proposing to use the mark in New Zealand may apply. Any person who applied in a Convention country for protection of a trade mark is entitled to the priority of the first filed application for registration of the trade mark in a Convention country, provided the New Zealand application is filled within six months fiom the date of that application.
What Can Be Registered?
Any trade mark can be registered provided there are no absolute or relative grounds that would prevent the registration of the trade mark.
Multi-class applications are permissible. The official filing fee is calculated on a per class basis. It is also possible to add an additional class to an application within one (1) month of the filing date so long as the scope of the original application is not broadened. Trade marks may be registered in any language but if a trade mark
contains Maori text or imagery, it will be referred to the Maori advisory committee for consideration. Where the mark is known to be a oreign word, a translation may be requested.
What Cannot Be Registered?
A. Absolute grounds for refusal
1. Deceptive or confusing: The Commissioner must not register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion.
2. Contrary to law: The Commissioner must not register a trade mark or part of a trade mark if its use is contrary to New Zealand law or would otherwise be disentitled to protection in any court.
3. Offensive: The Commissioner must not register a trade mark or part of a trade mark if the Commissioner considers that its use or registration would be likely to offend a significant section of the community, including Maori.
4. Bad faith: The Commissioner must not register a trade mark or part of a trade mark if the application for the registration of the trade mark is made in bad faith.
5. Distinctiveness: The Commissioner must not register a trademark that has no distinctive character or a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin, time of production of goods or of rendering of services, or other characteristic of goods or services, or a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade. However, the Commissioner must not refuse to register a trade mark for lack of distinctive character if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.
6. Geographic indications: The Commissioner must not register a trade mark that contains a protected geographical indication in respect of specified goods, and that relates to specified goods that do not originate from the place indicated in the protected geographical indication.
7. Chemical names: The Commissioner must not register a trademark for a chemical substance or preparation if the trademark contains the commonly used and accepted name for any single chemical element of single chemical compound. However, this does not apply to a word that is used to denote only a brand or make of the element or compound made by the owner or a licensee of the trade mark, together with a suitable name or description open to the public use.
B. Relative grounds for refusal
1. Certain words: The Commissioner has discretion as to whether or not to register trade marks that contain the words "copyright," "layout design," "patent," "patented," "plant variety right," "registered," "registered design," or "trade mark," or any abbreviation of those words, or any similar words.
, 2. Person's names: If a person applies for registration of a trade mark that contains the name or representation of a person, the Commissioner may require the written consent of that person or that person's legal representative.
3. Royal Family: The Commissioner must not register a trade mark that contains a representation of Her Majesty or any member of the Royal Family, or an imitation of any such representation, unless the applicant has obtained the consent of Her Majesty or the relevant member of the Royal Family to the registration of the trade mark.
4. Identical or similar: The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if it is identical to a trade mark (trade mark B) that belongs to a different owner and that is registered, or has priority, in respect of the same goods or services, or if it is similar to a trade mark
(trade mark C) that belongs to a different owner and that is registered, or has priority, in respect of the same goods or services, or in respect of goods or services that are similar to those goods or services, and its use is likely to deceive or confuse.
5. Well-known: The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if it, or an essential element of it, is identical or similar to, or a translation of a trade mark that is well known in New Zealand (trade mark B) in respect of those goods or services or similar goods or services
or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark B, and would be likely to prejudice the interests of the owner.
i. Consent: The Commissioner must register trade mark A if the owner of trade mark B, trade mark C, or trade mark D consents to the registration of trade mark A.
ii. Honest concurrent use as an exception: The Commissioner must register trade mark A if the Commissioner or the Court considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the Commissioner or the Court, make it proper for the trade mark to be registered subject to any conditions that the Commissioner or the Court may impose.
6. Flags and emblems of Convention country: The Commissioner must not, without the authorization of the competent authorities of the country concerned, register a trade mark that contains a representation of the flag of a convention country unless the Commissioner considers that the use of the flag in the
manner proposed is permitted without that authorization, or of the armorial bearings or any other state emblem of a Convention country that is protected under the Paris Convention or the TRIPS Agreement, or of an official sign or hallmark adopted by a Convention country which indicated control and warranty in relation
to goods or services of the same, or similar, kind as those goods or service in relation to which the trade mark is to be registered and which is protected under the Paris Convention or the TRIPS Agreement. 7. Flags and emblems of certain international organizations: The Commissioner must not, without the authorization of the international organization concerned, register a trade mark that contains a representation of the armorial bearing, flag, or other emblem, or the abbreviation or name, of an international
intergovernmental organization of which one or more Convention Countries are members if the armorial bearing, flag, or other emblem, or abbreviation or name of the international organization is protected under the Paris Convention or the TRIPS Agreement.
8. Other flags: If a trade mark contains a representation of the flag, armorial bearing, insignia, orders of chivalry, or decoration of any entity, the Commissioner may require the applicant to obtain the written consent of the person who appears to the Commissioner to be entitled to consent to the registration and use of
the sign as a trade mark.
Priority is established by filing a trade mark application, but a third party can also establish prior common law rights through use. If use of the registered mark at the time of filing would mislead or deceive the public or would otherwise amount to passing off due to an earlier reputation, then the trade mark registration may be challenged. A person does not infringe a registered trade mark if, in accordance with honest practices in industrial or commercial matters, that person uses their name or the name of that person's place of business, or uses the name of that person's predecessor in business or the name of that person's predecessor's place of business, or uses a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristic of the goods or services, or uses a sign to indicate the time of production of goods or of the rendering of services. However, in an action for infringement of a trade mark, it is not a defense that the infringement arose from the use of the name under which a company has been registered.
The following are required for applications for registration:
- A clear representation of the trade mark.
- The prescribed fee.
-A list of the particular goods or services to be covered by the application.
- The applicant's name and address for service.
- A translation may be called for if a mark is not in English or Maori.
- If convention priority is claimed, a certified copy of the basic application may be required.
Evaluation & Review
Each application is examined for any absolute or relative grounds for refusing the application. The Commissioner must, subject to any conditions the Commissioner thinks fit, accept an application that complies with the requirements of the Act. The Commissioner must reject an application if, within the time specified by the Commissioner, the applicant does not satisfy the Commissioner that the requirements of the Act for registering a trade mark have been
When an application has been accepted and advertised and the time for opposition has expired, or, having been opposed, the opposition has been decided in favour of the applicant, the Commissioner will register the trade mark and issue a certificate of registration (but not before six months have passed since the priority date of the application).
Trade marks are registered for a period of 10 years counting from the date of application (or convention priority date where claimed), with privilege of.renewa1 for periods of ten years. Late renewals are not possible but the owner can seek to restore the mark during the one-year period immediately after the mark was
due for renewal.
Use must be "in trade." It is not necessary to provide a declaration or evidence of use unless needed to prove factual distinctiveness during examination or unless the registration is later challenged by a third party on basis of nonuse. In that case, it is then necessary to show use on or in relation to all the goods andfor services for which trade mark protection is desired. Use by a licensee is deemed to be use by the owner. "Use of a trade mark" is use in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered.' In practice, very little variation is allowed. If a trademark owner changes its mark, it is recommended that a new application be filed for the mark as it is being used. A registration will not automatically cancel if the mark is not used. But a third party can seek to remove a registration by indicating that the mark in question has been on the register and unused for a continuous three-year period,
starting from a date one month prior to the day on which removal proceedings were filed.
It is possible to obtain New Zealand domains such as those ending with ".co.nz" or ".org.nz". The courts in New Zealand allow aggrieved trade mark owners to use their registered trade marks to obtain domain names from cybersquatters where the domains are being used in trade.
A dispute resolution service came into force on June 1, 2006. Thus, there is little case law thus far. However, this development is expected to lead to an effective (nonjudicial) procedure for dealing with cyber squatters.
There are provisions under the Trade Marks Act 2002 for imposing a customs embargo on the importation of goods or services (where feasible) which infringe a New Zealand trade mark. Criminal offenses:
The following constitute a criminal offense:
(1) counterfeiting a registered trade mark, including knowingly making a sign that is identical or similar to a registered trade mark so as to be likely to deceive or falsifying a genuine registered trade mark;
(2) falsely applying a registered trade mark to the goods or services;
(3) making or possessing an object specifically designed or adapted for making copies of a registered trade mark or a sign that is likely to be mistaken for a trade mark with intent that the object be used for committing any of the above offenses; and
(4) importing, selling, exposing for sale, or possessing any goods to which that person knows a registered trade mark is falsely
Possible penalties include a NZ $150,000 fine andlor a five-year prison term. The goods can also be required to be delivered up or destroyed.