HOW DOES TRADEMARK IN NEW ZEALAND WORKS?
New Zealand trademark law is based on the Trade Marks Act 1953, as amended by the Trade Marks Amendment Act 1994. These Acts provide for the registration, in respect of particular goods or services, of a sign or combination of signs, capable of being represented graphically and capable of distinguishing the goods or services of one person from those of another.
A Sign includes, but is not limited to a device, brand, heading, label, ticket, name, signature, word, letter, numeral, colour or any combination of these. Thus, a trademark suitable for registration, may potentially include the shape of goods themselves, the shape of packaging, smells and sounds, if capable of graphical representation. The appropriate classification of goods and services is determined according to the Nice Agreement on the International Classification of Goods and Services, although New Zealand is not yet a party to that agreement.
The registration of trademarks is not compulsory but without a registration, a proprietor must rely on common law rights and remedies to protect their mark. Definite statutory rights are granted to registered proprietors, and since the value of a trademark may be high, its registration is desirable.
As with patents and designs, there is a register of trademarks which is publicly available for searching. The register should be searched before a new trademark is launched to ensure that there will be no infringement of any existing trademark registration.
Registration may be permanent and subject to payment of renewal fees. To obtain registration of a trademark, a formal application must be filed at the New Zealand Patent Office. The mark must have been used or be proposed to be used. A trademark maybe removed from the register if it is not used for a continuous period of five years or more.
A trademark registration is infringed by the unauthorized use of the identical sign on any goods or services for which the sign is registered. This also applies to the unauthorized use of the identical or a similar sign on those goods or services, or similar goods or services, if such use would be likely to deceive or cause confusion.
The Geographical Indications Act 1994 has established a registration system for the protection of descriptions or presentations used to indicate a geographical origin for specified goods. Initially the only specified goods covered by the Act will be wines.
For a trade mark application in New Zealand the following details are required:
*The name of the applicant
*The mark including a representation of any logo or device mark
*The goods and/or services to be covered
*If a convention application, the date of any basic application from which priority is to be claimed
*If the user is not the applicant, particulars of the proposed user
In New Zealand, the trademark process is similar to Australia from application, examination, trademark advertising and registration. These are the stages which need to be passed before a trademark is successfully registered.