IP OVERVIEW OF New Zealand

Trademark

Registrable trademarks include: devices, brands, headings, labels, tickets, names, signatures, words, letters, numerals, colours, sounds, shapes or scents provided that they are distinctive and can be represented graphically. Other types of registrable marks include Certification marks and Collective trademarks.

The classification of goods and services is under the Nice Agreement. It is also possible to designate New Zealand in an application filed under the Madrid Protocol.

Actual use of a trademark is not required for filing; an intention to use is sufficient. Further, use of the trademark is not required for renewal. However, a registered trademark may be removed if unused for a continuous period of 3 years.

Each application undergoes a combined search and substantive examination before registration.

Once registered, the initial term or registration is 10 years from the date of application. Registered marks are renewable in terms of 10 years.

Marking is optional, but recommended. Infringement proceedings may be taken in a court of law only. A registration may be revoked by Commissioner or Court on application by “aggrieved” third-party.

New Zealand trademarks are also effective in Cook Islands, Niue and Tokelau.

Patent

Standard patents have a term of 20 years.

Examination is automatic in New Zealand and currently, applications are subjected to a local novelty requirement only. Updated legislation to change the novelty standard to an absolute novelty test and introduce an inventive step test has been passed by the NZ Parliament but has not yet entered into law. A combined search and substantive examination is undertaken before grant.

Once allowed, the application is open to a preregistration opposition to grant process which can be exercised by thirdparties.

Renewal fees are required to maintain an application or patent. The renewal fees are due on the 4th, 7th, 10th and 13th anniversaries of the filing date.

Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law only.

New Zealand patents are also effective in Cook Islands, Niue and Tokelau.

Note: a new Patents Act has been passed by the NZ Parliament but has not yet entered into law.

Ornamental or Industrial Design

Once registered, the design registration has an initial 5 years term, and is renewable for 2 further terms of 5 years each.

Each application undergoes combined search and substantive examination prior to registration and during examination; a local novelty test is applied. A design must be new or original and further, must not be dictated solely by function (must have some aesthetic properties).

A renewal fees is payable before each five year extension.

Marking is optional, but recommended. Infringement and third-party cancellation proceedings may be taken in a court of law. However an application for cancellation of registration by the Commissioner can be made by an interested third-party any time after sealing.

New Zealand designs are also effective in Cook Islands, Niue and Tokelau.