Trademark

Summary
  1. Legislation
    Trademarks in New Zealand is governed by the Trade Marks Act 2002
  2. Definition
    A trademark is where a company can distinguish their goods and services in the market place.
  3. A trademark can be:

      1. Words
      2. Colors
      3. Logos
      4. Shapes
      5. Sounds
      6. Smells
      7. Combination thereof
  4. Criteria
    To register a mark, the following requirements have to be met:

      1. It must be a particular goods and/or services of 1 or more classes
      2. Application is made in accordance with the Act
      3. All necessary fee is paid for the application
      4. It does not infringe any of the restrictions below

    A mark would not be registered by legislation if:

      1. The mark would cause confusion or deceive a consumer
      2. The mark is contrary to New Zealand law
      3. The mark, in the opinion of the Commissioner would offend the majority of the community
      4. A non-distinctive mark
      5. Mark which contains any representation of the Royal Family
      6. Mark which include the flag, state emblems, etc of a convention country
      7. Marks which contain armorial bearings of certain international organization.
  5. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    New Zealand is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    New Zealand is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.
  6. Duration and Renewal
    Once a trademark is granted, it is valid for 10 years from the date of application. A trademark is may be renewed in 10 year intervals. No proof of use is required for renewal
Procedure/Timeline
  1. Application
    A complete application is to be submitted online by the applicant to the New Zealand Intellectual Property Office
  2. Examination
    The application we will be examined and a report will be provided to the applicant within 15 working days.
    On certain occasions, the mark will be approved right away. However, there are also situations in which the examiner deems the mark does not meet the requirements of the legislation. The report will include in detail the reasons in which the mark is rejected and/or advised on the steps to be taken.
  3. Compliance Report
    Should any objections be raised, the applicant is responsible to respond to all the objections raised in the report within 12 months from the date of which the application is filed.
    The applicant can respond to the report by either making the necessary amendments or arguing why the objection raised should not apply.
  4. Opposition Period
    Once all objections have been settled, an acceptance notice will be issued and the mark will be advertised in the Office Journal.
    The mark would then be subjected to 3 months of opposition period in which and party can bring an opposition to the registration of the mark. In which a Notice of Opposition is sent to the applicant.
    If neither party withdraws from the proceeding then the matter will go to a hearing in front of the Assistant Commissioner, who will make a decision. The decision can be appealed to the New Zealand High Court.
  5. Registration
    If there is no objection to the mark, the trademark will be registered at a minimum of six months after the filing date.
Requirements/ Documents
The following information/documents are required for a trademark application in Australia:

  1. The applicant’s name and address
  2. The description for the goods or services which will apply
  3. A list of relevant classes
  4. A representation of the trademark
  5. If claiming priority under international convention:
      1. The date of filing
      2. Country
      3. Application number

Note: All documents not in the English Language are to be submitted together with a translation to the English Language. Both documents are to be submitted

Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    The primary legislation governing patents in New Zealand is the Patent Act 2013
  2. Definition
    A patent gives the legal right to stop another party from making, using, or selling the invention an individual created.
  3. Criteria
    The following are required in an invention to make a patent application in New Zealand:

      1. Novel
      2. Have an inventive step
      3. Useful
      4. Not a Prior Art Base

    The following are held by legislation to not be allowed to be patented:

      1. Inventions contrary to order or morality.
      2. Human beings.
      3. Invention for a method of treatment of human beings.
      4. Invention of a method of diagnosis practiced on human.
      5. Plant verity
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    New Zealand is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, New Zealand is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    There is generally no grace period to obtain right to priority. A disclosure of an invention 1 year prior to filing an application may be disregarded as prior art.
  6. Duration and Renewal
    The duration of the patent in New Zealand is 20 years
    A renewal fee is required from the 4th anniversary onwards to maintain the patent. Renewal fee cannot be paid earlier then 3 months from its due date or later then 6 months from the due date. Failure to comply would result in the patent to undergo a restoration process.
    In the instance where the application is still being processed, an annual maintenance fee is required.
Procedure/Timeline
  1. Application
    A patent application must filed online to the New Zealand Intellectual Property Office online.
    When filling in the application, there are two alternatives when writing the patent specification.

      1. Complete Specification
        This form of specification requires the applicant to describe his invention and detail instruction to allow an individual of the same capacity to create the invention. The application is to be submitted together with clear and concise claims.
      2. Provisional Specification
        This form requires the applicant to describe his invention in less detail. A broad definition of the invention and a simple description detailing the invention is sufficient for a provisional specification.
        However, an application with provisional specification is insufficient to obtain a patent. A complete specification must be filed within 12-15 months.
  2. Publication
    Once the application has been submitted, the patent specification will be published within 18 months on the New Zealand Intellectual Property Office website. Henceforth, all examination report and applicant response will be made available to on the website.
    Note: Publication does not grant nor guarantee a patent will be granted.
  3. Third party assertion(only applicable to Complete Specification)
    If an individual claims that the invention lacks the criteria’s to allow for a patent (novel and inventive step), a written statement can be submitted. This is only applicable after the application has been published and before it has been accepted.
  4. Examination
    A request for examination is to be made 5 years from the filing date. Alternatively, a third party can request for a direct examination. The Commissioner may also direct the applicant to request for an examination. In such circumstances, the examination must be requested by the applicant in 2 months.
    Failure to apply for an examination will result in the application deemed abandoned.
    The examination determines whether the application meets all legal requirements and considers the claims of the complete specification. An examination will be sent within six months of the request and subsequent reports will be sent three months from the date of the previous report.
    The report will detail any matters which the examiner deems not meeting the statutory requirements.
  5. Response
    If there were issues raised by the examiner, the applicant has 12 months to respond to issues either by amending the specification or providing arguments to why the issue is raised is not relevant.
  6. Hearing
    If the issue raised cannot be resolved via response, the applicant or the IPO can request for a hearing where the Commissioner of Patents will provide a decision .
  7. Acceptance
    Once the application has been accepted, the patent application will be advertised in the Journal of the Intellectual Property Office of New Zealand.
  8. Opposition process
    The application, once accepted, is subject to three months in which any individual can oppose the granting of the application.
  9. Grant
    At the end of the three month opposition period , the application is granted the patent.
  10. Re-examination
    According to the Patent Act 2013, an individual can request for a granted patent to be re-examined if a valid reason is provided
    If objections were raised during the examination, and were not overcome, an accepted patent will not be granted or a granted patent will be revoked.
Requirements/ Documents
The following information/documents are required when applying for a patent in New Zealand:

  1. Applicant’s details (Name, address, details of incorporation)
  2. If applicant is other than the inventor, name(s) of the inventor(s)
  3. Specification
  4. Claims
  5. Abstract and drawings
  6. If claiming priority:
      1. Details of priority
      2. Country of filing
      3. Serial number
      4. Filing date
      5. Certified copy of the priority application (if requested by the Commissioner of Patent)

Note: All documents not in the English Language are to be submitted together with a translation to the English Language. Both documents are to be submitted

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design

Summary
  1. Legislation
    The primary legislation in New Zealand in regards to industrial design is Designs Act 1953 followed by the Designs Amendment Act 2010
  2. Definition
    Registering a design in New Zealand allow for the protection of the visual appearance of the object. The protection only applies if the object has new or original features of shape, configuration, pattern or ornament.
  3. Criteria
    In order for an application for the protection of Industrial design in New Zealand, the design must be:

      1. New
      2. Original

    However, a design that is purely functional would not be granted a protection under the legislation for industrial design. A design will also not be accepted if its published before the filing date

  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    Australia is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Proprietorship
    According to the Act, the proprietorship of the design lies upon:

      1. The designer
      2. Executed by the author of another person with good consideration.
  6. Duration and Renewal
    Once approved, a registered design will be protected up to 15 years. A renewal fee is due at the 5th year and 10th year from the application date.
Procedure/Timeline
  1. Application
    An application can be submitted to the New Zealand Intellectual Property Office wither by paper or electronically
    A priority claim from an oversea application can be made within 6 months of the date of filing of the overseas application.
  2. Examination
    The first report after examination will be made available to the applicant 15 days after the application has been filed
    If the application is registrable after the first examination, the applicant will receive a Examination Complete report
    If the application is not considered registrable, the examination report will details the reasons in which the design cannot be registered. The applicant then has 12 months to resolve the objections raised by the examiner.
    Should the objections or issues not be able to settle via responding to the examination report, a hearing can be requested in which an Assistant Commissioner will consider the case and a written decision will be provided (will incur extra cost)
  3. Registration
    Once the application is order, an examination report will be given to the applicant. The Registrar will then issue a Certificate of Registration. The ‘Date of Registration’ is taken from the earliest filing date not the date in which the certificate was issued.
  4. Publication
    The registration is advertised in the official monthly Journal issued by the New Zealand Intellectual Property Office.
Requirements/ Documents
The following information/requirements are needed for an application for industrial design in New Zealand:

  1. Full name, address, nationality of the applicant
  2. Full name, address, nationality of the designer (s)
  3. The name of the article which the design is applied
  4. Representation of the design
  5. Explanation of the nature of the design
  6. Statement of novel features
  7. Explanation of how applicant derived ownership from designer(s) (if applicable)
  8. Power of attorney (can be submitted after initial filing of application) (Need not be legalized)
Documents
Downloadable Forms
Agents
Fee