Registering a trade mark
in New Zealand

MacMillan Trade Marks has extensive experience in dealing with the New Zealand Trade Mark Office to secure the protection of your brand. As part of our brand protection strategy service, we provide specific advice on how to achieve the best protection for your brand in New Zealand.

Key steps to trade mark your brand in New Zealand

To apply for a New Zealand trade mark, it is compulsory to have a New Zealand address to record your service under. MacMillan Trade Marks can handle the entire NZ registration process for you from start to finish, recording our firm as the address for service on your behalf.

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1. New Zealand trade mark search

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2.Filing of New Zealand trade mark

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3.Trade mark examination

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4.New Zealand trade
mark registration

Trade Mark protection for the lifecycle of your brand

Our services go beyond just registering a trade mark. With MacMillan, you benefit from a comprehensive strategy to protect and future-proof your brand.

1. Brand protection strategy

We start by undertaking a brand audit and providing a brand protection strategy tailored to your business, with clear and concise recommendations on the best way to move forward.

2. Searching, filing and registering trade marks

Complete budget certainty for registering your trade mark with our fixed fee approach – see the steps outlined above.

3. Trade mark management

As part of our comprehensive approach to your brand management we can manage your trade mark rights to ensure they do not lapse. Our sophisticated custom technology monitors renewal and other deadlines to ensure your rights are maintained.

4. Trade mark opposition and non-use proceedings

There are times when you or another party may pursue legal challenges to protect your trade mark. As your IP partner, MacMillan will work with you to protect the integrity of your rights and trade mark. Find out more.

5. Trade mark prosecution and investigations

Similarly, we can investigate and prosecute trade mark infringements or defend your trade mark in legal challenges. Find out more.

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1. New Zealand trade mark search

The first step to take in registering your trade mark is to undertake a comprehensive search to determine if there are any conflicts with your proposed trade mark.

MacMillan Trade Marks will undertake this search for you, and provide a concise report of any risks your application may face and how they can best be avoided.

The registration process is lengthy, taking at least seven months for your trade mark to be approved. It can take even longer if done incorrectly, which is why it’s vital this search is undertaken by professionals with the training to determine where your application may fail.

The search report will allow us to tailor your trade mark application to ensure the best possible chance of your trade mark proceeding without obstacle or delay.

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2. Filing of New Zealand trade mark

Trade Marks can be registered in one or more of 45 different classifications (categories) of goods and services. Once you are ready to proceed with protection of your brands, we will work with you to determine the correct categories to ensure the best possible coverage.

The New Zealand Trade Mark Office requires a number of formalities to be fulfilled before they will accept an application for a trade mark in New Zealand. We’ll make sure all requirements are met to ensure the application is processed smoothly.

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3. Trade mark examination

Once your application is filed, the New Zealand Trade Mark Office will undertake an ‘examination’ process and report any formal problems or objections. These can include conflicting with other trade marks, a prohibited sign in the application, or that the trade mark is too generic.

This is why step one is so important. If we have completed this search on your behalf, we should be aware of any potential conflicts before filing.

The entire trade mark process in New Zealand will take at least seven months, where the application proceeds smoothly. Any formality problems or objections raised can delay the process.

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4. New Zealand trade mark registration

Once the examination has been successfully completed the New Zealand Trade Mark Office will accept the trade mark application and advertise the details in the official New Zealand Trade Mark Journal. This allows third parties the opportunity to oppose it.

After advertisement we can register your trade mark for an initial period of 10 years and will supply the official Certificate of Registration to you.

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“We appreciate the prompt service and guidance on the complex process of seeking worldwide trade marks. Tom and his team offer a first class service.”
Mark Stanley, CEO and Founder, Literatu