– Trade Marks Act 2002 (2002, No. 49) and Trade Marks Regulations 2003 (2003/187), both effective as from August 20, 2003, as amended.
– Patents, Designs and Trade Marks Convention Order 2012 (2012/189).
– Fair Trading Act 1986, effective from March 1, 1987.
– Prohibited Marks Orders 1961/120, 1982/127.
– Flags, Emblems, and Names Protection Act 1981.
– Flags, Emblems and Names Protection (Ruakura) Order 1996.
– Flags, Emblems and Names Protection (Olympic and Commonwealth Games Emblems and Words) Order 2001.
– Flags, Emblems and Names Protection (Olympic and Commonwealth Games Emblems and Words) Order 2005.
– Major Events Management Act 2007.
– Geographical Indications (Wines and Spirits) Registration Act 2006, entered into force on July 27, 2017, as amended.
– Regulatory Systems (Economic Development) Amendment Act 2019, in force since January 13, 2020.

– Paris Convention, London Act, and Articles 13 to 30 Stockholm Act, since June 20, 1984.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 20, 1984.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since November 22, 2001.
– Singapore Treaty on the Law of Trademarks, since December 10, 2012.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since December 10, 2012.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, since October 16, 2013.

Applicant: any person(s) with a legitimate claim to being the owner of a trademark for a trademark used or proposed to be used.

Foreigners and nationals not living in the country: are required to furnish an address for service in New Zealand.

Trademarks of foreigners: may be registered on the same conditions as are applicable to nationals.

Registrable: any sign capable of being represented graphically and capable of distinguishing the goods or services of one person from those of another person. “Sign” includes a brand, color, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word, or any combination of signs.

Kinds of protection: (1) ordinary trademarks; (2) certification trademarks (designating goods certified in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic or designating services certified in respect of quality, accuracy, performance or other characteristic); (3) collective trademarks (in the name of a collective association in respect of goods or services produced by its members, or both).

Marks for services: registrable.

Novelty: the trademark must not conflict with any prior registered or pending trademark. It need not have been previously used in New Zealand although previous use does not prevent, and may often assist, registration.

Not registrable: (1) the Commissioner must not register: (a) a sign that is not a trademark; (b) a trademark that has no distinctive character; (c) a trademark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services or other characteristics of goods and services; (d) a trademark 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; (2) the Commissioner must not refuse to register a trademark under subsection (1)(b), (c) or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trademark has acquired a distinctive character; (3) the Commissioner must not register as a trademark or part of a trademark any matter: (a) the use of which would be likely to deceive or cause confusion; (b) the use of which is contrary to New Zealand law (except the Smoke-Free Environments Act 1990) or would otherwise be disentitled to protection in any court (except the Smoke-Free Environments Act 1990); (c) the use or registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Maori; (4) the Commissioner must not register a trademark if the application is made in bad faith; (5) the Commissioner must not register a trademark (trademark A) in respect of any goods or services if: (a) it is identical to a trademark (trademark B) that belongs to a different owner and that is registered, or has priority (i) in respect of the same goods or services; or (ii) in respect of goods or services that are similar to those goods and services and its use is likely to deceive or confuse; (b) it is similar to a trademark (trademark C) that belongs to a different owner and that is registered, or has priority in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or (c) it is or an essential element of it is, identical or similar to, or a translation of, a trademark that is well known in New Zealand (trademark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trademark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trademark D, and would be likely to prejudice the interests of the owner. There are exceptions in cases where consent is provided or honest concurrent use or other circumstances established; (6) the Commissioner must not register a trademark if the trademark contains a registered geographical indication for a wine or spirit and the trademark relates to a wine or spirit that does not originate in the place of geographical origin to which the registered geographical indication relates, and the use of the trademark is likely to deceive or confuse, or the trademark contains a geographical indication that has been applied for in good faith prior to the filing date of the trademark application, and the trademark relates to a wine or spirit that does not originate in the place of geographical origin to which the geographical indication relates, and use of the trademark is likely to deceive or confuse, unless the Commissioner or the court, as the case may be, considers that a case of honest concurrent use exists that, in the opinion of the Commissioner or the court, makes it proper for the trademark to be registered, subject to any conditions that the Commissioner or the court may impose; (7) the Commissioner must not register a trademark 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 trademark; (8) the Commissioner must not register, in respect of a chemical substance or preparation, a trademark that contains the commonly used and accepted name of any single chemical element or single chemical compound, except if the word is used only to denote a brand or make of the element or compound made by the owner or a licensee of the trademark, together with a suitable name or description open to the public use.

National flags: representations of royal flags and flags of Commonwealth countries are in the category of prohibited marks; representations of flags of other States may be registered, but the Commissioner may require the written consent of the appropriate authority.

Names or portraits: before registering the name or representation of any person appearing on a mark, the Commissioner may require the written consent of that person or (if dead for less than ten years) that person’s legal representative.

Priorities: Convention priority may be claimed if application is made within six months of the date of first application for registration of the trademark in a Convention country.

Classification: International Classification of Nice (12th Edition). The owner of a trademark registered with a specification classified under a former classification or any previous edition of the Nice Classification, may apply for conversion of the specification to a classification under the Nice Classification (12th Edition).

Territory covered: New Zealand, Cook Islands and Niue. Note: trademarks registered under the 1953 Act or earlier Acts are registered, but trademarks registered under the 2002 Act will not extend to the Cook Islands until the government passes appropriate legislation. Section 737 of Niue Act 1966 (of Niue) states that trademarks protected by New Zealand law are accorded the same protection by the courts of Niue.

Filing requirements for an application (to be sent to an agent resident in New Zealand). The Intellectual Property Office of New Zealand will only accept applications filed electronically through its online system. Documents should be sent in electronic form:
1. Full details of applicant and list of goods or services;
2. Full details of basic application (if Convention case) including the ambit of the Convention claim;
3. Trademark including clear representation of trademark if not a word mark.

Filing of priority document(s): the filing of a copy of the priority certificate is not mandatory but may be requested by the Commissioner.

Amendment of application: applications may be corrected on request, with permission of the Commissioner.

Examination: formalities, possible conflict with earlier registrations or applications, and the eligibility of the trademark for registration. Where IPONZ intends to formally reject an application, it will provide full reasons, and the applicant may seek a hearing within one month. The applicant must provide hard copies of hearing documents in advance (if it is an in-person hearing - the move is towards more video hearings and electronic bundles of documents) and the length and form of submissions must adhere to hearing requirements.

Disclaimer: (1) the trademark owner may disclaim voluntarily any right to the exclusive use of any part of a trademark; or (2) the Commissioner or court may require the entering of a disclaimer.

Letters of consent: are accepted. 

Opposition: the Notice of Opposition, or request for an extension of time for filing the Notice of Opposition, must be filed with the Commissioner within three months after the date when acceptance of registration was first advertised. Only an extension of time granted prior to the deadline for filing the opposition may be allowed (maximum of one month without consent, two months with consent of the owner of the application). The most common grounds of opposition are: (1) identity or deceptive or confusing similarity with another trademark registered for similar goods or services; (2) deception or confusion from use of the trademark, because of a reputation acquired by another trademark already in use (but not necessarily registered); (3) ineligibility of the trademark for registration (e.g. lack of distinctiveness). Other grounds are: that the use of the mark is contrary to the law; bad faith; use or registration likely to offend; that the mark is not intended to be used as a trademark. The opposition procedure is essentially the same as in the case of patents (see under Patents, 4. Examination “Reasons and procedure for opposition” above).

Disputes about ownership: these will normally be dealt within the main opposition or cancellation proceedings.

Application kept secret: there is no provision for secret applications. Particulars of pending applications are inserted in the public search records.

Appeal: there is a right of appeal to the High Court against a decision of the Commissioner refusing registration.

Urgent registration: there is no special provision for expediting official examination or registration of a trademark. Trademarks are registered as of the effective application date. The standard period from application to registration can be as little as seven months. A first examination report usually issues within two to four weeks from application.

Provisional registration: not provided for.

Publication: trademark applications are advertised in the Patent Office Journal after acceptance.

Correction of registration: by way of rectification of an error or omission. Alteration of a registered trademark is not permitted.

Delivery of document: in the absence of opposition proceedings, the certificate of registration of a trademark will be issued as soon as possible after expiry of the opposition period but no earlier than six months from the filing or Convention priority date of the application (whichever is earlier). Certificates of registration are only issued electronically. If a hard copy is required, a certified copy of the registration will need to be ordered from the Commissioner.

Beginning of protection: trademarks are registered as of the date of application or the priority date in the case of Convention applications. An infringement action may not be instituted before completion of registration.

Kind of property: legal, arising through use by common law or statute or arising by registration or an application for registration by statute.

Duration – extension: the registration and renewal term is ten years from the New Zealand application date or, where the application claims Convention priority, the date of filing in the Convention country from which priority is claimed. There is no limit to the maximum possible duration of registration.

Compulsory character of registration: registration of trademarks is not compulsory. However, use of a trademark on goods or services for which it is registered will not constitute infringement of rights given by the registration of any other trademark.

User rights: rights arising from use of an unregistered trademark are recognized by common law and statute, and may be enforced by means of an action for passing-off or the Fair Trading Act 1986. Also, registration of a trademark does not entitle the registered proprietor to interfere with or restrain use of the same or similar trademark continuously used from a date prior to the registration or first use of the registered trademark, whichever is the earlier; or to object to that other person obtaining a registration of a trademark under the concurrent user provisions of the Trade Marks Act. Rights arising from prior use of a trademark may also afford grounds for opposition to, or invalidation of, a registration obtained by another person.

Obligation to use: a trademark may be removed from the Register on the grounds that there was no genuine use of the trademark following the actual date of registration during a continuous period of three years up to one month before the application for cancellation, or if genuine use is suspended for an uninterrupted period of three years.

Marking of registered goods: there is no legal obligation. However, a marking such as “Registered” or “®” is desirable. A false representation that a trademark is registered in New Zealand is an offense.

Renewal: registrations, to be kept in force, must be renewed on or before the tenth anniversary of the date of registration, and every ten years thereafter.

Latest term for renewal: renewal fees may not be paid in advance by more than one year prior to expiry of the current period of registration. Restoration possible up to six months after the original expiry date for registered trademarks.

Changes in the list of goods or services: goods or services may be deleted from, but not added to, the original list of goods or services, on request by the registered proprietor. The registration may not be extended to additional goods or services; a fresh application for registration must be made in that case. Classes can be added to an application (providing the amendment falls within the scope of the application as filed) at any stage before acceptance of an application.

Assignment: registered trademarks may be assigned either with or without the goodwill of a business in the goods or services for which the trademark is registered.

Licenses: use of a trademark by another which is authorized by and subject to the control of the proprietor is construed as use by the proprietor. There is no provision for registration of licenses.

Right of prior user: see under “User rights” above.

Compulsory licenses: there is no provision for the compulsory licensing of registered trademarks in New Zealand. Registrations may, however, be cancelled on the grounds of non-use (see under “Obligation to use” above).

Expropriation: there is no provision for expropriation of trademarks registered in New Zealand.

Revocation: the registration of a trademark may be revoked for non-use or if it has become a common name (generic) in use.

Invalidation: trademark registrations may be invalidated on application to the Commissioner or the High Court by any aggrieved person, on the grounds that the trademark was not registrable at its deemed date of registration, unless it has acquired distinctiveness character after registration. Delay on the part of the applicant for invalidation is not normally any bar, but the applicant may be penalized in costs for excessive delay. However, after the expiration of seven years from the deemed date of registration, a trademark registration is deemed to be valid unless it was obtained by fraud, it should not have been registered as it was likely to deceive or cause confusion, the use is contrary to New Zealand law, or would otherwise be disentitled to protection in any court, the use or registration would be likely to offend a significant section of the community, including Maori, or the application was made in bad faith, the application has not been put to genuine use during a continuous period of three years, or the mark has become generic.

Validation of invalidated marks: no special provision.

Provision for restoration: restoration possible up to six months after expiry.

Registration of invalidated marks: a registered trademark which has been removed from the Register for non-distinctiveness may be subsequently re-registered, on proof of distinctiveness resulting from later use of the trademark within New Zealand, and provided there is no other objection to registration.

Infringement and penalties: an action for infringement of the rights given by registration of a trademark is a civil action inter partes, in the High Court. Compensation for infringement is by way of an injunction, an order for delivery up or destruction of goods, and damages or an account of profits. There are also criminal provisions for counterfeiting, falsely applying registered trademarks, marking or possessing objects for making registered trademarks, and importing or selling goods with falsely applied trademarks.

Effect of registration in legal proceedings: in all legal proceedings relating to a registered trademark, registration is prima facie evidence of the validity of the original registration and of all subsequent assignments and transmissions.

Company names: in an action for infringement of a trademark, it is not of itself a defense that the infringement arose from the use of a name under which a company has been registered.

Lost certificates: the Office only issues electronic copies of certificates of registration. These can be accessed through the online system. If a hard copy is required, a certified copy will need to be ordered from the Commissioner. 

Removed trademarks: a trademark that has been removed from the Register for non-payment of a renewal fee is, for the purpose of any application for registration of a trademark within six months after the date of removal, deemed to be a trademark still on the Register.

Parallel importation: a registered trademark is not infringed by the use of the trademark in relation to goods that have been put on the market anywhere in the world under that trademark by the owner or with his or her express or implied consent, or by an associated person of the owner.