New Zealand Patent Law
The Patents Act 2013 in force from 13 September 2013 (reprint as at 30 December 2018).
English or Maori
New Zealand is member of the following agreements and conventions
-Patent Cooperation Treaty (PCT)
-Madrid Agreement (Indications of Source)
-Marrakesh VIP Treaty
-WIPO Copyright Treaty
-WIPO Performances and Phonograms Treaty
Power of Attorney (POA) simply signed
New Zealand Patent Registration Procedure
The patent application is filed at The Intellectual Property Office of New Zealand (IPONZ).
The patent application goes on a formalities check.
New Zealand patent applications are published on the IPONZ website 18 months after they are first filed (or after the corresponding overseas application from which the New Zealand application derives was first filed). From that date it is possible for anyone to access the contents of a patent application. It is also possible for anyone to see copies of correspondence with the Intellectual Property Office of New Zealand (IPONZ) as the application is examined.
* A complete specification will not be examined by IPONZ until a formal request is made. IPONZ may direct that the request is made at any time, but if otherwise the request must be made within five years of filing the application.
* Once examination has been requested IPONZ will examine the complete specification within approximately three months. Examination will determine whether the complete specification complies with the requirements of the Patents Act. It will include an assessment of whether the invention is novel and inventive in view of similar inventions published before the patent application was filed.
Once the examiner’s objections have been overcome, the accepted form of the application is a published in the IPONZ Journal.
Any person having reasonable grounds may oppose the grant of a patent. They must do so within three months from the date of publication of the specification.
If no opposition is filed, or the application is not successfully opposed, a patent will be granted and the Deed of Letters Patent will then issue.
The approximate processing time of a New Zealand Patent from filing to registration is 2-3 years.
The term of a patent in New Zealand is 20 years from the date of filing the complete specification.
When the patent is registered it is necessary to pay of renewal fees in the 4th, 7th, 10th and 13th years (the 4th year renewal fee is also payable if the application is still pending after four years).
Acceleration of Patent Examination in New Zealand
In certain circumstances, it is possible to expedite examination of a New Zealand patent application using the Global Patent Prosecution Highway (GPPH). If you have a patent application that has already been examined and had a claim allowed by a patent office in one country participating in the GPPH, this can be used to accelerate examination of the corresponding application in New Zealand, which is one of 22 countries involved in the GPPH.
The term for filing patent applications in New Zealand claiming Paris conventional priority is 12 months from the priority date. The restoration of a priority right may be possible in certain circumstances.
Trademark Law in New Zealand
* The current trademark laws in New Zealand are the following:
- Trade Marks Act 2002 (all sections brought into force on August 20, 2003);
- Trade Marks Amendment Act 2011 (all sections brought into force by 29 April 2013);
- Trade Marks Regulations 2003 (all sections brought into force on 20 August 2003);
- Trade Marks Amendment Regulations 2012 (all sections brought into force on 10 December 2012); and
- Regulatory Systems (Economic Development) Amendment Act 2019 (all sections brought into force on 13 February 2020).
The principles of “common law” apply.
New Zealand is a member of the Madrid Protocol with effect of December 10, 2012.
Trademark protection is obtained by registration. Protection can also be acquired by sufficient public recognition or reputation.
Nice classification, 11th edition. Multiple-class applications are possible.
Power of Attorney Simply signed.
New Zealand Trademark Registration Procedure
The application is filed at the New Zealand Intellectual Property Office (IPONZ).
Examination occurs within 15 working days. This includes a formal examination, an examination of distinctiveness and a search for identical or confusingly similar trademarks with priority.
If a sign is not considered distinctive by the examiner, the sign may still be registered by providing evidence that it has acquired distinctiveness through use.
If a mark is, or appears to be, derived from a Maori word or sign, the application will be forwarded to the Maori Trade Marks Advisory Committee. The Committee will advise IPONZ whether the mark is likely to be offensive to Maori.
Applicants have a period of 12 months from the date of filing to address any examination issues raised by IPONZ. Extensions of this period are possible but are discretionary
If examination objections are overcome within the timeframe/no examination objections are raised, the trademark application will be published for the purposes of opposition in the monthly “New Zealand Intellectual Property Office Journal”.
* Any party may oppose registration of the trademark application, within 3 months of the application being published.
* If no opposition is filed/any opposition is resolved, the application will become registered (after a minimum of 6 months from the date the application was filed).
The complete process, from filing an application to completing registration, is approximately 7 months, if no objections are raised against the application.
National Opposition Period
The New Zealand opposition period is 3 months from the date of publication of the trademark application.
A trademark registration in New Zealand is valid for 10 years from the filing date or, if applicable, the convention priority date (referred to as the 'deemed date of registration').
The registration can be renewed for periods of 10 years within 12 months prior to the expiration date. The grace period for paying renewal fees is 6 months after the expiration date.
Paris convention priority can be claimed in New Zealand within six (6) months of application date of the foreignh trademark.
Provisional Refusal of Trademark in New Zealand
The time limit to file a response to the provisional refusal of an international registration is 12 Months from the date the New Zealand IP Office has received the New Zealand designation from WIPO.
Use of Trademark in New Zealand
The trademark may be invalidated if it has not been used for a 3-year period after its registration.
New Zealand Opposition grounds
The grounds of opposition are set out in the Trade Marks Act 2002. The most common claims are that: The mark sought to be registered is confusingly similar to another trade mark which is either registered or in use by another party, The mark is descriptive or incapable of distinguishing the applicant’s goods or services from those of others, The mark is deceptive, and/or The mark has been misappropriated from another party.
New Zealand Trademark Opposition process
Notice of opposition: Once a trade mark application has been accepted and advertised in the Intellectual Property Office Journal anyone wanting to oppose the application has three months from the date of advertisement to file a Notice of Opposition. The Notice of Opposition must identify the grounds of opposition.
Once the Notice of opposition is filed, the applicant has 2 months to file a counterstatement setting out its response to the grounds of opposition. The counterstatement should also contain reasons why the applicant says the application should be registered. If the applicant does not file a counterstatement within the 2 month period allowed, the trade mark application is deemed to have been abandoned.
Evidence is given in the form of statutory declarations or affidavits. After the counterstatement is filed, the opponent has two months to file evidence in support of the opposition. If the opponent does not file evidence (or give notice of an intention not to file any evidence) it is deemed to have abandoned its opposition. Once the opponent’s evidence is completed the applicant has two months to file evidence in support of the application. After the applicant’s evidence is filed, the opponent can lodge evidence in reply. This evidence must be confined to matters raised in the applicant’s evidence.
No further evidence can be filed by either party except with leave of the Commissioner. The opposition will usually be set down for a hearing where each party speaks to written submissions in support of their case.
* Can these deadlines be extended:
In most cases yes, although you need to be careful in relation to the Notice of opposition as the Commissioner is constrained by the Act in terms of what extensions can be granted and when. Also, to obtain an extension you need to show that you have acted diligently to meet the previous deadline and that the justice of the case warrants an extension (i.e. you will suffer prejudice if it isn’t granted).
*How long will the opposition take:
If all steps are completed within the specified time frames the opposition will take 10 – 11 months to be heard. If extensions are granted it will take longer, but most opposition proceedings should be concluded within 18 months.
* How is the decision made:
Decisions are issued in writing by the Commissioner of Trade Marks and usually issue within 2 – 3 months of the hearing.
* Can I appeal the decision:
Yes. Decisions can be appealed to the High Court within 20 working days of the decision.