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New Zealand’s trademark system, centered on the Trade Marks Act 2002 and the Trade Marks Regulations 2003, comprehensively governs registration, maintenance, litigation, and remedies for infringement.The competent authority is IPONZ (Intellectual Property New Zealand). If you file an application based on Japanese practices, there are many unique pitfalls to watch out for, such as the “within two days of filing the NZ application” rule for claiming priority, the requirement for transliteration and English translation of non-Latin character trademarks, the examination of Māori elements, and the acceptance of parallel imports. In this article, a practicing patent attorney provides a thorough explanation of the core aspects of the practice.
Key Points of This Article: The most practically valuable issues regarding New Zealand trademarks are “utilizing the SPA (Search and Preliminary Advice),” “strict adherence to the 2-day priority rule,” “handling Maori and non-Latin character trademarks,” “non-use attacks on blocking marks,” and “enforcement in light of parallel imports.”
Table of Contents
- Basic Structure of the System
- Application Requirements and Required Documents
- Application Process, Fees, and Timelines
- Examination Criteria (Absolute and Relative Grounds for Refusal)
- Opposition, Cancellation, and Invalidity Proceedings
- Post-Registration Rights and Maintenance
- Infringement Response and Enforcement (Including Parallel Imports)
- Major Case Law
- Practical Checklist
- Frequently Asked Questions
1. Basic Structure of the System
The primary legislation is the Trade Marks Act 2002, supplemented by the Trade Marks Regulations 2003 for procedural matters. The set of rules implementing the Madrid Protocol forms the basis for international registrations. IPONZ registers trademarks, patents, designs, plant varieties, and geographical indications, and operates as a division of the New Zealand Ministry of Business, Innovation, and Employment (MBIE).
The scope of protection is relatively broad and may include words, figures, colors, shapes, smells, sounds, and tastes; however, three requirements must be met: the subject must be a “sign,” capable of “graphical representation,” and capable of distinguishing the goods or services from those of others. Non-traditional trademarks are recognized in principle, but the main challenges lie in the method of expression and proving distinctiveness. For colors and three-dimensional marks, specific descriptions based on standards such as Pantone are required.
Practical Benefits of Registration: While unregistered trademarks may still be eligible for common law protection against passing off, registration codifies the scope of rights, significantly enhancing the ability to enforce them.
2. Application Requirements and Required Documents
Eligibility to File
An application may be filed by “any person claiming to be the owner of the trademark.” Eligible applicants include legal entities such as companies, groups of individuals, partnerships (requiring the names of all partners), and incorporated societies. There are no nationality restrictions on domestic applications filed by Japanese companies or residents of Japan. However, eligibility requirements for Madrid applications designating New Zealand as the Office of Origin are a separate matter.
Required Information
- Owner Information and Case Contact
- Description of the Mark
- Designation of Goods and Services
- Claim of priority
- Transliteration and English Translation (for non-Latin character trademarks)
- Statement of Use
Pitfalls for Japanese Companies: For word/combined marks containing Japanese characters, both transliteration and English translation are required. Exercise caution when handling marks that mix Kanji, Hiragana, and Katakana.
Address for Service
A case contact address in New Zealand or Australia is required (as explicitly stated in IPONZ’s application video and assignment registration guide). Since some materials state “NZ address only,” it is safest to confirm this via the Live Form immediately before filing.
Designated Goods and Services (Pre-approved terms recommended)
IPONZ strongly recommends the use of pre-approved terms, and the Form Builder is designed with this in mind. In practice, agents must weigh the cost savings of using pre-approved terms against the flexibility of protection scope offered by custom descriptions.
3. Application Process, Fees, and Timelines
The Important “2-Day Rule” for Claiming Priority
Deadlines That Must Be Strictly Observed: To claim Paris Convention priority, you must file the New Zealand application within six months of the first application in a contracting state, and you must notify IPONZ of the priority claim within two days of filing the New Zealand application. This two-day period cannot be extended. It would be disastrous to assume, based on Japanese practice, that “corrections can be made later.”
Application Process
- Preliminary Check and Prior Art Search (Optional: Search and Preliminary Advice)
- Online Filing (IPONZ Case Management System / Form Builder)
- Formal and Substantive Examination
- Issues found: Issuance of Compliance Report → Response (within 12 months from the NZ filing date)
- Acceptance and Publication in the Journal
- Opposition period: 3 months
- Wait for 6 months to elapse from the filing date
- Registration (Renewal, Use, Enforcement)
Acceptance ≠ Registration: Even after acceptance, registration will not occur until 6 months have elapsed from the filing date, in addition to the 3-month opposition period. For cases where early rights acquisition is desired, this timeline must be explained in advance.
Fee Schedule (NZD, excluding GST)
| Item | Amount | Practical Comments |
|---|---|---|
| Search and Preliminary Advice (1 Class) | NZD 50 | Estimated 5 business days. If used for a main application within 3 months with the same content, the application fee is reduced |
| Standard Application (1 Class) | NZD 100 | Includes custom wording |
| Only pre-approved terms (1 class) | NZD 70 | Compatible with Form Builder |
| Reduced-fee application based on SPA (1 class) | NZD 50 | Must be filed within 3 months and contain exactly the same content |
| Additional class | NZD 100 | When added on the same day or when amending classifications |
| Opposition / Revocation / Invalidity | NZD 350 each | filing fee |
| Hearing fee (per party) | NZD 850 | When choosing between written proceedings and oral proceedings |
| Renewal (1 class, every 10 years) | NZD 200 | Unlimited renewals |
Comparison with Madrid Designation: If you choose New Zealand under the Madrid System, the individual fees published by WIPO are CHF 46 per class at the time of designation and CHF 92 per class at the time of renewal. Since basic fees and other charges apply under the Madrid System, for cases involving 1 to 2 classes where you wish to carefully draft the specifications, a domestic application (particularly the SPA reduced fee option) may offer better cost-effectiveness.
Estimated examination period (as of May 2026)
| Phase | Duration |
|---|---|
| First response to domestic application | 70 business days |
| International Registration Designating New Zealand | 75 business days |
| Re-examination following response to Compliance Report | 35 business days |
| Extension Application Processing / Assignment | 15 business days |
* IPONZ explicitly states that this is the "extended timeframe as of May 2025"; under normal conditions, it was 15 business days. It is advisable to check the official current timeframe in the case management table each time.
4. Examination Criteria (Absolute and Relative Grounds for Rejection)
Absolute Grounds for Rejection (Sections 17–21)
Section 17: Deception/Confusion, Bad Faith
Risk of deceiving consumers, violation of laws or regulations, bad faith applications (rightful owner issues)
Section 17: Māori Elements
Likely to be offensive to the Māori community. Advice provided by the Māori Trade Marks Advisory Committee
Section 18: Lack of Distinctiveness
Under Section 18(2), this can be overcome by proving acquired distinctiveness through use prior to filing
Special Regulations
Statutory bar on names of chemical elements and compounds, geographical indications, national flags, coats of arms, state emblems, etc.
Relative grounds for refusal (Sections 22–30)
Section 25 is central to conflicts with prior trademarks. There are three ways to overcome a citation under Section 26.
- Consent (obtaining the prior rights holder’s consent)
- Honest concurrent use
- Other special circumstances (including cancellation of the later registration)
Practical Strategy: Rather than simply arguing that the marks “are not similar,” it is important to adopt a multi-pronged approach, such as: (1) obtaining consent from the opposing party, (2) narrowing the scope of the specification, (3) substantiating honest concurrent use with evidence, and (4) initiating revocation or invalidity proceedings against the prior registration.In New Zealand, since the Supreme Court’s ZIPLOC decision (discussed below), it has been explicitly established that Section 26(b) “special circumstances” are broadly interpreted following the revocation of the cited mark.
Response to a Notice of Reasons for Refusal
| Procedure | Deadline |
|---|---|
| Compliance Report Response | Within 12 months of the NZ filing date (12 months from the first Full Compliance Report for Maori Commission cases) |
| After Notice of Intention to Reject | Request a hearing within 1 month |
| Extension of Deadline | Apply in writing with reasons before the deadline. Extension requirements are strict |
5. Opposition, Revocation, and Invalidity Proceedings
The focus of inter partes proceedings lies with the IPONZ Hearings Office (specialist tribunal). The main proceedings include opposition, revocation, invalidity, cancellation, alteration, and rectification.
Opposition
Timeline for opposition proceedings:
- Filing of opposition: Within 3 months from the date of publication in the Journal
- Counterstatement: Within 2 months of notification (if not filed, deemed abandoned)
- Opponent’s evidence: 2 months
- Applicant’s Evidence: 2 months
- Reply Evidence: 1 month (strictly in reply)
- Extension of time: Requires "genuine and exceptional circumstances"
Non-use revocation (most critical issue)
Very important: Registrations lacking genuine use for a continuous period of three years or more are subject to revocation. This is the standard method for eliminating blocking registrations. The rights holder must defend by submitting a counterstatement and evidence of use or special circumstances within two months. During the clearance phase, one should consider not only the “existence of the registration” but also signs of actual use and the possibility of preserving evidence.
Invalidity
An aggrieved person (broadly interpreted to include those whose own applications are blocked, competitors, or those facing infringement claims) files a petition with the Commissioner or the High Court. While there is a rule limiting invalidity claims after seven years from the deemed date of registration, exceptions apply.
Cancellation / Alteration
There is no filing fee. This applies to violations of registration requirements and issues specific to certification marks or collective marks. Rectification exists as a means to correct errors or omissions in the register without challenging the validity of the registration itself.
6. Rights After Registration and Maintenance
Effect of Registration
A registered trademark confers the exclusive right of use, the authority to grant licenses, and the right to seek remedies for infringement. This can be understood as being similar to the exclusive right and right of prohibition under Japanese law.
Permissibility of Parallel Imports
An important feature of New Zealand law: Parallel imports of genuine goods are not prohibited in principle. Section 97A, as amended, stipulates that the use of a registered trademark does not constitute infringement with respect to goods placed on the market anywhere in the world by the owner or with the owner’s consent. Customs authorities also do not treat parallel imports of genuine goods as illegal. The redistribution of genuine goods cannot be broadly controlled solely through trademark infringement.
Obligation to Use
Registrations with no genuine use for three or more years are subject to revocation. IPONZ advises that when filing a revocation application to invalidate a cited registration, one should claim a revocation date that goes back to the day before the filing date (or priority date) of one’s own application.
Term of Protection and Renewal
| Item | Details |
|---|---|
| Term of Protection | 10 years (renewable indefinitely) |
| Renewal Fee | NZD 200 per class (excluding GST) |
| Grace period for late renewal/restoration | 6 months (shortened from 1 year under the 2020 amendment) |
Transfer and Licensing
Assignments and transfers are handled through the online case management facility. A licensee is defined as a user operating under the owner’s authorization and control; a license involving such control is a prerequisite. It is important to explicitly include quality control provisions in the contract.
7. Infringement Response and Enforcement (including parallel imports)
Civil Remedies
Injunctions
Cease and desist
Damages
Compensation for Actual Damages
Account of profits
Disgorgement of infringing profits
Delivery up
Physical Relief Regarding Infringing Goods
Protection of unregistered trademarks
Unregistered trademarks cannot be the subject of a registered trademark infringement claim. Instead, claims under passing off or the Fair Trading Act are used in conjunction. If the opposing party has a strong history of pre-registration use or market presence, it is risky to rely solely on a registered infringement claim.
Preservation of Evidence (Search Order)
The High Court Rules 2016 provide for freezing orders and search orders (classically of the Anton Piller type). In cases where there is a risk of counterfeit goods, ledgers, or transaction data being dispersed, we consider immediate preservation measures—including search orders—in addition to standard disclosure.
Border Measures (Customs Notice)
Key Tool: New Zealand Customs operates a system whereby, upon submission of a notice by a rights holder, counterfeit goods are detained (parallel imports of genuine goods are excluded). For consumer goods where the inflow of counterfeit products is suspected, preparing a customs notice prior to civil litigation is often a more cost-effective approach.
Criminal Penalties
The Trade Marks Act 2002 sets out offenses and penalties, criminalizing acts such as counterfeiting, the false application of a registered trademark, and the manufacture of related devices. Specific statutory penalties (fines and prison terms) must be confirmed separately.
8. Major Case Law
① Crocodile International v Lacoste [2017] NZSC 14
A Supreme Court case regarding whether “use differing from the registered trademark” in a non-use revocation proceeding constitutes genuine use. Lacoste’s registration No. 70068 was revoked as of December 12, 1999. The central issue was whether the distinctive character of the mark had been altered.
Practical Implications: It is important to manage discrepancies between the registered design and the actual form of use. When updating a brand, consider filing additional applications or defensive applications aligned with the new logo.
② International Consolidated Business v SC Johnson (ZIPLOC Case) [2020] NZSC 110
A precedent addressing whether a subsequent revocation can rescue an application that was initially blocked by a citation. Following this judgment, IPONZ explicitly stated that it would interpret section 26(b) “special circumstances” relatively broadly in cases where the cited mark was subsequently revoked.
Practical Implication: It is highly valuable to pursue revocation prior to or concurrently with a blocking registration. A citation at the examination stage is not an insurmountable obstacle.
③ Tasman v Knauf (PINK BATTS/Earthwool Case, 2015)
A case concerning whether descriptive or nominative use constitutes infringement. A subsequent Court of Appeal decision characterized this as a “case of descriptive or nominative use” and concluded that there was no arguable case of trademark infringement.
Practical Implications: The scope of enforcement for word marks containing semi-descriptive elements may be limited. It is advisable to strengthen differentiation at the application stage by incorporating logos, creating composite marks, or submitting additional evidence.
Three Pillars of NZ Practice: Based on the three cases above: “① Unused registrations will lapse,” “② Citations can be overcome by cancellation or special circumstances,” and “③ There are limits to infringement in cases of descriptive or nominative use.” Unlike in Japan, where the process ends with registrability at the application stage, the system in New Zealand strongly incorporates the realism of post-registration use and enforcement.
9. Practical Checklist
- Consider utilizing SPA (Search and Preliminary Advice) — NZD 50 per class for 5 business days. If followed by a reduced-fee application, only an additional NZD 50 is required
- Incorporate the “2-day rule” for priority claims into the docket — Must be filed within 2 days of the NZ application; no extensions allowed
- Prepare transliterations and English translations of non-Latin characters — Organize Kanji, Hiragana, and Katakana trademarks in advance
- Sensitivity check for Māori elements — Anticipate extended examination time if the application includes Māori language or imagery
- Secure an address for service in New Zealand or Australia — Finalize via LiveForm immediately before filing
- Design the specification to balance pre-approved terms and custom terms — Use the domestic application reduced fee for 1–2 classes; use the Madrid System for multiple countries
- Prepare a three-pronged strategy for responding to citations — consent / limitation / cancellation
- Consider non-use attacks on blocking marks — Since the ZIPLOC ruling, “special circumstances” have been interpreted broadly
- Design enforcement strategies with parallel imports in mind — Controlling the distribution of genuine goods is difficult with trademarks alone
- Continuously collect evidence of use — preserve sales records, advertisements, packaging, and web images in chronological order to prepare for 3-year non-use revocation proceedings
10. Frequently Asked Questions
Consultation on New Zealand Trademark Applications
At the intellectual property firm EVORIX, we provide comprehensive support in collaboration with local agents, covering everything from NZ trademark applications and renewals to infringement responses and Madrid Protocol international applications.
We offer strategic support, including the use of SPA, compliance with the two-day priority rule, examination of Māori elements, and measures against blocking marks.
Free 60-minute initial consultation / Response within 1 business day
📞 06-7777-1884 / ✉ contact@evorix.jp / Contact Form