Maintaining Your New Zealand Trade Mark

Whether you are rebranding, selling your assets, or simply responding to compliance issues, the Intellectual Property Office of New Zealand (IPONZ) has specific protocols for every change.

Managing Ownership Changes and Assignments

One of the most common administrative tasks we handle is the transfer of ownership. Trademarks are property, and like any other asset, they can be bought, sold, or transferred between entities. Under New Zealand law, the owner or applicant of a trademark generally has the right to assign or transmit ownership of the mark to another party. This applies to both pending applications and fully registered marks, including those that may be in the “past expiry date” status.

To formally record a change of ownership, we must submit a request through the IPONZ case management facility. The standard requirement is to provide digital or scanned proof of the new owner’s title to the mark. Typically, this takes the form of a Deed of Assignment or a Sale and Purchase Agreement. Crucially, this document must contain the signatures of both the assignor (seller) and assignee (buyer), as well as the specific date on which the transfer took effect.

In situations where a formal deed is not available, perhaps due to a complex corporate restructuring or a filing error, a statutory declaration can often be used as an alternative. This declaration must state that the trademark is owned by a proprietor different from the one currently on the register.

It is also important to note that assignments do not have to be total. If you are selling a portion of your business, we can file a “partial assignment”. This process involves first requesting a division of the trademark to split the goods and services into two separate cases, the “parent” and the “child”. Once divided, we can assign the relevant portion to the new owner while you retain the rest.

Updates to Names, Addresses, and Agents

A frequent point of confusion for trademark owners is the difference between an assignment and a simple name change. If your company changes its name (e.g., via a rebrand) but remains the same legal entity with the same company number or NZBN, this is not a change of ownership. It is simply a modification of the client record.

IPONZ operates a system where updating a client record propagates across the entire register. This means that if we update your address or company name in the central database, it automatically updates every single trademark case associated with your profile. This is highly efficient but requires precision; an error in the client record will be reflected across your entire portfolio. For name changes, we must provide supporting documentation, such as a certificate from the Registrar of Companies.

Similarly, you may wish to appoint us as your agent or change your current representation. This is a free service from the IPONZ perspective, but it requires authorization. We would file an “Agent Authority” form signed by you, which formally allows us to act on your behalf for specific cases or your entire portfolio. This ensures that all future correspondence, compliance reports, and certificates are routed directly to our office for immediate attention.

Navigating the Examination Phase

When we file a new application, it is examined to ensure it complies with the Trade Marks Act 2002. If the examiner identifies issues, such as a lack of distinctiveness or a conflict with an existing mark, they will issue a Compliance Report.

Receiving a compliance report is a normal part of the process and does not mean your mark has been rejected. It simply means we need to respond to the objections raised. The report will outline specific issues and provide a deadline for a response. Our role is to analyze these objections and draft a formal response. This might involve legal arguments, evidence of prior use, or amending the specification of goods and services.

Once we submit a response, the examiner has 15 working days to re-examine the file. If the response resolves the issues, the mark will be accepted. If not, a further report may be issued.

Extensions of Time and Abeyance

Sometimes, resolving an objection requires more time than the standard deadline allows. For example, we might need to gather evidence from overseas or negotiate a consent letter from a competitor. In these cases, we can file a request for an Extension of Time. This request must include a clear justification for why the delay is necessary.

Alternatively, if your application is blocked by a prior mark that is currently subject to opposition or cancellation proceedings, we can request that your application be placed in “Abeyance”. This effectively suspends your application until the proceedings regarding the conflicting mark are resolved, preventing your application from timing out while we wait for the outcome.

Amending Specifications and Mark Details

Precision is vital regarding the “specification of goods and services”, the legal description of what your trademark protects. New Zealand uses the Nice Classification system, and correctly classifying your products is essential.

During the examination phase, or even after registration, amendments may be necessary. We can request amendments to correct classification errors or to limit the scope of the specification to overcome an objection. However, it is important to note that you generally cannot expand the scope of a trademark application once it has been filed; you can only narrow it or correct obvious errors.

Other details regarding the mark can also be amended. For example:

• Translations/Transliterations: If your mark contains foreign words or characters, we must provide an English translation (meaning) and transliteration (pronunciation).
• Mark Nature: We can amend an application to clarify if it is a standard, collective, or certification trademark.
• Mark Representation: If the image of the logo filed is unclear, we can upload a clearer representation, provided it does not substantially alter the identity of the mark.

Renewals and Restorations

A trademark registration in New Zealand is not a “set and forget” asset. To keep it in force, it must be renewed. We manage renewal deadlines to ensure your rights never lapse.

If a renewal deadline is missed, the mark’s status changes to “Registered – past expiry date”. Fortunately, there is a safety net. A trademark in this status can be “restored” if the renewal fee is paid within six months of the original due date. However, once that six-month window closes, the mark cannot be restored. If you still require protection for the brand after that period, we would need to file an entirely new trademark application, losing the priority date of the original registration.

Mergers and Divisions

Strategic management of a portfolio often involves merging or dividing cases.

Mergers, i.e. if you have multiple applications for the same mark, perhaps filed at different times for different goods, it is often more cost-effective to merge them into a single registration. To do this, the marks must be identical, have the same owner, and share the same filing and priority dates. Merging simplifies renewal fees and administrative overhead.

Whereas divisions, i.e. useful when an application faces an objection regarding only some of the goods or services. By dividing the application, we can let the unproblematic goods proceed to registration immediately (the “child” application) while we continue to argue the case for the objected goods in the original “parent” application.

Cancellation and Withdrawal

There are times when a trademark is no longer needed. If you have a pending application that you no longer wish to pursue, we can file a request to withdraw it. This immediately relinquishes any rights attached to the application.

If the mark is already registered, the process is called cancellation. You can request to cancel a registration at any time. It is crucial to understand that both withdrawal and cancellation are irreversible actions. Once a mark is cancelled or withdrawn, it cannot be reinstated.

Rectification and Alteration of the Register

Even after registration, the register can be amended to ensure accuracy. We can file requests to alter a registered mark, provided the changes are limited. This might include removing certain classes of goods that you no longer produce, entering a memorandum (such as a condition of use), or correcting a genuine error or omission on the register.

For certification marks, we can also assist in filing or altering the regulations that govern the use of the mark. If the original certificate of registration is lost or needs to be updated following a transfer of ownership, we can request to regenerate the certificate, ensuring you have an up-to-date legal document reflecting the current status of your intellectual property.

How We Can Help?

Maintaining a trademark portfolio requires vigilance. From the strict evidentiary requirements of ownership transfers to the strategic nuances of responding to compliance reports, every action taken on the register has legal consequences.

We act as your complete service partner for all trademark maintenance tasks. We monitor your deadlines, draft the necessary legal declarations, liaise with examiners regarding objections, and ensure that your portfolio accurately reflects your business assets. By entrusting the procedural details to us, you ensure that your brand remains secure, compliant, and enforceable

Contact us today for a free consultation.