Trade Mark Renewal and Restoration in New Zealand

This renewal process, governed by the Trade Marks Act 2002, is a formal, deadline-driven procedure. Failing to renew, or making a mistake during the process, can lead to the permanent loss of your valuable brand rights.

The Renewal Process

A trade mark registration can be renewed indefinitely for further 10-year periods. The window to file for renewal opens one year before the expiry date.

As your legal representative and registered “address for service,” our firm receives all official communications from the Intellectual Property Office of New Zealand (IPONZ) on your behalf.

Here is the process we manage for you:

• Four months before your trade mark’s expiry date, the Commissioner is required to send a “Reminder of Renewal of Registration”. This notice is sent directly to us. It confirms the exact expiry date, the final deadline for renewal, and the prescribed fees.
• Upon receiving this notice, we will contact you to confirm your instructions. We will verify whether you are still using the mark as registered and which classes (if it is a multi-class registration) you wish to renew.
• Once we have your instructions, we handle the entire application. We prepare and file the formal renewal request, which includes the owner’s name and address, our details as your agent, the name of the person paying the fee, and a list of the specific classes to be renewed. We manage the payment of all prescribed government fees for each class.
• After the renewal is processed, IPONZ will issue a filing receipt. It is important to note that under the 2002 Act, new “renewal certificates” are not issued. We will provide you with the official receipt as confirmation that your brand is secured for another 10 years.

Restoring a Lapsed Mark

If the renewal deadline is missed, your trade mark’s status will change to “Registered – past expiry date”. We will receive a formal “Notice of Removal from Register” from IPONZ, and we will advise you of this immediately.

This does not mean your mark is lost forever. The law provides a crucial 6-month grace period following the expiry date, during which the registration can be “restored”.

Restoration is a final opportunity to save your mark. We can manage this by filing the application for renewal and paying the prescribed fee within that 6-month window. Once the fee is paid, the trade mark registration is restored, and it retains its original registration date.

If no action is taken within 6 months of the expiry date, the Commissioner must remove the trade mark from the register. This is a final, irreversible action that results in the complete loss of your registered rights.

Why an expired mark still important?

Even after a mark is removed from the register, it continues to have a limited, lingering presence. Under Section 60(1) of the Act, an expired registration must be taken into account by examiners for one year from its date of expiry.

This means that for 12 months, your “dead” mark can still be cited against new applications from competitors. However, this is not a substitute for active protection.

If your new application is blocked by such a “ghost” mark, we can take steps to overcome it. The law provides an exception if we can satisfy the Commissioner of one of two things-

• That there was no genuine use of the removed mark during the two years immediately before its removal; or
• That no deception or confusion would be likely to arise from your use of the mark.

This is a complex legal argument that our firm can prepare and file on your behalf.

Partial Renewals for Multi-Class Marks

The renewal process becomes far more technical for multi-class registrations. A common scenario is that a client may wish to renew their mark for some classes but not others. For example, you may wish to keep your registration for “clothing” in Class 25 but let your registration for “retail services” in Class 35 lapse.

The IPONZ system does not allow you to simply select the classes you want to renew. You must renew all or nothing. To achieve a partial renewal, a formal strategic action must be taken before the renewal is filed.

Our firm will advise you on two available options-

Option 1: Alteration Request (When you are certain you do not want a class)

If you are certain you no longer need protection for a specific class, we can file an “alteration request” to strike out that class from your registration. The key consequence is that the class is immediately and permanently cancelled. After the alteration is processed, we can then file the renewal for the remaining classes.

Option 2: Divisional Application (When you are uncertain)

If you are unsure whether you want to abandon a class, a safer strategy is to file for “division”. We can divide your single registration into two separate (“parent” and “child”) registrations. We would keep the classes you want to renew in the “parent” registration and move the uncertain classes into the “child” registration. We then renew the parent registration and simply allow the child registration to lapse.

The 15-Day deadline

Both of these strategic options, i.e. division and alteration, are complex legal processes. They must be filed and fully processed by IPONZ before we can file the renewal. The guidelines state that you must file these requests at least 15 working days before you intend to renew. This highlights the importance of contacting our firm well in advance of your expiry date.

If you do accidentally renew all classes, we can, as a final step, request a refund from IPONZ for the unwanted classes, which will then be deleted from your registration .

Your Partner in Long-Term Brand Protection

Renewing your trade mark is a critical deadline that protects the long-term value of your brand. Our role as your legal partner is to remove this administrative burden from your shoulders. We manage the deadlines, provide strategic advice on multi-class renewals, and handle all the legal formalities, ensuring your intellectual property rights remain secure and unbroken. Contact us for a free consultation today.