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Can you register my trademark in New Zealand?

We can register your trademark in New Zealand. We don’t have a dedicated page for it, but please feel free to check out our prices on our Australian page.

Within 15 working days after filing, New Zealand Trademark Office (New Zealand Intellectual Property Office) will examine your trademark to make sure it complies with all the requirements. If there are issues regarding your application, a compliance report will be issued outlining the objections to give you the opportunity to respond. If accepted, your trademark will be advertised for opposition purposes in New Zealand trademark Journal.  The opposition period is 3 months.  If no oppositions are filed, your trademark will register.

On average, it takes 5-6 months to register a trademark in New Zealand.

A trademark can be renewed every 10 years, indefinitely.

 

What information do I need to provide to file a trademark in Australia?

In order to file your trademark in Australia, we’ll need to know:

  • Entity Type (Do you have a company? Is an individual going to be a trademark owner?);
  • The legal form of the company (examples: proprietary company (Pty), Ltd., LLC, LLP etc.);
  • The full address of the applicant (trademark owner);
  • The trademark name;
  • If you are filing for a logo, a copy of the logo as a JPEG file; the logo can be in black/white or in color;
  • The products which you sell or plan to sell in Australian under your trademark (provide a list – please be as specific as possible);
  • The services which you offer or plan to offer in Australia under your trademark (provide a list – again, please try to be specific).
  • Your website, if you have one.

What is a power of attorney? When do I need to sign a power of attorney?

A Power of Attorney, POA in short, is a legal document that authorizes an entity to represent or act for another person, usually, in the managing of the person’s property, business or private affairs. The former is called the Attorney or Agent whereas the latter is commonly known as the Principal.

In Trademarks, a Power of Attorney is required to appoint an Attorney on your file so he/she can represent you before the respective Trademarks Office.

Having said that, in many countries including the US, UK, Europe, Canada and Australia you don’t need to sign a POA for a standard trademark application (power of attorney is already implied when you entrusted your attorney/agent trademark registration). However, there are countries, such as, China, Mexico, Russia and India where a POA signed by the owner or any other person legally bound to the owner is required in order to file a trademark application.

In the US, when an applicant wishes to replace its existing attorney and appoint a new attorney, it needs to sign a Power of Attorney authorizing the new attorney to prosecute the trademark application.

How does the process work with Trademark Angel? What happens after I buy a trademark package?

There are 3 ways how you can proceed:

  1. Book an initial phone call with us. Here is the link for the trademark package
  2. Ask for a free preliminary trademark search to get an idea of whether your trademark can be registered. This is a basic search but if your mark is unregistrable, we’ll be able to tell you. Order your search here.
  3. Buy a trademark package right away to start the trademark registration process without further delay. You can see our pricing on this page and can buy directly from our website.

What happens after I buy a trademark package?

  1. We’ll confirm your order.
  2. We’ll check if your trademark is registrable. A comprehensive trademark search will be done at this stage. We will provide detailed recommendations on how to increase the chances of achieving registration if your trademark turns out to be problematic.
  3. If your trademark is registrable, we’ll move forward with the trademark registration process.
  4. If your trademark has low chances of achieving registration, you will have 3 options:
  • Ask for a full refund;
  • Come up with a different name. We will provide detailed instructions for this. Further trademark searches are included in the package and there is no extra cost. We’ll keep searching until we find a registrable trademark;
  • Proceed with the filing anyway.

The choice is yours. Make the first step now.

Classification of Goods and Services in a Trademark Application (class headings)

Trademark Classes

Every trademark application must list the specific goods and services that the trademark will cover.

Products belong to trademark classes 1 to 34. Services belong to classes 35 to 45.

Products are tangible, you can touch them. Services are intangible.

Below is a rough classification (class headings) just to give you an idea of general categories  (please note that the below list cannot be used for trademark filing)

Products

Class 1: Chemicals (including those used in agriculture, industry and science)

Class 2: Paints, coatings, varnishes, colorants for food.

Class 3: Cosmetics, creams and serums, cleaning products including soap and shampoo, bleaching and abrasives, non-medicated toiletry preparations, false eyelashes, essential oil, perfume

Class 4: Fuels, industrial oils, greases, lubricants, candles

Class 5: Pharmaceutical and veterinary products, food supplements and vitamins, baby food, disinfectants, fungicides, herbicides, plasters, dental wax

Class 6: Metals, metal castings, metal hardware, metal containers, locks, safes

Class 7: Machines and machine tools and their parts, motors and engines (except for land vehicles)

Class 8: Hand-operated tools and implements, razors, cutlery

Class 9: Computers, computer hardware, computer cables, cell phones and cell phone cases, data carriers, computer software, downloable publications including e-books, videos and podcasts

Class 10: Medical and dental instruments and apparatus, massage apparatus, sex toys

Class 11: Products for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes including lamps and kettles

Class 12: Land, air and nautical vehicles, motors and engines for land vehicles

Class 13: Firearms, ammunition, explosives, fireworks, holsters

Class 14: Precious metals, watches, jewellery

Class 15: Musical instruments

Class 16: Paper, items made of paper, stationery products, artists’ products, printed products including photographs, stickers, notebooks, party ornaments of paper

Class 17: Rubber, asbestos and plastic Items, pipes and tubes

Class 18: Leather and leather goods, bags, wallets, animal apparel, collars and leashes for animals

Class 19: Building and construction materials (non-metallic), non-metal monuments

Class 20: Furniture, mirrors, picture frames, storage containers not of metal, party ornaments of plastic

Class 21: Kitchen utensils, crockery, containers, cleaning implements, toothbrushes

Class 22: Ropes and strings, tents, nets, awnings, sacks, padding, canvas material and raw fibrous textile material

Class 23: Yarns, threads

Class 24: Textiles, fabrics, blankets, covers, towels

Class 25: Clothing, footwear and headgear

Class 26: Sewing products, lace and embroidery, artificial flowers, hair decorations like ribbons, false hair

Class 27: Carpets, linoleum, wall and floor coverings, wall hangings

Class 28: Sports equipment, video game apparatus, games, toys, Christmas decorations

Class 29: Dairy products, meat and fish, processed and preserved foods, including dried, frozen and cooked fruits and vegetables, milk, eggs, edible oils and fats, jamps, jellies

Class 30: Staple foods, spices, bakery products, confectioneries, tea, coffee

Class 31: Fresh fruit and vegetables, live animals, animal food, seeds, fresh herbs, plants and flowers

Class 32: Non-alcoholic beverages, preparations for making beverages, fruit juices, beer

Class 33: Alcoholic beverages, except beer

Class 34: Tobacco products and smokers’ articles, matches, electronic cigarettes

Services

Class 35: Retail services including online retail store, advertising, business consulting, business management

Class 36: Insurance and financial services, real estate services

Class 37: Building construction, repair and maintenance services, installation services

Class 38: Telecommunication services, broadcasting services including video broadcasting

Class 39: Transport, logistics and storage, travel services

Class 40: Treatment of materials, custom assembly, recycling and waste management

Class 41: Education services, including arranging and conducting educational classes and seminars, entertainment services, book publishing, organizing exhibitions and conferences

Class 42: Saas and Paas services (Software as a service and platform as a service), IT services, software development, graphic design services, website development, scientific and technological services

Class 43: Restaurants, cafes, hotels, catering services

Class 44: Medical services, hygienic and beauty care services, dental services, veterinary services

Class 45: Personal and social services, legal services, security services

For a more in-depth discussion read this article: Taking Advantage of the Trademark Classification

 

Are geographically descriptive marks registrable in Australia?

It is generally difficult to register geographical names as trademarks in Australia, particularly where these geographical words have an obvious connection with the goods or services being trademarked.

For example, the word MAATSUYKER describes a series of small uninhabited islands off the coast of Tasmania. The trademark office has previously rejected an application for the trademark MAATSUYKER in relation to Seafood (class 29) but accepted the trademark MAATSUYKER in relation to Clothing (class 25). The reasoning is simple, there is an obvious connection between the geographical islands and the fishing industry, thus it is possible that other fishing operators might need to use the word MAATSUYKER to describe their goods. By contrast, it is highly unlikely that there will be many clothing manufacturers on these uninhabited islands who need to use the word MAATSUYKER to describe their goods.

What is considered a merely descriptive trademark in Australia and are they registrable?

In Australia a merely descriptive trademark is one that has no “adaptation to distinguish” your goods and services from those of other businesses. Some examples of such “merely descriptive” trademarks include words which are used for the normal description of the goods or services.

An example of this is the word “GIANT” in relation to hamburgers, which was held to be a word that was merely descriptive as it was likely to be used by other restaurants in the description of their hamburgers.

You can get more details about descriptive marks here.

Is it a good idea to file a multi-class trademark application in Australia?

Given that Australia does not require proof of Intent-To-Use prior to accepting trademark applications, the filing of multi-class trademarks is a much simpler and less risky proposition than in other countries.

The only major pit-fall of multi-class trademark applications in Australia is that you only have three years after the filing of the trademark to begin using it. If you make a multi-class application in classes which you have no intent to use, you may eventually face challenges to your trademark in those classes.