As a business owner, protecting your intellectual property (IP) is going to play a key role in ensuring your business’s success. IP tends to be a fundamental aspect of most businesses. Due to this, getting familiar with the Intellectual Property Office of New Zealand (IPONZ) is not only advantageous but necessary for most business owners.

We’ve broken down some of the key things you’ll need to know about IPONZ and how utilising their services can help your business.

What Is IPONZ?

IPONZ is the main government agency that deals with intellectual property rights in New Zealand. The agency helps facilitate and maintain the regulations around New Zealand’s intellectual property rights.

If you want to register a form of IP, then you will need to go through IPONZ. Moreover, if you’re searching for existing designs, then IPONZ search is the best place to look. This is because they have the most comprehensive and trusted data regarding New Zealand IP.

What Categories Of Intellectual Property Does IPONZ Service?

IPONZ provides services regarding 4 main types of intellectual property. These are:

  • Trade marks
  • Patents
  • Designs
  • Plant variety rights

Keep in mind, these categories do not cover all types of IP. Nevertheless, just because IPONZ doesn’t offer specific services in regards to any form of IP that doesn’t fall under this category, doesn’t deem that form of IP unworthy of legal protection.

Suppose you have a trade secret or have produced a creation safeguarded by copyright. Even though IPONZ can’t offer protection, there’s still a range of legal instruments that can be utilised to protect your IP. Some of these include:

  • IP Assignment Agreement
  • Copyright Disclaimer
  • Intercompany IP Licence
  • Software Reseller Agreement

The specific legal protection will depend on your unique circumstances. So, even if something can’t be registered with IPONZ, it’s worth talking to a legal expert about your options regarding IP protection.

What Is The Difference Between A Trademark, Patent, Design And Plant Variety Rights?

Understanding the differences between each form of IP can help in identifying which one will apply to you. We’ve quickly summarised the basics of the four types of intellectual property IPONZ deals with:

Trade marks: A unique and recognisable sign can be registered as a trade mark. A wide range of things can be considered a trade mark, from symbols, pictures, names and even sounds. Trade marks are often used to build a brand’s identity and set them apart from competitors.

Patents: If you have a new invention, then you’ll need to get it registered as a patent in order to protect it. Once it’s registered as a patent, the inventor will be able to exclusively make, use and sell their invention.

Designs: Products may have a specific look or visual appearance that’s distinctive. This is known as a design. You can get a design registered with IPONZ to stop others from using the same one.

Plant variety rights: Plant variety rights (PVR) is available for those that have developed a new variety of plant. Like other forms of IP, if you register your new plant variety, then you’ll be the one with exclusive rights to use it.

The registration process for trade marks, patents, designs and plant variety rights differ from one another. If you want to know more about how the registration process works, we suggest chatting to one of our IP Experts.

How Do You Register A Trade Mark With IPONZ?

The basic steps to register a trade mark with IPONZ include:

  • Searching to see if the trade mark has already been taken
  • Filing an application (with all the right classes and descriptions)
  • Once the application has been accepted, the trade mark goes into opposition for three months
  • If the trade mark isn’t opposed, then it will be registered after the opposition period

You may be wondering, what is an opposition period?

The opposition period is essentially where your trade mark is published for any member of the public to view. The opposition period allows members of the public to dispute the registration of a particular trade mark.

If your trade mark goes into opposition you will have 2 options. The first is to drop the application altogether and find a different trade mark to register. Alternatively, you can opt to fight for your trade mark by responding to the opposition.

Having a legal expert in your corner can make this process much easier, from filing the initial application to going through opposition if necessary. Sprintlaw’s legal experts are happy to help with every phase of getting a Trade Mark Registered.

How Long Does It Take For A Trade Mark To Be Registered With IPONZ?

Overall, the process to get a trade mark registered takes a few months. Once you submit your application, you’ll hear back from IPONZ in about 15 working days. After that, your trade mark will be up for opposition for the next 3 months before it can officially be registered. If you take into consideration the possibility of your trade mark getting opposed, then it may take even longer than a few months.

So, if you’re eager to get a trade mark registered then it’s good to get started as soon as possible!

What Is The Duration Of Trademark Protection In New Zealand?

In New Zealand, trade mark protection lasts for about 10 years. You will have the option to renew your trade mark before this time period ends. It’s essential to stay on top of this timeline. If you don’t renew your trade mark on time, then the registration will expire. Once your trade mark’s registration expires, it will be available for re-registration by anyone else. It won’t be fun going through the process all over again and even less fun if someone else takes it first!

Can I File An International Trade Mark Application Through IPONZ?

Yes, you can initiate an international trade mark application through IPONZ.

Getting an international trade mark is great as it can help you secure protection for your trade mark in regions outside of New Zealand. You have the option of applying directly to the country of your choice, however, many people choose to use the Madrid Protocol instead.

The Madrid Protocol allows you to file one application for an international trade mark, just as long as the country or countries you’re choosing to apply in are members of the Madrid Protocol—there’s well over 100, so your chances are good.

As we noted, you can’t do this directly through IPONZ however, you’ll need to go through IPONZ first. For an application to be submitted through the Madrid Protocol, it needs to meet the following requirements:

  • The trade mark in question must be registered in New Zealand or be in the process of registration
  • The international trade mark needs to be under the same name of the individual or organisation as the New Zealand trade mark
  • The design for the international and New Zealand trade mark need to be identical to one another

Essentially, you will need to have the trade mark registered domestically here in New Zealand, before you can seek international protection for it. Going through the Madrid Protocol can be complex, it’s always wise to have the help of a legal expert when applying for an International Trade Mark to ensure the application process goes smoothly.

What Are The Benefits Of Registering With IPONZ?

If your IP can be registered with IPONZ, then we highly recommend getting it registered. Without having the proper registration, it can be very difficult to prove ownership of that IP. Moreover, if another person decides to register it before you, then there’s usually not much that can be done afterwards.

Securing your IP, whether it’s by registration through IPONZ or with the right legal documents is essential for any business. Waiting till it’s too late could be detrimental, so it’s important to get this done early on.

Does IPONZ Give Legal Advice?

No, IPONZ does not provide legal advice. If you have a question to ask or want to know more, then it’s important to talk to an expert in IP law. IP is a complex area of law. It’s not wise to guess your way through it, as mistakes could cost you time and resources that could be invested into your business instead.

Talking to an IP expert can help you understand the legal landscape of intellectual property a lot better. Plus, those complicated applications are much easier when you have an expert that goes through it every day helping you out.

Next Steps

IPONZ plays a crucial role in securing your business’s IP. Knowing what they do, how they work and the other ways you can protect your IP can help your business survive in this competitive market. To summarise what we’ve discussed:

  • IPONZ is the main government body for intellectual property (IP) rights in New Zealand, facilitating and regulating New Zealand IP rights
  • IPONZ offers services related to trade marks, patents, designs and plant variety rights, helping businesses protect their creative assets
  • IPONZ doesn’t provide protection for all types of IP. Legal instruments can secure protection for other forms of IP like trade secrets and copyright
  • Understanding the distinctions between trade marks, patents, designs and plant variety rights helps determine applicable protection
  • Registering a trademark with IPONZ involves steps like searching for existing trade marks, filing an application and dealing with opposition if any
  • Trade mark registration process can take a while, with potential delays due to opposition
  • Trade mark protection in New Zealand lasts approximately 10 years, requiring timely renewal to avoid expiration
  • IPONZ does not offer legal advice, so consulting an IP law expert is essential due to the complex nature of IP law
  • Registering IP with IPONZ or utilising legal documents is vital for proving ownership and protecting assets
  • IPONZ’s services are integral to securing business IP. Understanding their functions and alternative protection methods is crucial for business success

If you would like a consultation on your options moving forward, you can reach us at 0800 002 184 or [email protected] for a free, no-obligations chat.

About Sprintlaw

We're an online legal provider operating in New Zealand, Australia and the UK. Our team services New Zealand companies and works remotely from all around the world.

5.0
(based on Google Reviews)
Do you need legal help?
Get in touch now!

We'll get back to you within 1 business day.

  • This field is for validation purposes and should be left unchanged.

Related Articles
The Legal Side Of Chatbots And ChatGPT