Trade Mark Application Process

Set out below is some information about the registration process for a trade mark application in:

  1. New Zealand

  2. Australia; and

  3. Overseas

 

Trade mark applications in New Zealand

**All fees are in NZD and exclude GST, if applicable**

Prior to filing a trade mark application or commencing use of the mark the subject of the application in New Zealand we recommend conducting clearance searches.  This helps to identify any existing trade marks that may be similar to the proposed trade mark.  An existing trade mark (registered or unregistered) that is similar to a proposed trade mark may affect the right to register and/or use the trade mark. 

Searches of the New Zealand Trade Marks Register for one trade mark would be $500 and including searches for unregistered rights would be $800.  Click here to see more information about searches.

We prepare the description of goods and services for which protection is sought and file the application with the Trade Marks Office.  No claims about use are required for a trade mark application in New Zealand.  No power of attorney is required.  All goods and services are included in one or more of 45 classes. 

The government fee is $150 per class.

Our fee for a standard application is $400 for 1-2 classes or $600 for 3+ classes.

New Zealand trade mark applications are examined by the Trade Marks Office within approximately 15 working days of the date of application.  If objections are raised by the examiner (due to the nature of the trade mark itself or conflicting trade marks on the Register) these objections must be resolved within a twelve-month period in order for the application to proceed to acceptance. 

Our fee for reporting an adverse compliance report is $175 for administrative issues or $400 for substantive issues.  Our fees for responding to an adverse compliance report range from $175.  We would seek your instructions in relation to a proposed response before proceeding.

When the application is accepted, it will be advertised in the public domain for a period of three months.  We will not charge you for reporting on this.  During this time a third party may oppose acceptance of the application, although this is statistically unlikely.

Assuming no third party oppositions are filed, the application should proceed to registration.  We will not charge you for reporting on this.  The registration process typically takes around 9 months from the date of application and registration rights backdate to the date of filing.

Registration is valid for a period of 10 years and is renewable for another ten years on payment of a renewal fee (the government fee for renewal is $350 per class and our fixed fee for renewal is $250).

The total cost for a standard trade mark application in New Zealand, assuming no adverse compliance report or third party opposition, will be $150 per class plus our fee of $400 for 1-2 classes or $600 for 3+ classes.  For example, the total for one class would be $550, the total for three classes would be $1,050 or the total for five classes would be $1,350.

Trade mark applications in Australia

**All fees are in AUD and exclude GST, if applicable**

 

Prior to filing a trade mark application or commencing use of the mark the subject of the application in Australia we recommend conducting clearance searches.  This helps to identify any existing trade marks that may be similar to the proposed trade mark.  An existing trade mark (registered or unregistered) that is similar to a proposed trade mark may affect the right to register and/or use the trade mark. 

Searches of the Australian Trade Marks Register for one trade mark would be $500 and including searches for unregistered rights would be $800.  Click here to see more information about searches.

We prepare the description of goods and services for which protection is sought and file the application with the Trade Marks Office.  No claims about use are required for a trade mark application in Australia.  No power of attorney is required.  All goods and services are included in one or more of 45 classes. 

The government application fee is $330 per class.

Our fee for a standard application is $400 for 1-2 classes or $600 for 3+ classes.

Australian trade mark applications are examined by the Trade Marks Office within approximately 10-13 weeks of the date of application.  If objections are raised by the examiner (due to the nature of the trade mark itself or conflicting trade marks on the Register) these objections must be resolved within a 15-month period in order for the application to proceed to acceptance. 

Our fee for reporting an adverse examination report is $175 for administrative issues or $400 for substantive issues.  Our fees for responding to an adverse examination report range from $175.  We would seek your instructions in relation to a proposed response before proceeding.

When the application is accepted, it will be advertised in the public domain for a period of two months.  We will not charge you for reporting on this.  During this time a third party may oppose acceptance of the application, although this is statistically unlikely.

Assuming no third party oppositions are filed, the application should proceed to registration.  We will not charge you for reporting on this.  The registration process typically takes around 9-12 months from the date of application and registration rights backdate to the date of filing.

Registration is valid for a period of 10 years and is renewable for another ten years on payment of a renewal fee (the government fee for renewal is $400 per class and our fixed fee for renewal is $250).

The total cost for a standard trade mark application in Australia, assuming no adverse examination report or third party opposition, will be $330 per class plus our fee of $400 for 1-2 classes or $600 for 3+ classes.  For example, the total for one class would be $730, the total for three classes would be $1,590 or the total for five classes would be $2,250.

International trade mark applications 

 

Prior to filing a trade mark application or commencing use of the mark the subject of the application overseas we recommend conducting clearance searches in the countries of interest to you.  This helps to identify any existing trade marks that may be similar to the proposed trade mark.  An existing trade mark (registered or unregistered) that is similar to a proposed trade mark may affect the right to register and/or use the trade mark.  Upon request, we can provide costs for doing searches in the countries of interest to you.  Click here to see more information about searches.

There are different filing requirements for different countries, which we can advise on.  Upon request, we can provide costs for filing trade mark applications in the countries of interest to you.

 

Depending on the countries of interest, it may be possible to file an international trade mark application under what is called the Madrid Protocol, designating the countries of interest.  Click here for information about the Madrid Protocol and its advantages and disadvantages: Madrid Protocol

The timeframe for examination of trade mark applications varies for each country.  For example, it can take about 4-6 months for examination in the USA, 1-3 months for the EU or UK, and about 1 year for China.

 

If we file an international trade mark application through the Madrid Protocol, it generally takes a few months for the World Intellectual Property Office (WIPO) to examine the application.  If and when WIPO is satisfied the application meets the formality requirements, the application will be passed to the Trade Marks Offices of the designated countries, and the application will be examined by the individual offices in accordance with their normal practices.

If objections are raised by the examiner (due to the nature of the trade mark itself, conflicting trade marks on the Register, or the description of goods and services) these objections must be resolved in order for the application to proceed to acceptance. 

The fees for reporting an adverse examination report will vary depending on the country, and the issue raised.  The fees for responding to an adverse examination report will also vary.  We would seek your instructions in relation to a proposed response before proceeding

When the application is accepted in a particular country, it will be advertised in the public domain name.  The period of advertisement generally varies between 1 and 3 months, depending on the country.  During this time a third party may oppose acceptance of the application, although this is statistically unlikely.  Depending on the country, there may be a fee for this stage (but if we have provided you with a cost estimate it will include this).

Assuming no third party oppositions are filed, the application should proceed to registration.  Depending on the country, there may be a fee for this stage (but if we have provided you with a cost estimate it will include this).  The registration process typically takes around 9-12 months (or longer, depending on the country) from the date of application and registration rights backdate to the date of filing.

 

Registration is valid for a period of 10 years and is renewable for another 10 years on payment of a renewal fee.

Loft Legal Intellectual Property Law Specialist

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