How do you register a trademark?

Once you have devised your trademark the next step is to search to see whether that trademark hasapply for a trademark registration.

Search

It’s important to conduct searching for existing trademarks and businesses before you commit to a trademark to determine if you will be able to register the trademark. Searching should also include domain name searching to determine if the domain name that you want is available for that trademark.

​You can conduct searching for existing registered New Zealand trademarks on the IPONZ website. You will need to conduct general internet searching to locate any unregistered trademarks, domain names or businesses currently using the same or similar trademarks.

​If you are considering operating in other countries you can search using the Global Brand Database which is a free searchable database of trademarks from many countries.

​Conduct this searching for each potential trademark on your shortlist and identify which ones have potential conflicts. Now make a decision on which trademark(s) you want to pursue.

Seek advice

Obtaining a trademark may seem like a simple process but it is very easy to make mistakes. We have helped numerous people who have applied for their trademarks themselves only to find they made critical mistakes that resulted in extra costs, failed trademark applications or lost opportunities.

Common mistakes include:

• applying for a descriptive trademark;
• using a trademark that is the same or very similar to an existing trademark;
• not defining the goods and services effectively;
• not using the best form of the trademark for the application;
• thinking that minor spelling changes will avoid infringement and enable them to obtain a trademark.

​We therefore highly recommend seeking advice before making an application. It often costs far less to use a professional than dealing with the issues arising from making mistakes.

Application

You can either apply for a trademark yourself at IPONZ or use IPiphany or another professional to file your trademark application.

After application

The process and timing of events after making an application vary by country but typically involve:

1. Examination – in most countries trademarks are examined to check that all the requirements have been met, this includes conducting searching to identify any potentially conflicting trademarks.
2. Acceptance – once the application no longer faces any objections in the examination phase the intellectual property office will issue a notice accepting the trademark application.
3. Registration– once all requirements are met after acceptance the trademark will be registered and a certificate issued.

Once you have a Trademark

Once you have a registered trademark you can take action against anyone who infringes the trademark, i.e. if they are using the trademark in commerce for the same or similar goods or services for which the trademark is registered for.

​You should mark your trademark in your marketing material and packaging with the ® symbol indicating to others that the trademark is registered, e.g. IPiphany®

​A trademark must be renewed every 10 years to be kept in force. If you don’t use the trademark it may become vulnerable to cancellation.