The Trade Mark Process
Registering your brand as a trade mark (™) protects your name, logo and brand and gives you exclusive rights to use that brand.
A trade mark provides legal protection if anyone else tries to use your brand - or a brand that is too similar to yours. Trade marks are not limited to logos - they can include words, shapes, colours, sounds, smells (or any combination of these).
Prior to filing a trade mark application or commencing use of your brand in any market, we highly recommend conducting a Brand Clearance Search. This process helps to identify any existing trade marks that may be similar to the brand you want to use.
Below we've outlined the step-by-step process we undertake to register a trade mark in New Zealand, Australia and overseas, including the typical timeframes, costs and what happens if the trade mark does not pass examination.
Trade Mark Applications in New Zealand
Timeframe: Typically takes around 6-9 months in total.
Valid: Registration is valid for a period of 10 years and is renewable for another ten years on payment of a renewal fee.
Estimated Cost: The total cost for a standard trade mark application in New Zealand (assuming no adverse compliance report or third party opposition - see step 3. Examination for more) will be the Government fee of $100 per class, plus our fee of $450 for 1-2 classes. For 3+ classes our fee increases to $700.
For example, the total for one class would be $550, the total for three classes would be $1,000 or the total for five classes would be $1,200.
All fees are in NZD and exclude GST, if applicable.
Below you'll find a breakdown of the key steps, estimated timeframes and additional costs involved in applying for and registering a trade mark in New Zealand.
1. Search
Prior to filing a trade mark application or commencing use of the mark the subject of the application in New Zealand we recommend conducting brand 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.
Cost: Find more information and pricing for Brand Clearance Searches here.
Time: 1 - 2 weeks
2. File
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 - find out more about classes here.
3. Examination
New Zealand trade mark applications are examined by the Trade Marks Office within approximately 3 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 twelve-month period in order for the application to proceed to acceptance.
Extra Fees for adverse compliance: 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.
Timeframe: 3 weeks.
4. Acceptance
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.
Timeframe: 3 months
5. Registration
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 6-9 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 $200 per class and our fixed fee for renewal is $250).
Trade Mark Applications in Australia
Timeframe: Typically takes around 9-12 months in total.
Valid: Registration is valid for a period of 10 years and is renewable for another ten years on payment of a renewal fee.
Cost: The total cost for a standard trade mark application in Australia (assuming no adverse examination report or third party opposition - see step 3. Examination for more) will be $400 per class plus our fee of $450 for 1-2 classes. For 3+ classes our fee increases to $700.
For example, the total for one class would be $850, the total for three classes would be $1,900 or the total for five classes would be $2,700.
All fees are in AUD and exclude GST, if applicable.
Below you'll find a detailed explanation and breakdown of the key steps, timeframes and any additional costs involved in applying for and registering a trade mark in Australia.
1. Search
Prior to filing a trade mark application or commencing use of the mark the subject of the application in Australia we recommend conducting Brand 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.
Cost: Find more information and pricing for Brand Clearance Searches here.
Time: 1 - 2 weeks
2. File
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 - find out more about classes here.
3. Examination
Australian trade mark applications are examined by the Trade Marks Office within approximately 6-12 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.
Adverse Examination Fees: 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.
Timeframe: 6-12 weeks.
4. Acceptance
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.
Timeframe: 2 months
5. Registration
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).
International Trade Mark Applications
Timeframe: Typically takes around 9-12 months (or longer, depending on the country).
Valid: Registration is valid for a period of 10 years and is renewable for another ten years on payment of a renewal fee.
Cost: Costs vary depending on the country. Please contact us for pricing.
Below you'll find a detailed explanation and breakdown of the key steps, timeframes and any additional costs involved in applying for and registering a trade mark overseas.
1. Brand Clearance Search
Prior to filing a trade mark application or commencing use of the mark the subject of the application overseas we recommend conducting Brand 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.
Cost: Find more information and pricing for Brand Clearance Searches here.
Time: 1 - 2 weeks
2. File
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. For information about the Madrid Protocol and its advantages and disadvantages visit this page.
3. Examination
The timeframe for examination of trade mark applications varies for each country. For example, it can take about 6-9 months for examination in the USA and China, and 1-3 months for the EU and UK.
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.
Fees: 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
Timeframe: Typically 1 to 18 months, depending on the country.
4. Acceptance
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.
Fees: 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).
Timeframe: 1 - 3 months
5. Registration
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).
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Key information
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