International trade marks are administered by the World Intellectual Property Organization (WIPO). If you have a trade mark application or registration in New Zealand, you can apply for an international trade mark registration through the IPONZ case management facility.
There are some matters you should check or prepare in order to apply for an international trade mark registration based on a New Zealand application or registration. For more information, please see our Prepare to apply for NZ Office of Origin trade marks page.
Prepare to apply for NZ Office of Origin trade marks
Entitlement to file
Applicants must indicate their entitlement to file the international application. Applicants must be:
- a national of New Zealand or
- domiciled in New Zealand or
- an organisation with a real and effective industrial or commercial establishment in New Zealand.
Our case management facility automatically determines your entitlement to file based on the client type indicated on your client record.
It’s important that your applicant details are correct, including that:
- an appropriate client type is selected - a person or a New Zealand company
- your entitlement address checkbox is selected to indicate that a physical address in New Zealand is your entitlement address.
- your email address is listed.
See how to check the owner details for the basic mark.
Suitable basic mark
To file for an international application using IPONZ as the Office of Origin, you first need to ensure that your basic mark is suitable. See Prepare to apply for NZ Office of Origin trade marks.
Completing the online application
- Log in to our case management facility (button at top right of screen). If you don't have access, become a registered user.
- On the left-hand side navigation bar under the Trade Mark section, select Apply for International Registration (NZ Office of Origin).
- Fill in all the required fields (marked with a red dot). If you need help, select and hold the cursor over a field box and a Help dialogue box will appear.
Guidance for specific fields in the application form
Reference
Use a different reference for each application.
Basic mark
You must base your international application on a New Zealand national application or registration - this is referred to as the basic mark for the international application. See Prepare to apply for NZ Office of Origin trade marks.
To specify your basic mark, select Search and input your chosen search criteria, then choose Search. Select your mark from the results and the trade mark information will be pre-populated for your international application.
Note: If your basic mark is a series you’ll be required to amend your international application to only include one of the marks. It's not possible to submit an international application for a series.
Additional marks
The international application can be based on one or more trade mark applications or registrations. The additional applications or registrations must be the same mark and have the same owner.
Select Add to search and select an additional basic mark.
If you can't locate your additional mark, check the mark is in the name of the owner of the basic mark. If you're an agent, you may also need to be recorded as the agent on the additional marks before they may be added.
Convention priority
You may claim an earlier filing date based on your first application in a convention country (including New Zealand) if you file your international application within 6 months of the filing date of your basic mark. To make the claim:
- Enter the details of the prior application on the NZ Office of Origin form.
- Select Add and complete the convention priority fields, including Priority Date and Country.
- Enter details of a partial convention claim in the Claims text field (or leave blank if you're claiming priority for all the goods or services).
- Select Submit to include your claim on the form.
Mark information
The basic mark information is pre-populated. You may supply other information such as verbal elements, disclaimers, and translations of words in the mark into English, French or Spanish.
If your basic mark(s) does not contain a mark description, you may optionally provide one. For example, if your mark is not in standard characters and you are seeking protection in the United States, you are required to provide a description of the mark which clearly and accurately states what the mark comprises.
Designated countries
To select designated countries (contracting parties) select Add to choose countries you wish to have protection in. You can search by code or country name, or navigate from our list.
Depending on which designated countries you add, you may need to supply specific information. See Prepare to apply for NZ Office of Origin trade marks.
Goods and services specification
Your international application must include a list of all goods and/or services for which protection of the mark is sought. The scope of the listed goods or services must not be broader than those of the basic mark(s). WIPO will determine if the goods or services are adequately classified against the most recent schedule of the Nice Classification system. See classifying your goods and/or services.
The goods and services specification is populated from the basic mark(s). Each class of goods and services will initially be designated for the International Bureau (IB) of WIPO, and all of the countries you have designated for your international application.
- If you wish to edit your specification so that some classes will only apply to certain countries, click the Edit button to make your changes.
- When editing your specification, you may also Add classes to provide a limited list of goods or services for some designations. Whenever you add a class for a limited list in this way, you must select the designations for that limited list by ticking the relevant country codes beside that list.
At least one of your classes in your application must designate a country. The International Bureau (IB) must be selected for all classes, so that these can be recorded on the international registration for the purposes of subsequent designations.
You can see whether a good or service will be accepted by some of the designated offices through WIPO's Madrid Goods and Services Manager. This list is not exhaustive however, and terms not found on the list may be acceptable to your designated offices.
To help offices with the examination of the specification, any Māori terms within the specification should be accompanied by an English translation in brackets, for example, harakeke (flax).
When you've finished editing, select Continue to include the changes on the form.
Payment to WIPO
Payment is required in Swiss Francs. It must be made directly to the International Bureau (IB) of WIPO. You can use WIPO's Madrid System Fee Calculator to help you identify the cost of the application.
Make sure you enter the required information to enable the IB to confirm receipt of the payment, such as fee amount, and the basic application or registration number as the payment ID in the space provided.
Once your application has been certified, you can use WIPO’s Madrid Portfolio Manager to find the WIPO reference for your international application. You will need this reference to make payments to WIPO that are related to your application.
WIPO currently does not accept credit card payments for international trade mark applications. Instead, you can use WIPO’s online payment service once you receive an irregularity notice for your application. This irregularity notice will include your WIPO reference and the amount of fees due.
For any questions relating to payments with WIPO, please refer to WIPO’s guidance on fees and payments, or contact WIPO directly.
Madrid System Fees and Payments guidance — WIPO
Madrid System Fee Calculator — WIPO
Madrid Portfolio Manager — WIPO
Online Payment Service — WIPO
Submitting your application
When you have completed the application form, check it thoroughly and make any final changes.
If you would like to save your application without submitting it, select Save.
When you're ready to submit the application to us for review for certification, select Submit. If there are errors or omissions in the form a message will display in red at the top of the screen.
Once your application has been submitted you’ll receive a notification to the email address that was listed in the contact details. A confirmation and summary of the application will appear in the Discussion section of your IPONZ Inbox.
Need help?
If you need more help, contact us during business hours. You may also wish to sign up to the WIPO Madrid Portfolio Manager (MPM), and consult WIPO’s MM2 explanatory notes for detailed information on how to fill out the form.
International registration process
IPONZ certification
Our certification process should take 5 working days from receipt of your international application. We’ll communicate the outcome via our case management facility.
We certify that the application has the same mark and same owner, and that the list of goods and services are within the scope of the basic mark(s).
If we are able to certify your international application, we’ll forward your application for WIPO to assess, and send you a 'Notice of Certification'.
If we identify issues with your application, we'll send you an 'Unable to certify international application' letter. If you're required to make some changes to the application, we'll give you a response deadline.
To view and respond to the 'Unable to certify' letter:
- Log in to our case management system, and go to your Inbox.
- Under Tasks, the letter is attached to the case number with the title Respond to unable to certify report.
- Select the Respond to unable to certify report link to open it and submit your response.
WIPO examination
WIPO will examine the formalities side of your application, and identify any issues. This examination generally takes over 1 month. They will then forward your application on to your chosen countries for them to examine under their own practices and legislation.
Issues with application
- If WIPO finds an issue with your application they'll send you an Irregularity Notice, usually via email.
- If the irregularity relates to the overall specification or its classification, you may resolve these through us by responding to your Respond to WIPO Irregularity task in your Inbox.
- If the irregularity relates to the non-payment of fees, you must arrange payment directly with WIPO.
- If your international application has been certified, but you’ve found an error in the application, contact the IPONZ Examiner who certified your application. The contact information is on your Notice of Certification.
- It may be more than 10 working days before you receive a response from WIPO. To know when to expect a response, please refer to WIPO’s pendency times for International Applications.
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If your international application hasn’t been registered yet but you want to add more countries, email us with the:
- application number IPONZ assigned to your international application,
- countries you wish to add,
- goods and/or services lists for those countries.
Note: Some countries have extra application requirements (eg intention to use declarations). These must also be included in your request if applicable. Once registered, you can add more countries (subsequent designations) directly through WIPO.
International registration
You’ll receive a certificate of registration when WIPO has registered and published your mark in the International Gazette and sent it to your designated countries. This doesn’t mean that your mark is registered in those countries.
Timeframes for examination vary between countries. If no refusal is raised after 18 months of that country being notified of the designation, then your mark is deemed to be protected in that country (the timeframe is 12 months for some countries).
If you are refused by one of your designated countries, you’ll be notified by post or email, or through the WIPO Madrid Portfolio Manager if you’ve subscribed to it.
If you receive a provisional refusal, or your registration is opposed by one of your designated countries, you should respond to the objections raised within the timeframes. We're unable to help you with this, and you may need to appoint a local agent to respond to or contest the opposition on your behalf. You can also refer to WIPO Lex, which provides free access to IP treaties administered by WIPO, as well as the laws and regulations of its member states.
Maintaining your international registration
You can maintain your international registration through WIPO, who also maintain it across a number of countries.
Maintenance includes renewal, limiting your goods or services, renouncing your international registration in one or more countries, or updating your address details.
Complete the appropriate MM form. You may also be able to complete some transactions online (eg renewal). Don't send your completed MM form to us - submit it directly to WIPO.
Assign your international registration
Complete an MM5 form to assign your international registration. You should arrange for the ‘assignor’ to sign the relevant part of the form so that you can submit the form directly to WIPO.
Note: If the form is being signed by the ‘assignee’ you’ll need to submit it to us.
The new owner of the mark must have an entitlement to file in one of the Madrid member countries.
Changes to your basic mark
Any changes to your basic mark within 5 years of the filing of your international registration may result in changes to your international registration.
For example, if within 5 years of the filing of your international registration your basic mark abandons, is voluntarily cancelled, or is found invalid, your international registration will also be cancelled.
In addition, any changes you make to the specification of the basic mark may also result in limitations to your international registration.
These types of changes to international registrations are very rare, and you may also have the option of ‘transformation’ if your international registration is cancelled or limited.
You may assign your basic mark independently of the international registration. However any changes made to the basic mark (even by the new owner) within 5 years of filing the international registration may still result in the international registration being cancelled or limited.
If you want to divide or merge your basic mark, you can do this via our case management facility in the usual way. If less than 5 years has passed from the international registration filing date, we'll notify WIPO that a division or merger of the basic mark has happened. This has no impact on your international registration, and is done for information purposes only.