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How to change ownership of a trade mark

Duration: 5:03

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The video opens on a title card showing the Intellectual Property Office of New Zealand logo. This fades to another screen showing the words “How to change ownership of a trade mark”.

We see a man standing in an office space, wearing a hat and jacket. He talks directly to the camera “Did you know that trade marks are assets that can be bought and sold? And that it's free to change ownership on the IPONZ website from one legal entity to another? Well, it's all true. What if you own a trade mark, but change your name? Great question. That's not actually considered a change of ownership, because the same entity owns the mark. You just need to change the name on the client record. If your business has merged, or changed it’s type of business structure, that usually requires a change of ownership. A good check is if your company number or NZBN is different, then it means there is a change of ownership required. So let's say it is a change of ownership, not a name change. What happens then?”

We see a user navigating the IPONZ website, logging in, and then a sample deed of assignment document as the man continues speaking “You'll need a RealMe® login, and you'll need to be registered on the IPONZ website too. Plus, you'll need a legal document as proof of the change of ownership. This could be a deed of assignment, or a sale and purchase agreement. Whatever documents you choose must contain the names and signatures of both parties to the transaction, and the date on which the assignment or transmission took effect.”

We see the man speaking directly to camera again, then a sample statutory declaration document on screen “It should also include contact details for both parties and the terms of agreement or sale.” If neither types of document is applicable, you may submit a statutory declaration stating that the trade mark is owned by a proprietor who is different from the registered owner or the applicant.”

We see a woman sitting at a table using a laptop computer, then a user navigating through the IPONZ case management system to the change trade mark owner section, finding their trade mark and submitting the request. “Once you've got your legal documents or declaration ready, log into the IPONZ website, find the trade mark section on the left of your screen, and head to the trade mark change request page. Under change owner, click the select case for assignment button. You should see the search for a trade mark page. Select the mark you are changing ownership of. From there, you should see a change of ownership form. Next, you’ll enter a client reference, which can be anything you want.”

We alternate between seeing the man speaking to camera and a user navigating through the online form, as the different options are demonstrated on screen. “Cool. Let's select the option that applies to you. Option 1, the owner, or new owner. This option will list you as the new owner of the case. If you have more than one user record, your default client will be listed here. You can select the correct new owner by clicking the remove button, then searching for the correct new owner. See our becoming a registered user video for more information on default clients.”

“Option 2, acting on behalf of the owner. An agent is anyone authorised to act on behalf of the owner of the trade mark. Agents may be lawyers or intellectual property experts hired for the job, or a friend helping out. You don’t need any formal qualifications to act as an agent. This option will allow you to complete the transfer of the case to a new owner, and will list you as the new agent for the case. You’ll need to search for the new owner of the trade mark.”

“Option 3, acting on behalf of the owner, for this request only. This option will allow you to transfer the case to a new owner, but it won't list you as the new agent for the case. You'll need to search for the new owner for the trade mark. Keep in mind that you’ll need proof that you’ve been authorised to make this change with a signed agreement between you and the owner. “

We see the man speaking to camera again “If this case has an existing agent, this agent will be kept, and your documentation should include a new signed agreement between the new owner and this existing agent, as well.”

The authorisation of agent form is shown on screen as he continues speaking. “We recommend our template agent authorization form be filled out for this purpose. For A PDF copy of this form, follow the link on the learning summary.”

We alternate between seeing the man speaking to camera, and the user adding their documents and submitting their request online “Okay, so you've selected the best option for you. Add all the documents you need to support your request. It might be in the form of a sales and purchase agreement, or proof of merger of companies. Once you've done that, you are ready to hit submit. The change of ownership will be sent to the examiner of the mark who will have 15 working days to complete the request.

We alternate between seeing the man speaking to camera, and a notification from IPONZ acknowledging the request “It will either be validated and accepted, or refused. If it is refused, they'll let you know why, and you can submit a new request. If the request is urgent, make sure you have your case number handy, and give IPONZ a call, so we can ask the examiner to speed up the request.”

The image cuts to an end title screen showing the Intellectual Property Office of New Zealand and Digital Boost logos. The text on screen lists the IPONZ contact phone numbers, “Freephone within New Zealand 0508 447 669, Freephone from Australia 1800 796 338, International callers +64 3 962 2607”. The man continues speaking “Still have questions? The Intellectual Property Office of New Zealand is open between 8:30 AM and 5:00 PM Monday to Friday.”

The text changes to show the website address of the contact us page on the IPONZ website with the words “For less urgent matters iponz.govt.nz/contact-us We’ll be in touch within 7 working days” and the man continues speaking “For less urgent matters, you can head to the contact us page on the IPONZ website. We should be in touch within seven working days. The contact us page also has a common query section, so be sure to check this out, in case it addresses your question or concern.”

The video finishes by showing the logo of the Ministry of Business, Innovation and Employment, and the logo of the New Zealand Government.

Under section 82(2) of the Trade Marks Act 2002 the owner or applicant of a trade mark may assign or transmit ownership of the mark.

You can only change the ownership of registered trade marks or current applications. This includes trade marks with the status of ‘Registered - past expiry date’.

Requests to assign or transmit the ownership of a trade mark must be submitted through our online case management facility. The Commissioner will accept any supporting documentation that contains all the details required by the regulations. If you need assistance, contact us during business hours.

Note that new owners must have a valid address for service in New Zealand or Australia, as this is a requirement under regulation 13 of the Trade Marks Regulations 2003.

Before you begin

To file a change of ownership request, you must have a digital or scanned document that provides proof of the assignee’s title to the trade mark.

Your document can be a deed of assignment or a sale and purchase agreement. This document must contain the signature of both parties to the transaction, and the date on which the assignment or transmission took effect.

• View a sample deed of assignment [PDF, 117 KB] [72 KB PDF]

If neither of these documents is applicable, you may submit a statutory declaration stating that the trade mark is owned by a proprietor who is different from the registered owner or the applicant.

• View a sample statutory declaration (for an application that was filed in the wrong name) [PDF, 82 KB] [83 KB PDF]

How to file your assignment request

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Under Trade Mark, select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays.
3. Under Change Owner, click the Select case(s) for Assignment button. Search for and select one or more trade marks for which you want to change the owner. The Record a Change of Ownership on Trade Mark(s) form displays.
4. Enter your Client Reference.
5. Select whether you are:
   • The owner (new owner). This option will list you as the new owner of the case. If you are affiliated with multiple organisations, you can select the correct new owner by clicking the Remove button, then clicking the Search button and searching for the correct new owner.
   • Acting on behalf of the owner. This option will allow you to facilitate the transfer of the case to a new owner, and will list you as the new agent for the case. You will need to search for the new owner for the trade mark. If you are not acting as agent for this trade mark, you may select the Remove button, then click on the Search button and search for the correct agent.
   • Acting on behalf of the owner for this request only. This option will allow you to facilitate the transfer of the case to a new owner, but will not list you as the new agent for the case. You will need to search for the new owner for the trade mark. You will also need to provide documentation indicating that you have been authorised to facilitate this transfer. If this case has an existing agent, this agent will be retained, and your documentation should include an agreement between the new owner and this existing agent.

• Add the necessary documentary evidence to support your request, then click the Submit button to complete the form.

Partial assignments

If the assignment or transmission of the trade mark relates to only some of the goods and/or services, please make a Division/Partial Change of Ownership request first: The trade mark must first be divided into two or more separate marks, and then one or more of the resulting marks must be assigned or transmitted to the new owner(s).

You can make a request online to modify a name of an entity in the trade mark register. There is no charge for this service. Note that you must provide supporting documentation confirming the name change, such as a certificate from the Registrar of Companies.

In order to update the name of an owner or agent, you must make the change to the register entry for that owner or agent – not to the trade mark case itself. Once the name of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain Client from the My Account menu of your Inbox. The Search IPONZ Client Database page displays.
3. Search for your client record. If you are a New Zealand company, search for your name or NZBN number in the Search NZBN Register field. Otherwise, modify your name in the Name field.
4. Select Add in the Document section to upload your supporting documentation.
5. Select Submit to complete your request.

You can make a request for an agent to be assigned to, or changed for, a trade mark. There is no charge for this service.

Note – you must provide supporting documentation confirming the agent is authorised to act, for example, a document signed by the applicant or owner stating you have authority. See our practice guideline for more information: Agents

If you are changing or adding an agent to an international registration select Maintain an International Registration Designating NZ (NZD) click Change Agent and follow the instructions from step 3 below.

1. You will need to be logged on as a registered user of the website.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page will display.
3. Click Select cases for Change Agent from the Change Agent section to Search Trade Mark Case(s). You can search for one or more trade marks. Once you have identified the correct cases tick the check box for each case. Then click the Select button.
4. Enter your Client Reference.
5. Select whether you are the new agent or an additional agent then search for your agent details.
   Note - if the new agent is not the same for each case, select each case to modify it individually.
6. Select the Add button in the Documentary Evidence section to upload your Agent Authorisation documentation. See our sample form to help you with this: Agent Authority [174 KB PDF] [PDF, 137 KB].
7. Select Submit to complete your request.

Removing an agent:

If you are already the agent for an IP case you will be given the additional option to remove yourself as the agent.

When an address for service, business or residential address, or a communication address has changed, a notice of change of address must be filed with the Commissioner of patents, trade marks and designs. 

In order to update the address of an owner or agent, you must make the change to the register entry for that owner or agent – not to the trade mark case itself. Once the address of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

All national trade marks must have an address for service in New Zealand.

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain Client from the User menu of your Inbox. The Search Client page displays.
3. Search for your client record and select Edit to modify. You can add or remove addresses.
4. Submit to complete your changes.

For guidance on how to renew a trade mark registration, please visit our Renew a Trade Mark page.

If a trade mark registration is not renewed by its renewal due date, the status of the trade mark registration will change to ‘Registered - past expiry date’. A trade mark with ‘Registered - past expiry date’ status can be restored by renewing it within 6 months of its renewal due date.

Trade marks not renewed before the expiry of the renewal due date are given the status ‘Registered - past expiry date’.

A trade mark registration with the ‘Registered - past expiry date’ status may only be restored to the register if it is renewed within 6 months of its last renewal due date.

An expired trade mark that is beyond 6 months of its last renewal due date may no longer be restored. If you still wish to seek protection for an expired non-restorable trade mark, you will need to file a new trade mark application.

For guidance on how to restore a ‘Registered - past expiry date’ trade mark, please visit our Renew a Trade Mark page.

You can apply to merge two or more trade mark applications or registrations into one.

1. Examination

The Commissioner examines all requests to merge separate trade mark applications or registrations to make sure they:

• are for the same mark or series of marks
• have the same filing date and convention priority date (if any)
• have the same status, e.g. ‘Accepted’, ‘Registered’, or ‘Registered - past expiry date’
• are in the name of the same applicant or owner
• are classified according to the same edition of the Nice Classification.

For more information about these requirements, see Practice guideline 18: Merger.

2. Reflection in the register

You can view the details of successfully merged applications or registrations through the online register.

Merged marks take on the lowest trade mark number. Any changes to the application or registration are reflected in the details of that trade mark. The details of the other trade marks are viewable as a historic record; however, the status of those marks or applications is noted as Merged. The application or registration numbers also appear in the Related Trade Marks field of all marks.

3. Rejection

If the details of an application for merger are not in order, you’ll be sent a Notice of Rejection of Merger, stating the grounds on which the Commissioner rejects the application to merge the trade marks.

To request to merge trade marks:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select cases(s) for Merge. The Search Trade Mark Case screen displays.
4. Search for the trade marks that you wish to merge, and then Select the correct cases.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Submit.
7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

A division application is a request to create a new trade mark case by dividing some parts of the original application/registration (parent) into a secondary application (child). There is further information in our trade mark division practice guideline.

To request a division:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays.
3. Select Division/Partial Change of Ownership.
4. Search for the trade mark application you would like to amend then Select.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Upload documentation that supports your request.
7. Click Submit.

After your trade mark is registered, you can request to cancel its registration at any time. Note that once a mark is cancelled, it is not possible to reinstate the mark’s previous status. All rights attached to the mark will be immediately relinquished.

There is no charge for this service.

To cancel a registered trade mark:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select Cancellation. The Request a Cancellation of Trade Mark screen displays.
4. Select case(s) for Cancellation from the Cancellation section. Search for one or more Trade Marks that you want to cancel, and then Select the correct cases.
5. Check Confirm cancellation of trade mark(s).
6. Submit.
7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

After your trade mark is registered, you can request to make limited amendments to remove classes and descriptions of goods or services; enter, remove or alter a memorandum, and alter regulations for a certification mark, or correct an error or omission in the register. 

To request an alteration or rectification:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select Alteration/Rectification. The Search Trade Mark Case screen displays.
4. Search for the trade mark that you want to amend, and then Select the correct case.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Submit.
7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

If you are the owner or the agent for a registered trade mark, you can regenerate its certificate of registration and have the new copy added to your case. This may be useful if your trade mark has recently changed ownership, or has had any updated information that would be reflected in its certificate.

The regenerated certificate of registration will reflect your trade mark as it is currently recorded in the register.

If your trade mark is in ‘Registered - past expiry date’ status due to the non-payment of a renewal fee, we recommend that you first pay the renewal fee before regenerating the certificate of registration.

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select Regenerate Registration Certificate. The Search Trade Mark Case screen displays.
4. Search for the trade mark whose certificate you wish to regenerate, and then Select the correct case.
5. Submit.
6. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

A regenerated certificate of registration will be produced and added to the documents for your trade mark case. A corresponding email notification and discussion will then be sent to the user in charge for that case.

Play video

How to respond to a compliance report

Duration: 2:40

View transcript

The video opens on a title card showing the Intellectual Property Office of New Zealand logo. This fades to another screen showing the words “How to respond to a compliance report”.

We see a man standing in an office space, wearing a hat and jacket. He talks directly to the camera “So, you've submitted a trade mark application. Nice job! But what you got back was a compliance report instead of an acceptance. Now, don't panic, we'll talk about what to do next.” We see a woman using a laptop as he continues speaking, then we see a notification of a compliance report on a screen. “Every new trade mark has to comply with the Trade Marks Act 2002 and Trade Marks Regulations 2003, and it needs to be unique. When you receive a compliance report, it will list the reasons why it couldn't be accepted right away. No worries. We'll just need to tweak a few things and resubmit.”

We see the woman who is using the computer, then we see on screen as the user navigates the IPONZ, logs in, and opens the compliance report task. “Okay, let's start with where your compliance report is. Log into the IPONZ website and head to your inbox. Then look for the task named Respond to TM Compliance Report. Your trade mark case number will be right next to it. Click on the task to open the task.”

We see on screen the task, and then the compliance report itself. “In the task, you'll find a copy of your compliance report. It will outline the objections raised and provide some information on how you could overcome them or respond.”

We see the man speaking to camera again, then the IPONZ website where the user can upload their letter responding to the compliance report. “When you've considered how you want to respond, you can write a letter and upload it as an objection response document by clicking on the Add button and browsing your computer for the document. Depending on the objections, there may be suggestions listed on the screen to help you address them.”

We see the man speaking to camera again. “These might be things like amending the trade mark for corrections, editing your goods and services specification, or requesting an extension of time.”

We see the woman from before using their laptop again, before coming back to the mean speaking to camera “In your response, explain the steps you’ve taken to overcome the objection. When you’re ready, submit your response and it will be sent to the examiner for re-examination. You should hear back within 15 working days.”

We see the samples of a compliance report and a notice of acceptance on screen, then back to the man speaking to camera. “Once the examiner has taken another look, you'll either get a notice of acceptance or another compliance report. If you need a bit of help to respond, you can always reach out to the IPONZ contact centre or check out the practice guidelines on their website. It may also help to find an intellectual property professional for advice tailored to your specific situation.”

The image cuts to an end title screen showing the Intellectual Property Office of New Zealand and Digital Boost logos. The text on screen lists the IPONZ contact phone numbers, “Freephone within New Zealand 0508 447 669, Freephone from Australia 1800 796 338, International callers +64 3 962 2607”. The man continues speaking “Still have questions? The Intellectual Property Office of New Zealand is open between 8:30 a.m. and 5:00 p.m. Monday to Friday.”

The text changes to show the website address of the contact us page on the IPONZ website with the words “For less urgent matters iponz.govt.nz/contact-us We’ll be in touch within 7 working days” and the man continues speaking “For less urgent matters, you can head to the Contact Us page on the IPONZ website. We should be in touch within seven working days. The Contact Us page also has a common query section, so be sure to check this out in case it addresses your question or concern.”

The video finishes by showing the logo of the Ministry of Business, Innovation and Employment, and the logo of the New Zealand Government.

All trade mark applications are examined to make sure that these fully comply with the Trade Marks Act 2002 (“the Act”). If an examiner assesses your application and concludes that it doesn’t meet these compliance requirements, they will provide you with a Compliance Report for your application.

A Compliance Report is a formal letter that details the parts of your application that don't comply with the Act. Whenever you receive a Compliance Report, you have an opportunity to respond to any of the issues raised. This must be done within the deadline that is given in the letter.

You must provide a response to a Compliance Report for your trade mark application in order for its examination to proceed. If you make changes to your trade mark application in response to any issues raised, please note that you will still need to provide a separate response for your Compliance Report.

For more information, please see our Respond to Compliance Report page.

To view and/or file a response to a trade mark compliance report:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, look for the Respond to TM Compliance Report task for your trade mark application.
3. Select the Respond to TM Compliance Report link to open this. The Trade Mark - Respond to TM Compliance Report screen displays.
4. Under the Defects Report section, you may review your current compliance report by selecting its file here.
5. Under Objection Response Documents, select Add to upload your response to your compliance report. Once your response documents have been loaded, select Continue to return to the Trade Mark - Respond to TM Compliance Report screen.
6. Select Submit to submit your response.

If you need additional time to respond to a trade mark compliance report, you may request an extension of time. If your extension of time request is accepted by the examiner, this will extend the deadline by which you must provide a response.

You must provide clear and precise reasons to justify the request and the length of time requested.

To request an extension of time to respond to a trade mark compliance report:

1. Log on as a registered user of the website.
2. In your Inbox, under the Tasks section, look for the Respond to TM Compliance Report task for your trade mark application.
3. Select the Respond to TM Compliance Report link to open this. The Trade Mark - Respond to TM Compliance Report screen displays.
4. Under the options at the bottom of the Trade Mark - Respond to TM Compliance Report screen, click the Request an Extension of Time The Request a Trade Mark Extension of Time screen displays.
5. In the Request a Trade Mark Extension of Time screen:
   • Under Reference, enter a title or short description for this request that you can recognise.
   • Under Case(s), confirm that the displayed trade mark application is the one for which you are requesting an extension of time.
   • Under New Deadline Requested, enter the new deadline by which you wish to respond to your compliance report. The new deadline can’t be earlier than your current deadline.
   • Under Justification, click the Add button to upload your document containing your substantive reasons and supporting information for the extension of time.
   • Select Submit to complete your request.

Next steps

Once your request for an extension of time has been submitted, it will be reviewed by our office within 15 working days. Your Respond to TM Compliance Report task will remain active during this time, and you may provide a response to this task while it is still active.

If your request is validated, your Respond to TM Compliance Report task will be updated to reflect the new deadline.

If your request is refused, your Respond to TM Compliance Report task will retain its original deadline. If the deadline has passed by this time, this may cause your task to expire and your trade mark application to become abandoned.

New Zealand uses the International Classification of Goods and Services (Nice Classification). It is important to ensure that you have correctly classified the goods and services in your specification because this specification will define the scope of your trade mark protection upon registration.

Tip: Use our Trade Mark Specification Builder to search more than 60,000 pre-approved goods and services terms and which class they’re in.

To amend your specification:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Change Goods and Services Specification.
4. Search for the trade mark application number.
5. Edit the specification.
6. Submit the change.

Please note: you can only add a class where an examiner has identified that there are incorrectly classified goods or services. The goods and services to which the additional class or classes relate must be within the original specification.

Our examination process has more information about classifying your goods and/or services.

You may apply for continued processing on an abandoned application within two months of the trade mark going abandoned. In order for the application to be restored to examination status, you must upload a response in the request which relates to all outstanding objections raised in relation to your application for consideration. A continued processing request can only be successfully processed once per application. To request continued processing:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select Continued Processing. The Search Trade Mark Case screen displays.
4. Search for the trade mark that you wish to amend, and then Select the correct case.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Select Add in the Documentary Evidence section to upload your compliance report response. Note that this response must include a response in relation to all the substantive objections set out in the previous compliance report(s).
7. Submit to complete your request.

If a trade mark application contains any foreign words or characters, both a translation and a transliteration of these must be provided in order for the application to be considered for acceptance. These can be provided in an Amendment request.

• A translation is a direct English-language equivalent of the foreign word or character.
• A transliteration is a pronunciation of the foreign word or character as expressed in Latin characters.

For example:

To add a translation and/or a transliteration to a national trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays. Select Amendment.
3. The Search Trade Mark Case(s) screen displays. Search for and select the trade mark application that you wish to amend, which will bring you to the Request an Amendment on a Trade Mark page.
4. Enter a Client Reference. This can be a name or short description of your transaction.
5. Under English Translation, enter the translation for your application.
6. Under Transliteration, enter the transliteration for your application.
7. Select Submit.
8. If your trade mark application has an outstanding Respond to Compliance Report task, you will be prompted to select whether you would like to:
   • Respond to the examination issues later – This will submit your amendment request without updating your Respond to Compliance Report task. You will need to separately respond to this task for examination to continue.
   • Also complete examination response task – This will submit your amendment request, and will mark your Respond to Compliance Report task as completed (allowing examination to continue).

For more information see section 3.7 of our examination of trade mark applications practice guideline.

We may issue a compliance report if your application for a series mark does not meet the requirements. Our practice guidelines on Series Marks contain more information on how we examine these applications.

Series Marks

To amend the marks in a series:

1. Log on as a registered user of the website.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Request an Amendment.
4. If you intend to reduce your application to a single mark (and change this into a non-series mark):
   • Amend the Mark Information so that Series is set to “No”.
   • Amend your Mark Name, Picture or other fields to reflect the one mark with which you wish to proceed.
5. If you intend to remove some marks from your application (and keep this as a series mark):
   • Amend the Mark Information so that the Number of Marks in this Series is set to the correct number.
   • Amend your Mark Name, Picture or other fields to reflect the marks with which you wish to proceed.
6. Submit the change.

A trade mark application must contain a clear representation of the mark in order for the application to be considered for acceptance. For some applications, this will require a graphic representation in which the mark is clearly and unambiguously displayed.

Representations are required at the time of filing a trade mark application. However, if clearer versions of these representations are needed, these can also be provided in an Amendment request.

To add or change the representations in a national trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays. Select Amendment.
3. The Search Trade Mark Case screen displays. Search for and select the trade mark application that you wish to amend, which will bring you to the Request an Amendment on a Trade Mark page.
4. Enter a Client Reference. This can be a name or short description of your transaction.
5. Under Picture or Device (depending on your type of trade mark), remove the existing representation(s) and upload your new representation(s) as required.
6. Select Submit.
7. If your trade mark application has an outstanding Respond to Compliance Report task, you will be prompted to select whether you would like to:
   • Respond to the examination issues later – This will submit your amendment request without updating your Respond to Compliance Report task. You will need to separately respond to this task for examination to continue.
   • Also complete examination response task – This will submit your amendment request, and will mark your Respond to Compliance Report task as completed (allowing examination to continue).

Some trade mark applications must contain a description of the mark in order for the application to be considered for acceptance. This is usually the case if the mark is non-traditional in nature (e.g. a three-dimensional representation, a colour, or a sound), and can be provided in an Amendment request.

To add or change the mark description for a national trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays. Select Amendment.
3. The Search Trade Mark Case screen displays. Search for and select the trade mark application that you wish to amend, which will bring you to the Request an Amendment on a Trade Mark page.
4. Enter a Client Reference. This can be a name or short description of your transaction.
5. Under Mark Description , enter the description of your mark.
6. Select Submit.
7. If your trade mark application has an outstanding Respond to Compliance Report task, you will be prompted to select whether you would like to:
   • Respond to the examination issues later – This will submit your amendment request without updating your Respond to Compliance Report task. You will need to separately respond to this task for examination to continue.
   • Also complete examination response task – This will submit your amendment request, and will mark your Respond to Compliance Report task as completed (allowing examination to continue).

You can apply to merge two or more trade mark applications or registrations into one.

1. Examination

The Commissioner examines all requests to merge separate trade mark applications or registrations to make sure they:

• are for the same mark or series of marks
• have the same filing date and convention priority date (if any)
• have the same status, e.g. ‘Accepted’, ‘Registered’, or ‘Registered - past expiry date’
• are in the name of the same applicant or owner
• are classified according to the same edition of the Nice Classification.

For more information about these requirements, see Practice guideline 18: Merger.

2. Reflection in the register

You can view the details of successfully merged applications or registrations through the online register.

Merged marks take on the lowest trade mark number. Any changes to the application or registration are reflected in the details of that trade mark. The details of the other trade marks are viewable as a historic record; however, the status of those marks or applications is noted as Merged. The application or registration numbers also appear in the Related Trade Marks field of all marks.

3. Rejection

If the details of an application for merger are not in order, you’ll be sent a Notice of Rejection of Merger, stating the grounds on which the Commissioner rejects the application to merge the trade marks.

To request to merge trade marks:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select cases(s) for Merge. The Search Trade Mark Case screen displays.
4. Search for the trade marks that you wish to merge, and then Select the correct cases.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Submit.
7. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

A division application is a request to create a new trade mark case by dividing some parts of the original application/registration (parent) into a secondary application (child). There is further information in our trade mark division practice guideline.

To request a division:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays.
3. Select Division/Partial Change of Ownership.
4. Search for the trade mark application you would like to amend then Select.
5. Enter your Client Reference and make the changes following the onscreen help.
6. Upload documentation that supports your request.
7. Click Submit.

In order for a trade mark application to be considered for acceptance, it must include a Statement of Use – a declaration by the applicant that the trade mark is either being used, or is proposed to be used.

Applicants do not have to provide customised statements for this purpose – a default Statement of Use can be selected at the time of filing a trade mark application. This can also be selected as part of an Amendment request.

To update the Statement of Use for a national trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Trade Mark Change Request(s) page displays. Select Amendment.
3. The Search Trade Mark Case screen displays. Search for and select the trade mark application that you wish to amend, which will bring you to the Request an Amendment on a Trade Mark page.
4. Enter a Client Reference. This can be a name or short description of your transaction.
5. Under Statement of Use, select the option that reads “The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services.”
6. Select Submit.
7. If your trade mark application has an outstanding Respond to Compliance Report task, you will be prompted to select whether you would like to:
   • Respond to the examination issues later – This will submit your amendment request without updating your Respond to Compliance Report task. You will need to separately respond to this task for examination to continue.
   • Also complete examination response task – This will submit your amendment request, and will mark your Respond to Compliance Report task as completed (allowing examination to continue).

New Zealand is a signatory to the Paris Convention for the Protection of Industrial Property, which allows applicants in signatory countries to file further applications in any of the other signatory countries and receive the priority date of the original application. There is further information in our priority of trade mark applications practice guideline.

Our examiners may require amended information if your convention priority details include:

• an overseas filing date outside six month period
• no overseas registration, or a claim based from a non-convention country
• different or partial goods/services from the convention application

If you would like to add a claim to convention priority, this must be done so within two days of the application being filed in New Zealand.

To amend the convention details:

1. Log on as a registered user of the website. See becoming a registered user.
2. Select Maintain a Trade Mark.
3. Select Request an Amendment.
4. Search for the trade mark application number.
5. Choose Add, Edit, or Remove and update the Convention Priority information.
6. Submit the change.

There are three options on the trade mark application form for mark nature.

• Standard trade marks distinguish the goods or services that originate from a single party.
• Collective trade marks indicate the commercial origin of goods or services of members of an association, rather than origin in one party.
• Certification trade marks indicate independent certification that the goods or services, or their providers, have certain defined characteristics.

To amend the mark nature of your trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Request an Amendment.
4. In the Mark Information section, under Nature, choose the appropriate mark nature.
5. Submit the change.

There is further information about collective marks and certification marks in our practice guidelines.

Certification trade marks denote independent certification that the goods or services they are used for possess certain defined characteristics.

Certification mark applicants must provide draft regulations governing the use of the certification mark for approval.

To file draft regulations for a certification mark:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Under Objection Response Documents, select Add to upload documents in response to the compliance report.
4. Confirm the document type is Objection response
5. Select Add files… to choose and add your file
6. When all needed files have been added choose Continue in the lower right. This will return you to the Respond to TM Compliance Report screen.
7. Submit the change.

A certification mark should indicate whether it is such a trade mark. Where it is not readily apparent from the mark itself, the applicant will be asked to include the words “certification mark” or an abbreviation of these words in the mark. Alternately, a condition of use can be entered that the trade mark will always be used with a clear indication that it is a certification mark.

To provide a representation of the mark indicating that it is a certification mark:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Request an amendment.
4. Under Mark Information, add a new representation indicating it is a certification mark. e.g. “cert TM”, “certification TM”, “certification mark”.
5. Submit the change.

There is further information in our certification marks practice guideline.

To enter a condition of use for your trade mark application:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Request an Amendment.
4. Search for the trade mark application number.
5. Edit the Conditions field.
6. Submit the change.

The mark name field in an application may be amended in limited circumstances. For example, our examiners may require the mark name reflects the words visible in the mark image so that the mark can be searched by the words in the mark image. Note: Amendments to the mark name field will not be accepted where there has been a change of mind, or to overcome an objection.

To amend the mark name:

1. Log on as a registered user of the website. See becoming a registered user.
2. In your Inbox, under the Tasks section, select the Respond to TM Compliance Report task for your trade mark application.
3. Select Request an Amendment.
4. Search for the trade mark application number.
5. Amend the Mark Name field.
6. Submit the change.

You can place your application in abeyance or suspension pending the outcome of opposition proceedings for a prior application or cancellation/revocation/invalidity proceedings to do with a prior registration. To do this, you must notify the Commissioner before the expiry of the deadline set in the compliance report. After the facts are verified, the Commissioner places the application in abeyance pending the outcome of the proceedings. To request abeyance of an application:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select Abeyance.
4. Search for the application to be placed into abeyance, and then Select the correct case. The Request Abeyance on a Trade Mark screen displays.
5. Enter your Client Reference.
6. Select Search to find the application(s) that are under-proceedings and which have bearing on your application. Choose the results and Select. The Request Abeyance screen displays.
7. You can upload a document or add a file note to support your request, and then Select.
8. The Request Trade Mark Change screen displays and a confirmation Info box appears. Click OK to close the box.

You can request to withdraw your application for a trade mark. Note that once a mark is withdrawn, it is not possible to reinstate the mark’s previous status. All rights attached to the mark, granted through the application, will be immediately relinquished.

There is no charge for this service.

To withdraw an application:

1. Log on as a registered user of the website. Find out more about becoming a registered user.
2. Select Maintain a Trade Mark from the left hand menu of your Inbox. The Request Trade Mark Change page displays.
3. Select cases(s) for Withdrawal from the Withdrawal section to Search Trade Mark Case(s). Search for one or more Trade Marks that you want to withdraw, and then Select correct cases.
4. Check the Confirm withdrawal of trade mark(s).
5. Submit.
6. You will return to the Request Trade Mark Change page and a confirmation Info box will display. Select OK to close the box.