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If you have a question or would like more information, please email us at wellington@ajpark.com with details about yourself or your company and what you do. We will find the right person to handle your request.

Where do I start?

If you are visiting our website, you probably have a question about intellectual property, or a problem about some aspect of intellectual property that needs to be sorted. You have come to the right place.

A J Park is a specialist intellectual property firm. We help businesses protect and enforce their intellectual property rights. You can contact us about any aspect of intellectual property by email.

But what is intellectual property?
Logos, brands and trade marks
Domain names and e-commerce
Inventions and patents
Copyright
Registered designs
Franchising and licensing

1: But what is intellectual property?
Intellectual property sounds like a complicated legal term. Basically it means any aspect of a business that has to do with the following sorts of things:

trade marks, brands and logos
domain names and e-commerce
inventions and patents
copyright
registered designs
plant variety rights
trade secrets and confidential information
passing off and the Fair Trading Act
the Commerce Act
franchising and licensing
computer law
marketing and distribution agreements

Here is some basic information about our services in some of these areas to get you started:

2: Logos, brands and trade marks
We know a lot about logos and what makes or breaks a brand. If your business is in the process of creating a logo or brand for your products or services, we can provide guidance on ways to make it as strong as possible. We can advise you on ways to use your logo and/or brand so that they will become your most valuable business assets.

If your business uses a trade mark (and your logo or brand can be a trade mark too), we can search the trade mark register in New Zealand or anywhere around the world to check if some one else has already registered the same or a similar trade mark. We can advise you on whether your trade mark meets the legal criteria for registration, and if it does, we can help you register it in New Zealand or any other country. If you think someone else is using your trade mark and you want them to stop, we know about all the options available to you and we can help you with the one that is right for your business. Perhaps someone is threatening you with legal action on the basis that you are infringing their trade mark, logo or brand name – we can help you resolve that problem too!

For specific advice relating to logos, brands and trade marks contact one of our branding or trade mark specialists in our Wellington or Auckland

3: Domain names and e-commerce
Nowadays, everyone is doing electronic business. We can help your business with the basics like setting up a website and registering your domain name or taking action against “cyber-squatters” who have already reserved a name you want to use. You may have received a letter from someone claiming that your website or domain name is too similar to theirs and that customers are getting confused. Perhaps you want to commence an action against someone who is copying features of your website. In either case, one of our experts will be able to help you.

We can also advise on the internet service provider and customer contracts you will need to put in place to trade on the internet. And then there’s the more complex issues you’ll need to consider when you launch your business into cyberspace, such as tax law, copyright law, privacy laws, consumer protection laws and foreign laws (just to name a few!). We have a team of experts to help you work through these important issues and advise you on what is relevant to your business.

For answers to your specific questions about domain names, websites and doing business on the internet, please contact Damian Broadley.

4: Inventions and patents
When you or one of your employees comes up with an “invention”, it is important to treat it confidentially and seek professional advice early. Patent protection is available for new ideas, but you could blow your chances of successfully securing patent protection and the right to exclusively use your idea commercially if you disclose or use the invention before filing a patent application. You may also unwittingly be infringing some one else’s patent protection if you go ahead with manufacturing or importing a product for which some one else has already registered a patent. A J Park can tell you when it’s safe to use or disclose your idea and we’ll help with the patenting process from beginning to end. We are able to help you resolve any infringement claims quickly so you can get on with your core business.

We can advise you on whether your invention meets the legal requirements for a patent and we can search to see if your idea has already been patented anywhere in the world. We can work with you to prepare a specification for filing a patent in New Zealand and/or overseas. Patenting is an expensive process and no one wants to waste money. We will make sure you have the best chances of success before you commit financial resources. Once filed, our team of experts work through the examination process to help get your patent granted and can advise you on commercialising your invention.

For answers to your specific questions about patents and doing business on the internet, contact one of our experts.

5: Copyright
Contrary to popular belief, you can’t “register” copyright. Copyright – or the right to stop others from copying your ideas - automatically exists in any artistic, dramatic, literary or musical work. Copyright also exists in electronic works such as computer programmes, software and databases. There is also copyright in sound recordings, photos, films, videos, broadcasts and cable programmes and in multi-media productions and interactive digital works.

You can talk to our experts about any copyright problem - whether you are worried about your actions infringing someone else’s copyright or if you want to stop someone else from copying yours. We can show you the steps you need to take so that your copyright protection is as strong as possible and that it will be easy to prove if you have to. If you want to use something like a musical recording or play script, or if you want to copy some or all of a literary work or other work in which there is copyright, we can show you the steps you need to take to avoid facing legal action for copyright infringement.

6: Registered designs
If you are the designer or manufacturer of three dimensional industrial or domestic goods (like furniture or appliances) and some two dimensional items (like wallpaper and textiles) then you need to know about registered designs. It is possible to use design registration to stop others from copying the aesthetic features (like shape, configuration, pattern and ornamentation) of these products. Our experts can help you identify the features of your products which can be protected and assist with the preparation of an application to register your design.

If someone else is claiming that your product infringes their design, we can help you deal with that problem. And if you want to stop someone else from using your design, we’ll help sort it out.

For answers to your specific questions about registered designs, contact one of our experts.

7: Franchising and licensing
Many people don’t realise that we are experts in franchising and licensing agreements. These are agreements through which owners of intellectual property allow others to use their property in return for a fee or a royalty payment. Whether you are the owner of intellectual property or someone who wants to use another’s intellectual property for your business, we can help you to prepare, negotiate and complete an agreement specific to your needs.

For answers to your specific questions about license and franchise agreements, please contact someone in our commercial team.

Frequently asked questions

What is a trade mark?
What should I do before using a trade mark?
How do I protect my trade mark?
Why register a trade mark?
Can all trade marks be registered?
How long is the trade mark registration process?
How do you register a trade mark?
How long does a trade mark registration last?
What information do I need to give you to register my trade mark?
What’s the difference between ™ and �?
Does trade mark registration in New Zealand protect my rights in other countries?
Does registering a company name also mean that my trade mark is protected?
Can I register my domain name as a trade mark?
If I get a trade mark registration, can I license or sell it?
What is the term of a trade mark?
Can a trade mark be renewed after it has expired?

What is a patent?
What inventions can I get patent protection for?
What do you mean by a “new” invention?
How do you know if the invention is “new”?
How do I get a patent for my invention?
Does a New Zealand patent protect my invention in other countries?
What information do I need to provide you to file a patent application?
Who can apply for a patent?
How long does a patent last?
If I get a granted patent, can I license or sell it?
When are renewal fees due on patents?
Can patent renewal fees be paid late?

When are renewal fees due on designs?
What is a design registration?
What counts as an “article” in a design registration?
What do you mean by “new” in a design registration?
How do you know if the design is “new”?
Can I register a design that is wholly functional?
How do I register my design?
Does a New Zealand design registration protect my design in other countries?
What information do I need to provide you to get a design registration?
Who can apply for a registered design?
How long does a design registration last?
If I obtain a design registration, can I license or sell it?
Can design renewal fees be paid late?
Is it necessary to prove use in New Zealand?

1: What is a trade mark?
A trade mark is any sign that can distinguish the goods and services of one business from those of another. Trade marks include words, logos, slogans and even distinctive colours, product and packaging shapes, sounds and smells.
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2: What should I do before using a trade mark?
It is important to make sure your trade mark will not infringe any registered or unregistered trade marks which already exist. The consequences of not checking whether your trade mark is available for use before starting to use it can be serious. You could be sued for trade mark infringement, be forced to stop using the trade mark and be forced to pay damages and costs.

While a search is not only critical, it is also fairly complicated and should be conducted by a specialist. The specialist’s search will cover identical trade mark applications and registrations as well as any confusingly similar trade mark applications and registrations that could prevent you from using and registering your trade mark.

In some countries such as New Zealand, it is also possible to acquire rights in a trade mark through use. You should also carry out your own search of the market place to help ensure that there are no unregistered trade marks in use which may prevent you from using and registering your trade mark.

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4: Why register a trade mark?
There are a number of significant advantages in registering your trade marks including:
The exclusive right to use your trade mark in relation to the goods/services covered by the registration throughout the country covered by registration.
The ability to prevent the use or registration of the same or any confusingly similar trade mark for the same or any confusingly similar goods or services.
The prevention of infringement of a trade mark is easier, less time consuming and less costly in cases where a registered trade mark is held as opposed to proceedings based on unregistered rights.

In many countries, there are no rights in unregistered trade marks.
Registration allows for the effective appointment and control of licensees and franchisees.
Trade mark registration in one country can assist trade mark registration in other countries.

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5: Can all trade marks be registered?
No. A trade mark cannot be registered if it is not capable of distinguishing your goods or services from the same or similar goods or services of other businesses in the market place.

In general trade marks that cannot be registered include:
those that conflict with an earlier registered trade mark
descriptive words (e.g. “Car Magazine” for a magazine about cars)
laudatory words (e.g. “best” or “amazing”)
common surnames
common geographical names
deceptive names

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6: How long is the trade mark registration process?
The period from application to registration varies from country to country. In New Zealand it takes approximately 6-9 months assuming there are no major objections or oppositions.

Search before filing - it is important to conduct a search before filing any application to ensure the trade mark is available for use and registration.

Application - after filing the application, The Intellectual Property Office of New Zealand (IPONZ) will examine the application to ensure it complies with all relevant legal requirements. If IPONZ raises any objection to the application, it is possible to file arguments to persuade IPONZ to withdraw their objection. If the application is accepted, it will be published for opposition purposes.

Publication - once the trade mark has been accepted for registration, it will be published in the Patent Office Journal. Following publication, there is a three month opposition period. Within that period, anyone can lodge opposition to registration. If no opposition is filed, the trade mark will be registered.

Registration - once the three month opposition has expired and assuming no opposition is filed, a Certificate of Registration will be issued. The registration of your trade mark will be backdated to the date your application was filed which means your rights take effect from the filing date of the application.
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8: How long does a trade mark registration last?
A trade mark registration lasts for 10 years from the date of the application and can be renewed indefinitely for further periods of 10 years.
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9: What information do I need to give you to register my trade mark?
1. Applicant's name.
2. Applicant's address.
3. Applicant's nationality or if the applicant is a company, the country of incorporation.
4. A clear representation of the trade mark as it will be used.
5. List of the goods and services for which the trade mark will be used.
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10: What’s the difference between ™ and �?
You can use the ™ symbol to show that the trade mark referred to functions as a trade mark, but is not necessarily registered.

You can use the � symbol to show that the trade mark referred to is a registered trade mark. It is an offence in many countries, including New Zealand, to represent a trade mark as registered when it is not.
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11: Does trade mark registration in New Zealand protect my rights in other countries?
No. A New Zealand trade mark registration only covers New Zealand. If you use your trade mark in other countries, you need to obtain registration in those countries. An application for registration in other countries can be based on a New Zealand trade mark application. Provided the application is filed within six months after filing the New Zealand application, those overseas applications will be deemed to have been filed on the date the New Zealand application was filed.
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12: Does registering a company name also mean that my trade mark is protected?
No. Company law is different from trade mark law. You cannot stop someone from using a trade mark when it is the same as or similar to yours merely by registering your company name.
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13: Can I register my domain name as a trade mark?
Domain names are registered on a first come first served basis and take no account of trade marks that already exist.

If you can register your domain name as a trade mark, you should do so as soon as possible. Similarly, if you have a trade mark, it is worth registering it as a domain name if possible.
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14: If I get a trade mark registration, can I license or sell it?
Yes. A registered trade mark is a right which can be licensed or bought and sold just like any other property.
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15: What is the term of a trade mark?
Trade marks are registered for a term of ten years and can be renewed for subsequent 10 year periods.
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16: Can a trade mark be renewed after it has expired?
Trade Marks can be restored and renewed within 12 months from the date of expiration. No evidence is required for a restoration application.
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17: What is a patent?
A patent is a grant by the Government of a right for a specific term to prevent others from using an invention. In New Zealand this term is 20 years. The grant is given in return for disclosure of the invention to the public. The purpose of this monopoly is to give the patent owner a chance to at least recover development costs, thereby encouraging research, while ensuring the spread of technology for the benefit of the community.
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18: What inventions can I get patent protection for?
You can apply for patent protection for new products, machines, electronics, compositions, processes and software.
These inventions should be protected if they are likely to be commercially successful or important to industry. It is not possible to patent a bare idea without disclosing an example of how the idea may be put into practice.
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19: What do you mean by a “new” invention?
Your invention must be new and non-obvious over what has been described in printed publications or used up to the date the application for patent protection is filed at the patent office.
You must not publicly disclose or commercially exploit the invention before filing your patent application. In particular, the invention must not be advertised or sold, or used other than for reasonable trial or experiment.
You should talk to us before you talk to anyone else about your invention.
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20: How do you know if the invention is “new”?
We search New Zealand and foreign patent specifications before filing your patent application. This gives an indication of whether the invention is new and also whether commercialisation of the invention will infringe any patents granted in New Zealand or elsewhere.

Many thousands of patent specifications are held at the Intellectual Property Office of New Zealand and millions more overseas. We provide a computer patent searching service by online interrogation of computer databases that provide access to these patent specifications. Our searching is conducted by specialists in patent law. The searcher reviews potentially relevant abstracts and obtains hard copy patent documents. A further review for relevancy is then usually made before preparing a formal opinion as to patentability.
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21: How do I get a patent for my invention?
You need to file a patent application in New Zealand or elsewhere together with a patent specification. A patent application is normally filed first in New Zealand with a provisional specification which broadly describes the invention.

The provisional specification should include drawings (if appropriate) and some technical detail on at least a prototype of the invention or experimental results obtained. Where the US market is particularly important we sometimes file a patent application with a provisional specification in the US instead of or at the same time as filing a patent application in New Zealand.

Where a New Zealand patent application has been filed with a provisional specification, a complete specification should be filed within 12 months. The complete specification must include a detailed description and drawings (if appropriate), disclose the best method of performing the invention known to the applicant, and end with claims defining the essential features of the invention for which protection is sought. It may include any improvements and modifications made to the invention since filing the patent application originally with the provisional specification.

Once the complete specification has been filed, the patent application is examined by the New Zealand Patent Office for formal correctness of the application papers and novelty of the invention. If an examination report issues containing objections, these objections need to be dealt with before the application proceeds. Once all objections have been dealt with, the patent application is formally accepted and a granted patent issues provided that no third party opposes grant of the patent application.
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22: Does a New Zealand patent protect my invention in other countries?
A New Zealand patent protects the invention in New Zealand only. If you wish to protect the invention overseas, it is necessary to obtain a patent in each country where protection is required. There are two options for achieving this.

Under the first option individual patent applications are filed in the national Patent Office of each country in which protection is desired within 12 months of the date of filing of the New Zealand patent application. Each foreign application claims priority from the date of filing of the New Zealand application.

The second option seeks international patent protection using the Patent Cooperation Treaty (PCT). The PCT system simplifies the procedure for seeking patent protection for the invention in many countries outside New Zealand, at least at the 12 month stage. A single patent application (called an international patent application) is filed in English with the New Zealand Patent Office within 12 months of the date of filing the initial New Zealand patent application. The international patent application holds open the option of proceeding with separate patent applications in all member countries of the Patent Cooperation Treaty at a later date. In order to obtain patent protection in the desired countries, the “national” phase in each country must be entered within specified time limits. The national phase is essentially the same as filing separate national or regional applications in the individual countries concerned.
For both options 1 and 2, each national patent application is then examined for formal correctness of the application papers, novelty and obviousness, and other criteria.
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23: What information do I need to provide you to file a patent application?
We will need a brief description of the invention and it would be helpful if you could list the new features or improvements of the invention over what is already publicly known. It would help if you can provide a detailed description of the structure, function, composition and operation of the invention as appropriate. You should include sketches, photographs, engineering drawings, block circuit diagrams, experimental results and so on if possible.
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24: Who can apply for a patent?
The inventor or inventors of an invention can apply for a patent in New Zealand. An inventor is a person who conceived or contributed significantly to the invention. A company cannot be an inventor. An inventor can assign rights to the invention to another person or company and that other person or company is then able to apply for the patent instead of the inventor. We are able to prepare any assignment forms that are required. The inventor still needs to be named in the patent application as being the inventor, whether or not the inventor has assigned rights in the invention.
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25: How long does a patent last?
A patent lasts for 20 years from the date of the application in most countries. Maintenance fees are payable in some countries after the patent issues to keep the patent in force. In some countries maintenance fees are also payable before the patent issues.
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26: If I get a granted patent, can I license or sell it?
Yes, a granted patent is a right that can be licensed, bought and/or sold just like any other property.
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27: When are renewal fees due on patents?
Four, seven, ten and thirteen years from the date of filing the complete specification. For National Phase entry cases, the date of filing is that of the PCT application. Renewal fees do not become due for payment until after grant. If at the time of grant one or more fees would have been due, then the Commissioner allows a four month period from the date of grant in which to pay any accumulated renewals.
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28: Can patent renewal fees be paid late?
Yes. There is a six month grace period from the renewal due date.
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29: When are renewal fees due on designs?
Five and ten years from the date of filing or from the date of priority.
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30: What is a design registration?
A design registration provides protection for the appearance of an article, namely features of its shape and configuration (3 dimensional features) or pattern and ornamentation (2 dimensional features). The design must have some aspect of appearance which is new. A design registration only protects the appearance of an article, not the principle of operation.
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31: What counts as an “article” in a design registration?
Subject to a few exclusions, an article may be any item manufactured in three dimensions, such as industrial or domestic goods, and some items manufactured in essentially two dimensions, such as wallpaper and textiles.
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32: What do you mean by “new” in a design registration?
To obtain valid registration in New Zealand, your design must have some aspect of appearance which is new and original over what is known in New Zealand at the date your application for design registration is filed at the Intellectual Property Office of New Zealand (IPONZ). Many overseas countries have more onerous novelty requirements that take account of what was published anywhere.
You must not publicly disclose or commercially exploit the article before filing your application for design registration. In particular, the article must not be advertised or sold, or shown to others.

You should talk to us before you talk to anyone else about your design.
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33: How do you know if the design is “new”?
A search of published New Zealand patents and designs is recommended before filing your application for design registration. That gives an indication of whether the design is new and also whether its use will infringe any patents or designs granted in this country.

Any prior publication or use of the design in New Zealand could be relative to novelty. That includes disclosure in magazines, sales brochures or overseas patent and design records.

Searching overseas records for a design registration is possible but expensive. Most overseas registered designs are not visually accessible by computer and must be searched manually by an overseas agency. Designs are visual in context and must be searched exhaustively.
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34: Can I register a design that is wholly functional?
In order to be registrable in New Zealand and many other countries, your design must have some element of eye appeal and some element which is not wholly functional. Some other countries do allow wholly functional designs to be registered.
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35: How do I register my design?
You need to file a design application in New Zealand or elsewhere together with representations which show essential features of the article as it appears to the eye. Perspective and/or plan and elevational drawings of the article are usually prepared as the representations. Black and white photographs may be used but poor quality images and unimportant details of the article shown in the photographs may reduce protection.

A statement of novelty is also filed which directs attention to the features of the design that are considered new.

IPONZ will examine the application within a few months of filing to ensure it meets formality requirements. A search of previous design registrations is also generally made by IPONZ to determine whether the design is new and registrable. If an examination report issues containing objections, these objections need to be dealt with before the application proceeds. Once all objections have been dealt with, the design is registered and a certificate of registration is issued by IPONZ.
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36: Does a New Zealand design registration protect my design in other countries?
A New Zealand design registration protects the design in New Zealand only. If you wish to protect the design overseas, it is necessary to obtain a design registration in each country where protection is required.
Overseas design applications may be deferred under an international convention agreement for up to six months from the date of your application in New Zealand. Each foreign application claims priority from the date of filing of the New Zealand application.
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37: What information do I need to provide you to get a design registration?
We will need photographs, sketches, or drawings of the article embodying the design, preferably along with a description of the aspects of the design which you consider to be new.
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38: Who can apply for a registered design?
The designer can apply for a registered design in New Zealand. If the work has been commissioned or conducted in the course of a designer’s employment, then the commissioning party or employer can apply for a registered design in New Zealand. Rights in the design can be assigned to another person or company and that other person or company is then able to apply for the registered design. We are able to prepare any assignment forms that are required.
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39: How long does a design registration last?
In New Zealand, a design registration lasts for 15 years from the date of the application subject to the payment of renewal fees. The duration of overseas design registrations varies from country to country.
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40: If I obtain a design registration, can I license or sell it?
Yes, a design registration is a right that can be licensed, bought and/or sold just like any other property.
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41: Can design renewal fees be paid late?
Yes. There is a six month grace period from the renewal due date.
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42: Is it necessary to prove use in New Zealand?
No use or evidence of use is required to renew. However, a registration may be vulnerable to removal from the register if the mark has not been used for any continuous 3 year period. Evidence of use would only be required in response to a third party applying to have the mark removed on that basis.
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