In Short
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File within 3 months – You have a three-month window to oppose a trade mark after it’s accepted by IPONZ.
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Have valid grounds – You’ll need to show reasons like similarity, deceptiveness, or bad faith, and back your claim with evidence.
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Be ready for costs – Opposing involves filing fees and, if it proceeds to a hearing, further legal and administrative costs.
Tips for Businesses
Act quickly if you spot a conflicting trade mark. Start by contacting the applicant to see if you can resolve things informally. If not, prepare clear grounds and evidence for opposition, and consider legal advice to boost your chances of success.
A trade mark is a sign representing your business, such as your business name or logo. Your customers will use this valuable branding asset to identify your business. However, if someone tries to register a trade mark similar to yours, this can impact your trade mark’s value. In this case, you do have some options available to you. This article will explain how you can oppose a trade mark application.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Applying For a Trade Mark in New Zealand
If you wish to register a trade mark in New Zealand, you must apply to the Intellectual Property Office of New Zealand (IPONZ). The application process consists of the applicant (the person applying for the trade mark):
- conducting a trade mark search;
- preparing the necessary documentation with appropriate information;
- paying registration fees;
- submitting their application through IPONZ’s website;
- waiting for IPONZ’s response after its evaluation; and
- dealing with any issues or concerns that IPONZ has regarding their application.
If IPONZ approves the applicant’s trade mark registration, they will publish an acceptance notice of the relevant application in the organisation’s Journal. However, within three months of that publishing, it is open for third parties to oppose a trade mark’s registration in the form that it was advertised.
How Can I Oppose a Trade Mark Application?
Anyone can oppose a trade mark application if they believe it should not be registered. However, it would help if you had reasonable grounds to do so. These can vary, but common ones include that an advertised trade mark is:
- confusingly similar to your trade mark;
- descriptive or not able to distinguish the applicant’s goods or services from other businesses;
- deceptive; or
- not able to be legally registered by the applicant, such as not having valid ownership rights.
Generally, if you have an issue registering another trade mark, it is best to consider whether you can contact the trade mark owner first. If you can resolve the matter directly with the trade mark applicant, you may avoid cost and effort. Doing this may also impact any costs or remedies you may receive later if you are successful in an opposition. However, if this is not possible, you can oppose their application.
Continue reading this article below the formFiling a Notice of Opposition
To start this process, you must first file a notice of opposition with the IPONZ Hearings Office. With this document, you must detail the grounds that you are claiming should prevent the applicant’s trade mark from proceeding to registration. Notably, you can oppose the trade mark application for some or all of the goods or services covered in the application. If you only want to oppose the trade mark based on specific goods and services, you must specify that you are filing a ‘partial opposition’.
Furthermore, you need to ensure that your notice of opposition:
- is in writing;
- includes the filing fee ($350 excluding GST); and
- is signed.
IPONZ will send the applicant a copy of your notice, and they will get the chance to file a counterstatement defending their position. Moreover, they will accept or deny your claims and provide their reasons in favour of registration. If they do not do this, IPONZ will consider their application abandoned.
Providing Evidence
Following that, you and the applicant will have some back and forth, where you must provide evidence supporting your position. Furthermore, any evidence you provide must be in the form of either statutory declarations or affidavits. You need to think carefully about the evidence you will provide and take care not to submit large volumes of unnecessary evidence. It needs to relate directly to the matters you and the applicant outlined in your respective filings.
The Hearing
Once you complete the evidential stages of the opposition process, the Commissioner will ask you and the applicant how you wish to conduct the hearing. You can choose to:
- have a formal hearing where both parties speak to their written submissions supporting their case in person or via video link where appropriate;
- have the Commissioner make a decision based on the evidence that both parties have already submitted; or
- file a written submission that an Assistant Commissioner will consider.
If you choose a hearing or written submissions, both parties must pay a hearing fee of $850 (excluding GST). This fee is due ten working days before the hearing date.
After the hearing, an Assistant Commissioner will write a decision within 30 working days. Following that, you can appeal this decision within 20 working days.
Key Takeaways
Opposing a trade mark application is an extensive process that requires time and is costly. For instance, you must prepare evidence supporting your claims and pay the relevant fees. So, it would help if you first tried to resolve your issues directly with the trade mark applicant. Although, if this does not work, filing a notice of opposition can be your next step.
If you need help with your trade marks overseas, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.
Frequently Asked Questions
To oppose a trade mark application, you need to file a notice of opposition with the IPONZ Hearings Office. However, ideally, you should try to resolve any issues with the trade mark owner directly before this.
Anyone can oppose a trade mark application if they think it should not be registered. However, they need valid grounds to do so, such as the application conflicting with their own trade mark rights.
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