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A trade mark is a sign you use to identify and represent your brand. If you register your trade mark, you get a set of exclusive rights. This means that you can take action for trade mark infringement against third parties who use an identical or confusingly similar trade mark, and you can make sure you protect your interests in this way. As part of the registration process, the Intellectual Property Office of New Zealand (IPONZ) assesses your application to register your trade mark. If your trade mark does not meet their conditions, they can object to your application. This article will detail some possible ways you can respond to a trade mark objection and what evidence you may need to do so.

Trade Mark Objections

After IPONZ considers your trade mark application, they will either accept it or send you a compliance report. A compliance report outlines why IPONZ did not initially accept your trade mark application. IPONZ will list the reasons why your application does not yet comply with their requirements. They may also suggest some changes you can make to meet these requirements. 

For example, IPONZ may not have initially accepted your application because your trade mark:

  • was not distinctive enough;
  • was only descriptive;
  • used common words often used in your trade;
  • was identical or similar another already registered mark; or
  • did not specify its relevant classes of goods or services clearly.

Once you receive a compliance report, you have 12 months to respond. 

Your Response

How you respond to a compliance report will depend on your unique circumstances. You can:

  • accept and make the changes that IPONZ recommends; or
  • write submissions with counterarguments responding to each point, explaining why your application should be accepted, in some circumstances with supporting evidence.

An IP specialist can help you to format your response in the correct way and develop the best strategy for making sure your application is accepted. The evidence you supply as part of your response should be submitted as a:

  • statutory declaration;
  • affidavit; or
  • affirmation.

These documents will need to be witnessed by:

  • a solicitor;
  • a Justice of the Peace; or 
  • someone else capable of witnessing important documents. 

Depending on the type of objection IPONZ raised, the evidence you will need to supply may differ.

Distinctiveness

IPONZ may have rejected your application because your trade mark was not distinctive enough. This means that they thought customers would not be able to recognise it as your business’ badge of origin easily.

You can potentially overcome this objection by providing evidence of use. This is evidence that proves you have been using this trade mark for an extended period of time. This would have given it enough of a distinctive character that customers can associate your business with your trade mark. The more common or non-distinctive your trade mark is, the more convincing your evidence would need to be. Such evidence would include:

  • the date you first used your mark in NZ;
  • how widely (geographically) you have used your mark;
  • annual sales or turnover of goods or services sold under your mark;
  • advertising expenses associated with your mark;
  • examples of how you use your trade mark in NZ, such as copies of sales brochures or your packaging with your trade mark on it;
  • supporting declarations from people in the industry confirming your mark’s distinctiveness;
  • survey evidence; and
  • other information you think is relevant.

Similar Trade Marks

If your trade mark is too similar to another mark that is already registered or applied for, this can present an obstacle to your application. If two trade marks in the market are too similar to one another, this can deceive or confuse customers as to the origin of the goods or services being provided under the trade mark. You can respond to this objection by:

  • proving such coexistence would not lead to deception or confusion, supported by evidence; or
  • providing a letter of consent from the other registered mark owner to you using and applying to register your similar mark.

You would need to establish why there would be no deception or confusion if your trade mark was registered. You may also need to provide evidence similar to that set out above in respect of distinctiveness objections, as well as evidence that provides:

  • an explanation as to how you came up with the trade mark; and
  • any instances of confusion that have occurred that you are aware of.

Key Takeaways

If IPONZ does not initially accept your trade mark registration application, they will send you a compliance report detailing their reasons. This happens fairly often, and can usually be resolved without too much hassle as long as you have the necessary evidence. If you would like more information or help with your response to a trade mark objection, contact LegalVision’s New Zealand IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign that identifies and represents your business. This could be your business name, slogan, or logo. If you have a registered trade mark you can bring legal proceedings against others who use your mark without your permission.

What is a trade mark objection?

A trade mark objection is the compliance report that IPONZ sends you if they do not initially approve your application to register your mark. This report details why they have not approved it, and may include some changes you can make.

Do I have to respond to a trade mark objection?

If you do not respond to a trade mark objection within the prescribed period, then your application will lapse. You should respond with your evidence as to why your application should be approved, or change your application to meet the requirements IPONZ specifies.

How do I respond to a trade mark objection?

You can respond to a trade mark objection online, on the IPONZ website. An IP specialist can help you structure your response, and gather evidence to support your claims.

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