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When you apply to register your trade mark, you do so because you want to protect a unique symbol or logo that represents your business. However, this protection comes with a few maintenance requirements. These include renewing your trade mark before it expires, pursuing those who use your trade mark without your permission and actively using your trade mark. The last requirement seems straightforward, but some businesses run into problems where they register their trade mark and do not use it. This means that a third party can apply to revoke that business’ registered rights in the particular trade mark. In New Zealand, this is known as revocation of your trade mark on the ground of non-use. This article will explain how this works and how you can avoid such a claim.

Trade Mark Registration

A trade mark is a sign that you use to represent your business, such as a:

  • brand name;
  • logo;
  • slogan; or
  • product name.

You can operate your business using an unregistered trade mark with the ™ symbol. However, if you want to protect your IP ownership rights in your trade mark fully, you would apply to the Intellectual Property Office of New Zealand (IPONZ) to register it. If they accept your application and register the trade mark, you can legally pursue people who use your trade mark without your permission on the basis of trade mark infringement. 

When you apply to register your trade mark, you need to specify which classes of goods or services your trade mark applies to. A registrable trade mark is one that is:

  • distinctive; and 
  • not confusingly similar to something that already exists in the market.

For example, if you are applying to register the logo on your lipstick products, you would provide a picture of the logo and specify that your trade mark would apply to class 3 (“cosmetics”).

Revocation Due to Non-Use of the Trade Mark

If you do not use your registered trade mark within a continuous three year period, then your trade mark becomes vulnerable to revocation on the grounds of non-use. This three year period can be taken from any date after a month from your application approval date.

The non-use rule applies regardless of how long your trade mark has been on the register. If you registered your trade mark 5 years ago, but you have not used it in the past three years, then your mark becomes vulnerable.

This revocation is not automatic. An ‘aggrieved person’ has to apply to IPONZ to revoke your mark on the grounds of non-use. An aggrieved person is someone that is disadvantaged by your trade mark remaining on the register, such as:

  • a registration applicant whose trade mark is similar to yours, and your trade mark is barring their acceptance;
  • someone who you allege is infringing on your registered trade mark; or
  • a person with a real or substantial interest in your trade mark’s removal from the register.

How Can I Respond?

Once someone files an application to revoke your trade mark due to your non-use, IPONZ will notify you, and you have two months to defend your registration. You have a chance to respond with: 

  • a counterstatement; and
  • evidence of your use of the trade mark, or special circumstances outside of your control that explain why you have not used it.

You will outline in your counterstatement which claims you accept or deny and highlight your key contentions. Your counterstatement should contain:

  • your name and address as the registered trade mark owner;
  • your responses to the revocation applicant’s claims;
  • a brief statement of the facts you are relying upon to defend your registration;
  • a statement of the special circumstances that prevented you from using your trade mark, if you are relying on this exception; and
  • your signature.

Proving Use

If you want to prove that you have in fact been using your trade mark, you need to prove that you (or a licensee) have genuinely used it during the course of your trade for the relevant period. This means using it to represent your business or product, not just internally or as a token. It may be difficult to prove genuine use, but you should include using your mark on your:

  • advertising material;
  • packaging or products;
  • signage in your stores or physical premises; or
  • website.

To qualify, the trade mark you use must be the same as the one you registered, or at least its main elements must be the same. 

For example, you could not claim you had been using the combined word and logo trade mark you registered if you have just been using the logo element.

Special Circumstances

IPONZ will consider special circumstances on a case by case basis, as the situations can be highly context-specific. These circumstances would have to be where something out of the ordinary has happened. To defend your registration using this exception, you must prove:

  • that there were special circumstances;
  • your non-usage of your trade mark was due to those circumstances; and
  • these circumstances were out of your control.

Key Takeaways

When you register your trade mark, that registration protects your intellectual property rights. However, if you do not use your registered trade mark for a continuous period of three years, then that leaves your trade mark open to a third party applying to revoke your registration due to non-use. If you would like more information or help with your trade mark use, contact LegalVision’s 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 represents your business, indicated by the ™ or ®  symbols. This can range from a logo for your products to your business name itself.

What is the difference between a registered trade mark and an unregistered trade mark?

A trade mark can exist without you needing to register it. But, if you register it, then you have proven intellectual property rights that mean you own that trade mark. So, if someone else uses your property without permission, then you can pursue them legally for trade mark infringement.

Should I register my trade mark?

You do not have to register your trade mark, but it is a good idea to do so. If it is a key part of your business’ brand, and you would be disadvantaged if someone else started using it without your consent, then you should register it to protect your valuable IP interests.

What happens if I do not use my trade mark?

If you do not use your trade mark for three years or more, then a third party can apply to IPONZ to revoke your trade mark registration. You then have to respond, and defend your registration to avoid it being removed from the register.

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