If you register your trade mark, you can protect your business’ critical intellectual property, such as your:
- name;
- business logo;
- products; or
- slogan.
These are important representations of your business. Therefore you should invest in them as is appropriate for your circumstances. During your trade mark application, your trade mark may change due to compliance requests. However, what about after you have completed your trade mark registration? Maintaining your intellectual property is an ongoing process, and your business’ circumstances may change over time. Therefore, you may wish to change certain aspects of your trade mark. What you can legally do is limited, but this article will explain when you can alter your registered trade mark in New Zealand.
Altering Your Registered Trade Mark
The law’s starting point is that you cannot make changes to your trade mark once you have officially registered it. Despite this, there are a couple of exceptions that allow certain kinds of changes.
If you want to change your registered trade mark, you can do so through the Intellectual Property Office of New Zealand (IPONZ)’s online case management facility. You can apply to do this at any time. There are generally no fees to cancel or alter your registered trade mark.
What Changes Can I Make?
Once you have a registered trade mark, the changes you can make to it are limited. You cannot change the appearance or content of the trade mark itself. However, you can change some of the information about your trade mark that exists on the register. The table below sets out what changes you can make.
Changing Name or Address |
You can apply to change the name or address of the owner of the trade mark. You may do this to notify a change in ownership, for which you will have to provide supporting documents as evidence. |
Striking Out |
You can request to strike out one of the classes of goods or services you initially registered your trade mark for. You should apply with plenty of time, as this process can take up to 15 working days. |
Memorandum |
You can also add, alter, or remove a memorandum. A memorandum can include a special limitation, condition, interest, or explanation. However, your memorandum cannot extend the rights your registered trade mark gives. |
If there is a mistake or omission with trade mark on the register, you can also apply to change those. If you want to make a change, you will need to supply:
- your name, or your agent’s name;
- your trade mark registration number; and
- the details relating to the change you want to implement.
Request Rejections
The Commissioner can reject your request for a memorandum. However, IPONZ must allow you to provide your justifications for your memorandum, giving you notice of the initial rejection. This notice will detail the:
- reasons for the Commissioner’s rejections; and
- time limit for you to submit your response to the rejection.
You can request a hearing, and you can decide whether you have that hearing based on written submissions or in person. You need to ensure you submit your response before the deadline that the notice specifies.
Other Instances to Change Your Registered Trade Mark
If you want to implement any other kinds of changes to your registered trade mark, you may:
- cancel your trade mark;
- merge your trade mark with another;
- divide your trade mark; or
- renew your trade mark.
Can Someone Else Alter My Trade Mark?
In some instances, a third party can apply to IPONZ to cancel or alter your trade mark if they are an aggrieved person. An aggrieved person is someone who can prove that your trade mark appreciably disadvantages them in a legal or practical sense.
They need to prove their grievance and have legitimate grounds for their request to cancel or alter your trade mark. For example, suppose you have not complied with regulations or are not competent enough to certify the goods or services your trade mark applies to. In that case, the third party may have grounds for cancellation or alteration. You will have your opportunity to respond to this request and provide your own evidence as well.
Key Takeaways
Once you have registered your trade mark, you generally cannot change the mark itself. However, you can change what the register says about your trade mark, such as the recorded owner and the classes of goods/services it applies to. If you would like more information or help with altering your registered trade mark, contact LegalVision’s trade mark lawyers on 0800 005 570 or fill out the form on this page.
Frequently Asked Questions
You do not necessarily have to register trade marks to have legal IP rights in them. However, when you register your trade mark, you get the exclusive right to use that trade mark and pursue others who do so without your permission.
Once you have registered your trade mark, you cannot alter it outside of changing the name/address of its owner, limiting the classes it applies to or attaching a memorandum altering its scope.
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