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The Intellectual Property Office of New Zealand (IPONZ) handles intellectual property (IP) disputes that arise in New Zealand. You may apply to them if you wish to bring action against a trade mark owner regarding their ownership. One such action is an application to declare a trade mark invalid. This article will explain when you can apply to declare a trade mark invalid in New Zealand.

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What is a Trade Mark? 

In New Zealand, trade marks are registrable intellectual property rights. The registered owner of a trade mark can exercise certain powers and benefits. There is a public record of trade mark ownership on the national register. Registered owners also have the exclusive right to use and commercialise their trade mark in New Zealand.

What is a Declaration of Invalidity?

There are certain circumstances where you can apply to begin legal proceedings against a trade mark owner. These applications can cover a range of actions, related primarily to whether IPONZ should register a particular trade mark or not. One of these is an application for a ‘declaration of invalidity.’ 

For example, if a registered trade mark aggrieves you, you can apply to IPONZ to declare a trade mark invalid on the basis that it was never a valid registration under the Trade Marks Act. Following that, it will be as if the registration never existed, and IPONZ will amend the national trade marks register as appropriate. This can be an appropriate response if the trade mark negatively impacts your business reputation or confuses customers due to similarities and if alternative dispute resolution was unsuccessful. 

 Note that this is a very complex legal matter, and you must prove why an already registered trade mark should not have been registered in the first place. This can be difficult to achieve, so you should seek legal advice should you wish to proceed.

When Can I Apply to Declare a Trade Mark Invalid?

There are specific conditions that you must meet to file such an application. These include being an ‘aggrieved person’ and having proper grounds under the Trade Marks Act for why the trade mark registration should be invalid. This means you must offer provable and justifiable reasons under the law if you wish to submit an application to declare a trade mark invalid. As a result, you must detail these in your application paperwork, which must:

  • be in writing;
  • have the prescribed application fee alongside it;
  • be signed by you, the applicant;
  • include you or your agent’s name and contact information;
  • detail the case number of the relevant trade mark registration;
  • outline the classes of goods/services that your application relates to;
  • set out the exact grounds you are basing your application on;
  • point out the provisions of the Trade Mark Act your grounds relate to; and
  • describe why you are a person aggrieved by the registration of this trade mark.

Additionally, if a trade mark has been registered for more than seven years, it cannot be declared invalid, unless you can prove that: 

  • the owner obtained the registration fraudulently;
  • the owner made the application in bad faith;
  • the trade mark should not have been registered because it is likely to deceive or cause confusion;
  • the trade mark’s use goes against the law; or
  • use of the trade mark would offend a significant section of the community, including Māori peoples.

Am I Eligible to Apply?

Following this, you can only apply to declare a trade mark invalid if you are an aggrieved person. This is a broad term that largely depends on your specific context. But, it generally means that the trade mark’s registration has significantly and practically disadvantaged you. Accordingly, you will need to establish why you are an aggrieved person in your application.

Some examples of when a person may be aggrieved include:

  • the trade mark’s registration prevents the acceptance of their own application;
  • if they operate in the same trade as the trade mark owner, and their business is affected by its continued registration;
  • the trade mark conflicts with their own trade mark registration;
  • being someone with a real or substantive interest in the removal of the trade mark registration; or
  • being culturally aggrieved by the registration.

You will need to show the specific date that the trade mark registration negatively affected you, which you should detail in your application. 

You will also need to have a clear reason to apply, based on the Trade Marks Act. A trade mark lawyer can help you with the specific legal reasoning you will need.

Before you submit an application for a declaration of invalidity, you should try to contact the trade mark owner directly. Ideally, you should be able to solve the issue amicably, without the need for the time and costs associated with trade mark proceedings. If you do not attempt this before filing, this may impact the costs you receive after a hearing if you are successful.

Key Takeaways

You can apply to invalidate a trade mark, which means that it will be as if it was never registered. However, you must have valid reasons to do so, and you must be a person aggrieved by the trade mark’s registration. 

If you need help with trade mark matters, 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

What is a trade mark?

A trade mark is an intellectual property right that can protect a business’ branding. Common examples include business names, logos, and slogans.

What happens if a trade mark is declared invalid?

If you are successful in your application to declare a trade mark invalid, then the Commissioner will remove the trade mark from the national register. It will be as if the trade mark never existed because it was deemed invalid from the beginning.

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