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Trade mark rights protect certain signs or marks that represent a business. Notably, a person can register a trade mark with the Intellectual Property Office of New Zealand (IPONZ). However, if you wish to oppose this registration, you can do so with a valid reason. Therefore, this article will provide some background and explain when you can oppose a trade mark application.

How Do Trade Marks Work?

A trade mark registration is an intellectual property asset. Trade marks serve as a ‘badge of origin’, identifying the owner as the source of certain goods or services.

For instance, many businesses register trade mark rights in their name or logo. They then use these trade marks on their product packaging to show that their business makes the goods.

Trade marks can protect different signs or marks, with possible elements including:

  • words;
  • shapes;
  • sounds;
  • smells;
  • colours;
  • images; or
  • a combination of these.

When you are the registered owner of a trade mark, you gain:

  • a public record of your trade mark on the national trade marks register;
  • the exclusive right to use and commercialise your trade mark;
  • proven ownership rights;
  • legal protection should someone try to use or imitate your trade mark; and
  • the ability to bring legal claims against those parties.

In particular, if you successfully register a trade mark, there are limitations on others wishing to register similar or identical trade marks after you.

The Trade Mark Registration Process

If someone wants to register a trade mark, they must do so through IPONZ. They must prepare an appropriate application, and IPONZ assesses it on specific criteria. In particular, a trade mark must not:

  • be generic or descriptive;
  • use common industry descriptive terms that competitors may use to describe or promote their own goods or services;
  • use solely praiseworthy words;
  • be identical or confusingly similar to other trade marks that already exist; or
  • contravene other specific evaluation criteria that IPONZ uses.

If IPONZ assesses the application and accepts it, they advertise notice of that acceptance in the Intellectual Property Office Journal. Within three months of this publication, you may oppose the registration of that trade mark. Otherwise, if no one raises opposition to that particular trade mark application, IPONZ will register it no less than six months after the initial filing date.

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What Is an Opposition?

If you believe that IPONZ should not register an advertised trade mark for a valid reason, you can file a notice of opposition within three months of IPONZ publishing their notice of acceptance. You can oppose the trade mark application in its entirety or only in respect of some of the goods or services in its specification.

When Can I Oppose a Trade Mark Application?

If you want to oppose a trade mark application, you must have a valid reason to do so. Consequently, it is on you to prove that your opposition is justifiable and provide evidence where necessary. Some reasonable grounds for opposition from the Trade Marks Act include:

  • the trade mark applicant not being the true owner of the trade mark;
  • use of the trade mark would likely deceive people or cause confusion;
  • operation of the trade mark would be against the law;
  • usage of the trade mark would likely offend a significant section of the community, including Māori;
  • the applicant made the trade mark application in bad faith;
  • the trade mark itself does not qualify as a sign or trade mark under the relevant criteria;
  • your trade mark is non-distinctive;
  • the trade mark only being descriptive in nature;
  • your trade mark uses customary terms that describes the goods or services it aims to protect;
  • the trade mark is identical or similar to another registered trade mark covering the same or similar goods or services, with its use likely to deceive or confuse; and
  • the trade mark is identical or similar to a well-known trade mark in New Zealand, and its use would prejudice the interests of that trade mark’s owner.

How Can I Oppose a Trade Mark Application?

Before formally opposing a trade mark application, it might be worthwhile to contact the applicant directly first. That way, you may be able to resolve the issue without engaging in formal processes that could cost time and money. However, you should seek the aid of a trade mark specialist if you do wish to file a notice of opposition, and they can best advise you on your options. The process will involve laying out the exact nature of your concerns, and proving your case.

Key Takeaways

If IPONZ accepts a trade mark application, they then publish that acceptance in the Intellectual Property Office Journal. Once that happens, you can oppose that trade mark application if you have legitimate reasons to do so.

If you need help with opposing a trade mark application, 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

How can I register a trade mark?

You can apply to register your trade mark with the Intellectual Property Office of New Zealand (IPONZ). They will assess your trade mark, and if they accept it, they will publish notice of this. Then, interested parties can oppose your application if they have a valid reason.

How can I oppose a trade mark application?

If you have a justifiable reason to oppose a trade mark application, you can file a notice of opposition. However, you must do so within three months of IPONZ posting their initial acceptance of the trade mark.

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