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What Are the Potential Outcomes of Trade Mark Opposition?

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When a company or individual applies for trade mark registration in New Zealand, the process involves the possibility of opposition from other parties. Trade mark opposition can occur if a third party believes that registration may cause confusion with their own registered or unregistered mark or if it may infringe their intellectual property rights. This article will take you through the trade mark opposition process and its potential outcomes.

What is Trade Mark Opposition?

Trade mark opposition is a legal process that allows a third party to oppose the registration of a trade mark in New Zealand. The opposition process allows any third party to object to the registration of the mark if they believe:

  • it is similar or identical to their own trade mark; or 
  • it may infringe their intellectual property rights.

A third party can notify the Intellectual Property Office of New Zealand (IPONZ). The notice of opposition must set out the grounds for opposition and include evidence. Once the notice of opposition is filed, the owner of the trade mark application will have an opportunity to respond and defend their application.

How Does Trade Mark Opposition Work?

The trade mark opposition process involves several stages.

It is also worth considering that any party to the opposition may request an extension to deadlines or halts during the opposition. This is useful for settlement negotiations or pending matters between parties. In addition, either party can withdraw from the opposition at any time.  

1. Notice of Opposition

The opposition process begins with the filing of a notice of opposition. A third party must file their notice of opposition with IPONZ within three months of publishing the trade application in the New Zealand Intellectual Property Office Journal. The notice of opposition must include:

  • the name and address of the opposing party;
  • the grounds for opposition;
  • details of the opposing party’s trade mark or other intellectual property rights; 
  • the relevant trade mark classes in question; and
  • payment of the applicable fee. 

2. Counterstatement

Once the notice of opposition is filed, the owner of the trade mark application has two months to file a counterstatement. The counterstatement must respond to the grounds of opposition and include a brief statement of facts supporting the application.

3. Opponent’s Evidence

The opponent has two months to submit evidence supporting the opposition. Alternatively, they may notify the IPONZ that they have no intention to file such evidence. Where evidence is provided, it must be in the form of a statutory declaration or affidavit and served on the applicant. The opposition will be discontinued if the opponent does not respond or provide evidence. 

4. Applicant’s Evidence

The applicant may file evidence within two months of being served the opponent’s evidence or of being notified that no evidence is being submitted. Again, such evidence must be in the proper form and served to the opponent. The case will go to a hearing if the applicant does not submit any evidence.

5. Evidence in Reply

After the applicant files their counterstatement, the opponent has one month to file evidence in reply. The evidence in reply must address the arguments raised in the defence and support the grounds of opposition.

6. Hearing

If the parties cannot settle the opposition, a hearing will commence before the Assistant Commissioner of Trade Marks. The Assistant Commissioner will consider the evidence and arguments (if any) presented by both parties. They will determine whether the opponent has successfully made out the grounds of opposition relied upon.

7. Decision

After the hearing, the Assistant Commissioner will issue a decision. The decision may be in favour of the applicant of the trade mark application or adverse to the applicant of the trade mark application.

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Potential Outcomes of Trade Mark Opposition

1. Abandonment of Application

If the applicant of the trade mark application decides not to defend their application, they may choose to abandon it. This would result in withdrawing the trade mark application, and the opposition process would come to an end.

2. Settlement

In some cases, the parties may choose to settle the opposition through negotiation or mediation. This can be a faster and less expensive way to resolve the dispute.

For example, a settlement agreement may involve the applicant of the trade mark application agreeing to modify or limit their trade mark application to address the concerns of the opposing party. Alternatively, the parties may agree to coexist with their respective trade marks and acknowledge each other’s rights.

3. Adverse Decision

If the opposition proceeds to a decision, the Assistant Commissioner of Trade Marks will consider the evidence and arguments presented by both parties and issue a decision. The decision may be in favour of the applicant of the trade mark application, in which case the mark will proceed to registration. 

Alternatively, the decision may be adverse to the applicant of the trade mark application. In this case, the mark will not proceed to registration and will lapse unless appealed.

4. Appeal

If a decision is made against the applicant of the trade mark application, they can appeal the decision to the High Court. They must file the appeal within 20 working days of the decision. The High Court will review the decision and may uphold or overturn the decision of the Assistant Commissioner.

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Key Takeaways

The trade mark opposition process in New Zealand provides a mechanism for third parties to object to the registration of a trade mark if they believe it may cause confusion with their own registered or unregistered mark or if it may infringe their intellectual property rights. The potential outcomes of trade mark opposition include:

  • abandonment of the application;
  • settlement; 
  • adverse decision; 
  • registration; or 
  • appeal. 

If you need assistance opposing a New Zealand 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.

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