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Trade mark registration is a powerful tool for business owners and other organisations. However, you may object to another party’s ownership of a particular trade mark because it negatively impacts your interests. In this case, revocation may be an option for you. Therefore, this article will explain how you revoke a trade mark.

How Trade Mark Registration Works

When you own a registered trade mark, you gain various benefits, such as:

  • the exclusive right to use and commercialise it in New Zealand;
  • the ability to license or sell it for a profit;
  • restrictions on others registering identical or similar trade marks after your registration date;
  • legal options to pursue those who use it without your permission; and
  • an official record of your ownership on a national register.

A trade mark owner has access to these rights according to their particular trade mark and the goods or services it applies to. Therefore, they are preventing others from being able to use or register identical or similar trade marks.

What Does Revoking a Trade Mark Mean?

If you object to another party’s ownership of a trade mark, you have options available to you. One of those is applying to the Intellectual Property Office of New Zealand (IPONZ) to revoke their ownership. Anyone who can show that they are aggrieved by a registered trade mark can apply to have it revoked on certain grounds, which are:

  • grounds of non-use; or
  • grounds other than non-use.

Legal grounds, in this case, refer to reasons why this particular trade mark should not retain its registration.

If your application for revocation is successful, then IPONZ removes that trade mark from the national register accordingly. Despite this ability, if you do object to another party’s ownership of a certain trade mark, consider whether contacting that owner directly before filing your revocation application might be a viable option. It is best to consider whether there is scope to resolve the matter amicably without formal revocation proceedings.

How Can I Revoke a Trade Mark?

If you wish to apply for revocation, you can do so via IPONZ or the High Court. In most cases, revocation actions are filed via IPONZ, which is the more accessible forum. Your application must:

  • be in writing;
  • be signed; and
  • include the relevant fee ($350 excluding GST).

It must also contain certain information, such as the:

  • name and address of you or your agent;
  • number of the relevant trade mark registration;
  • relevant goods or services that the trade mark relates to;
  • specific grounds you are basing your revocation application on; and
  • details of why you are an ‘aggrieved person’.

Depending on the other party’s response, your application may result in a trade mark hearing. After that, the Assistant Commissioner draws up a written decision to detail the awarding of any costs to the successful party. They will normally do this within 30 working days of the hearing.

Am I an Aggrieved Person?

Only an aggrieved person can apply for revocation. Therefore, as a part of your application, you need to explain why you are such a person when you file your application for revocation. You would be an aggrieved person if the trade mark’s registration disadvantages you legally or practically. Common examples of this include:

  • the trade mark’s registration restricts your own trade mark application;
  • the trade mark’s continued registration negatively impacts your commercial business;
  • you have a real or substantive interest in the removal of the trade mark registration;
  • the trade mark infringing your own trade mark registration; or
  • you are culturally aggrieved by the trade mark’s registration.

You will need to provide evidence supporting your claim of being an aggrieved person and the relevant date that the trade mark registration disadvantaged you.

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Grounds of Non-Use vs Other Grounds

Next, you need to explain why IPONZ should revoke the other party’s trade mark registration. These reasons are divided into two categories, grounds of non-use and grounds other than non-use. Grounds of non-use claim that the trade mark owner has not genuinely used the trade mark for a continuous period of three years or more. If relying on this ground, you will need to provide the specific dates that the trade mark owner has not used the trade mark for and from which date you wish the trade mark to be revoked.

What ‘genuine use’ means can vary and, in this case, will relate to the reason you are an aggrieved person. Therefore, you must provide relevant evidence for proving this.

If you are relying on grounds other than non-use, you need to specify what these are. They can include:

  • the trade mark becoming a common name that the general public uses;
  • certain issues related to patents; or
  • the trade mark’s use is likely to deceive or confuse the public about the nature of the goods or services it relates to.

Depending on which grounds you rely on, the nature of the evidence and documentation you need to prepare can differ. Therefore, you should seek aid from a trade mark specialist.

Key Takeaways

If you wish to revoke a trade mark, you need to have a valid reason as an aggrieved person. However, you should consider whether it is worthwhile trying to resolve the issue with the trade mark owner directly before applying for a revocation.

If you need help with revoking a trade mark, 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 a kind of intellectual property right, protecting things like your business name or logo. It indicates to your customers that your business is the source of the goods or services you provide.

What does it mean to revoke a trade mark?

When IPONZ revokes a trade mark, they remove it from the register. Aggrieved parties can apply to the organisation to have a trade mark registration revoked. 

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