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Trade marks are intellectual property assets that can greatly benefit your business. If you wish to register one, you can do so with the Intellectual Property Office of New Zealand (IPONZ). They must approve your application before you can register your trade mark. However, if there are any issues with your application, they will set these out in a compliance report. For some guidance, this article will provide some background and explain what a trade mark compliance report is in New Zealand.

Applying For a Registered Trade Mark

In New Zealand, if you wish to register a trade mark, you can begin this process by applying to IPONZ. They manage all trade mark registration matters and examine your trade mark against specific criteria. 

However, you need to provide specific information as part of your application and prepare robust documentation. This process includes:

  • defining the exact elements of your trade mark;
  • conducting an appropriate trade mark search;
  • detailing the owner of your trade mark;
  • specifying the goods or services your trade mark covers;
  • categorising those goods or services into their respective classes; 
  • paying the relevant trade mark fees; and
  • submitting your trade mark application via IPONZ’s online portal.

Once you submit your application, trade mark examiners at IPONZ will assess your trade mark’s viability against the Trade Marks Act 2002 criteria. If your trade mark meets the relevant criteria, then IPONZ will approve your application and advertise this in their journal. If not, then they will send you a compliance report.

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What Is a Trade Mark Compliance Report?

Once you submit your application, IPONZ usually examines the application within 15 working days of your submission. If your trade mark does not initially meet the requirements for registration, you will receive the examiner’s feedback in the form of a compliance report. This document is a formal letter written by the trade mark examiner who assessed your application. It details their initial decision regarding your trade mark application. In particular, it sets out the aspects of your trade mark application that do not comply with the criteria that the Trade Marks Act sets out. You will then have an opportunity to respond to this compliance report.

You should receive notification of a compliance report through the email you use as a contact when you apply for your trade mark. Then, you can find your compliance report through IPONZ’s web portal.

What Issues Could a Compliance Report Detail?

Your compliance report could describe a range of issues, as they depend on your trade mark and individual circumstances. However, there are some common issues that we see raised during examination. The table below sets out some issues that a compliance report may detail.

The trade mark is not distinctive.

If your trade mark is not unique enough to identify your business from other traders, then it may not qualify for trade mark registration. Customers need to be able to identify your trade mark as a representation of your business.

The trade mark is identical or similar to an existing one.

Your trade mark cannot be identical or confusingly similar to one that already exists on the register for the same or similar goods or services. Therefore, your trade mark examiner may raise this as an issue if this is the case for your application.

There are issues with the trade mark specification or classification.

Your trade mark specification details the goods or services your trade mark protects. Its classification refers to the classes of those goods or services. If there are any issues with these, IPONZ will detail them in a compliance report.

The trade marks do not qualify as a series.

You can apply for multiple trade marks as part of a series in a single application. However, these need to qualify as series trade marks. If they do not, your trade mark examiner will set out the issues in your compliance report.

How Can I Respond to a Compliance Report?

Once you receive a compliance report, you have approximately 12 months to respond to it. If you disagree with any of the issues raised by the examiner, you can respond with your reasons why. You may also need to provide evidence to back up your reasons.

For instance, say that your trade mark examiner outlines an issue with your trade mark’s distinctiveness, raising concerns that customers will not be able to recognise your business. If you can provide evidence of customers being able to do so, you may establish that your trade mark has become distinctive through use.

Key Takeaways

IPONZ will send you a trade mark compliance report if there are any issues with your trade mark application. The report sets these issues out, and you will have the opportunity to respond. 

If you need help with your trade mark compliance report, 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. It is a sign that can represent your business, such as your business name or logo.

What is a trade mark compliance report?

If IPONZ does not initially approve your trade mark application, they will send you a compliance report detailing the problems with your application. You will then have the opportunity to respond and fix those issues so the application can be accepted.

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