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You can register trade mark ownership with the Intellectual Property Office of New Zealand (IPONZ). They also manage some disputes and other issues relating to trade marks, so they may be your first port of call if you find yourself in a trade mark hearing. This article will provide some background on trade mark registration and explain trade mark hearings in New Zealand.

Trade Mark Registration

A trade mark registration is a kind of intellectual property right that your business can own. It protects signs that can make up your brand and represent your business. A trade mark’s main purpose is to act as a ‘badge of origin’ for your customers. Accordingly, it links your business to the goods or services you provide.

For instance, businesses commonly have trade mark rights over their name, logo, or slogan.

If you wish to register your trade mark, you must submit an application to IPONZ. They handle most matters relating to trade mark registration in New Zealand. After IPONZ approves of your trade mark application, you can take advantage of several rights, such as:

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

The extent of your rights becomes relevant in any legal proceeding regarding your trade mark.

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What is a Trade Mark Hearing?

If someone has issues regarding a trade mark application or registration, IPONZ has services that can deal with their problems. For example, if another party objects to your trade mark ownership, they have some options available to them. Depending on the nature of their grievance, they can apply to IPONZ for certain actions relating to your trade mark.

Following that, the IPONZ Hearings Office is a specialist tribunal that deals with proceedings of this nature, including:

  • opposition to your trade mark application;
  • an application to declare your trade mark registration invalid;
  • an application to revoke a trade mark registration; or
  • a hearing to evaluate the decision to refuse your trade mark application.

Trade mark proceedings can be quite complex and involve strict requirements for how they are run. Therefore, you should seek specialised legal advice if you find yourself in this situation. It is worth noting that the Hearings Office is a neutral entity and cannot provide you with legal advice themselves.

What Happens at a Trade Mark Hearing?

The exact content of what a trade mark hearing will cover varies according to the nature of the dispute. However, the general process is as follows: 

  1. one party submits their application to IPONZ, airing their grievance regarding a trade mark registration and detailing their pleadings;
  2. the trade mark owner responds, submitting a counterstatement; and
  3. written submissions and evidence supporting both parties’ arguments are exchanged.

Once the initial evidence-gathering stages are complete, you and the other party will decide how you want to be heard, depending on the subject of the proceedings. You can choose between:

  • the Assistant Commissioner making a decision based on the papers you have already filed, which does not incur a hearing fee;
  • filing written submissions which the Assistant Commissioner will consider, which does incur a hearing fee; or
  • attending a hearing in person before the Assistant Commissioner, which also incurs a hearing fee.

You must pay a hearing fee of $850 (excluding GST) either when you file your written submission or no less than ten working days before your hearing date if appearing in person.

After a Trade Mark Hearing

After the Assistant Commissioner has heard both parties, they will issue a formal written decision, normally within 30 working days from the hearing date. If applicable, this will also detail a cost order that the unsuccessful party may to the successful party. You will be successful if the:

  • Assistant Commissioner’s decision is in your favour;
  • the other party withdraws from proceedings with an agreement regarding costs;
  • the other party withdraws their trade mark application or registration with an agreement regarding costs; or
  • the other party has abandoned or withdrawn from the proceeding.

Key Takeaways

Trade mark hearings are intensive and formal processes that can become quite complex. Therefore, if possible, it is best to amicably solve matters with the other party without commencing formal legal action. You can do this through alternative dispute resolution. However, if you do find yourself going to a trade mark hearing, you should seek the aid of a trade mark specialist.

If you need help with trade mark hearings, 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 hearing?

A trade mark hearing is a process where an Assistant Commissioner considers both parties’ cases in trade mark proceedings. This will result in a written decision.

How can I appear at a trade mark hearing?

You have three options available to you for trade mark hearings. These include relying on the documents you have already submitted, sending through final written submissions, and also appearing in person in front of the Assistant Commissioner.

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