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Trade marks can be a vital intellectual property asset for your business. Customers recognise your business by referring to your trade marks, which can help you stand out amongst your competitors. You can apply to register your trade mark with the Intellectual Property Office of New Zealand (IPONZ), which will assess your application. For some guidance, this article will explain what you can do if they have rejected your registered trade mark application.

The Trade Mark Application Process

Trade marks can be registered or unregistered in New Zealand. Nonetheless, you have stronger and more easily provable rights if you do register your trade mark. To register a trade mark, you need to apply to IPONZ. They manage all trade mark registrations in New Zealand and assess your application based on their evaluation criteria.

You can manage all issues relating to your trade mark through IPONZ’s online portal on their website. This includes both applying for trade marks, and responding to IPONZ’s assessment.

The trade mark application process is relatively straightforward, but each step is crucial. Before applying for your trade mark, you need to:

  • search for competing trade marks on the trade marks register;
  • consider getting a search and preliminary advice report;
  • finalise the different elements of your trade mark;
  • determine the trade mark’s owner;
  • determine your trade mark’s type;
  • decide what goods or services your trade mark will protect; and
  • classify those goods or services for your trade mark specification.

Once your documentation is ready, you can submit your application through IPONZ’s website. You will also need to pay the relevant application fees.

What Does IPONZ Look For?

Once you submit your application, IPONZ assesses it to determine whether it meets the Trade Marks Act’s requirements. This process can take up to 15 working days, after which you will receive notice of their decision. If your trade mark application complies with the law’s requirements, it will be accepted. Otherwise, IPONZ will send you a compliance report outlining the issues preventing acceptance of your application.

In particular, IPONZ will assess your trade mark to determine whether it:

If your trade mark meets these two main requirements (and various other requirements set out in the legislation), IPONZ will then accept your application.

When considering whether your trade mark can distinguish your goods or services from those of other traders and is otherwise entitled to registration, IPONZ assesses whether it:

  • is too descriptive;
  • is praiseworthy;
  • uses a geographical location associated with the relevant goods or services;
  • uses common industry terms; 
  • is offensive to a significant section of the community, including Māori; or
  • is contrary to other public policy concerns.

If your trade mark is identical or confusingly similar to an existing trade mark application or registration, then it may be conflicting with that owner’s rights. This fact can then negatively impact the assessment of your trade mark application.

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Why Might IPONZ Refuse My Application Initially?

If your application does not meet these requirements, IPONZ will send you a compliance report. This formal letter outlines what is wrong with your application and potential methods for fixing the issues preventing your application’s acceptance. 

There are various reasons why your trade mark application may not initially comply with the law’s requirements.

For instance, say that a trade mark similar to yours already exists on the register. If your trade mark examiner thinks that the coexistence of both of your marks would confuse customers, they may state your trade mark is too similar to the existing trade mark and refuse to register it.

Whatever the reason for the examiner’s initial refusal, you will get the chance to respond to the compliance report. You have 12 months from the day you filed your application to do this.

How Can I Respond?

Once you receive a compliance report, you have a few ways you can respond. These include:

  • abandoning your application at no additional cost;
  • requesting a notice of rejection, which means that the Assistant Commissioner will be able to consider your case at a hearing;
  • responding with reasons why you disagree with IPONZ’s assessment or inform them of circumstances that overcome any raised issues;
  • requesting for a more senior member of the examination team to review your application; or
  • completing any specific actions your examiner recommends.

For example, say that your examiner issues you a compliance report, saying your trade mark is non-distinctive. If you can provide evidence of you using your trade mark, and customers recognising that trade mark as being yours, you may be able to overcome this issue.

Key Takeaways

If IPONZ does not initially accept your trade mark application, you will have the chance to respond and attempt to address the issues preventing acceptance of your application. However, you may eventually choose to request a notice of rejection so that the matter can proceed to a formal hearing, if that better serves your purposes. The best (and most cost-effective) approach is usually to attempt to resolve the issues by responding to the examiner, so you should use a hearing as a last resort.

If you need help with your 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

What is a trade mark?

A trade mark is a kind of intellectual property right that protects something that identifies your business and the goods or services it provides. Common examples include your business’ name or logo.

What is a compliance report?

Once IPONZ assesses your trade mark application, they may send you a compliance report afterwards. This document outlines issues preventing the acceptance of your application and ways you may address those issues.

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