Things to know about Trademark Objection

Trade mark applications are advertised in the Intellectual Property Office Journal so that interested parties can object to them being registered once they have been accepted for registration. Trademark objection is the process of objecting to a mark. Trademark registration may be opposed by anyone with reasonable grounds. Here are some frequently asked questions you can read for more information.

Opposition – what is it?

Upon acceptance for registration, details of the application are advertised in the Intellectual Property Office Journal so that interested parties can object. Trade mark opposition is the process of objecting to a trademark.

Trademarks can be opposed by anyone, right?

Yes, of course. A person may oppose the registration of a trade mark if he or she has reasonable grounds for doing so.

What are the most common grounds for opposition?

According to the Trade Marks Act 2002, there are a number of grounds for opposition. Among the most common claims are that: the mark sought to be registered is confusingly similar to another mark registered by another party or being used by another, the mark is descriptive or unable to distinguish the applicant’s goods or services from those of others, the mark is deceptive, and/or the mark has been misappropriated from another:

What is the process for deciding whether an application will be registered?

Opposition proceedings are handled by IPONZ (“Intellectual Property Office of New Zealand”) and decided by the Trade Mark Commissioner.

What is the procedure for opposing a trade mark application?

Applicants who wish to oppose a trade mark application that has been accepted and advertised in the Intellectual Property Office Journal have three months from the date of advertisement to file a Notice of Opposition. The grounds for opposition must be identified in the Notice of Opposition.

The applicant has two months from the date that the Notice of opposition is filed to file a counterstatement setting out its response to the grounds of opposition. The counterstatement should also include reasons why the applicant believes the application should be registered. Trade mark applications deemed abandoned if no counterstatement is filed within two months.

A statutory declaration or an affidavit is used as evidence. Two months after the counterstatement is filed, the opponent can file evidence supporting the opposition. In the absence of evidence (or notice of an intention not to file evidence), the opponent is deemed to have abandoned its opposition. After the opponent’s evidence has been completed, the applicant has two months to submit evidence. As soon as the applicant’s evidence is filed, the opponent can respond. The applicant’s evidence must be limited to the issues raised in his/her testimony.

The parties cannot file any further evidence except with the Commissioner’s permission. In most cases, the opposition will be called to the table for a hearing in which each party will present written submissions in support of their claims.

Are these deadlines extendable?

Yes, although the Commissioner is constrained by the Act as to what extensions can be granted and when in most cases. You must also prove that you have acted diligently to meet the previous deadline and that the justice of the case warrants an extension (i.e. you will suffer prejudice if an extension isn’t granted).

Can you tell me how long the opposition will take?

In the event that all steps are completed within the specified timeframes, the opposition will be heard in 10 – 11 months. It may take longer if extensions are granted, but most opposition proceedings should be completed within 18 months.

Decisions are made in what way?

Commissioners of Trade Marks issue written decisions within two to three months of hearings.

If I win, can I get damages and costs?

A successful party may be awarded costs by the Commissioner. In most cases, however, these only cover a small percentage of the actual costs incurred by the parties for each step. As far as damages are concerned, the Commissioner has no power to award them.

If I disagree with the decision, can I appeal it?

Yes, of course. You can appeal a decision to the High Court within 20 working days.

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