4. Applications that do not comply with the Act

Where the examiner considers that an application does not comply with the requirements of the Act, the applicant will be sent a Compliance Report. The Compliance Report will explain how the application does not comply with the requirements of the Act, and will invite the applicant to respond. The Compliance Report will give the applicant 12 months from the date of filing the application in New Zealand in which to respond or amend their application.²⁸

Where an application does not comply with the Act, but would comply with the Act if the applicant agreed to certain conditions, the Compliance Report will set out the areas of non-compliance and give the applicant the opportunity to agree to the conditions that would render the application compliant. If the applicant responds to the Compliance Report and agrees to the conditions, the application will then be accepted pursuant to section 40 of the Act.

If the applicant does not respond to or overcome the concerns raised by the examiner or does not agree to the conditions, the application will remain a non-compliant application and will be rejected or abandoned, as appropriate.

Further Compliance Reports may issue for a single application, all pursuant to section 41 of the Act. Where the applicant responds to the issues raised in the initial Compliance Report, but, despite this response, the application still does not comply with the requirements of the Act, IPONZ may send the applicant a further Compliance Report.²⁹

Any additional Compliance Reports will either confirm the original deadline or where more than 10 months have elapsed from the filing of the application, set a new deadline in which the applicant must respond or amend its application.³⁰ The current IPONZ practice is that any new deadline will be two months from the date the further Compliance Report is issued. However, where more than three Compliance Reports have issued, this further two month time limit may be reduced.

Footnotes

Where an application does not comply with the requirements of the Act, the applicant is sent a Compliance Report giving the applicant 12 months from the date of filing the application in New Zealand in which to respond or amend their application. IPONZ will send the applicant a written communication that warns of the impending abandonment of the application ten months after the date of the Compliance Report, or as soon as possible thereafter.

Given current IPONZ practice this means that where advice was sought from the Māori Advisory Committee regarding the trade mark application, IPONZ will send the applicant a written communication warning of the impending abandonment of the application ten months after the date of the Full Compliance Report, or as soon as possible thereafter.

The written communication shall reiterate the deadline and warn that the application will be treated as abandoned unless:

• IPONZ receives a response to the Compliance Report on or prior to the expiry of the deadline; or
• An extension of the time limit is requested and granted.

Section 44(1) of the Act states:

If, within the time specified by the Commissioner, the applicant has not responded to a notification under section 41, the Commissioner must treat the application as abandoned.

If IPONZ does not receive a response to the most recent Compliance Report on or prior to the expiry of the deadline stated in that Compliance Report, the application will be treated as abandoned on the expiry of that deadline.

Any extensions of time that have been granted will be taken into account. Where an extension of the time limit set in a Compliance Report has been sought and granted, the application will be treated as abandoned, if IPONZ does not receive a response to the Compliance Report on or prior to the expiry of the deadline as extended.

Where the Commissioner treats the application as abandoned pursuant to section 44(1) of the Act, IPONZ will send the applicant written confirmation of the abandonment. If there is a delay before IPONZ sends the applicant written confirmation of the abandonment, or if IPONZ fails to notify the applicant that the Commissioner is treating the application as abandoned, the applicant must not take the delay or failure as an indication that IPONZ is still considering the merits of the application. The delay or failure will not be considered a sufficient reason to justify the reinstatement of the application.

An applicant may request an extension of the time limit set in a Compliance Report.³³ The Commissioner will not allow an extension if the application for extension is made after the deadline has expired.³⁴

An applicant should only request an extension of a time limit where the applicant is not able to respond within that time limit. It is not necessary for an applicant to apply for an extension of time when the applicant has responded on or prior to the deadline and is awaiting a reply from IPONZ.

Any request for an extension of a time limit:
 

• Must be in writing;
• Must be received by IPONZ on or prior to the expiry of the deadline to which the extension of time request relates; and
• Must include reasons for the request.

On receipt of an application for an extension of time, the Commissioner will consider the request.

See the detailed Practice Guidelines 25 for filing Extension of Time Requests.

^Footnotes

³³Regulation 61(2) of the Regulations
³⁴Regulation 62(3) of the Regulations