5. Abeyance

Section 44(2) of the Act states:

The Commissioner must not treat an application as abandoned under subsection (1) if the application is awaiting the outcome of –

1. opposition proceedings in respect of a prior application; or
2. cancellation, revocation, or invalidity proceedings in respect of a prior registration.

Section 44(2) of the Act provides an exception to the general rule of abandonment set out in section 44(1) of the Act.

The Commissioner must not treat the application as abandoned where:

• IPONZ does not receive a response to the Compliance Report on or prior to the expiry of the deadline set in the Compliance Report; and
• The application is awaiting the outcome of opposition proceedings in respect of a prior application, or cancellation/revocation/invalidity proceedings in respect of a prior registration.

Where an application is awaiting the outcome of opposition proceedings in respect of a prior application, or cancellation/revocation/invalidity proceedings in respect of a prior registration, the applicant must advise IPONZ of this fact in writing prior to the expiry of the deadline set in the Compliance Report.³⁷

Upon receipt of the applicant’s advice IPONZ will, upon verification of the facts, place the application in abeyance pending the outcome of the opposition, cancellation, revocation or invalidity proceedings.³⁸

Where an application has been put in abeyance pending the outcome of opposition proceedings in respect of a prior application, or cancellation/ revocation/invalidity proceedings, the applicant must advise IPONZ as soon as practicable of the outcome of the proceeding.³⁹

On notice of the outcome of the proceeding, the applicant will be notified of an extension of the deadline for compliance.⁴⁰

Footnotes