6. Rejection

Where the Commissioner proposes to reject an application for the registration of a trade mark, section 176 of the Act requires that the Commissioner must first give the applicant an opportunity to be heard on the matter. The applicant will be sent a Notice of Intention to Reject advising that the Commissioner proposes to reject the application and the grounds on which the Commissioner proposes to reject the application.42

Under section 45 of the Act, the Commissioner must:

…if required to do so by an applicant, state in writing the grounds for the Commissioner’s decision and the materials used in arriving at the decision.

IPONZ practice, however, is that whenever the Commissioner rejects an application he will give full reasons for his decision and, where relevant, will indicate the materials used in arriving at the decision. The same practice applies where the Commissioner rejects the application in its current form, but indicates his willingness to accept the application if the applicant will agree to certain conditions. It is therefore unnecessary for applicants to ever make the request allowed for in section 45 of the Act.

The applicant will be given one month in which to request a hearing⁴³ from the date of the Notice before the Commissioner exercises his power to reject the application. The applicant will be advised that the application will be rejected at the end of that period if the applicant has not required a hearing.⁴⁴

Footnotes

Following receipt of the Notice of Intention to Reject, the applicant may avail itself of the opportunity to be heard.⁴⁵

Where the applicant requests a hearing, the request:

• Must be made in writing;
• Must indicate whether the applicant desires a hearing in person or a hearing based on written submissions; and
• Must be received by IPONZ on or prior to the expiry of the deadline specified in the Notice taking into account any extensions of time that have been granted.

Upon receipt of the request for a hearing, the application will be forwarded to the Hearings Office.

Where the applicant requests a hearing in person, a hearing will be held before an Assistant Commissioner. Where the applicant requests a hearing based on written submissions, the applicant will be asked to forward its written submissions and an Assistant Commissioner will then consider those written submissions.

After the hearing, or after considering the applicant’s written submissions, the Assistant Commissioner will either accept⁴⁶ or reject ⁴⁷ the application. A response will issue in writing, stating the reasons for the Assistant Commissioner’s decision and, where relevant, the materials used in arriving at the decision.⁴⁸

Footnotes

Where IPONZ does not receive a response to the Notice of Intention to Reject on or prior to the expiry of the deadline specified in that Notice, the application will be rejected pursuant to section 43 of the Act.

An Assistant Commissioner will write to the applicant confirming that the application has been rejected for the reasons given in the Notice. Where there are any new or additional reasons for the Commissioner’s decision, or where any new or additional materials have been used in arriving at that decision, these will be stated.

An applicant may request an extension of the time limit set in a Notice of Intention to Reject. Extensions of time will only be granted in those cases where genuine and exceptional reasons exist.⁴⁹

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.

A 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.

The onus is on the applicant to provide sufficient detail in its request for an extension of time to demonstrate the existence of genuine and exceptional reasons. Each extension of time request will be assessed on the basis of the information the applicant has provided in support of its request. Where the information provided by the applicant does not demonstrate the existence of genuine and exceptional reasons, the request will be declined.

The failure of an applicant to instruct its agent in a timely manner on how to proceed will not generally be considered an exceptional reason.

The comment “such additional further reasons/information as the Commissioner may request” (or similar) should not be included in a request for an extension of time. The onus is on the applicant to provide sufficient information in support of its request at the time that the request for an extension of time is made.

Where an applicant is applying for an extension of a deadline, the applicant should provide detailed information, such as a chronology of events, to explain why it has not been able, despite its best efforts, to request a hearing within the deadline set in the Notice of Intention to Reject.

Footnotes