2.2 Equal priority

Sections 34(2) and (3) of the Act state:

(2) If different persons separately apply for the registration of trade marks that are identical or similar to each other and that are in respect of identical or similar goods or services and their applications are received at the same time by the Commissioner, -

(a) each application has equal priority and may proceed; and

(b) the Commissioner must notify each applicant of each other’s application.

(3) For the purposes of subsection (2), 2 or more applications that are received on the same day are to be treated as if they had been received at the same time.

Where two applications are filed in New Zealand on the same day, and neither application claims convention priority,⁴ the priority date of each application is its New Zealand filing date. Since the applications have the same New Zealand filing date, they have equal priority.

In the above scenario both applications are registrable under the Act. ⁵ The examiner must not raise either application as a citation against the other. Rather, pursuant to section 34(2)(b) of the Act, the examiner must notify each applicant of the other application.

The applicants will receive this notification either within a Compliance Report or together with a Notice of Acceptance, as applicable.

Footnotes

⁴Section 36 overrides section 34(2) (see section 34(4)), with the result that section 34(2) does not apply when one or more of the applications claims convention priority.

⁵As stated in section 34(2)(a) of the Act, “each application … may proceed”. The applications will only proceed to advertisement if no other grounds for refusal exist.