2. Raising of citations

¹⁰Occasionally it may transpire that the owner of a cited mark is related to the applicant of a later filed application even though the owner of the cited mark(s) has a different name to the applicant.

In this situation, IPONZ will raise a citation where it considers that section 25(1) of the Act applies. IPONZ is not in a position to determine whether the owners of the respective trade marks are one and the same but must examine based on the applicant’s details that appear in the IPONZ database.

Until the matter is resolved to the satisfaction of the Commissioner, the citation will stand. Please see Practice Guideline 10a Overcoming a Citation.

Footnote

¹⁰Practice Guideline Amendment 2007/10, IPONZ Newsletter, October 2007.

IPONZ will generally not raise a citation against an application where the applicant is the same legal entity as the owner of an earlier identical or similar mark and from the same state and/or country. However, IPONZ retains its discretion to raise a concern under section 25 of the Act where it has concerns as to whether or not the applicant and the owner of the cited mark are one and the same entity.

Therefore, where the name of the owner of a cited mark is the same as the name of an applicant of a later filed application, but the address details differ, the Examiner will proceed as follows:

• Where the applicant is resident in the same State and/or country as the owner of the cited mark(s), the examiner will not raise a concern under section 25 of the Act. The examiner will assume that they are the same legal entity.
• Where the applicant is resident in a different State and/or country to the owner of the cited mark(s), a concern will be raised under section 25 of the Act. Until the matter is resolved to the satisfaction of the Commissioner, the citation will stand. Please see Practice Guideline 10a Overcoming a Citation.