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2. Methods that will not overcome a citation
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2.1 Prior use
Examiners will not consider submissions attempting to prove that the applicant has used its mark in New Zealand prior to the priority date of a mark that has been cited against the application.
The Act is very clear that each application must be determined “according to its order of priority”.1 The mark with the earliest priority will proceed to acceptance and will be raised as a citation against applications with later priority. An applicant with later priority must either oppose the registration of a mark that has earlier priority, or must overcome the citation via the methods outlined in these Guidelines.
Footnotes
1 See section 35(b) of the Act.
2.2 Notice
Notice is not a means by which citations may be overcome under the Act.
Under the Trade Marks Act 1953, applicants were able to overcome citations by serving notice on the owner of the cited mark, thereby advising the owner of the advertisement of the applicant’s application, and of the opportunity to oppose its registration. However, this had ceased before the new Act came into force.2
Footnote
2 See ‘Removal of formal notice requirement for trade mark files’, Information for Clients No. 2 of 18 June 1998.
