3. Consent

³Section 25 of the Act will not prevent the registration of a trade mark if the owner of the cited mark provides consent to the registration under section 26(a) of the Act. It follows that a citation will always be overcome if the applicant obtains written consent from the owner of the cited mark.

There are certain criteria that are essential in a consent document.

1. The consent document must clearly identify the applicant’s mark.
   The application number(s) is sufficient. It is not essential to include the trade mark or to identify the earlier trade marks owned by the person giving consent;
2. The consent document must clearly identify the person giving consent and be signed by that person.
   Where the person giving consent is not recorded on the register as the owner of the mark, the letter should indicate that the person signing has the necessary authority to consent on behalf of the owner and proof of that authority should be supplied. For example, for corporate bodies, the person signing should indicate his or her name and position within the company, on official letter-headed paper or on paper carrying the company seal.
3. The consent document must relate to the registration of the applicant’s mark.
4. The consent document may identify the goods and services.
   Where the consent document does not refer to the specification, IPONZ will assume that the applicant’s specification is acceptable to the party giving consent. However, if the owner of the cited mark consents to the registration of the applicant’s mark, but in respect of a narrower specification of goods or services than that originally applied for, then the applicant must request a limitation of its specification, pursuant to section 37(1) of the Act, so that the specification includes only those goods or services listed in the consent document.

IPONZ has provided an example of the consent document below.

Where an applicant has obtained consent, the applicant must forward the consent document, or a copy of the consent document, to IPONZ. Upon receipt of a letter of consent, the examiner must check that the consent document includes all of the necessary information and that the person providing the consent has authority to do so.

Where the owner of the cited mark is the parent or subsidiary in business of the applicant, the provision of consent is an obvious way whereby the citation may be overcome.