6.4 Restricting the specification of the cited mark

Where the specification of the cited mark is very broad, it may not be sufficient for the applicant to limit its specification. In such instances the applicant may consider entering into negotiations with the owner of the cited mark, in the attempt to persuade the owner of the cited mark to limit the specification of the cited mark.

Where the owner of the cited mark agrees to do so and the cited mark is not yet registered, the owner of the cited mark must request to limit the specification of the application pursuant to section 37(1) of the Act. Please see Practice guideline 12, Amendments to trade mark applications.

Where the cited mark is registered, the owner of the cited mark must apply to have the registration cancelled in respect of some of the goods and services ²¹ or request the striking out of certain goods and services, or classes of goods and services.²² Please see practice guideline 19a Cancellation and Alteration of Registered Trade Marks.

Subject to the same rules as above, a restriction to the specification of goods and services may be done by:

• Deleting goods or services from the existing specification;
• Adding a positive limitation; or
• Excluding certain goods or services from the existing specification.

It is the responsibility of the applicant to advise IPONZ once the specification of the cited mark has been officially amended

Footnotes

²¹ Section 61 of the Trade Marks Act 2002.

²² Section 78(b) of the Trade Marks Act 2002.