7.9 Cancellation, revocation or invalidation of the cited mark

Where a cited mark is registered, the applicant may decide to apply to have the registration of the cited mark revoked,³⁰ declared invalid³¹ or cancelled.

Where an applicant has filed a revocation application, a cancellation application or a declaration of invalidity, against a cited mark, the applicant must advise IPONZ of this fact prior to the expiry of the deadline set in the Compliance Report that issued to the applicant. Upon receipt of the applicant’s advice that a revocation application, cancellation application or an invalidity application has been filed against the cited mark, IPONZ will, upon verification of the facts, place the application in abeyance pending the outcome of the revocation proceedings, the cancellation proceedings or the invalidity proceedings.³²

IPONZ will withdraw the citation if the registration of the cited mark is revoked,³³ cancelled or declared invalid.

It is the responsibility of the applicant to advise IPONZ once the registration of the cited mark has been revoked, cancelled or declared invalid.

Footnotes

³⁰ Section 66(1) of the Act

³¹ Where the applicant is of the opinion that the cited mark was not registrable under Part 2 of the Act as at its deemed date of registration under section 73(1) of the Act.

³² Pursuant to section 44(2) of the Act, where the application is awaiting the outcome of proceedings in respect of a registered trade mark, the Commissioner must not treat the application as abandoned if, within the time specified by the Commissioner, the applicant has not responded to a notification under section 41 of the Act.

³³ The registration of the cited mark may either be completely revoked, or revoked in respect of the goods or services that are at issue. See section 68(1) of the Act, which allows for revocation in respect of particular goods/services only “if grounds for revocation exist in respect of only some of the goods or services in respect of which the trade mark is registered”.