7. Other methods of overcoming a citation

Where a citation has been raised under section 25(1)(b) of the Act, an applicant may be able to convince IPONZ that the co-existence of the applicant’s mark with the cited mark is not likely to deceive or confuse. For example, an applicant may argue:

• That their mark is not similar to the cited mark.
• That their goods/services are not the same as, or similar to, the goods/services of the cited mark.
  

The applicant must make their submissions in writing.

Dividing the application does not, strictly speaking, overcome a citation. However, where part of the application can be divided out so that either the initial application or the divisional application is no longer in conflict with the cited trade mark, at least part of the original application may be able to proceed.

Where the division has resulted in the conflicting trade mark or goods and services being divided out to a new application, the new application must be raised as a citation against the application under examination if the conflict between the trade marks and the goods and services still exists. The new citation will be treated as if the citation had been raised at the time of the initial examination.

Where a citation has been raised against an application, and the cited mark is the subject of an application with earlier priority that is not yet registered, the applicant may decide to enter into negotiations with the owner of the cited mark, in the attempt to persuade that owner to withdraw its application pursuant to section 37(1) of the Act. Please refer to Practice guideline 12, Amendments to Trade Mark Applications.

IPONZ will withdraw the citation if the owner of the cited mark withdraws its application.

It is the responsibility of the applicant to advise IPONZ once the cited mark has been marked off as abandoned in the IPONZ database.

Where a citation has been raised against an application, and the cited mark is the subject of an application with earlier priority that has not yet been accepted, it is possible that the application in respect of the cited mark will subsequently be treated as abandoned due to lack of response on the part of its applicant.

An application must be treated as abandoned if the applicant does not respond to a Compliance Report within the time specified by the Commissioner under section 44(1) of the Act.

IPONZ will withdraw the citation if the cited mark is treated as abandoned pursuant to section 44(1) of the Act.

It is the responsibility of the applicant to advise IPONZ once the cited mark has been marked off as abandoned in the IPONZ database.

A citation may be overcome by assignment. Once the cited mark and the application under examination are in the name of the same owner, section 25 of the Act cannot apply.

There are several possibilities:

• Assignment of the application under examination to the owner of the cited mark(s).
• Assignment of the cited mark(s) to the applicant.
• Assignment of the application under examination and the cited mark(s) to the same third party.
  

A trade mark may be assigned at any time, whether before or after registration.²³

Footnote

²³ See sections 12(1) and 82 of the Act.

Where a cited mark is not yet registered but has been accepted and advertised, the applicant may decide to oppose the registration of the cited mark.

Where an applicant has lodged an opposition 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 an opposition has been lodged against the cited mark, IPONZ will, upon verification of the facts, place the application in abeyance pending the outcome of the opposition proceedings.²⁴

If the cited mark is successfully opposed, IPONZ will withdraw the citation once the cited mark has been marked off as abandoned in the IPONZ database.

It is the responsibility of the applicant to advise IPONZ once the cited mark has been marked off as abandoned.

Footnote

²⁴ Pursuant to section 44(2) of the Act.

²⁵Where a cited mark has been removed from the register because its owner failed to renew its registration in time, under section 60(1) of the Act the citation is valid ²⁶ for the period of one year from the date of expiry of the registration of the cited mark, but not beyond that date.²⁷

However, section 60(2) of the Act reads as follows:

Subsection (1) does not apply if the Commissioner is satisfied either that –

1. there has been no genuine use of the trade mark that has been removed during the 2 years immediately before its removal; or
2. no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application by reason of any previous use of the trade mark that has been removed.
   

Therefore, an applicant may overcome a citation of a mark that has been removed from the register where the applicant can show that there has been no genuine use of the trade mark in the previous two years prior to its removal or no deception or confusion is likely to arise from use of the mark.

The onus is on the applicant to prove this to the satisfaction of the Commissioner. The Commissioner will exercise this discretion cautiously as the owner of the recently removed mark will not necessarily be aware of the proceedings.

Where a removed trade mark has been raised as a citation against an application, the applicant has the following options:

• Where the deadline set for response to the Office’s Compliance Report is after the deadline for renewal of the cited mark, await the expiration of the renewal deadline of the cited mark and advise IPONZ if the cited mark is then abandoned. Note that it is It is the responsibility of the applicant to advise IPONZ once more than a year has passed since the date of expiry of the registration of the cited mark; or
• Where the deadline set for response to the Office’s Compliance Report is before the deadline for renewal of the cited mark, apply for an extension of time until one month after the cited mark’s renewal deadline. Note that unless an additional extension of time is requested in writing and granted, the application will be treated as abandoned, pursuant to section 44(1) of the Act, if IPONZ does not receive a response to the Compliance Report on or prior to the expiry of the new time limit; or
• Demonstrate, to the satisfaction of the Commissioner, that either:
  • There has been no genuine use of the cited mark during the two years immediately before it was removed from the register²⁸ ; or
  • No deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application by reason of any previous use of the trade mark that has been removed.²⁹

    The Commissioner will exercise this discretion cautiously and will contact     the owner of the cited mark before any decision is made.

Footnotes

²⁵ Paragraph 7.7 of this Guideline was updated on xxxxx by clarifying the Commissioner’s approach to the exclusions in section 60(2).

²⁶ Provided that the status of the cited mark does not change, and provided that neither of the circumstances set out in section 60(2) of the Act apply.

²⁷ See section 60(1) of the Act and the discussion above under ‘Section 60: raising removed trade marks as citations’.

²⁸ See section 60(2)(a)

²⁹ See section 60(2)(b) of the Act

Where a registered mark has been raised as a citation against an application, the applicant may decide to enter into negotiations with the owner of the cited mark, in the attempt to persuade that owner to cancel its registration.

The owner of a registered trade mark may request the cancellation of its registration pursuant to section 61 of the Act. Please refer to Practice guideline 12, Amendments to Trade Mark Applications.

IPONZ will withdraw the citation if the registration of the cited mark is cancelled.

It is the responsibility of the applicant to advise IPONZ once the registration of the cited mark has been cancelled.

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”.